- PTAB · Aug 4, 2023 · PGR2023-00016 · APJ Stephen E Belisle · PGR · Institution
The Board instituted PGR on claims 1–3, 5, 7–10, 12, 14–17, and 19 based on a reasonable likelihood that the claims are unpatentable across the petition’s grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324(c); 37 C.F.R. § 42.4(a) (2022). We may not institute a post-grant review “unless . . . it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). When instituting post-grant review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.208(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has established that it is more likely than not that at least one claim of the ’705 patent is unpatentable. Accordingly, we institute a post-grant review as to all challenged claims of the ’705 patent on all grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“pertinence of Bruning, in particular, or of any reference Patent Owner asserts is substantially similar to Evanicky, Lee, Doheny and Van Winkle or of the asserted combinations thereof, and did not issue a rejection based on their disclosures or combined teachings, and that this constitutes Examiner error. See Pet. 5–6, 10–11. Indeed, in the Final Written Decision in PGR2022-00009, the Board determined that Bruning anticipates independent claims 1, 8 and 15 and many other dependent claims of the parent ’341 patent, which claims are substantially similar to the challenged claims in this case involving the child ’705 patent. Ex. 1032, 52–68. Also, as discussed below in Section V, we determine that Petitioner has established that it is more likely than not that claims 1–3, 5, 7–10, 12, 14–17, and 19 of the ’705 patent are unpatentable. We also find the Examiner’s error here is further compounded by not having identified that the claims of the ’705 patent are not entitled to claim priority to any of the filing dates of any of its ancestor applications, and thus, not having searched for and considered a substantial pool of prior art. See supra Sections III.B, III.C. Accordingly, Becton, Dickinson factor (e) weighs against exercising discretion to deny institution under § 325(d).” slip op. at 37
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateInstituted
“Pet. 11–15), we determine that the ’215 provisional (and other Pre-AIA Applications) does not provide sufficient written description support to reasonably convey to the skilled artisan that, as of the filing date of the ’215 provisional, the inventors had possession of the limitation “wherein the switch is electrically connected between the DC voltage output and at least one of the first operating LED circuit or the at least one additional LED circuit,” as recited in claim 1. See Ariad Pharm., 598 F.3d at 1351. Accordingly, on this record, we are persuaded that the ’215 provisional lacks sufficient written description support for the inventions recited in claims 1–20 of the ’705 patent. Thus, on this record, claims 1–20 of the ’705 patent are not entitled to priority and, for purposes of institution, do not receive an effective filing date as early as that of the ’597 PCT (i.e., 2010) or any other Pre-AIA Application.” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“h) Conclusion At this stage of the proceeding and based on the record before us, we are persuaded that Petitioner’s cited evidence sufficiently supports Petitioner’s contention that independent claim 15 is unpatentable as anticipated by Bruning. Accordingly, at this stage of the proceeding, we are persuaded that Petitioner has shown that it is more likely than not that independent claim 15 is anticipated by Bruning.” slip op. at 74
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham · NautilusPatents in suitUS 11,297,705 - PTAB · Aug 3, 2023 · IPR2023-00495 · APJ Kristen L Droesch · IPR · Institution
The Board instituted inter partes review of claims 1–3 and 12–14 on all petitioned grounds: obviousness over Osterhout and over Mann ’526 with Vaissie.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We conclude Petitioner’s formulation of the level of ordinary skill in the art is sufficiently supported for the purpose of institution by the evidence of record. That supporting evidence includes Dr. LaViola’s testimony, which is based on his review of the documentary evidence of record, as well as his own experience in the fields of virtual reality and augmented reality including motion tracking. See Ex. 1003 ¶¶ 2–3 (Dr. LaViola’s review of the documentary evidence, and the bases for his opinions); id. ¶¶ 9–19 (Dr. LaViola’s experience with virtual reality, augmented reality, and motion tracking). Dr. LaViola’s testimony as to the level of ordinary skill in the art formulation (id. ¶ 21) must be viewed in that light, which Patent Owner’s argument overlooks. Further, Dr. LaViola’s review of the documentary evidence of record and his experience provide the facts that support his opinion, as set forth in the Board’s informative Jud decision.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); see also Leibel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004) (when the patent specification discloses a single embodiment, the claims of a patent will not be read constrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction). In contrast to Patent Owner’s proposed construction, independent claims 1 and 12 merely recite “in communication with” and do not limit the communication to a specific directionality. See Ex. 1001, 14:24–25, 15:12–14. For the foregoing reasons, we do not adopt Patent Owner’s proposed construction and instead construe “in communication with” according to its ordinary and customary meaning. Further, we determine that it is not necessary to expressly construe any other claim terms or phrases. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“For the purpose of this decision and based on Petitioner’s citations to Mann ’526, Vaissie, and Dr. LaViola’s testimony (Ex. 1003), we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to combine the teachings of Mann ’526 with Vaissie’s teachings of optical parameter measurements. See Pet. 56–59; KSR, 550 U.S. at 418. Petitioner contends that a person of ordinary skill in the art would have been motivated to combine Mann ’526 with the teachings of Vaissie because Vaissie explains that implementing eye tracking in headmounted devices can advantageously allow physically challenged people to interact with such devices and to realize the advantages of enhancing local images, correcting depth perception difficulties, and increasing resolution of visual displays. See Pet. 58–59 (citing Ex. 1003 ¶¶ 148–150; Ex. 1006, 24:66–25:31, Fig. 10; Ex. 1007, 1:40–53, 1:56–58). limitation. See Prelim. Resp. 19–27. Nonetheless, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. For the purpose of institution, Petitioner shows sufficiently that these limitations are satisfied by the combined teachings of Mann ’526 and Vaissie.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“For the purpose of this decision and based on Petitioner’s citations to Mann ’526, Vaissie, and Dr. LaViola’s testimony (Ex. 1003), we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to combine the teachings of Mann ’526 with Vaissie’s teachings of optical parameter measurements. See Pet. 56–59; KSR, 550 U.S. at 418. Petitioner contends that a person of ordinary skill in the art would have been motivated to combine Mann ’526 with the teachings of Vaissie because Vaissie explains that implementing eye tracking in headmounted devices can advantageously allow physically challenged people to interact with such devices and to realize the advantages of enhancing local images, correcting depth perception difficulties, and increasing resolution of visual displays. See Pet. 58–59 (citing Ex. 1003 ¶¶ 148–150; Ex. 1006, 24:66–25:31, Fig. 10; Ex. 1007, 1:40–53, 1:56–58). limitation. See Prelim. Resp. 19–27. Nonetheless, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. For the purpose of institution, Petitioner shows sufficiently that these limitations are satisfied by the combined teachings of Mann ’526 and Vaissie.” slip op. at 28
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,696,113 - PTAB · Aug 3, 2023 · IPR2023-00494 · APJ George R Hoskins · IPR · Institution
The Board instituted review of claims 1–6, 8, 11, 17, and 22 on the Mann ’895–Pemer obviousness ground; review of disclaimed claims 7, 9, 10, and 15 was not instituted.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have reviewed the preliminary record, and we conclude Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions as to at least claim 1. We therefore institute a review of all of these challenged claims.” slip op. at 9
- Adverse judgmentAdverse judgmentOther
“disclaimed claims.” 37 C.F.R. § 42.107(e). As a result of the statutory disclaimer, claims 7, 9, 10, and 15 are no longer regarded as claims challenged in the Petition. See Vectra, 162 F.3d at 1383 (“This court has interpreted the term ‘considered as part of the original patent’ in section 253 to mean that the patent is treated as though the disclaimed claims never existed.”) (citing Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996)); see also Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc., 933 F.3d 1367, 1372–75 (Fed. Cir. 2019) (disclaimer of claims during District Court patent infringement litigation “mooted any controversy” over the disclaimed claims, ending the Article III case or controversy requirement for District Court jurisdiction). In considering Federal Circuit precedent and our rules, we conclude we cannot institute a trial on claims that have been disclaimed, and, thus, no longer exist. Our conclusion is consistent with the statutory scope of inter partes review as laid out in 35 U.S.C. §§ 311(b) and 318(a) and is not at odds with SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018). See, e.g., SAS, 138 S. Ct. at 1357 (recognizing that “the claims challenged ‘in the petition’ will not always survive to the end of the case; some may drop out thanks to the patent owner’s actions”). Accordingly, we treat claims 7, 9, 10, and 15 as having never been part of the ’929 patent, such that Petitioner cannot seek inter partes review of those claims. Thus, we deny institution of review as to whether disclaimed claims 7, 9, 10, and 15 are unpatentable as having been obvious over the combination of Mann ’895 and Pemer, and over Jannard.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We conclude Petitioner’s POSITA formulation is sufficiently supported by the evidence of record for purposes of institution. That supporting evidence includes the testimony of Dr. LaViola, which is based on his review of the documentary evidence of record, as well as his own experience in the fields of virtual reality and augmented reality including motion tracking. See Ex. 1003 ¶¶ 2–3 (Dr. LaViola’s review of the documentary evidence, and the bases for his opinions); id. ¶¶ 9–19 (Dr. LaViola’s experience with virtual reality, augmented reality, and motion tracking). Dr. LaViola’s testimony as to the POSITA formulation (id. ¶ 21) must be viewed in that light, which Patent Owner’s argument overlooks. Further, Dr. LaViola’s review of the documentary evidence of record and his experience provide the facts that support his opinion, as set forth in the Board’s informative Jud decision. Petitioner’s POSITA formulation further is consistent with the ’929 patent (summarized in Section II.B above) and the prior art of record, namely Mann ’895 and Pemer (summarized in Sections III.B.4 and III.B.5 below). See Best Med., 46 F.4th at 1353 (stating that the types of problems encountered in the art, the prior art solutions to those problems, and the patent’s purpose, can all be considered when determining the appropriate level of skill in the art); Okajima, 261 F.3d at 1355 (stating that “the absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (citations omitted)); Xerox at 8 (“[W]e presume that the cited prior art references reflect the level of ordinary skill at the time of the invention.”) (precedential, citing Okajima, 261 F.3d at 1355).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the arguments and evidence presented at this stage of the proceeding, we determine no explicit construction of any claim term is needed for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Concerning the “eye sensor” limitation addressed in the Preliminary Response, the District Court adopted the “[p]lain and ordinary meaning,” without specifying what that meaning might be. Ex. 1015, 1.4 This was Patent Owner’s proposed construction, opposing Petitioner’s proposed construction of “the eye sensor making the inactive circuitry become active, in response to eye motion of a user.” Pet. 4–5; see Ex. 1008, 15–16; Ex. 1009, 13–15; Ex. 1010, 11–13. However, as noted above, Petitioner does not press for us to apply Petitioner’s District Court construction in this proceeding. See Pet. 3–5. Thus, the present record does not present any claim construction disputes for us to resolve in the context of considering Petitioner’s unpatentability contentions (particularly, obviousness over Mann ’895 and Pemer, discussed below). Further, we do not discern any need to construe the “eye sensor” limitation in order to decide whether to institute review as to those contentions.” slip op. at 14
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,010,929 - Microsoft Corporation v. Uniloc 2017 LLCAll claims unpatentablePTAB · Jul 28, 2023 · IPR2020-00023 · APJ Scott Raevsky · IPR · Remand
Claims 1–4, 6–14, and 16–21 are unpatentable as obvious, including over Apfel, Lillich, and Todd; claims 9 and 19 are also obvious over that combination with Pedrizetti.
RulingsRemand decision- RemandOther
“the Board misconstrued the claims to require . . . two separate acts in a certain order.” Id. at 5–6. Instead, the court found that “the claim cannot require that the steps be performed in the order written, but rather allows for the determining and comparing steps to be part of a single process.” Id. at 7. This is because “[a]ny construction that would narrow the determining and comparing steps to a certain order is not supported by either the claim language or the specification.” Id. Thus, the court reversed the Board’s “apparent construction.” Id. slip op. at 17
- Skill levelOther
“We apply the following assessment of the level of ordinary skill in the art: a person of ordinary skill in the art (“POSITA”) “would have had a Bachelor’s Degree in Electrical Engineering, Computer Science, or a related subject, and one or more years of experience working with configuring hardware and software components in electronic devices,” and “[l]ess work experience may be compensated by a higher level of education, such as a Master’s Degree, and vice versa.” Final Dec. 7–8.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“There are no claim construction issues on remand. We apply the Federal Circuit’s instruction that we must avoid “narrow[ing] the determining and comparing steps to a certain order.” Microsoft, slip. op. at 7.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We find Petitioner’s detailed rationale to combine, summarized above, persuasive and supported by the record evidence. In contrast, the Patent Owner Response sets forth a conclusory attorney argument against the combination. Namely, Patent Owner argues that the Petition fails to sufficiently articulate a motivation to combine for the following reason:” slip op. at 32
Patent outcomesUS 6,467,088 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,467,088 - PTAB · Jul 19, 2023 · IPR2023-00422 · APJ Scott Raevsky · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that claim 1 is anticipated by Foss.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering Petitioner’s arguments and evidence, and for the reasons set forth below, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’301 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that a POSITA [person of ordinary skill in the art] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with payment processing systems, credit card and debit card payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 12 (citing Ex. 1003 ¶¶ 159–161). We are persuaded, on the present record, that Petitioner’s proposal is generally consistent with the problems and solutions in the ’301 patent and prior art of record. We note, however, that the open-ended language “at least” expands the range of experience indefinitely with no upper bound. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill with the exception of the language “at least.”” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“In inter partes review, we construe a claim using the same claim construction standard that would be used to construe the claim 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). Petitioner does not propose any claim constructions. See Pet. 12. As no terms are in dispute, we determine that no terms require construction at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show anticipation under 35 U.S.C. § 102, each and every claim element, arranged as in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008). The prior art need not, however, use the same words as the claims.” slip op. at 5
Claim construction§ 102 anticipationcites KSR · GrahamPatents in suitUS 8,905,301 - PTAB · Jul 19, 2023 · IPR2023-00421 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–17 under all asserted grounds: anticipation by Gopinathan and obviousness over Gopinathan and Hirka.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering Petitioner’s arguments and evidence, and for the reasons set forth below, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’100 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a POSITA [person of ordinary skill in the art] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with payment processing systems, credit card and debit card payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 11–12 (citing Ex. 1003 ¶¶ 159–161). We are persuaded, on the present record, that Petitioner’s proposal is generally consistent with the problems and solutions in the ’100 patent and prior art of record. We note, however, that the open-ended language “at least” expands the range of experience indefinitely with no upper bound. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill with the exception of the language “at least.”” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner does not propose any claim constructions. See Pet. 11. As no terms are in dispute, we determine that no terms require construction at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show anticipation under 35 U.S.C. § 102, each and every claim element, arranged as in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008). The prior art need not, however, use the same words as the claims. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). The anticipation inquiry takes into account the literal teachings of the prior art reference and inferences the ordinarily skilled person would draw from it. Eli Lilly and Co. v. Los Angeles Biomedical Res. Inst. at Harbor-UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 5
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,837,100 - Apple Inc. v. Speir Technologies Ltd.InstitutedPTAB · Jun 9, 2023 · IPR2023-00151 · APJ Sheila F Mcshane · IPR · Institution
Instituted review of claims 1–34 on all petition grounds; the Board found a reasonable likelihood that Apple would prevail on the Rofheart, Raphaeli, and Godfrey obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We have considered Patent Owner’s argument in light of the Fintiv factors, and we decline to exercise our discretion to deny the Petition. Of relevance is that the related district court litigation has been stayed. Accordingly, because a stay “allays concerns about inefficiency and duplication of efforts,” factors 1 and 2 strongly weigh against the exercise of discretion. Fintiv at 6; see also Snap, Inc. v. SRK Technology, LLC, Case No. IPR2020-00820, Paper 15, 9–11 (PTAB Oct. 21, 2020 (precedential as to § II.A)). As to factor 3, fact discovery had only commenced, but is now stayed, and briefing on a motion to dismiss and claim construction had been submitted, but no orders have been issued by the district court. Pet. 80; Prelim. Resp. iv, vii; Pet. Prelim. Resp. Reply 2. As such, we agree with Petitioner that the litigation is in its early stages, and this weighs against the exercise of our discretion. Pet. 80; Pet. Prelim. Resp. Reply 2.” slip op. at 8
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art: would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and 2–3 years of systems/networks, including ranging/positioning systems or the equivalent. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 4–5 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not provide any proposed qualifications for a person of ordinary skill in the art. See generally Prelim. Resp. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’779 patent and the prior art before us. 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 neededOther
“Petitioner refers to claim construction positions taken for the term “known device latency” in the district court litigation, but contends that neither parties’ interpretation has any bearing on this proceeding. Pet. 2–3. Petitioner asserts that no express constructions are required in this proceeding. Id. at 2. Patent Owner does not present any proposed claim constructions. See generally Prelim. Resp. We determine that we need not expressly construe any claim terms at this juncture. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this juncture, we do not find Patent Owner’s arguments persuasive. Petitioner explains that a person of ordinary skill in the art “would have contemplated conducting multiple of Rofheart’s ranging message exchanges, determining corresponding delays, and averaging those delays as taught by Raphaeli” for several reasons, including that Raphaeli discloses that its averaging method would enhance and increase the precision of the round trip delay determination. Pet. 54–57. At this juncture, we find that Petition, along with the supporting testimony of Dr. Ding (Ex. 1003 ¶¶ 255–263) provide adequate explanation of the combination of the prior art as well as why a person of ordinary skill in the art would be motivated to make that combination. Additionally, in Petitioner’s Rofheart-Raphaeli combination, there are multiple determinations of propagation delays, and even with averaging, the range would still be “based upon” “a plurality of determined propagation delays,” as claimed. As to Patent Owner’s allegation that Rolfheart requires no additional improvement in its resolution, even if Rofheart has good performance under certain operational conditions, Raphaeli offers additional improvement.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,110,779 - Samsung Electronics Co., Ltd. v. Lynk Labs, Inc.All claims unpatentablePTAB · Jun 7, 2023 · IPR2022-00100 · APJ Scott Raevsky · IPR · Final written decision
Claims 8–10 and 15–18 are unpatentable as obvious over Piepgras, Michael, and Butler, with Schultz or Naskali added for claims 16 and 17.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner contends that there is “no meaningful dispute over [the definition of] a POSITA.” Reply 1. We agree. However, we adopt Patent Owner’s definition of the level of skill because we are persuaded that it is more consistent with the problems and solutions in the ’583 patent. In particular, Patent Owner’s definition requires experience with LED devices, whereas Petitioner’s definition makes LED experience optional (“experience with LED devices and/or related circuit design”). We note that the outcome of this decision would not have changed had we adopted Petitioner’s definition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties propose no constructions. Pet. 7; PO Resp 8–9; Reply 1. At institution, we discussed the meaning of the term “array.” Dec. 16 n.12. Patent Owner traverses this construction and submits that “no special construction for ‘LED array’ is needed,” as it does not dispute any limitation reciting an “LED circuit array.” See PO Resp. 9. We agree. Based on our review of the record, no terms need to be construed. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“fails to identify any deficiencies or drawbacks of Piepgras’s two-button remote control because the law does not require Petitioner to identify problems with a reference in order to establish obviousness. See PO Resp. 28–30; In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.”). What the Petition must demonstrate is that there was some reason why one of ordinary skill in the art would have sought to combine the elements of the prior art in the manner proposed. KSR, 550 U.S. at 418. The Petition provides multiple, persuasive reasons (discussed above) as to why one of ordinary skill in the art would have sought to use a touch screen, as disclosed in Butler, to permit user control of a remote control, as disclosed in Piepgras.” slip op. at 21
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Petitioner argues, and we agree, that the Piepgras-Michael-Butler combination discloses that the portable telecommunications device can detect a human touch. Pet. 43. Further, Dr. Baker testifies, and we agree, that a POSITA would have understood that the modified device “would use an LED touch display and thus when touched, the LED(s) of the display would change (e.g., turning on and/or changing interface content).” Ex. 1002 ¶ 141. We credit this testimony by Dr. Baker because it is well-supported by evidence. See, e.g., Exs. 1009 (Hack), 1022 (Gillespie); Pet. 43 (citing same).13 Patent Owner does not offer any contrary evidence that would undermine Dr. Baker’s persuasive testimony that a POSITA would have understood that the modified device would use an LED touch display and that when touched, the LED(s) of the display would change (and thus provide light). See Ex. 2001 ¶¶ 105–16 (attacking the sufficiency of Petitioner’s evidence but not disputing Dr. Baker’s core assertion regarding the understanding of a POSITA). It is somewhat ironic that Patent Owner asserts that Dr. Baker’s testimony is “conclusory and not tied to supporting evidence.” Sur-reply 26 (citing Ex. 1002 ¶ 141). In reality, Petitioner supplies ample supporting evidence (e.g., Hack and Gillespie), but Patent Owner denies that we can consider it. See, e.g., Pet. 43 (citing, e.g., Exs. 1009, 1022); PO Resp. 44. Petitioner’s reliance on evidence to show the understanding of a skilled artisan is appropriate because “the obviousness ‘analysis requires an assessment of the . . . background knowledge possessed by a person having ordinary skill in the art.’” Koninklijke Philips, 948 F.3d at 1337. Petitioner does not rely upon references such as Hack and Gillespie to supply a missing claim limitation.14 Rather, Petitioner relies on Butler’s disclosure of a touch screen for this limitation and points to Hack and Gillespie to show that prior art touch screens often included LED displays and that one of ordinary skill in the art would have understood that a touch screen would have provided 13 As we explain below, we need not rely on Swartz. 14 For this reason, Petitioner need not have included Swartz, Hack, or Gillespie in its ground listing, and Petitioner need not show a motivation to combine Swartz, Hack, or Gillespie with Piepgras, Michael, and Butler. light based upon detection of human touch. Reply 20; see also Pet. 43. Arendi is therefore inapposite because Petitioner’s detailed explanations and supporting evidence are the opposite of relying on “common sense” as a “wholesale substitute for reasoned analysis and evidentiary support.” See 832 F.3d at 1362.” slip op. at 33
Patent outcomesUS 10,750,583 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,750,583 - Samsung Electronics Co. Ltd. v. Lynk Labs, Inc.All claims unpatentablePTAB · Jun 2, 2023 · IPR2022-00052 · APJ Jon B Tornquist · IPR · Final written decision
Claims 2–5, 7, 11–13, 21, and 23 are unpatentable: claims 2–5, 7, 13, 21, and 23 as obvious over Birrell and Schultz; claims 11–12 as obvious over Piepgras and Kasegi.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“the same claim construction standard that would be used to construe the claim[s] in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under that standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have had to a person of ordinary skill at the time of the invention in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party contends that any terms of the ’251 patent require express construction, with each party relying on the plain and ordinary meaning of each claim term. PO Resp. 13–14; Pet. Reply 1. Upon review of the parties’ arguments and evidence, we agree that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“10A–C, the reflective coating is folded and shaped to form non-planar reflectors. Ex. 1046 ¶ 49; PO Resp. 15–16; Sur-Reply 4–5. We agree with Petitioner, however, that the reflector embodiments depicted in Figures 10A–C are just one potential way of utilizing a reflective layer in Schultz, and one of ordinary skill in the art would have understood that use of an unfolded reflective layer is contemplated, and would be beneficial in, the planar embodiments of Schultz, such as the planar embodiment depicted in Figure 1. Pet. Reply 3–4, 7; Ex. 1046 ¶ 49 (“By using reflective surfaced materials, such as multilayered optical film, for the insulative layer 34 in the embodiments described herein, the light reflected from the attached LED dies has a higher probability of being reflected toward” a focusing element) (emphasis added).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“to use a reflective coating or substrate in Birrell because “the use of a reflective substrate to provide mechanical support for an array of LEDs was well known in the art.” Pet. 14. Petitioner further contends that Schultz expressly discloses that reflective coatings are beneficial as they prevent light from an LED die being “unutilized due to absorption or scattering of the light.” Id. at 14–15 (quoting Ex. 1046 ¶ 48); Ex. 1046 ¶ 49 (Schultz explaining that “reflective surfaced materials” provide a “higher probability” that light reflected from the LEDs will reach the focusing element). Petitioner further contends that one of ordinary skill in the art would have used a reflective substrate in Birrell in view of Birrell’s expressed desire for a uniform optical reflection to provide a uniform light source. Pet. 15 (citing Ex. 1002 ¶ 104; Ex. 1018, 6:6–18; Ex. 1022 ¶ 81; Ex. 1023, 16:16–45). Petitioner contends one of ordinary skill in the art would have had a reasonable expectation of success in using a reflective substrate in Birrell because this would have entailed “the use of known components and mounting techniques to produce the predictable result of an LED circuit that benefited from known properties of reflective base structures, as suggested by Schultz and the knowledge of a [person of ordinary skill in the art].” Id. at 16.” slip op. at 16
Patent outcomesUS 10,492,251 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,492,251 - Samsung Electronics Co. Ltd. v. Lynk Labs, Inc.All claims unpatentablePTAB · Jun 2, 2023 · IPR2022-00051 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1 and 6 are unpatentable as obvious over Birrell and Schultz; the Board did not reach the Piepgras or Harbers and Schultz grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art as of the priority date of the ’251 patent “would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and two or more years of experience with LED devices and/or related circuit design, or a related field.” Pet. 8–9 (citing Ex. 1002 ¶¶ 20–24). For purposes of this proceeding, “Patent Owner does not dispute Petitioner’s definition of [a person of ordinary skill in the art].” PO Resp. 14. Upon review of the parties’ arguments, the prior art of record, and the ’251 patent, we adopt Petitioner’s undisputed level of ordinary skill in the art for purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“the same claim construction standard that would be used to construe the claim[s] in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under that standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have had to a person of ordinary skill at the time of the invention in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party contends that any terms of the ’251 patent require express construction, with each party relying on the plain and ordinary meaning of each claim term. PO Resp. 13–14; Pet. Reply 1. Upon review of the parties’ arguments and evidence, we agree that no claim terms require express construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“In view of the foregoing, we determine that Birrell and Schultz, when viewed in light of the knowledge of one of ordinary skill in the art, teach or suggest mounting “at least one LED circuit” “on a reflective substrate,” as recited in claim 1 of the ’251 patent.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“sought to use a reflective coating in Birrell because “the use of a reflective substrate to provide mechanical support for an array of LEDs was well known in the art.” Pet. 29. Petitioner further contends that Schultz expressly discloses that reflective coatings are beneficial as they prevent light from an LED die being “unutilized due to absorption or scattering of the light.” Id. at 30 (quoting Ex. 1046 ¶ 48); Ex. 1046 ¶ 49 (Schultz explaining that “reflective surfaced materials” provide a “higher probability” that light reflected from the LEDs will reach the focusing element). Petitioner further contends that one of ordinary skill in the art would have used a reflective substrate in Birrell in view of Birrell’s expressed desire for a uniform optical reflection to provide a uniform light source. Pet. 30 (citing Ex. 1002 ¶ 104; Ex. 1018, 6:6–18; Ex. 1022 ¶ 81; Ex. 1023, 16:16–45). Petitioner contends that one of ordinary skill in the art would have had a reasonable expectation of success in using a reflective substrate in Birrell because this would have entailed “the use of known components and mounting techniques to produce the predictable result of an LED circuit that benefited from properties of reflective base structures, as suggested by Schultz and the knowledge of a [person of ordinary skill in the art].” Id. at 31.” slip op. at 14
Patent outcomesUS 10,492,251 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,492,251
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.