• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCNo claims unpatentable
  PTAB · May 25, 2018 · IPR2017-00179 · APJ Scott C Moore · IPR · Final written decision

  Claims 1–10, 15, 20, and 24 were not shown unpatentable because Petitioners did not establish a reason to refrain from calculating Hsu’s metrics when Franaszek’s type information was absent.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “and “at least two years of experience working with data compression or a graduate degree focusing in the field of data compression.” ’179 IPR, Ex. 1002 ¶ 26; ’808 IPR, Ex. 1002 ¶ 26. Patent Owner’s declarant, Dr. Zeger, “does not disagree” with Petitioners’ formulation, and does not offer any alternative formulation. See Ex. 2004 ¶ 20. Based on our review of the ’728 patent, the types of problems and solutions described in the ’728 patent and cited prior art, and the testimony of Petitioners’ declarant, we adopt and apply Dr. Creusere’s formulation regarding the level of ordinary skill in the art. The cited prior art references also reflect the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We find that the level of appropriate skill reflected in these references is consistent with Dr. Creusere’s formulation regarding the level of ordinary skill in the art.” slip op. at 11

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

    “Petitioners requested that we construe the claim term “the data block being included in one or more data blocks,” which is recited in claims 2 and 3. ’179 Pet. 13, ’808 Pet. 11–12. Patent Owner did not request that we provide explicit constructions of any claim terms. On this record, we determine that it is unnecessary to provide an explicit construction of the claim term “the data block being included in one or more data blocks” in order to resolve the issues in dispute. Accordingly, we decline to adopt an express construction of this claim term. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Ex. 2004 ¶ 24. We find Dr. Zeger’s testimony persuasive, especially in view of Dr. Creusere’s deposition testimony that advantages would result from using Hsu’s block type and redundancy metrics, regardless of whether Franaszek’s type data was or was not present.” slip op. at 28

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

    “Petitioners argue that Patent Owner is “presuppos[ing] that a POSA would only see one obvious way to combine prior art teachings.” Reply 5. Petitioners are correct that there may be more than one obvious way to combine prior art teachings. However, it is Petitioners’ burden to show that one particular combination of the references renders obvious all limitations of a given claim. Thus, it is entirely proper for Patent Owner to point out the tension between Petitioners’ stated rationale for combining the teachings of Hsu and Franaszek to arrive at limitations 1d and 24d, and Petitioners’ stated rationale for further modifying this combination to refrain from calculating Hsu’s block type and redundancy metrics when Franaszek’s type information is not present in order to arrive at limitations 1f and 24f. To prevail on Ground 1, Petitioners must demonstrate that a person of ordinary skill in the art would have had sufficient reason to make both modifications. We find Petitioner has not persuasively harmonized the disparate rationales it proffers.” slip op. at 29

  Patent outcomesUS 9,054,728 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,054,728
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCAll claims unpatentable
  PTAB · May 25, 2018 · IPR2017-01688 · APJ Jason J Chung · IPR · Final written decision

  Claims 104 and 105 are unpatentable under § 103(a) over Franaszek and Hsu, and over Franaszek, Hsu, and Sebastian, because the combinations render the claims obvious.

  RulingsFinal written decision

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

    “present case for at least the reasons stated supra in § II.C.1., we construe claims 104 and 105 according to the broadest reasonable construction in light of the specification (i.e., using Schulhauser) as explained infra. In Schulhauser, the Board held that in method claim 1, only one of the following conditional limitations needed to be satisfied in the prior art to render the claim anticipated or obvious: (1) “triggering an alarm state if the electro cardiac signal data is not within the threshold electrocardiac criteria”; and (2) “determining the current activity level of the subject from the activity level data if the electrocardiac signal data is within the threshold electrocardiac criteria.” Schulhauser at 6–8. To paraphrase, in Schulhauser, illustrative method claim 1 recited if A, then perform step X; if not A, then perform step Y. Id. In the same manner, claim 104 of the present case recites “performing content dependent data compression with a content dependent data compression encoder if a data type of the data block is identified” (hereinafter, “if A, then perform step X limitation of claim 104”) and “performing data compression with a single data compression encoder, if a data type of the data block is not identified” (hereinafter, “if not A, then perform step Y limitation of claim 104”). Ex. 1001, 2:34–45. Also, claim 105 recites “wherein if one or more encoders are associated to said type, compressing said data block with at least one of said one or more encoders” (hereinafter, “if A, then perform step X limitation of claim 105”) and “otherwise compressing said data block with a default data compression encoder” (hereinafter, “if not A, then perform step Y limitation of claim 105”). Id. at 2:57–60. Therefore, as a matter of law, we determine only one condition needs to be satisfied in the prior art to render the claim anticipated or obvious.” slip op. at 14

  • PTAB / AIA Trials › Motions to amend / substitute claimsOther

    “Schulhauser was only raised by Petitioner after the time to bring a motion to amend had passed. PO Br. 2–3. To the extent that Patent Owner is suggesting that it was deprived of the opportunity to file a motion to amend, we disagree because Patent Owner should have been aware of Schulhauser since at least the filing of Petitioner’s Reply (i.e., December 5, 2017). Yet, Patent Owner’s additional briefing filed on March 5, 2018 was the first and only time Patent Owner made reference to a motion to amend. PO Br. 2–3. Although the time to file a motion to amend, under the Scheduling Order, had passed when Petitioner filed its Reply, Patent Owner was free to seek leave to file a late motion to amend. However, Patent Owner did not contact the Board on this issue.11 We, therefore, find that it is appropriate to apply Schulhauser in the context of this proceeding for at least the reasons explained supra.12” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s Declarant Dr. Kenneth A. Zeger, Ph.D., does not disagree with Petitioner’s statements regarding the level of ordinary skill in the art. Ex. 2005 ¶ 20. Based on our review of the ’506 patent, the types of problems and solutions described in the ’506 patent and cited prior art, and the testimony of Dr. Creusere and Dr. Zeger, we adopt and apply Dr. Creusere’s definition of a person of ordinary skill in the art at the time of the claimed invention for purposes of this Decision.” slip op. at 9

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

    “always perform the if A, then perform step X limitation of claim 104. In addition, Dr. Zeger’s opinion that the Franaszek and Hsu combination fails applies only to the if not A, then perform step Y limitation of claim 104. Dr. Zeger’s opinion that the combination fails was given in the context of his opinion that both the if A, then perform step X limitation of claim 104 and the if not A, then perform step Y limitation of claim 104, must be taught in order to demonstrate unpatentability. It is noted that claim 104 is a method claim being analyzed under Schulhauser16; therefore, it is sufficient for Petitioner to show that the combination of Franaszek and Hsu teaches either the if A, then perform step X limitation of claim 104 or the if not A, then perform step Y limitation of claim 104. We find Dr. Zeger’s testimony regarding the absence of a rationale to combine to be unpersuasive because it was based on the assumption that both alternate steps of claim 104 must be met. We, therefore, also find that Dr. Zeger’s testimony does not counter persuasively Petitioner’s showing that a PHOSITA would have had reason to combine Franaszek and Hsu in a manner that would have taught the if A, then perform step X limitation of claim 104. Accordingly, we are persuaded Petitioner has established by a preponderance of the evidence that: (1) Franaszek and Hsu teaches the if A, then perform step X limitation of claim 104; and (2) a PHOSITA would have combined Franaszek and Hsu.17 Petitioner has made sufficient” slip op. at 37

  Patent outcomesUS 7,161,506 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 7,161,506
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCAll claims unpatentable
  PTAB · May 25, 2018 · IPR2017-00806 · APJ Jason J Chung · IPR · Final written decision

  Claims 104 and 105 are unpatentable as obvious over Franaszek and Hsu, and over Franaszek, Hsu, and Sebastian.

  RulingsFinal written decision

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

    “present case for at least the reasons stated supra in § II.C.1., we construe claims 104 and 105 according to the broadest reasonable construction in light of the specification (i.e., using Schulhauser) as explained infra. In Schulhauser, the Board held that in method claim 1, only one of the following conditional limitations needed to be satisfied in the prior art to render the claim anticipated or obvious: (1) “triggering an alarm state if the electro cardiac signal data is not within the threshold electrocardiac criteria”; and (2) “determining the current activity level of the subject from the activity level data if the electrocardiac signal data is within the threshold electrocardiac criteria.” Schulhauser at 6–8. To paraphrase, in Schulhauser, illustrative method claim 1 recited if A, then perform step X; if not A, then perform step Y. Id. In the same manner, claim 104 of the present case recites “performing content dependent data compression with a content dependent data compression encoder if a data type of the data block is identified” (hereinafter, “if A, then perform step X limitation of claim 104”) and “performing data compression with a single data compression encoder, if a data type of the data block is not identified” (hereinafter, “if not A, then perform step Y limitation of claim 104”). Ex. 1001, 2:34–45. Also, claim 105 recites “wherein if one or more encoders are associated to said type, compressing said data block with at least one of said one or more encoders” (hereinafter, “if A, then perform step X limitation of claim 105”) and “otherwise compressing said data block with a default data compression encoder” (hereinafter, “if not A, then perform step Y limitation of claim 105”). Id. at 2:57–60. Therefore, as a matter of law, we determine only one condition needs to be satisfied in the prior art to render the claim anticipated or obvious.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation and citation omitted). In that regard, Petitioner’s declarant, Dr. Creusere, testifies that a person with ordinary skill in the art at the time of the invention” slip op. at 8

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “using Hsu’s approach will always identify a result for a block’s data type (id.); we agree with Dr. Creusere’s testimonial admission. In particular, in response to Patent Owner’s question of whether Hsu’s approach always identifies a given data block, Dr. Creusere answered: As far as the – as the data type information as output by Hsu’s new file routine, that, that’s – that will – that should in my, in my opinion, as a person of ordinary skill in the art, my best estimate is that will always output something. It will always give you something. Id. (quoting Ex. 2003, 21:13–22:6).” slip op. at 34

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

    “combine to be unpersuasive because it was based on the assumption that both alternate steps of claim 104 must be met. We, therefore, also find that Dr. Zeger’s testimony does not counter persuasively Petitioner’s showing that a PHOSITA would have had reason to combine Franaszek and Hsu in a manner that would have taught the if A, then perform step X limitation of claim 104. Accordingly, we are persuaded Petitioner has established by a preponderance of the evidence that: (1) Franaszek and Hsu teaches the if A, then perform step X limitation of claim 104; and (2) a PHOSITA would have combined Franaszek and Hsu.17 Petitioner has made sufficient” slip op. at 37

  Patent outcomesUS 7,161,506 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 7,161,506
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCAll claims unpatentable
  PTAB · May 25, 2018 · IPR2017-00176 · APJ Jason J Chung · IPR · Final written decision

  Claims 104 and 105 are unpatentable as obvious under § 103(a) over Franaszek and Hsu, and over Franaszek, Hsu, and Sebastian.

  RulingsFinal written decision

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

    “present case for at least the reasons stated supra in § II.C.1., we construe claims 104 and 105 according to the broadest reasonable construction in light of the specification (i.e., using Schulhauser) as explained infra. In Schulhauser, the Board held that in method claim 1, only one of the following conditional limitations needed to be satisfied in the prior art to render the claim anticipated or obvious: (1) “triggering an alarm state if the electro cardiac signal data is not within the threshold electrocardiac criteria”; and (2) “determining the current activity level of the subject from the activity level data if the electrocardiac signal data is within the threshold electrocardiac criteria.” Schulhauser at 6–8. To paraphrase, in Schulhauser, illustrative method claim 1 recited if A, then perform step X; if not A, then perform step Y. Id. In the same manner, claim 104 of the present case recites “performing content dependent data compression with a content dependent data compression encoder if a data type of the data block is identified” (hereinafter, “if A, then perform step X limitation of claim 104”) and “performing data compression with a single data compression encoder, if a data type of the data block is not identified” (hereinafter, “if not A, then perform step Y limitation of claim 104”). Ex. 1001, 2:34–45. Also, claim 105 recites “wherein if one or more encoders are associated to said type, compressing said data block with at least one of said one or more encoders” (hereinafter, “if A, then perform step X limitation of claim 105”) and “otherwise compressing said data block with a default data compression encoder” (hereinafter, “if not A, then perform step Y limitation of claim 105”). Id. at 2:57–60. Therefore, as a matter of law, we determine only one condition needs to be satisfied in the prior art to render the claim anticipated or obvious.” slip op. at 14

  • Strike new argumentNew argument consideredDecided for patent owner

    “As an initial matter, as discussed further below, we follow Schulhauser because it is precedential. Moreover, we find that each of the cases cited by Patent Owner is factually distinguishable from Schulhauser. The Board’s Standard Operating Procedures (“SOP”) require it to follow its precedential decisions. PTAB SOP No. 2, Rev. 9, 3 (Sept. 22, 2014) (“A precedential opinion is binding authority in subsequent matters involving similar facts or issues.”). Because this issue concerns claim construction, we conclude the best course of action under these specific circumstances is to follow our Tribunal’s SOP and our precedent in Schulhauser. To address APA concerns, due process concerns, the sufficiency of notice and potential prejudice, we allowed the parties the additional opportunity to brief the issue.10 Additional Briefing 1–2. In summary, Schulhauser is our precedent and it should apply given its potential applicability to the claim construction for the claims at issue.” slip op. at 12

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

    “We find Dr. Zeger’s testimony regarding the absence of a rationale to combine to be unpersuasive because it was based on the assumption that both alternate steps of claim 104 must be met. We, therefore, also find that Dr. Zeger’s testimony does not counter persuasively Petitioner’s showing that a PHOSITA would have had reason to combine Franaszek and Hsu in a manner that would have taught the if A, then perform step X limitation of claim 104. Accordingly, we are persuaded Petitioner has established by a preponderance of the evidence that: (1) Franaszek and Hsu teaches the if A, then perform step X limitation of claim 104; and (2) a PHOSITA would have combined Franaszek and Hsu.17 Petitioner has made sufficient” slip op. at 37

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

    “Accordingly, we are persuaded Petitioner has established by a preponderance of the evidence that: (1) Franaszek and Hsu teaches the if A, then perform step X limitation of claim 104; and (2) a PHOSITA would have combined Franaszek and Hsu.17 Petitioner has made sufficient 16 Supra § II.C. 17 We considered Patent Owner’s objections (Tr. 30:1–34:4, 63:17–23) and dismiss them as moot because we did not rely on Petitioner’s theory that Franaszek does not have a data type, then if you were to use Hsu in that showings that both grounds would have taught the remaining limitations of claim 104 (Pet. 14–36) and Patent Owner does not dispute these assertions (Paper 20, § B.1.b.) (“[A]ny arguments for patentability not raised in the response will be deemed waived.”). e. Conclusion In conclusion, and having performed the factual inquiries required by Graham, for the reasons given above and based on our review of the arguments and evidence of record, Petitioner has shown by a preponderance of the evidence that the combination of: (1) Franaszek and Hsu; and (2) Franaszek, Hsu, and Sebastian render obvious the subject matter of claim 104 of the ’506 patent.18” slip op. at 37

  Patent outcomesUS 7,161,506 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 7,161,506
• Autoliv Asp, Inc. / Nihon Plast Co., Ltd. et al. v. American Vehicular Sciences, LLCAll claims unpatentable
  PTAB · Mar 22, 2018 · IPR2016-01794 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 1–44 are unpatentable as obvious under §103 over the combinations and references listed in the decision.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “a degree in a related field of science including physics, mechanical or electrical engineering, or equivalent coursework, and at least two years of experience in the area of automotive safety systems with the equivalent of a post-graduate education, such as a master’s degree or equivalent knowledge obtained through work experience, and several years of experience in the design of vehicle occupant protection systems.” Pet. 21 (citing Ex. 1003 ¶ 37). Patent Owner does not address the level of ordinary skill in its Patent Owner Response, but Mr. Nranian testifies that such a person “would have at least a Bachelor’s degree in electrical, electronic, mechanical, or automotive engineering, and at least three years of experience in the integration of airbag, safety, and vehicle occupant protection devices in automotive vehicles, or equivalent knowledge obtained through work experience in the relevant field.” Ex. 2018 ¶ 36. We do not discern a difference between these formulations as applied to the issues in dispute in this proceeding, and the parties do not identify any issue in dispute that allegedly turns on such a difference. For purposes of this Final Written Decision, and based on the parties’ proposed definitions and the complete record now before us, we maintain our previously adopted definition of one of ordinary skill in the art: a person having at least a Bachelor’s degree in physics, or electrical, electronic, mechanical, or automotive engineering, or equivalent coursework, and having several years of experience in the design of vehicle occupant protection systems in automotive vehicles, or equivalent knowledge obtained through work experience in the relevant field. See Inst. Dec. 15–16. The level of ordinary skill in the art in this case further is reflected by the prior art of record. 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).” slip op. at 10

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

    “The parties’ dispute does not require express construction of any claim term. See, e.g., See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther

    “specifically how the claimed airbag (with or without compartments) is inflated. The generic description in the Specification that the term “airbag” includes, among other distinct possibilities, “a single airbag having a plurality of compartments which deploy in concert to protect an occupant,” coupled with silence in the claims as to the specifics of how the claimed airbags are inflated is insufficient to support a conclusion that the original claims of the ’247 application actually disclose the claimed flow communication limitation. See Huston, 308 F.3d at 1277 (“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.”); see also Ex. 1027, 31:5–11 (Mr. Nranian admitting during cross-examination that an airbag with a plurality of compartments, “could have plurality of compartments in flow communication with each other or could have a plurality of compartments that are not in flow communication with each other.” (emphasis added)); Reply 8.” slip op. at 19

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

    “airbag extending across front and back seats limitation. See Pet. 32–34, 38; Ex. 1003 ¶¶ 103–104. Petitioner asserts that “HÅland teaches a single airbag extending across two seating positions that are longitudinally displaced along a lateral side of the vehicle.” Pet. 32 (citing Ex. 1008, 5:47– 51, Figs. 5, 6). Petitioner further asserts that “Stütz . . . also discloses the claimed single airbag extending across two seating positions that are longitudinally displaced along a lateral side of the vehicle.” Id. at 33–34 (citing Ex. 1009, 1:25–32, 1:50–55, 2:52–55, Figs. 1, 3). We agree with Petitioner, and find that HÅland and Stütz each teaches or suggests the single airbag extending across front and back seats limitation.” slip op. at 30

  Patent outcomesUS 9,043,093 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 9,043,093
• Parrot S.A. / Parrot Drones, S.A.S et al. v. Qfo Labs, Inc.All claims unpatentable
  PTAB · Feb 15, 2018 · IPR2016-01550 · APJ Hyun J Jung · IPR · Final written decision

  Claim 10 is unpatentable over Louvel, Thomas, and Jimenez; proposed substitute claim 11 is unpatentable over Louvel, Nagamitsu, and Jimenez and over Louvel, Thomas, and Jimenez, so the motion to amend is denied.

  RulingsFinal written decision

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

    “a Petition (Paper 2, “Pet.”), requesting institution of an inter partes review of claims 1–10 of U.S. Patent No. 7,931,239 B2 (Ex. 1001, “the ’239 patent”). QFO Labs, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 10). Upon considering the Petition and the Preliminary Response, we instituted inter partes review of claim 10 of the ’239 patent. Paper 18 (“Dec. on Inst.”).” slip op. at 2

  • Skill levelSkill level board ownDecided for petitioner

    “have at least a Bachelor of Science degree in Aerospace engineering, or a comparable degree, in combination with at least two years of practical experience in the field.” Pet. 14 (citing 1st Chowdhary Decl. ¶ 51). Patent Owner states that it “generally agrees with Petitioners that a person of ordinary skill . . . would possess a Bachelor’s of Science degree in aeronautical or electrical engineering with at least two years of practical experience in the design and development of remote control aircraft.” PO Resp. 13 (citing Pet. 14; 2d Condon Decl. ¶ 13). We adopt the parties’ agreed to level of ordinary skill and find that one of ordinary skill in the art “would have at least a Bachelor of Science degree in Aerospace engineering, or a comparable degree, in combination with at least two years of practical experience in the field” (Pet. 14). We note that any differences in the parties’ asserted level of ordinary skill would not impact our analysis.” slip op. at 11

  • Expert testimonyPetitioner expert creditedOther

    “Record evidence supports Petitioners’ position that modifying Louvel to include the hand-held enclosure of Thomas would have been routine design choice, that Thomas improves on joysticks like the one of Louvel, and that there are no unexpected results from its proposed combination. Pet. 42. Thomas states that “[i]n the past joysticks of various kinds have been used” that “comprise a lever with a handle at one” and the “other end of the lever is attached to . . . potentiometers” so that “[m]ovement of the handle . . . generates electrical signals which stimulate an electrical object.” Ex. 1006, 1:11–17. Unlike the “past joysticks of various kinds,” Thomas utilizes “accelerometers of various kinds in small packages some of which incorporate electronic signal processing” in a “hand-held joystick able to detect at least six degrees of freedom of movement.” Id. at 1:26–31. Thomas also states “[i]n another application the hand-held joystick may be used in place of a . . . joystick” and the “hand-held joystick may be used to control robots.” Id. at 4:16–18, 4:25–26. Similar to the “past joysticks” comprising “potentiometers” described by Thomas, “movements of the handle inside the handling unit” of Louvel “make the analog voltage change according to the handle position.” Ex. 1004 ¶ 82, Fig. 8. Therefore, Thomas itself indicates that its joystick is an alternative to the handling unit of Louvel and that Thomas improves on joysticks like the one of Louvel. See Ex. 1006, 1:11–17, 1:26–31, 4:16–18, 4:25–26. Thomas and Louvel, thus, support Petitioners’ rationales of routine design choice and that Thomas improves on joysticks like Louvel. We also credit Prof. Chowdhary’s testimony that “[i]mplementing the features of . . . Thomas in the flying saucer described by Louvel would have been within the skillset of a person of ordinary skill in the art.” 1st Chowdhary Decl. ¶ 117 (citing Ex. 1004 ¶ 1; Ex. 1006, 1:7–9). We agree with Petitioners that there would be no unexpected results from combining Louvel and Thomas because the Louvel controller is used to control an aircraft in a same manner described in Thomas. Pet. 42 (citing Chowdhary Decl. ¶ 120; Ex. 1004 ¶ 7; Ex. 1006, 1:11–13); see also Ex. 1006, 4:16–18 (stating “[i]n another application the hand-held joystick may be used in place of a . . . joystick”). Thus, we determine that one of ordinary skill in the art would have had reason to combine Louvel and Thomas to “provid[e] as part of said RC controller a handheld structure housing a sensor system” and to “us[e] said sensor system in said RC control to sense at least a two dimensional, two-axis sensed orientation of said handheld structure in response to a user remote from said flying structure selectively orienting said handheld structure,” as required by claim 10. Ex. 1001, 16:40–46.” slip op. at 24

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

    “After reviewing the complete record, we agree with the parties that express interpretation of any claim term is not necessary for determining whether Petitioners have carried their burden of proving claim 10 unpatentable by a preponderance of the evidence. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (construing only those terms in controversy and only to the extent necessary to resolve the controversy); see Pet. 15; PO Resp. 14; Tr. 29:9–31:17, 32:14–25.” slip op. at 10

  Patent outcomesUS 7,931,239 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,931,239
• RPX Corporation v. Rothschild Connected Devices Innovations, LLCAll claims unpatentable
  PTAB · Jul 6, 2017 · IPR2016-00443 · APJ Scott C Moore · IPR · Final written decision

  Claims 1–8 are unpatentable under § 103: claims 1–7 over the Zimmerman-based combinations, and claims 1 and 8 over the Omnisphere- and Zimmerman-based grounds, respectively.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “would have had an undergraduate degree in computer science, electrical engineering, or computer engineering, or an equivalent degree, and at least two years of experience with network control systems, or have an equivalent amount of relevant work or research experience. Pet. 10. In our Decision on Institution, we declined to adopt the specific formulation set forth by Petitioner, and instead treated the cited references as being representative of the level of ordinary skill in the art. Dec. on Inst. 12 n.5 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). In its Response, Patent Owner does not propose a specific formulation regarding the level of skill in the art, and does not object to treating the cited references as being representative of the level of ordinary skill in the art. Petitioner also does not object in its Reply to treating the cited references as being representative of the level of skill in the art. On this record, we decline to adopt a specific formulation regarding the level of ordinary skill in the art, and instead find that the cited references are representative of the level of ordinary skill in the art. See Okajima, 261 F.3d at 1355 (the level of ordinary skill in the art may be evidenced by the cited references themselves). However, our analysis of the issues below would have been the same had we adopted Petitioner’s proposed formulation.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “In general, preambles are not construed as claim limitations. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). “[W]here a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation.” Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). We find, on this record, that the body of claim 1 defines a structurally complete invention. In particular, the body of claim 1 defines a system that includes a remote server, and a predetermined product that includes a first communication module, wherein the remote server is configured to perform certain recited actions and to interact with the first communication module in the recited manner. Furthermore, the preamble of claim 1 recites “[a] system for customizing a product according to a user’s preferences.” That is, claim 1 recites a system with the intended purpose of customizing a product. We determine on this record that the preamble of claim 1 is a non-limiting statement of intended use.” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Confirmation of Undisputed Claim Construction In our Decision on Institution, we expressly construed the claim term “predetermined product” by determining that this claim term “encompasses a type or class of product,” and rejecting “Patent Owner’s contention that this claim term is limited to a specific, unique product in customized form.” Dec. on Inst. 9. The parties do not dispute our prior construction of this claim term. Thus, on this record and to the extent necessary for our Final Written Decision, we see no reason to disturb our prior construction of “predetermined product,” and adopt the supporting reasoning from our Decision on Institution. See Dec. on Inst. 7–9. Accordingly, the claim term “predetermined product” encompasses a type or class of product, and is not limited to a specific, unique product in customized form. 3.” slip op. at 9

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

    “We determine that Patent Owner has not identified objective indicia of nonobviousness. For example, Patent Owner does not allege, much less persuasively show, that the cited mass customization literature demonstrates a long-felt but unresolved need that is satisfied by the claimed invention, or the failure of others to solve a problem addressed by the claimed invention. See PO Resp. 5–7. Patent Owner uses the cited mass customization literature to bolster its claim construction arguments, but does not offer any coherent or persuasive explanation of how this literature would constitute objective evidence that the claims of the ’090 patent are nonobvious. See id. at 4–7, 11–21. Patent Owner also has failed to establish any nexus between this alleged objective evidence of nonobviousness and the claims of the ’090 patent. Our reviewing court has held that objective evidence of nonobviousness must be “reasonably commensurate with the scope of the claims.” In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). Patent Owner does not sufficiently explain how the mass customization literature relates to the claimed invention, or to any problem addressed by the claimed invention. For example, Patent Owner does not persuasively explain how the challenged claims relate to the specific need that is allegedly identified in the mass customization literature, i.e., to “kee[p] the products affordable.” PO Resp. 4. Patent Owner does not cite sufficient persuasive evidence that the inventor of the ’090 patent was attempting to address the issue of cost, or that the claimed invention would result in less-costly product as compared to the prior art. See id. at 4–7. Accordingly, even if Patent Owner had identified a specific secondary consideration that is evidenced by the cited mass customization literature, this evidence would not be entitled to substantial weight in the obviousness analysis. Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (“For objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.”); In re Kao, 639 F.3d at 1068 (same). 3.” slip op. at 13

  Patent outcomesUS 8,788,090 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,788,090
• Unified Patents Inc. v. American Vehicular Sciences, LLCAll claims unpatentable
  PTAB · May 19, 2017 · IPR2016-00364 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 1, 8, 10, 12, 17–19, 26, 27, and 36 are unpatentable as obvious over Leising and Lau; the Karlow and Lau ground did not establish unpatentability.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Owner does not address the level of ordinary skill in its Patent Owner Response, but Mr. Nranian testifies that such a person “would have at least a Bachelor’s degree in electrical, electronic, mechanical, or automotive engineering, and at least three years of experience in the integration of airbag, safety, and vehicle occupant protection devices in automotive vehicles, or equivalent knowledge obtained through work experience in the relevant field.” Ex. 2021 ¶ 36. We do not discern a difference between these formulations as applied to the issues in dispute in this proceeding. For purposes of this Final Written Decision, and based on the parties’ proposed formulations and the complete record now before us, we adopt the following definition of one of ordinary skill in the art: a person having at least a Bachelor’s degree in electrical, electronic, mechanical, or automotive engineering, or equivalent coursework, and having several years of experience in the design of vehicle occupant protection systems in automotive vehicles, or equivalent knowledge obtained through work experience in the relevant field. The level of ordinary skill in the art further is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

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

    “The parties’ dispute does not require express construction of any claim term. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)). We address certain aspects of Patent Owner’s proposed constructions in our substantive discussion below.” slip op. at 10

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

    “of a combination of references). Contrary to Patent Owner’s arguments, Petitioner does not rely on either Leising or Lau individually for a teaching of a single airbag extending across two rows of seats. Instead, as discussed above, Petitioner’s proposed combination relies on disclosure in Lau of airbag protection of both front and back seat passengers (rather than on Lau’s use of two airbags to do so), as evidence that one of skill in the art would also have considered safety protection for rear seat occupants, and would have found it obvious to extend the side airbag of Leising in order to protect also passengers in the back seat. See, e.g., Pet. 26–27 (citing Ex. 1005 ¶ 58); see also Pet. Reply 9–10 (“Patent Owner’s contentions . . . are unavailing because they fail to properly consider the combined teachings of Leising and Lau, e.g., extending Leising’s side air bag to protect rear seat occupants, based on Lau’s teaching to use a single unit with one inflator to protect front and rear seat occupants”); Tr. 16:3–25, 47:11–15 (confirming Petitioner’s proposed combination). Further, Petitioner, relying on testimony from Dr. Prasad, describes how such a modification of Leising’s airbag could be accomplished (i.e., “by merely elongating the side curtain 41 and roof storage area of Leising”). See Pet. 27 (citing Ex. 1005 ¶ 58). Based on the evidence presented, we find that it would have been within the level of ordinary skill to extend the side airbag of Leising, and that one of ordinary skill in the art would have done so in order to protect passengers in the back seat.” slip op. at 20

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Further, Petitioner provides testimonial evidence that “Leising’s extended airbag would have provided the same protection for rear seat occupants as it provided for front seat occupants.” Pet. Reply 13 (citing Ex. 1021 ¶ 6). We credit Dr. Prasad’s testimony, and agree with Petitioner, that Patent Owner’s argument—that one of skill in the art would not have modified Leising as proposed by Petitioner because out of position occupants would have been injured—is unpersuasive because “all airbags hav[e] the potential to cause an unintended injury.” Pet. Reply 14; see also Ex. 1022, 21:21–22:2, 33:18–34:5 (Mr. Nranian on cross-examination acknowledging the same). Dr. Prasad testifies that a person of ordinary skill in the art “would have known how to appropriately mitigate [injury risk] through ordinary skill and routine testing” (Ex. 1021 ¶ 6; Pet. Reply 14) and that choosing an appropriate inflator was also within the level of ordinary skill (Ex. 1021 ¶ 9; Pet. Reply 16). Dr. Prasad further testifies that one of ordinary skill in the art also would have addressed any potential interference between a seat belt and Leising’s modified airbag “through routine testing and adjustments known in the art.” Ex. 1021 ¶ 10; Pet. Reply 17–18; see also Ex. 1022, 112:19–113:21 (Mr. Nranian confirming on cross-examination that it was within the skill level of a person of ordinary skill in the art to run tests to avoid seat belt interference). The lack of discussion regarding how to handle potential seatbelt interference in the ’093 patent itself also supports Petitioner’s assertion that it is within the level of ordinary skill in the art. See Pet. Reply 17.” slip op. at 26

  Patent outcomesUS 9,043,093 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,043,093
• Koito Manufacturing Co., Ltd / SL Corporation v. Adaptive Headlamp Technologies, Inc.All claims unpatentable
  PTAB · Mar 15, 2017 · IPR2016-01368 · APJ Scott C Moore · IPR · Final written decision

  Claims 3–26, 28–32, and 35 are unpatentable as obvious under the listed combinations of Kato and additional references.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “The parties’ formulations as to the level of ordinary skill in the art are similar to one another, and neither party identifies with specificity an error in the opposing party’s formulation. The parties also agree that none of the disputes in this case turn on differences between the parties’ respective formulations. Tr. 33:1–6, 67:20–68:1. On the record presented we hold that the cited prior art is representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves). Specifically, the references are consistent with the parties’ formulations and demonstrate the level of skill in the art. Our determinations regarding the patentability of the challenged claims would remain the same under either party’s proposed formulation.” slip op. at 8

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

    “usage, could encompass motorcycles. Tr. 41:12–23. Patent Owner further concedes that the ’034 patent does not contain an express lexicographic definition of the term “vehicle,” (Tr. 41:24–43:8), and instead argues that “the disclosure of the patent in the claims and the problem to be solved” make clear that the term “vehicle” excludes motorcycles (id. at 42:19–43:5). Patent Owner, however, does not sufficiently identify the portions of the specification that allegedly support its claim construction argument. See PO Resp. 6–7 (indicating that Patent Owner’s claim construction argument is based on “certain discussion throughout the specification of the ’034 patent, as noted throughout this Response”). Patent Owner cites to Paragraph 38 of the Katona Declaration (see PO Resp. 7), but this declaration testimony relates to the Kato reference and does not identify any portion of the ’034 patent that supports Patent Owner’s argument (see Ex. 2002 ¶ 38; Ex. 1007 ¶¶ 4–5). Moreover, we find that the “Claim Interpretation” section of the Katona Declaration is conclusory in nature because it does not identify any specific portion of the ’034 patent specification that supports Patent Owner’s argument. See Ex. 1002 ¶ 44. For the foregoing reasons, and based on the current record and our review of the specification of the ’034 patent, we are not persuaded that the intrinsic record contains a lexicographic definition or a disclaimer that would exclude motorcycles from the scope of the term “vehicle.” To the contrary, the specification makes clear that the term ”vehicle” is a broad term that is intended to encompass any type of vehicle. Accordingly, we determine that the term “vehicle,” as used in the specification and claims of the ’034 patent, encompasses motorcycles.” slip op. at 10

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “directed to different fields of endeavor, depends on its argument that the term “vehicle,” as used in the ’034 patent, excludes motorcycles. As discussed above, we reject this argument. In view of our determination that the ’034 patent’s use of the term “vehicle” does not exclude motorcycles, we are persuaded by Petitioner’s arguments (see Reply 7–8; Ex. 1037 ¶ 23) and find that Kato is directed to the same field of endeavor as the ’034 patent, i.e., automatic directional control systems for vehicle headlights. Compare Ex. 1001, 1:57–67, with Ex. 1007 ¶ 1. Even if the ’034 patent’s controller and Kato’s motorcycle controller were directed to different fields of endeavor, Kato’s controller would still be reasonably pertinent to the problem addressed by the ’034 patent. In particular, we find that Patent Owner is incorrect in its assertion that “[n]o crossover applicability exists [] between control devices for a motorcycle headlight and those of four-wheeled vehicles.” PO Resp. at 19. For example, Kato’s controller adjusts a headlight’s optical axis based upon changes to pitch angle or steering angle of a motorcycle. Ex. 1007 ¶ 11; see Ex. 1037 ¶ 33. The controller of the ’034 patent adjusts the aiming angle of vehicle headlights to account for operating conditions such as “steering angle” and “pitch.” Ex. 1001, 2:3–20. In view of the fact that the ’034 patent and Kato both disclose controllers that automatically adjust headlights of motorized vehicles according to steering angle and pitch, we are persuaded by Petitioner’s arguments (see Reply 8–13; Ex. 1037 ¶¶ 24–29) that Kato would “logically have commended itself” to the attention of an inventor considering the problem addressed by the ’034 patent, even if the problem addressed by the ’034 patent only related to four wheeled vehicles. See In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379–80 (Fed. Cir. 2007). On this record, we find that Kato qualifies as analogous art.” slip op. at 18

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

    “teaches away from the use of Takahashi’s thresholds, or that such thresholds would render Kato’s system unsuitable for its intended purpose. Kato’s stated “Object of the Invention” is “to provide a headlight optical axis control device that can stably ensure a beam irradiation range of a headlight even when pitch, bank, steering angle or the like change while driving a motorcycle.” Ex. 1007 ¶ 6. Kato does disclose an embodiment that is able to correct direction of a headlamp “immediately” (id. ¶ 8), but we do not find that the portions of Kato cited by Patent Owner “criticize, discredit, or otherwise discourage investigation” into the use of a threshold of the type taught by Takahashi. Galderma Labs. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013); see PO Resp. 28–29, Ex. 2002 ¶¶ 57–58. We also do not find that such thresholds would render Kato’s system unsuitable for its intended purpose. See PO Resp. 30–31; Ex. 2002 ¶¶ 57–58. Rather, we agree with Petitioner that a skilled artisan would have realized that Takahashi’s threshold values could have been set to minimize time delays while still realizing the advantages of Takahashi’s invention (i.e., avoiding unnecessary headlight adjustments due to short-term disturbances, such as those caused by a rough road surface). Reply 17–18; Ex. 1037 ¶¶ 34–39. Patent Owner also has failed to cite any persuasive evidence of improper hindsight. See PO Resp. 29, 33. We find on this record that combining Takahashi’s reference values with the Kato’s headlight optical axis control system would result in an obvious “combination of familiar elements according to known methods . . . [that] does no more than yield predictable results.” See KSR, 550 U.S. at 416. We also find on this record that a person of ordinary skill would have recognized that Takahashi’s thresholds could have been used to improve Kato’s motorcycle headlight controller in the same way they were used to improve Takahashi’s headlight controller. See id. at 417.” slip op. at 20

  Patent outcomesUS 7,241,034 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,241,034
• Koito Manufacturing Co., Ltd / SL Corporation v. Adaptive Headlamp Technologies, Inc.All claims unpatentable
  PTAB · Mar 15, 2017 · IPR2016-00079 · APJ Scott C Moore · IPR · Final written decision

  Claims 3–26, 28–32, and 35 are unpatentable under § 103(a) over the ten instituted combinations of prior art.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “The parties’ formulations as to the level of ordinary skill in the art are similar to one another, and neither party identifies with specificity an error in the opposing party’s formulation. The parties also agree that none of the disputes in this case turn on differences between the parties’ respective formulations. Tr. 33:1–6, 67:20–68:1. On the record presented we hold that the cited prior art is representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves). Specifically, the references are consistent with the parties’ formulations and demonstrate the level of skill in the art. Our determinations regarding the patentability of the challenged claims would remain the same under either party’s proposed formulation.” slip op. at 8

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

    “The specification of the ’034 patent uses the term “vehicle” in a broad sense. For example, the Background of the Invention section of the ’034 patent uses the term “vehicle” to encompass “land vehicles, and many other types of vehicles (such as boats and airplanes, for example).” Ex. 1001, 1:20–21. The specification also makes clear that the claims are not limited to the specific vehicle types described in the Detailed Description of the Preferred Embodiment. See, e.g., id. at 2:60–3:3 (“The illustrated headlight 11 is, of itself, conventional in the art and is intended to be representative of any device that can be supported on any type of vehicle for the purpose of illuminating any area.”) (emphasis added).” slip op. at 9

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Patent Owner’s first argument, that Kato and the ’034 patent are directed to different fields of endeavor, depends on its argument that the term “vehicle,” as used in the ’034 patent, excludes motorcycles. As discussed above, we reject this argument. In view of our determination that the ’034 patent’s use of the term “vehicle” does not exclude motorcycles, we are persuaded by Petitioner’s arguments (see Reply 7–8; Ex. 1037 ¶ 23) and find that Kato is directed to the same field of endeavor as the ’034 patent, i.e., automatic directional control systems for vehicle headlights. Compare Ex. 1001, 1:57–67, with Ex. 1007 ¶ 1. Even if the ’034 patent’s controller and Kato’s motorcycle controller were directed to different fields of endeavor, Kato’s controller would still be reasonably pertinent to the problem addressed by the ’034 patent. In particular, we find that Patent Owner is incorrect in its assertion that “[n]o crossover applicability exists [] between control devices for a motorcycle headlight and those of four-wheeled vehicles.” PO Resp. at 19. For example, Kato’s controller adjusts a headlight’s optical axis based upon changes to pitch angle or steering angle of a motorcycle. Ex. 1007 ¶ 11; see Ex. 1037 ¶ 33. The controller of the ’034 patent adjusts the aiming angle of vehicle headlights to account for operating conditions such as “steering angle” and “pitch.” Ex. 1001, 2:3–20. In view of the fact that the ’034 patent and Kato both disclose controllers that automatically adjust headlights of motorized vehicles according to steering angle and pitch, we are persuaded by Petitioner’s arguments (see Reply 8–13; Ex. 1037 ¶¶ 24–29) that Kato would “logically have commended itself” to the attention of an inventor considering the problem addressed by the ’034 patent, even if the problem addressed by the ’034 patent only related to four wheeled vehicles. See In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379–80 (Fed. Cir. 2007). On this record, we find that Kato qualifies as analogous art.” slip op. at 18

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

    “Takahashi’s thresholds operate to “prevent the illumination of the lamp [] from being corrected inadvertently when a sudden change in the posture of the vehicle occurs temporarily or due to the wrong operation of the lamp [] caused by external disturbances.” Ex. 1007 ¶ 6. We are not persuaded that Takahashi’s thresholds could not be used to prevent the direction of Kato’s motorcycle headlight from being corrected inadvertently in the event of a temporary change in vehicle posture or external disturbance. Mr. Katona, Patent Owner’s expert, identifies several differences between motorcycles and four-wheeled vehicles, but does not persuasively and credibly explain why these differences would have prevented the use of such thresholds to prevent Kato’s headlight from being adjusted inadvertently in the event of a sudden and transient disturbance. See Ex. 1002 ¶¶ 54–56. We find credible the testimony of Petitioner’s expert, Dr. Wilhelm, that a skilled artisan would have realized that Takahashi’s thresholds could be used to prevent a motorcycle headlight controller from making undesirable adjustments to the headlight. Ex. 1019 ¶¶ 61–62; Ex. 1037 ¶¶ 34–36. We also are not persuaded by Patent Owner’s argument that Kato teaches away from the use of Takahashi’s thresholds, or that such thresholds would render Kato’s system unsuitable for its intended purpose. Kato’s stated “Object of the Invention” is “to provide a headlight optical axis control device that can stably ensure a beam irradiation range of a headlight even when pitch, bank, steering angle or the like change while driving a motorcycle.” Ex. 1007 ¶ 6. Kato does disclose an embodiment that is able to correct direction of a headlamp “immediately” (id. ¶ 8), but we do not find that the portions of Kato cited by Patent Owner “criticize, discredit, or otherwise discourage investigation” into the use of a threshold of the type taught by Takahashi. Galderma Labs. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013); see PO Resp. 28–29, Ex. 2002 ¶¶ 57–58. We also do not find that such thresholds would render Kato’s system unsuitable for its intended purpose. See PO Resp. 30–31; Ex. 2002 ¶¶ 57–58. Rather, we agree with Petitioner that a skilled artisan would have realized that Takahashi’s threshold values could have been set to minimize time delays while still realizing the advantages of Takahashi’s invention (i.e., avoiding unnecessary headlight adjustments due to short-term disturbances, such as those caused by a rough road surface). Reply 17–18; Ex. 1037 ¶¶ 34–39. Patent Owner also has failed to cite any persuasive evidence of improper hindsight. See PO Resp. 29, 33. We find on this record that combining Takahashi’s reference values with the Kato’s headlight optical axis control system would result in an obvious “combination of familiar elements according to known methods . . . [that] does no more than yield predictable results.” See KSR, 550 U.S. at 416. We also find on this record that a person of ordinary skill would have recognized that Takahashi’s thresholds could have been used to improve Kato’s motorcycle headlight controller in the same way they were used to improve Takahashi’s headlight controller. See id. at 417.” slip op. at 20

  Patent outcomesUS 7,241,034 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,241,034

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.