• Solaris Oilfield Site Services Operating, LLC / Solaris Oilfield Site Services Personnel, LLC v. Masaba, Inc.All claims unpatentable
  PTAB · Jan 26, 2026 · IPR2024-01179 · APJ Carl M Defranco · IPR · Final written decision

  Claims 1–25 are unpatentable under § 103 over the asserted combinations of Waldner, Dynatek, and additional references; the Board cancelled all challenged claims.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Also, to the extent Masaba relies on extrinsic expert testimony, we note that Masaba’s expert cites absolutely no support for his understanding of the claims, much less explains why we should adopt his understanding over the plain and ordinary meaning of “conveying aggregate” and “moving aggregate.” See Ex. 2004 ¶ 34. Absent supporting citations, such extrinsic testimony is entitled to little, if any, weight. As such, we reject the notion that Waldner’s discharge chute member 242 is not a conveyor “for conveying aggregate” or “for moving aggregate,” as required by claim elements 1[h] and 1[i].” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We disagree that Dr. Durham does not possess the necessary level of skill in the art to qualify as an expert in this case. Looking at the specification of the ’689 patent and the prior art of record, we think Masaba sets the bar too high. We acknowledge that one of ordinary skill in the art should have some education and/or experience in the mechanical art of conveying aggregate materials, but we do not think opining on the ’689 patent and asserted prior art necessarily requires that person to have the amount of education and experience that Masaba advocates. The ’689 patent relates generally to an “aggregate transferring system for receiving aggregate from a vehicle and elevating the aggregate to a higher vertical level for deposit into, for example, a silo.” Ex. 1001, 1:15– 18. And, as described in the ’689 patent and discussed later, the transferring system is an assembly of known types of conveyors, such as a belly-dump truck conveyor, a bucket elevator, and an articulated belt conveyor, for transferring the aggregate horizontally and vertically from a belly-dump truck to the discharge point, such as a silo. Without doubt, Dr. Durham has enough education and experience to reliably opine on the combination of known parts.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction needed

    “We reject this argument for several reasons. First, nowhere does the plain language of the claims specify how the aggregate is conveyed or moved from the conveyor extension assembly’s inlet to its outlet, be it passively by means of gravity or actively by means of a conveyor belt. Instead, the claims simply use those verbs according to their plain and ordinary meaning, which is “to transfer or deliver” or “to cause to go or pass” from one place to another. See Ex. 3001, 253 (defining “convey”), 760 (defining “move”).10 Second, the specification of the ’689 patent similarly uses these terms in a plain and ordinary sense, without ever attributing to them some sort of special meaning. See, e.g., Ex. 1001, 4:9–12 (“The apparatus 10 is suitable for performing the transfer of aggregate from 10 We reference the original pagination of the dictionary in which these definitions appear. one location to another, such as, for example, from a vehicle carrying the aggregate to a silo 1 for storing the aggregate.”). The ’689 patent specification also makes clear that active conveyance of the aggregate is an option and not a requirement of the claimed invention, stating that the conveyor extension assembly “may further include a conveyor belt 150.” Ex. 1001, 10:60–66 (emphasis added). Limiting claim elements 1[h] and 1[i] to a device “for actively conveying” or “for actively moving aggregate” would improperly import limitations from the specification into the claims. Thus, based on the intrinsic evidence, we determine that claim elements 1h and 1k are properly construed to encompass passive and/or active movement of the aggregate via the conveyor extension assembly.” slip op. at 20

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached

    “Owner asserts” that two claim terms—“unloader structure” and “trailer structure”—should be construed as means-plus-function limitations under 35 U.S.C. § 112(f), Solaris submits an express construction detailing the corresponding structure in the specification for performing the recited function of the claimed unloader and trailer structures. See id. at 24–25. Only in disputing Solaris’s Ground 3 does Masaba advocate that the claim term “trailer structure” should be construed under § 112(f), and then only in conjunction with dependent claims 3 and 21. See PO Resp. 58. As such, we address Masaba’s proposed construction in our analysis of Ground 3. We now turn to Solaris’s grounds of unpatentability.” slip op. at 12

  Patent outcomesUS 11,780,689 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 11,780,689
• Vizio, Inc. / LG Electronics, Inc. et al. v. Multimedia Technologies Pte. Ltd.All claims unpatentable
  PTAB · Nov 19, 2025 · IPR2025-00300 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–12 are unpatentable as obvious over either of two combinations: Kim, TechnoBuffalo, MissingRemote, Hunt, and Hunleth; or Kim, Ma, Hunt, and Hunleth.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “An expert witness must be qualified as an expert by knowledge, skill, experience, training, or education to testify in the form of an opinion. Fed. R. Evid. 702. We deem Dr. Houh to have the requisite qualifications to provide opinion testimony, including obtaining “a Ph.D. in Electrical Engineering and Computer Science from MIT, where his research focused on building high-speed networks and developing applications for remote video capture, processing, and display—technologies central to the ’384 Patent.” Pet. Reply 29 (citing Ex. 1003 ¶¶ 7, 10–13). The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). Dr. Houh’s industry experience establishes that he at least possesses ordinary skill in the art, and we do not disqualify his testimony. See Ex. 1003 ¶¶ 7, 10–13. We consider the factors raised by the parties in weighing his testimony with other evidence provided, including the facts and data on which it is based, in reaching our determinations here.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “A person of ordinary skill in the art (“POSITA”) in August of 2012 would have been knowledgeable and familiar with [user interfaces] in consumer products that are pertinent to the ’384 Patent. A POSITA would have had a bachelor’s degree in Electrical, Software, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television and/or digital video systems, human-computer interaction, or related technologies. Lack of professional experience can be remedied by additional education, and vice versa. Pet. 15 (citing Ex. 1003 ¶ 21). Patent Owner agreed with and adopted this definition. PO Resp. 18; Ex. 2002 ¶ 40. The definition proposed by Petitioner is consistent with the problems and solutions in the ’384 patent and prior art of record and is supported by expert testimony. We adopt this definition.” slip op. at 13

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

    “As neither the claim language nor the specification provides the necessary support for a construction requiring exclusion of specific information from either view, we decline to adopt such a construction. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003) (claim constructions that exclude a particular element must find support either in the words of the claim or through “express disclaimer or independent lexicography in the written description that would justify adding that negative limitation.”). As reviewed above, the claim language and specification, while describing different things that would be present in elements could not be common to both views. To the extent Patent Owner’s proposed construction specifies elements to be excluded, we find no support for these exclusions, and in fact, find opposite language in the specification of the ’384 patent: while Patent Owner proposes that a detail view must not include “information that is associated with a series,” the specification describes a detail view as provided in the case where “a series with only a single episode” has been selected. Ex. 1001, 44:64–65. This is consistent with the possibility in the claims that a detail view may relate to “a single show.” Ex. 1001, 56:66, 57:36, 58:51. As discussed, the claims recite that a detail view is provided “if [a] selection . . . is for one of a movie or single show” and that the detail view “presents information about a selected item of the VOD content” and a that a digest view is provided “if the selection in the collection view is for a series” and that digest view “provides a listing of two or more episodes associated with a series.” See, e.g., Ex. 1001, 57:23–27, 57:31–37. Thus, by the language of the claims themselves, the provision of “either a detail view or a digest view” relates to the received third selection and is based on what that selection was. The “either . . . or” in the claim thus relates directly to the third selection and not to the resulting views. This is consistent with Dr. Surati’s testimony. See Ex. 2002 ¶ 67 (The claims “present[] the third selection as a binary choice: either the third selection is a series (in which case the digest view is presented), or the third selection is a movie or single show (in which case the detail view is presented).” While Patent Owner insists that the language and logic of the claim “excludes providing a view that can be both a detail view and a digest view,” (PO Resp. 21) we determine that this proposed negative limitation finds no support through the Therefore, we decline to adopt the proposed claim construction that further limits the plain language of the claims. Having rejected the proposed limitations on the plain language of the claims, we find that no further construction of the claim language is required in order to address the dispute before us. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 25

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

    “Patent Owner does not dispute Petitioner’s assertions regarding the combination of Kim, TechnoBuffalo, MissingRemote, Hunt, and Hunleth, including Petitioner’s assertion that one of ordinary skill in the art would have been motivated to make this combination and would have had a reasonable expectation of success in doing so. We determine that Petitioner has sufficiently shown one of ordinary skill in the art would have combined and used the details regarding a content provider user interface provided in TechnoBuffalo, MissingRemote, Hunt, to provide details relating to the user interfaces provided by a CP provider on an intelligent television, such as that of Kim. See Ex. 1003 ¶¶ 104–106, 109–110, 112. We additionally determine that Petitioner has shown a reasonable likelihood that it will prevail in showing that one of ordinary skill in the art would have been motivated to make this combination, and would have had a reasonable expectation of success in doing so. See id. ¶¶ 113– 119.” slip op. at 38

  Patent outcomesUS 9,578,384 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Markman · KSR · Graham
  Patents in suitUS 9,578,384
• Vizio, Inc. v. Multimedia Technologies Pte. Ltd.All claims unpatentable
  PTAB · Nov 19, 2025 · IPR2024-00723 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–12 are unpatentable as obvious under §103 over either Kim, TechnoBuffalo, MissingRemote, Hunt, and Hunleth, or Kim, Ma, Hunt, and Hunleth.

  RulingsFinal written decision

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

    “As neither the claim language nor the specification provides the necessary support for a construction requiring exclusion of specific information from either view, we decline to adopt such a construction. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003) (claim constructions that exclude a particular element must find support either in the words of the claim or through “express disclaimer or independent lexicography in the written description that would justify adding that negative limitation.”). As reviewed above, the claim language and specification, while describing different things that would be present in elements could not be common to both views. To the extent Patent Owner’s proposed construction specifies elements to be excluded, we find no support for these exclusions, and in fact, find opposite language in the specification of the ’384 patent: while Patent Owner proposes that a detail view must not include “information that is associated with a series,” the specification describes a detail view as provided in the case where “a series with only a single episode” has been selected. Ex. 1001, 44:64–65. This is consistent with the possibility in the claims that a detail view may relate to “a single show.” Ex. 1001, 56:66, 57:36, 58:51. As discussed, the claims recite that a detail view is provided “if [a] selection . . . is for one of a movie or single show” and that the detail view “presents information about a selected item of the VOD content” and a that a digest view is provided “if the selection in the collection view is for a series” and that digest view “provides a listing of two or more episodes associated with a series.” See, e.g., Ex. 1001, 57:23–27, 57:31–37. Thus, by the language of the claims themselves, the provision of “either a detail view or a digest view” relates to the received third selection and is based on what that selection was. The “either . . . or” in the claim thus relates directly to the third selection and not to the resulting views. This is consistent with Dr. Surati’s testimony. See Ex. 2002 ¶ 67 (The claims “present[] the third selection as a binary choice: either the third selection is a series (in which case the digest view is presented), or the third selection is a movie or single show (in which case the detail view is presented).” While Patent Owner insists that the language and logic of the claim “excludes providing a view that can be both a detail view and a digest view,” (PO Resp. 21) we determine that this proposed negative limitation finds no support through the Therefore, we decline to adopt the proposed claim construction that further limits the plain language of the claims. Having rejected the proposed limitations on the plain language of the claims, we find that no further construction of the claim language is required in order to address the dispute before us. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 25

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

    “Patent Owner does not dispute Petitioner’s assertions regarding the combination of Kim, TechnoBuffalo, MissingRemote, Hunt, and Hunleth, including Petitioner’s assertion that one of ordinary skill in the art would have been motivated to make this combination and would have had a reasonable expectation of success in doing so. We determine that Petitioner has sufficiently shown one of ordinary skill in the art would have combined and used the details regarding a content provider user interface provided in TechnoBuffalo, MissingRemote, Hunt, to provide details relating to the user interfaces provided by a CP provider on an intelligent television, such as that of Kim. See Ex. 1003 ¶¶ 104–106, 109–110, 112. We additionally determine that Petitioner has shown a reasonable likelihood that it will prevail in showing that one of ordinary skill in the art would have been motivated to make this combination, and would have had a reasonable expectation of success in doing so. See id. ¶¶ 113– 119.” slip op. at 38

  • Strike new argumentNew argument consideredDecided for petitioner

    “Our rules provide that a petitioner must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a). Our rules also state that “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response.” Id. § 42.23(b). “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” PTAB Consolidated Trial Practice Guide (Nov. 2019)15 (“CTPG”), 74. A petitioner “may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” Id. at 73. “Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed” slip op. at 49

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

    “We find that Petitioner has sufficiently shown that each of the TechnoBuffalo 1:09 view and the MissingRemote 1:54 view teaches or suggests the presentation of “information about a set of the VOD content that are associated with a series,” as recited. Petitioner sufficiently shows the TechnoBuffalo 1:09 view is a digest view as it presents the “year, rating, number of episodes . . . , [and] episode lengths” for the displayed series. See Pet. 42 (citing Ex. 1003 ¶ 165). Similarly, Petitioner sufficiently shows that MissingRemote 1:54 view presents episode titles about episodes in the displayed season. See id. at 44 (citing Ex. 1003 ¶ 171). Petitioner argues alternatively that each of these would have been presented upon selection of a series in its proposed combination. Pet. 42–43, 44. We determine, in both cases, that presenting information regarding multiple individual episodes to be a sufficient showing that each presents “information about a set of the 13 We note that, applying Patent Owner’s requested claim construction for “providing either a detail view . . . or a digest view . . .” in full would lead to the same result with respect to, for example, the TechnoBuffalo 1:09 view and the Missing Remote 1:54 view. Each of these teach “a view of information about a set of the VOD content that are associated with a series without information only about a single episode” (as they contain information regarding multiple episodes, see supra footnote 10 and PO Surreply 6) but not “a view of information about a single episode without information that is associated with a series.” Additionally, Petitioner persuasively argues that the prior art demonstrates that “a POSITA would have avoided using UI designs for a TV series to display a single movie, and vice versa. Pet. 49–50 (citing Ex. 1003 ¶¶ 183–184) digest view. Additionally, Petitioner sufficiently shows the presentation of a screen including information about a movie if a movie has been selected from a collection view, and information about a set of content associated with a series if a series was selected, as per the recitations of limitations 1.6 and 1.7 of claim 1. TechnoBuffalo and MissingRemote teach digest view screens relating to a series selection, Hunt and Hunleth teach information screens responsive to a movie or single show selection, and the combination and cited testimony support the provision of the appropriate screen in response to the user’s selection from a collection view, as detailed above with respect to Petitioner’s allegations.” slip op. at 44

  Patent outcomesUS 9,578,384 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Markman · KSR · Graham
  Patents in suitUS 9,578,384
• Tesla, Inc. v. Iqar Inc.All claims unpatentable
  PTAB · Sep 18, 2025 · IPR2024-00630 · APJ Sean P O’Hanlon · IPR · Final written decision

  Claims 1–16 are unpatentable as anticipated by Koebler and obvious over Koebler alone and in combination with other references.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995) (citing 35 U.S.C. § 120). Section 112 requires, inter alia, that the specification contain a written description of the claimed invention. 35 U.S.C. § 112(a). In determining whether the written description requirement is met, we consider “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). This analysis requires “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. Thus, “the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. For example, the analysis must consider “the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, [and] the predictability of the aspect at issue.” Id. (alteration in original) (quoting Capon v. Eshhar, 418 F.3d 1349, 1359 (Fed. Cir. 2005)). “While a prior application need not contain precisely the same words as are found in the asserted claims, the prior application must indicate to a person skilled in the art that the inventor was ‘in possession’ of the invention as later claimed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (citations omitted); see also Purdue Pharma LP v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (“In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.”). However, “it is the specification itself that must demonstrate possession. And while the description requirement does not demand any particular form of disclosure . . . , a description that merely renders the invention obvious does not satisfy the requirement.” Ariad, 598 F.3d at 1352 (citations omitted); see also Lockwood v. Am. Airlines, 107 F.3d 1565, 1572 (Fed. Cir. 1997) (“While the meaning of terms, phrases, or diagrams in a disclosure is to be explained or interpreted from the vantage point of one skilled in the art, all the limitations must appear in the specification. The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.”).” slip op. at 7

  • Skill levelSkill level board ownDecided for petitioner

    “The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quoting Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)). “The patent’s purpose can also be informative.” Id.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Initially, we note that, although Petitioner presents a definition for “traction” in its Reply (see Pet. Reply 10), Dr. Morellas agreed with Patent Owner’s proposed interpretation during his deposition: Q. What would a person having ordinary skill in the art understand the word “traction” to mean? A. It would mean the grip that the -- that the tire has with the road. Q. So when the tire is gripping the road, the vehicle will have traction; correct? A. Correct. Q. But if the wheels are spinning freely and not gripping the road, the vehicle has no traction; correct? A.· Correct. Ex. 2031, 36:8–17. Accordingly, we adopt Patent Owner’s interpretation of “traction” to be a measure “of the friction between the vehicle’s drive wheels and the road surface” such that “a vehicle’s wheels have ‘traction’ when wheel rotation acts to propel the vehicle along the roadway” and “[t]he vehicle’s wheels lose ‘traction’ when they spin freely relative to the road and thus are no longer acting to propel the vehicle along the roadway.” See PO Resp. 27; see also Tr. 18:4–5 (Petitioner’s counsel stating that “the ultimate disposition doesn’t matter which definition [of ‘traction’ the Board] adopt[s]”).” slip op. at 24

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

    “2. Anticipation “Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every limitation is found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). A reference inherently discloses an element of a claim “if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citing Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, 593 F.3d at 1332 (quoting Cont’l Can, 948 F.2d at 1269).” slip op. at 28

  Patent outcomesUS 10,850,616 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 10,850,616
• Innoscience (Zhuhai) Technology Company, Ltd. / Innoscience America, Inc. v. Efficient Power Conversion CorporationAll claims unpatentable
  PTAB · Mar 25, 2025 · IPR2023-01384 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 1–7 are unpatentable as obvious over Yoshida and Saxler; the Board did not reach the alternative grounds.

  RulingsFinal written decision

  • Skill levelOther

    “In light of the record before us, we determine that we do not need to reach a specific finding regarding the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 13

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

    “In the Institution Decision, we declined to adopt Petitioner’s proposed construction of the “side surfaces” limitation and determined that it was not necessary to further construe this term because “[t]he parties do not dispute that the language ‘side surfaces extending horizontally’ encompasses a gate material with sloped side surfaces as depicted in Figure 5 of the ’335 patent.” Inst. Dec. 11–16 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); 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.”)). We invited the parties to address this limitation further during the course of this trial, but neither party provided additional evidence or argument regarding the “side surfaces” limitation. Inst. Dec. 16; see generally PO Resp.; Reply; Sur-reply. Accordingly, we maintain our determination from the Institution Decision that we do not need to construe the “side surfaces” limitation. Inst. Dec. 15– 16.” slip op. at 14

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

    “This evidence, particularly the language in the ’335 patent itself, undermines Patent Owner’s argument that “[t]he process for forming gate ledges using separate masks instead of the self-aligned process disclosed in the ’335 patent cannot produce ledges that are ‘substantially symmetric.’” PO Resp. 39 (emphasis added); see also PO Resp. 42–43 (arguing that a gate structure with ledges having substantially equal widths is “not achievable” without using a single photo-mask process). We have considered the evidence presented by Patent Owner and Dr. Schubert in support of Patent Owner’s arguments. PO Resp. 38–43; Ex. 2005 ¶¶ 49–51. We, however, are unable to discern sufficient evidence supporting a conclusion that using separate masks cannot produce ledges that are substantially symmetric, particularly when the ’335 patent suggests otherwise. See Ex. 1001, 4:60– 63 (referring only to the “possibility of misalignment”). Even if, as Patent Owner and Dr. Schubert contend, misalignment “naturally” occurs when using a two-mask process, that does not foreclose the possibility that the” slip op. at 18

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

    “It is well settled that “[a] reference does not teach away . . . if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Furthermore, “teaching that a composition may be optimal or standard does not criticize, discredit, or otherwise discourage” slip op. at 31

  Patent outcomesUS 10,312,335 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,312,335
• Innoscience (Zhuhai) Technology Company, Ltd / Innoscience America, Inc. v. Efficient Power Conversion CorporationAll claims unpatentable
  PTAB · Mar 18, 2025 · IPR2023-01381 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–3 and 7–9 are unpatentable as obvious over Uemoto and Smith; the motion to amend is granted, and proposed substitute claims 13 and 14 are not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In order to determine whether an invention would have been obvious at the time the application was filed, we consider the level of ordinary skill in the pertinent art. Graham, 383 U.S. at 17. In assessing 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) (quotation omitted). Petitioner contends a person of ordinary skill in the art “would have possessed at least a four-year degree in electrical engineering, chemical engineering, physics, or material science, or a closely related field, and at least two years of experience in semiconductor device design or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies.” Pet. 5–6. Petitioner contends “[a]dditional education could substitute for professional experience and vice versa.” Id. at 6. Patent Owner contends that a person of ordinary skill in the art would have had “at least a four-year degree in electrical engineering, physics, material science, or a closely related field, and three years of professional work experience in the epitaxial growth, design, and fabrication of semiconductor electronic devices, including those of GaN.” PO Resp. 7 (citing Ex. 2009 ¶ 82). Upon review of the evidence of record and the parties’ arguments, we adopt Petitioner’s definition of the person of ordinary skill in the art as it is consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). We note, however, that the conclusions reached in this Decision would be the same under either proposed definition of the ordinarily skilled artisan. See Ex. 2009 ¶ 83 (Dr. Schubert testifying that his opinions would be the same under either proposed definition); Ex. 1033 ¶ 9 (Dr. Shealy testifying that the differences in proposed definitions of the ordinarily skilled artisan “would not change the outcome of the invalidity analysis in any material manner”); PO Resp. 7; Pet. Reply 1.” slip op. at 9

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

    “compensated GaN layer above the barrier layer, and a gate contact above the compensated GaN layer.” Ex. 1001, 5:12–18. Petitioner contends the term “compensated” indicates that the step of compensating the GaN layer has already occurred, such that the term “compensated GaN layer” should be construed as a “‘[d]oped GaN layer formed with a step to passivate its impurities’ which is a ‘product-by-process’ limitation.”5 Pet. 12–14. And, because compensation with hydrogen was the “critical step” distinguishing the claims from the prior art, and because hydrogenation in as-grown III-nitride materials had been well known for over a decade by 2009, Petitioner contends “compensated” “cannot be interpreted as mere hydrogen presence in as-grown material, a well-known property of doped GaN.” Id. at 15. Patent Owner contends “compensated GaN material” should be construed as “a semiconductor GaN gate material in which one type of impurity (for example, donor) cancels the electrical effects of the other type of impurity (for example, acceptor).” PO Resp. 11 (citing Ex. 2009 ¶ 92) (emphasis added). Patent Owner contends this construction is consistent with the IEEE dictionary, which defines “compensated semiconductor” as 5 Given that product-by-process steps in a device claim are not entitled to patentable weight, Petitioner contends “the prior art only need show a material with passivated impurities to show unpatentability, not the step to achieve it.” Pet. 15–16. “[a] semiconductor in which one type of impurity or imperfection (for example, donor) partially cancels the electric effects of the other type of impurity or imperfection (for example, acceptor).” PO Resp. 14 (quoting Ex. 2004). Patent Owner contends its construction is also consistent with the written description of the ’294 patent, which explains that a compensated GaN material is part of the gate and includes a p-type impurity that imparts an electrical effect (i.e., conductivity), as well as a second impurity, e.g., hydrogen, that partially cancels the electrical effect of the p-type impurity, rendering the layer semi-insulating. Id. at 14–15 (citing Ex. 1001, 3:10–13, 3:43–45). On this record, we construe “compensated GaN layer” as “a GaN layer in which one type of impurity (for example, donor) partially cancels the electric effects of the other type of impurity (for example, acceptor).” This is consistent with the disclosures of the ’294 patent, the IEEE dictionary definition, and the construction ultimately adopted by the ITC. Ex. 2004, 3; Ex. 1049, 16–17 (ITC construing “compensated GaN layer” to mean “a GaN layer in which one type of impurity partially cancels the electrical effects of another type of impurity”); Ex. 1001, 3:43–45 (explaining that the compensated GaN layer of the ’294 patent is formed through the “passivation of a p-type impurity using hydrogen”). For the reasons set forth below, however, we decline to construe “compensated GaN layer” as a product-by-process claim term (as asserted by Petitioner), or to limit the compensated GaN layer to a gate material (as asserted by Patent Owner).” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “There are two exceptions to the general rule that we apply the ordinary and customary meaning of a claim term: (1) when a patentee sets out a definition and acts as his own lexicographer, or (2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution. See Thorner, 669 F.3d at 1365. The standards for lexicography and disclaimer, however, are “exacting.” Id. at 1366. There is no argument that the patentees acted as their own lexicographer to redefine the term “compensated GaN layer.” With respect to disavowal, a “patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Thorner, 669 F.3d at 1366 (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)). As noted by Patent Owner, the title of the ’294 patent is, in part, “Compensated Gate MISFET” and much of the discussion of the ’294 patent is of a compensated GaN layer that is directly below the gate contact and above a barrier layer and operates in conjunction with the gate contact to control the on/off state of the transistor. PO Resp. 12–14. We are presented with insufficient argument or evidence to conclude, however, that these disclosures rise to the level of a disclaimer. For example, although the title of the ’294 patent is directed to a “Compensated Gate MISFET,” claim 1 is more broadly directed to “[a] column III Nitride transistor.” Ex. 1001, 5:12, code (54). Nor are we directed to an expression or statement of manifest exclusion in the ’294 patent that would serve to disclaim any “compensated GaN layer” that is not directly below the gate and/or that does not function in concert with the gate electrode to control the on/off state of the transistor. See Thorner, 669 F.3d at 1366. With respect to the stated goals of the invention, as noted by Patent Owner, one of the primary purposes of the compensated GaN layer of the ’294 patent is to reduce gate leakage and gate capacitance. Ex. 1001, 2:13– 19, 3:18–21 (“[U]sing a compensated semiconductor layer 38 leads to low gate leakage during device operation.”). We cannot use the goals of the invention, however, to rewrite the claims or insert terms that are not present. See Thorner, 669 F.3d at 1366. Moreover, the prior art of record indicates that a compensated GaN layer that is below the gate contact and above a barrier layer, but not part of the active gate structure, may also “decrease the leakage current between the gate and the drain.” Ex. 1006 ¶¶ 44 (“Even when a positive bias of 5 V or higher is applied to the gate electrode, no significant gate-leakage current is observed.”), 61. As such, evidence of record suggests that a person of ordinary skill in the art would have understood that one of the primary goals disclosed in the ’294 patent is achieved regardless of whether the compensated GaN layer is part of the gate, or simply in close vicinity to the gate. In view of the foregoing, we are not persuaded that the written description of the ’294 patent indicates that the “compensated GaN layer” must be part of the gate structure.” slip op. at 17

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

    “To be probative, Patent Owner must prove there is a nexus between the presented evidence and the merits of the claimed invention. See Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). A rebuttable presumption of nexus applies when the “patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco, 851 F.2d at 1392). “That is, presuming nexus is appropriate ‘when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.’” Id. (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). If the praise is not limited to the features of the claimed invention, the patent owner may still prove nexus “by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. at 1373–74 (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). Patent Owner contends that the compensated gate of the ’294 patent “was a breakthrough invention and resulted in the first commercially viable enhancement-mode GaN transistor.” PO Resp. 60 (citing Ex. 2009 ¶¶ 192– 193, 197; Ex. 2021). Patent Owner further contends that this achievement required the counter-intuitive use of a compensated gate material in the gate structure, and represented “a technological leap that laid the foundation for viable enhancement-mode GaN transistors.” Id. at 61–62. For this achievement, Patent Owner contends the inventor, Dr. Alex Lidow, received the 2015 SEMI Award. Id. at 60 (citing Ex. 2021). Upon review of Patent Owner’s evidence and the parties’ arguments, we find that Patent Owner’s objective indicia evidence is entitled to little, if any, weight. The evidence of praise relied upon by Patent Owner is not clearly linked to the claimed invention or any particular product having each of the claimed features of the ’294 patent. Ex. 2021. For example, the 2015 SEMI award was provided to Dr. Lidow “for commercialization of GaN power devices.” Id. An article explaining the award indicates that “high cost” previously “limited [the] commercial success” of GaN technologies, but Dr. Lidow was able to overcome these issues, “from resolving packaging limitations to establishing a low-cost supply chain,” “through persistence.” Id. This praise is not demonstrably linked to the claimed invention or any particular device, and does not mention the use of a compensated gate, or any other relevant feature recited in the claims. In view of the foregoing, we determine that Patent Owner’s objective evidence of non-obviousness is entitled to little, if any, weight.” slip op. at 20

  Patent outcomesUS 8,350,294 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 8,350,294
• Amphenol Corp. v. PPC Broadband, Inc.All claims unpatentable
  PTAB · Feb 19, 2025 · IPR2023-01363 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1, 2, and 10–13 are unpatentable as obvious over the stated combinations of Holmberg, Battey, Blankenship, and Cowen.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least 1 year of experience related to communication networks or the equivalent.” Pet. 7. Petitioner further contends that “[a]dditional education could substitute for professional experience or significant experience in the field could substitute for formal education.” Id. at 7–8 (citing Ex. 1003 ¶¶ 29–31). Dr. Eldering agrees that one of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least one year of experience related to communication networks or the equivalent.” Ex. 2001 ¶ 24. According to Dr. Eldering, “[a] person with less relevant practical experience but with additional experience would also qualify.” Id. Patent Owner contends that” slip op. at 9

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

    “Although Patent Owner disagrees with Petitioner’s construction, it contends “the Board need not resolve this claim construction dispute because Petitioner’s proposed grounds 1-5 are all insufficient under either construction.” PO Resp. 19. Upon review of the parties’ arguments and the prior art of record, we determine that no claim terms require express construction for purposes of this decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For example, we discuss below in Section III.G why we do not reach the claim construction issue presented by Petitioner.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We find that Holmberg expressly contemplates using its wall box within multi-dwelling units, notes that multi-dwelling wall boxes in the prior art were “typically provided” on every floor, and discloses that the multi-dwelling wall boxes would contain optical couplings for each resident on a given floor. Ex. 1004 ¶¶ 7, 34; Pet. Reply 8–10. In view of these disclosures, we credit the testimony of Dr. Kiaei that one of ordinary skill in the art would have sought to use Holmberg’s wall box in multi-dwelling units and would have seen a need to access the area behind spice tray 230 to connect and disconnect subscribers. Ex. 1003 ¶ 92; Ex. 1033 ¶¶ 7–8. Moreover, even if Holmberg were limited to mid-span locations and distributing drop cables, as opposed to distribution cables for individual subscribers, as asserted by Patent Owner, Patent Owner does not dispute that a technician would still need periodic access to the area behind splice tray 230 in these mid-span devices. Tr. 38:3–39:1 (counsel agreeing that one would need to access the area behind splice tray 230 in Holmberg, albeit in “rare occasions”); Ex. 1003 ¶¶ 90–92; Ex. 1033 ¶¶ 7–8. Thus, whether used in the manner contemplated by Petitioner or Patent Owner, Petitioner persuasively demonstrates that access to the space behind splice tray 230 in Holmberg would be necessary. With access behind splice tray 230 required, Petitioner persuasively demonstrates that one of ordinary skill in the art would have seen a benefit to replacing Holmberg’s fasteners or screws with a hinged connection, such as that disclosed in Battey, to allow easier access to the area behind the splice tray. Pet. 41 (citing Ex. 1005 ¶ 39 (disclosing that a rotatable splice tray or shelf would “provide[] full and convenient access to the splice tray”)). First, Petitioner and Dr. Kiaei persuasively demonstrate that once the fibers of Holmberg are routed from behind splice tray 230 and the distribution cables spooled on this tray, a technician could not reasonably access fiber optic cables stored behind splice tray 230 without releasing or opening splice tray 230. Pet. Reply 14–15 (citing Ex. 1023, 60:20–61:15); Ex. 1033 ¶¶ 31–32. Second, Petitioner persuasively demonstrates that without a hinged connection, the technician would have to either hold the splice tray of Holmberg with one hand while performing the necessary routing and splicing steps, two screws would need to remain in place (essentially replicating a hinge), or the tray would have to be left to dangle, supported only by the routed and spliced fibers. Pet. Reply 19–20.” slip op. at 22

  • Strike new argumentNew argument consideredDecided for petitioner

    “Allegedly New Arguments on Reply Patent Owner contends that Petitioner’s arguments regarding the benefits of a hinged connection when performing the splicing and routing steps should be dismissed or ignored because they were improperly raised for the first time on reply. Sur-reply 19–20. We disagree. The Petition asserts that one of ordinary skill in the art would have sought to add a hinged connection, such as that disclosed in Battey, in Holmberg and would have seen a benefit to so doing. Pet. 40–44. Petitioner did not change its proposed combination or its stated rationale in its Reply. Rather, in response to Patent Owner’s counter-arguments, Petitioner expands upon the benefits of its proposed combination, i.e., the substitution of a hinged connection in place of fasteners. Pet. Reply 15–21. This is permissible, as a reply may properly expand on or extend previously raised arguments relating to the motivation to make the proposed changes to the prior art. See Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1385 (Fed. Cir. 2023) (explaining that the reply arguments properly relied on the same legal ground, the same prior art references, and same legal argument—the motivation to make the proposed changes to the prior art reference).” slip op. at 25

  Patent outcomesUS 9,008,483 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,008,483
• Opticis Co., Ltd. v. Inneos LLCAll claims unpatentable
  PTAB · Jan 29, 2025 · IPR2023-01256 · APJ Terry J Owens · IPR · Final written decision

  Claims 1, 2, 6, 7, and 9 are unpatentable as obvious over Kurita and Lemoff, with the Board declining to reach the remaining grounds.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “We accept the level of ordinary skill in the art stated by Petitioner and agreed with by Patent Owner with the exception of the open-ended language appears consistent with the ’416 patent and the prior art of record.” slip op. at 7

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

    “describe elements that are not affirmatively recited in the claims, and in view of the “bedrock principle of patent law that the claims of a patent define the invention,” we conclude that none of the unrecited limitations identified by Patent Owner are required by the claims. See Thorner v. Sony Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (explaining that the standard for disavowal is “exacting,” and the use of “the present invention” is not necessarily sufficient to meet this standard).” slip op. at 12

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

    “art would not have modified Kurita in view of Lemoff because Lemoff positions the signal emitters near the fiber to emulate WDM without the need for an external optical multiplexer or a similar device and discourages using optical wavelength multiplexers for short distances because the complexity of the design is often cost prohibitive (PO Resp. 47–48), Lemoff does not appear to limit the usefulness of the fiber connector to any particular optical signal transmission distance. Petitioner relies upon Lemoff for a suggestion to combine Lemoff’s fiber connector configuration teachings with Kurita’s multiplexer teachings to enable fibers to be plugged Fig. 2) (Pet 29, 31; Reply 17–18). Regarding Patent Owner’s argument that one of ordinary skill in the art would not have combined Lemoff’s receptacle and ferrule with discrete components in Kurita because the fiber would need to be manually fixed and aligned with or without a ferrule and, therefore, would serve no purpose (PO Resp. 48), Lemoff’s fiber connector appears to fix and align the fiber adequately for wavelength division multiplexing without manual fixation or alignment being required (Ex. 1006, 5:65–6:2, Fig. 2; Reply 18). The challenged claims do not require any greater degree of fixing and alignment than that provided by Lemoff’s fiber connector. Regarding Patent Owner argument that Lemoff’s device is not physically combinable with Kurita’s WDM multiplexer due to Lemoff’s device’s small size (PO Resp. 47–48; Reply 17–18), “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art” (In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Accordingly, we are not persuaded by Patent Owner’s argument.” slip op. at 26

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

    “stopped single optical fiber because fixing it in place does not passively align it with the optical components (PO Resp. at 35–37) is not persuasive because fixing Kurita’s fiber (40) in place in accord with Lemoff’s teaching regarding the ferrule (255) inserted until being stopped by the receptacle (260) (Ex. 1006, 5:50–6:15, Fig. 2) would align Kurita’s optical array (20), and lens (30)) (Ex. 1004 Fig. 3) passively in the same manner that Lemoff’s ferrule (255), after being inserted until stopped by the receptacle (260), passively aligns the optical fiber (250) with the optical components (optical imaging element 220 and light emitters within emission apertures 120) (Ex. 1006, 5:50–6:15, Fig. 2; Reply 15–16). Regarding Patent Owner’s argument that the light from each of Kurita’s lasers (11) depicted in Figure 3 cannot pass through a separate focusing lens (30) pie shaped sector because the lasers (11) and collimating lenses (21) are arranged linearly rather than being arranged about a circular axis (PO Resp. at 37–42), we do not agree. Claim 1 requires “focusing means having n separate radial sectors on its surface, and each of said n collimated beams passes through a separate one of said n sectors of said focusing means” (Ex. 1001, 5:34–37), claim 2 requires “four lasers and four collimating lenses are each formed in a two-dimensional, two by two array [centered on the focal axis of lens 30], wherein said focusing means is a single focusing lens, and wherein each radial sector is a pie-shaped quadrant” (id. at 5:41–44), and claim 7 requires “focusing means having four separate quadrants on its surface, and each of said four collimated beams passes through a separate one of said quadrants of said focusing means” (id. at 6:35–38). Kurita meets those claim requirements. Kurita’s two by two array (10A) of lasers (11), collimating lens (21) array (20), and focusing lens (30) are shown in Kurita’s Figure 3 (cropped) as follows: The image is a portion of Kurita’s Figure 3 showing Kurita’s laser array, collimating lens array, and focusing lens (30). Relative to a point at the center of the laser array (10A) or the collimating lens array (20), each laser (11) and each collimating lens (21) is in a separate quadrant that can be a quadrant of a circle (pie-shape) on lens 30 (Reply 12– 13, Ex. 1003 ¶¶ 85–91).” slip op. at 23

  Patent outcomesUS 7,198,416 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,198,416
• Alivecor, Inc. v. Apple Inc.All claims unpatentable
  PTAB · Jan 7, 2025 · IPR2023-00948 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–10 are unpatentable: claim 1 is anticipated by Kim and claims 1–10 are obvious over Kim; the Board did not reach the Jung and Meyers or Chang grounds.

  RulingsFinal written decision

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

    “one hand that “[a] ‘biometric characteristic’ or a ‘biometric identifier,’ as used herein, may refer to a human characteristic that is so distinctive and measureable that a particular human individual may be identified.” Ex. 1001, 5:9–14 (emphasis added). On the other hand, the ’619 patent also explains that “[t]he sensed human physical characteristic may vary widely, but may include fingerprint, palm veins, DNA, heart rate, and blood pressure.” Ex. 1001, 4:57–59. And, according to Patent Owner’s declarant, Dr. Anthony, heart rate and blood pressure, for instance, are biometric characteristics that do not necessarily “identify” a particular human being. See Ex. 2009 ¶ 28 (Dr. Anthony testifying that “[i]n my opinion, ‘heart rate’ and ‘blood pressure’ are embodiments of biometric characteristics that . . . are not sufficiently distinctive to enable identification of a particular human individual.”). Considering the written description as a whole, along with Patent Owner’s argument and Dr. Anthony’s testimony, we agree that “biometric characteristic” does not need a specific construction in this proceeding. We disagree with Petitioner that there is an actual dispute as to this term because, apart from an express construction, Kim discloses a fingerprint sensor. Pet. Reply 2. Regardless, our Decision does not turn on a specific construction of “biometric characteristic.” At least Kim discloses a fingerprint sensor which satisfies the biometric characteristic limitation in the challenged claims under either a plain and ordinary meaning of this term or under Petitioner’s proposed construction. See, e.g., Ex. 1004, 14:22–24” slip op. at 12

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner’s asserted level of ordinary skill in the art is essentially the same as Petitioner’s, for example requiring a bachelor’s degree in science or engineering and “at least two years of relevant work experience with capture and processing of data or information, including but not limited to physiological information.” Id.; Pet. 9. In view of the similarity, our analysis is not affected by choosing one over the other. On the complete record now before us, and as we did in our Institution Decision, we rely on same as that proposed by Patent Owner. Petitioner’s asserted level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’619 patent and the asserted prior art references. Okajima 261 F.3d at 1355 (Fed. Cir. 2001).” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We credit Petitioner’s declarant, Dr. Berger, in this case. Dr. Berger testifies that “a person of ordinary skill in the art would understand that a sealed and/or insulated button assembly from one location on a device can be constructed equally on a rear or sidewall of the device, as taught by at least Polany (Ex-1013).” Id. ¶ 110 (citing U.S. Patent No. 7,535,799 to further that “[p]rior to the ’619 patent’s earliest alleged priority date of June 19, 2017, a person of ordinary skill in the art would also have known that button assemblies in mobile electronic devices should be sealed in order to prevent ingress of potentially damaging moisture and dust.” Id. ¶ 48. Dr. Berger points to U.S. Patent No. 10,133,910 to Chang, explaining that “Chang discloses that ‘as users’ needs for portable terminals have been gradually diversified, a [home] key [button] used in the portable terminals includes a waterproof structure in order to prevent a fluid from infiltrating into the interior of the portable terminals.’” Id. (quoting Ex. 1015, 1:32–35). Dr. Berger maintains that sealing and attaching buttons to an electronic device was a common technique, testifying that Polany discloses that “[o]ne skilled the art would recognize many different methods of fastening a control feature into the housing, such as, but not limited to, screw, bolts, snap fit components, adhesives, press fits, co-molded components, overmolded components, ultrasonically welded components, rotational fits, wedge fits, and other manufacturing means of effecting the assembly of components” Id. ¶ 52 (quoting Ex. 1013, 21:5–11, 21:31–37). The fact that there would be certain design and structural differences between a combined button on the face of the electronic device, and a combined button on the side wall of the electronic device does not undermine Dr. Berger’s testimony that a person of ordinary skill in the art would have understood how to implement a button in a sidewall of an electronic device. See id. ¶ 47 (testifying “[f]or example, Polany discloses that the buttons (1315-1318) along the sidewall of the device included structures and surfaces that could be manually pressed by a user” and citing Ex. 1013, 4:40, 19:42–20:4, Figs. 13B, 17, 19A, 19B).” slip op. at 38

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

    “What these cases and examples clearly articulate is that whether there is sufficient description in an anticipation reference for linking different disclosures, elements, and embodiments, is particularly case and fact dependent. Moreover, a finding of anticipation resting upon a reference’s disclosures of elements in different embodiments turns on whether an ordinarily skilled artisan would understand that the reference suggests arranging the elements of the embodiments to one another in the same way as the challenged claims.. For the reasons that follow, we determine that there is sufficient description and teaching in Kim such a person of ordinary skill in the art would have understood that the “combined button” disclosed by Kim, for example in Figure 10(b), can be the same “combined button” as discussed in the embodiment of Figure 18.” slip op. at 28

  Patent outcomesUS 10,866,619 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,866,619
• Maplebear Inc. D/B/A Instacart v. Consumeron, LLCAll claims unpatentable
  PTAB · Nov 20, 2024 · IPR2023-00865 · APJ Carl M Defranco · IPR · Final written decision

  Claims 1–19 are unpatentable under § 103 over Carr and Lauka, with additional references for the dependent-claim grounds, because the challenged claims lack priority support in the ’848 application.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Instacart submits that a person of ordinary skill in the art (“POSITA”) would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of electronic commerce” and that “[l]ack of work experience can be remedied by additional education, and vice versa.” Pet. 27 (citing Ex. 1003 ¶¶ 22–25). Consumeron responds that one skilled in the art would have been “someone with a background in electrical engineering, computer science, or the like” and that “industry experience can make up for a lack of technical training, and more education can make up for a lack of industry experience.” PO Resp. 7 (citing Ex. 2016 ¶¶ 19–23). But, as Consumeron’s expert acknowledges, Consumeron’s proposed definition “is not materially different” from Instacart’s. See Ex. 2016 ¶ 22. Accordingly, while we adopt the level of skill in the art as defined by Instacart our findings and analysis would be the same under Consumeron’s proposal.” slip op. at 7

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “8 Consumeron argues Dr. Houh’s testimony should be given little weight because he “admitted he did not evaluate what the ’848 Application reasonably conveys to a skilled artisan.” Resp. 26 (citing Ex. 2011, 74:8– 76:6, 83:4–84:1, 92:22–95:5). We disagree. Dr. Houh’s testimony indicates that he properly considered what the ’848 application reasonably conveys to a POSITA. See Ex. 1003 ¶¶ 52, 56, 58, 61, 65. The portions of his cross-examination testimony cited by Consumeron do not suggest otherwise. For the reasons explained below, we credit Dr. Houh’s testimony over the competing interpretations offered by Consumeron and Dr. Mitzenmacher. 9 The dissent criticizes the majority’s analysis as “overly narrow” and too focused on the preferred embodiment. See Dissent 7–8. We disagree. Our analysis considers the entirety of the ’848 application, including all of the passages cited by Consumeron and the dissent.” slip op. at 13

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner

    “But it does not follow that an agent encountering a stock-out would necessarily respond according to the specific steps recited in claims 1 and 14.10 For example, instead of sending information about a replacement product, the agent could travel to another location to look for the same product, or notify the customer that the desired product could not be found and terminate the transaction. Because the ’848 application only contemplates scenarios where a product can be located, it does not describe the agent’s response in the event the identified product cannot be located or is unavailable, much less reasonably convey possession of a method comprising the specific, responsive steps in claims 1 and 14.11” slip op. at 17

  • Prior constructionPrior construction adoptedTerm construed petitioner constructionDecided for petitioner

    “construed the terms “acquisition request” and “acquiring” in our final written decision in the related 1357 IPR to encompass “not only a request for a delivery agent to shop for and purchase goods, but also a request for the agent to pick up or obtain pre-paid goods.” See 1357 IPR, Paper 35 at 11. It is undisputed that the ’465 patent at issue here and the ’835 patent at issue in the 1357 IPR are related and share essentially identical specifications, figures, and claim terms. See Pet. Reply 16; PO Resp. 38 n.6. Thus, for the same reasons as in our final written decision in the related 1357 IPR, we likewise determine here that Instacart’s construction of “acquisition request” is the correct one. See SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir. 2015) (“Where multiple patents ‘derive from the same parent application and share many common terms, we must interpret the claims consistently across all asserted patents.’” (quoting NTP, Inc., v. Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005)). Consumeron provides no persuasive justification for us to depart from our prior reasoning in the related 1357 IPR.” slip op. at 23

  Patent outcomesUS 11,238,465 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 11,238,465

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