- Askeladden, L.L.C. v. Ohva, Inc.All claims unpatentablePTAB · Mar 10, 2025 · IPR2023-00921 · APJ Amee A Shah · IPR · Final written decision
Claims 1–4 are unpatentable as obvious: claim 1 over Cho, Aaron, and Carpenter; claim 2 over those references and de Geer; claim 3 over Cho and Aaron; and claim 4 over Cho, Aaron, and de …
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“application are similar, as indicated by the redline comparison of two provided as Exhibit 1015. Critically, however, the “Summary of the Invention” sections are completely different. Id. at 2–4. The question is whether one of ordinary skill in the art would have understood with reasonable clarity, without the benefit of the Summary added for the ’286 patent/’674 application, that the ՚030 application describes a smart telephone that executes coded instructions to “convert the analog variable voltage audio signal received at the microphone port to the transaction data as digital data.”” slip op. at 43
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Here, although the ’286 patent distinguishes “account data” from “transaction data” in the embodiment of Figure 11, the “transaction data” is submitted by the user to perform a series of banking transactions after manually entering a PIN code, whereas the “account data” is stored on the server, and the token information is accepted from the smart card’s 1001, 10:12–18, 10:30–35, 10:40–42, 11:21–22, 11:65–12:4, 12:22–36. Thus, the claimed “transaction data” that is “accepted . . . from an output interface of a transaction card” and “accepted . . . from a transaction card at an input interface of the card reader,” as recited in independent claims 1 and 3, comprises data stored on and read from a card, such as an ID number, password, authentication information, or session information, that can be used to facilitate a transaction. The evidence indicates that the claimed “transaction data” is distinct from the “transaction data B1-Bn” described in connection with the Figure 11 embodiment.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As discussed above in Section II.C, we construe the term “transaction data” as encompassing any data involved in a transaction, including account data. Again, we emphasize that claim 1 requires that the transaction data is accepted by the card reader from an output interface of the transaction card. Cho provides that card reader 230 reads a digital signal that includes account information of card 130 whereby the account information “may include at least one of an account number, a card expiration data, etc.” Ex. 1005, 5:54–58. We further agree with Petitioner that to the extent “transaction data” is for the purpose of conducting banking transactions, Cho’s account data of a credit card number and expiration date can perform that purpose. Patent Owner’s arguments that the transaction data cannot be “static” and that claim 1 requires “processing actual transaction-specific data” are not commensurate with the scope of the claim 1. The claim does not recite any limitations that the transaction data be dynamic or “not static,” nor does it recite any processing of the transaction data outside of using it to “facilitate transactions.” Petitioner has shown that Cho teaches the claimed transaction data.” slip op. at 55
Patent outcomesUS 9,679,286 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,679,286 - PTAB · Feb 27, 2025 · IPR2024-01228 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over Fukui.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Conclusion Petitioner shows a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable over Fukui. Accordingly, we institute inter partes review of all challenged calms based on all grounds asserted in the Petition. See SAS, 138 S.Ct. at 1354.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“III. DISCRETION TO DENY INSTITUTION UNDER 35 U.S.C. § 325(d) Patent Owner argues that if the Board determines that Petitioner’s Fukui-based grounds 1 and 2 are deficient, then the Board should deny institution under § 325(d). Prelim. Resp. 26. In particular, Patent Owner asserts that remaining grounds 3 through 5 rely on art (i.e., Sauter) a reference that is substantially similar to art that was before the Examiner (i.e., Sedor). Id. at 26–27. Because we do not determine that Fukui-based grounds are deficient, we decline to exercise our discretion to deny institution under § 325(d).” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art (“POSITA”) “would have a B.S. degree or equivalent in mechanical or electrical engineering or similar fields, in addition to a minimum of two years of professional experience with or graduate studies involving design, development, and/or utilization of optical communication systems.” Pet. 26. (citing Ex. 1003 ¶¶ 19–21). At this stage of the proceeding, Patent Owner neither responds to Petitioner’s proposed definition, nor provides a definition of its own. See Prelim. Resp. Petitioner’s undisputed proposed definition appears to be consistent with the cited prior art and the disclosure of the ’422 patent, and we adopt it for purposes of this Decision.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed petitioner constructionDecided for petitioner
“Based on the present record, we agree with Petitioner that Patent Owner’s statements during prosecution are relevant to claim construction. Pet. 24–25. During prosecution of the parent application to the ’422 patent, Patent Owner stated, inter alia, that “a person of ordinary skill in the art would understand that the width of a cassette is simply the width of the cassettes from side to side and not some other ‘dimension’ such as the number of receptables or the like.” Ex. 1002, 187. Patent Owner further stated that it disagreed with the Examiner’s statement that paragraph 15 of the specification6 defines width in terms of the number of receptacles and that such a definition of width makes no sense in view of other claims where the standard with is defined in terms of a width of front edge of a tray on which the cassettes are secured. Id. We note that at this stage of the proceeding, Patent Owner has not provided any argument or evidence opposing Petitioner’s proposed construction or supporting the claim construction that it proposed during the district litigation. Our construction is preliminary and the parties are invited to address this claim construction more fully during trial.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,656,422 - PTAB · Feb 27, 2025 · IPR2024-01382 · APJ Josiah C Cocks · IPR · Institution
The Board instituted IPR on claims 1–30 and all petition grounds, finding a reasonable likelihood of success based on Fukui’s teachings.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (POSITA) would have a B.S. degree or equivalent in mechanical or electrical engineering or similar fields, in addition to a minimum of two years of professional experience with or graduate studies involving design, development, and/or utilization of optical communication systems. Pet. 24 (citing Ex. 1003 ¶¶ 19–21). Patent Owner does not dispute Petitioner’s assessment of the level of ordinary skill in the art, or offer its own assessment. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’423 patent and the asserted prior art, and we apply it in our patentability evaluations below. See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In this proceeding, Patent Owner does not dispute any of Petitioner’s contentions as to claim construction or offer any construction of its own for any term. We are mindful of Petitioner’s view that Patent Owner’s litigation construction is inconsistent with the plain language of the claims. We also question whether that construction adds clarity in seemingly substituting “width that accommodates” for “width,” and replacing “standard width units” with “receptable modules,” without, on this record, support for such word variations. Nevertheless, our determination whether to institute trial does not require resolution of any claim construction dispute or necessitate that we adopt any particular construction for any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this time, we find persuasive Petitioner’s position that Fukui’s teachings account for the pertinent “width” requirements of each of claims 1, 9, and 17. See, e.g., Pet. 30, 32–46. On this record, Dr. Ralph provides sufficient testimony that under either of the parties’ proposed constructions of the limitations involving cassette widths, Fukui’s teachings account for those limitations. See, e.g., Ex. 1003 ¶¶ 71–98.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Owner’s challenge to Petitioner’s Fukui-based grounds is whether, in Fukui, a conversion module (e.g., 20) that is formed by coupling together two unit modules establishes that conversion module as a new structure identifiable as a unitary cassette.11 We discern that Fukui uses the term “conversion module” to refer to component 10, and uses that same term, i.e., “conversion module” to refer to component 20. See, e.g., Ex. 1004, 6:33–35, 7:23–25. The components 10A and 10B that make-up conversion module 20 are characterized as each being a “unit module.” See, e.g., id. at 7:25–27. Thus, once unit modules 10A and10B are coupled together to form the structure that is “conversion module 20,” the current record reasonably suggests that the conversion module 20 is a component analogous to conversion module 10, but with a larger width, i.e., two times the width. Further, Fukui also characterizes unit modules 10A and 10B as being “fixed” to one another via coupling member 21 (see, e.g., id. at 10:11–16) forming “one body” (see, e.g., id. at 8:2–3). Further still, as described and shown in Fukui (e.g., Figure 5), conversion module 20 is structured to operate via a singular multicore optical connector 16 from which optical fibers F1 extend to all of the single-core optical connectors 17 of the conversion module. Id. at 7:52– 11 There is no dispute on this record that the term “module” as used in Fukui is analogous to the term “cassette” as used in the ’423 patent. 8:6. Thus, conversion module 20 is recognizable has having a singular system of fiber optic components within its body.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,740,423 - PTAB · Feb 27, 2025 · IPR2024-01227 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on all grounds for claims 1–5 and 8–13, finding a reasonable likelihood that claim 8 is anticipated by Fukui and claims 1 and 8 are obvious over Fukui-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Patent Owner contends that we should deny institution under 35 U.S.C. § 325(d) “because the Petition presents ‘the same or substantially the same prior art or arguments previously . . . presented to the Office.’” Prelim. Resp. 25–31 (alteration in original). Specifically, Patent Owner explains, the Office previously considered Sedor during the ’542 patent’s prosecution, and Sauter was made of record but not considered during prosecution. Id. Patent Owner, however, states that it “recognizes that this argument only reaches Sauter-based grounds, not Fukui-based grounds. This argument thus only needs to be addressed after the Board confirms the fundamental deficiencies in Petitioner’s Fukui-based grounds.” Id. at 25 n.3. Because, as set forth below, we do not, on the present record, find any “fundamental deficiencies in Petitioner’s Fukui-based grounds” that inhibit institution of trial, we regard Patent Owner’s § 325 request as moot, and we need not consider it further.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have [had] a B.S. degree or equivalent in mechanical or electrical engineering or similar fields, in addition to a minimum of two years of professional experience with or graduate studies involving design, development, and/or utilization of optical communication systems.” Pet. 26. On the present record, Patent Owner does not dispute this proposed level of skill. Prelim. Resp. 1–31. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears consistent with the ’542 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“enough to resolve . . . the lead Fukui ground” but that “[t]here are two disputes relevant to the alternative Sauter ground.” Pet. 22. With respect to the first of these “disputes,” Petitioner presents two claim constructions for the claim term or phrase “cassette width as measured between outer side edges thereof of one of one, two, three, four and six standard width units.” Id. at 23. The constructions are said to be from “the co-pending litigation,” with one characterized as “Patent Owner’s proposed construction”6 and the other as “CommScope’s proposed construction.”7 Of note is Petitioner’s 6 The claim construction attributed to Patent Owner is: “cassette width as measured between the outer side edges thereof that accommodates one of one, two, three, four, or six receptable modules.” Pet. 23. 7 Petitioner’s construction is: “The cassette width as measured between the outer side edges thereof equals one, two, three, four, or six times the contention that “[Patent Owner]’s construction cannot be correct,” and accompanying explanation in that respect. Id. at 22–23, 24. Patent Owner acknowledges that there is a dispute between the parties as to the noted claim construction but urges that “[t]he Board, however, need not fully resolve this claim construction dispute,” as, in Patent Owner’s view, the grounds based on Sauter are deficient based on either construction. Prelim. Resp. 21–22. We are mindful of Petitioner’s view that Patent Owner’s litigation construction is not correct. We also question whether that construction adds clarity in substituting “width that accommodates” for “width of,” and replacing “standard width units” with “receptable modules,” without, on this record, support for such word variations. Nevertheless, our determination whether to institute trial does not require resolution of any claim construction dispute, nor does it necessitate that we adopt any particular construction for the pertinent claim term. 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))). We invite the parties to develop the record more fully on this claim- construction issue during trial.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,435,542 - PTAB · Feb 27, 2025 · IPR2024-01218 · APJ Josiah C Cocks · IPR · Institution
The Board instituted IPR of claims 1–5 and 8–13 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Stated somewhat generally, the core question underlying Patent Owner’s challenge to Petitioner’s Fukui-based grounds is whether a conversion module (e.g., 20) that is formed by coupling together two unit modules establishes that conversion module as a new structure identifiable as a unitary cassette. We discern that Fukui uses the term “conversion module” to refer to component 10, and uses that same term, i.e., “conversion module” to refer to component 20. See, e.g., Ex. 1004, 6:33–35, 7:23–25. The components 10A and 10B that make-up conversion module 20 are characterized as each being a “unit module.” See, e.g., id. at 7:25–27. Thus, once unit modules 10A and 10B are coupled together to form the structure that is “conversion module 20,” the current record reasonably suggests that the conversion module 20 is a component analogous to conversion module 10, but with a larger width, i.e., two times the width. Further, Fukui also characterizes unit modules 10A and 10B as being “fixed” to one another via coupling member 21 (see, e.g., id. at 10:11–16) and forming “one body” (see, e.g., id. at 8:2–3). Further still, as described and shown in Fukui (e.g., Figure 5), conversion module 20 is structured to operate via a singular multicore optical connector 16 from which optical fibers F1 extend to all of the single-core optical connectors 17 of the conversion module. Id. at 7:52– 8:6. Thus, conversion module 20 is recognizable has having a singular system of fiber optic components within its body. At this time, we regard such characterization of the coupled unit modules 10A and 10B as reasonably giving rise to an understanding that the resulting conversion module 20 constitutes a unitary module or cassette component.” slip op. at 20
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“IV. REQUEST FOR DENIAL UNDER 35 U.S.C. § 325 Patent Owner contends that the Board should exercise its discretion to deny under 35 U.S.C. § 325(d) on the theory that the Petitioner relies on substantially the same prior art and arguments that were previously considered by the Office. See Prelim. Resp. 31–37. Patent Owner, however, states the following: “Patent Owner recognizes that this argument only reaches Sauter-based grounds, not Fukui-based grounds. This argument thus only needs to be addressed after the Board confirms the fundamental deficiencies in Petitioner’s Fukui-based grounds.” Id. at 31, n.4. Because, as set forth above, we do not agree at this time as to any “fundamental deficiencies in Petitioner’s Fukui-based grounds” that inhibit institution of trial, we regard Patent Owner’s § 325 request as moot, and need not consider it further.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We are mindful of Petitioner’s view that Patent Owner’s litigation construction is not correct. We also question whether that construction adds clarity in substituting “width that accommodates” for “width of,” and replacing “standard width units” with “receptable modules,” without, on this record, support for such word variations. Nevertheless, our determination whether to institute trial does not require resolution of any claim construction dispute or necessitate that we adopt any particular construction for any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). 9 The claim construction attributed to Patent Owner is: “cassette width that accommodates one of one, two, three, four, or six receptable modules.” Pet. 21. 10 Petitioner’s construction is: “The cassette width equals one, two, three, four, or six times the standard width unit, without an additional amount. This means the cassette width must be evenly divisible by the standard width unit.” Pet. 21.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,795,107 - Ewald Dörken AG v. Schaeffler Technology AG & Co. KG.Institution deniedPTAB · Feb 20, 2025 · IPR2024-01365 · APJ James J Mayberry · IPR · Institution
The Board denied institution on all three obviousness grounds because the Petition did not show a reasonable likelihood of prevailing on claims 1–7.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that “[a] person having ordinary skill in the art (‘POSITA’) would have been a person having, as of 21 July 2017: (1) at least an undergraduate degree in engineering and/or material science, or similar education; and (2) two or more years of experience with coatings.” Pet. 7–8; see Ex. 1009 ¶ 25 (providing the same level of ordinary skill). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. Prelim. Resp. 5. We apply Petitioner’s definition of the level of ordinary skill in the art. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’756 patent, based on our review of the record.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther
“Petitioner submits that . . . the claims should be given their plain and ordinary meaning.” Pet. 11. Patent Owner does not propose any specific constructions. See Prelim. Resp. 4–5.8 We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes on the current record. 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.’” (emphasis added)) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). To the extent that the scope of any other claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next. slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Ex. 1003 ¶¶ 18–19. Petitioner provides no additional discussion on this disclosure, including how it satisfies the zinc flake coating limitation. See Pet. 15–17, 20. Petitioner’s sole citation to Dr. Haber’s declaration associated with this claim limitation is to paragraph 35, which provides the same claim chart as is in the Petition. See Pet. 17; Ex. 1009 ¶ 35.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,098,756 - Amphenol Corp. v. PPC Broadband, Inc.All claims unpatentablePTAB · Feb 19, 2025 · IPR2023-01363 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1, 2, and 10–13 are unpatentable as obvious over the stated combinations of Holmberg, Battey, Blankenship, and Cowen.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least 1 year of experience related to communication networks or the equivalent.” Pet. 7. Petitioner further contends that “[a]dditional education could substitute for professional experience or significant experience in the field could substitute for formal education.” Id. at 7–8 (citing Ex. 1003 ¶¶ 29–31). Dr. Eldering agrees that one of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least one year of experience related to communication networks or the equivalent.” Ex. 2001 ¶ 24. According to Dr. Eldering, “[a] person with less relevant practical experience but with additional experience would also qualify.” Id. Patent Owner contends that” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Although Patent Owner disagrees with Petitioner’s construction, it contends “the Board need not resolve this claim construction dispute because Petitioner’s proposed grounds 1-5 are all insufficient under either construction.” PO Resp. 19. Upon review of the parties’ arguments and the prior art of record, we determine that no claim terms require express construction for purposes of this decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For example, we discuss below in Section III.G why we do not reach the claim construction issue presented by Petitioner.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We find that Holmberg expressly contemplates using its wall box within multi-dwelling units, notes that multi-dwelling wall boxes in the prior art were “typically provided” on every floor, and discloses that the multi-dwelling wall boxes would contain optical couplings for each resident on a given floor. Ex. 1004 ¶¶ 7, 34; Pet. Reply 8–10. In view of these disclosures, we credit the testimony of Dr. Kiaei that one of ordinary skill in the art would have sought to use Holmberg’s wall box in multi-dwelling units and would have seen a need to access the area behind spice tray 230 to connect and disconnect subscribers. Ex. 1003 ¶ 92; Ex. 1033 ¶¶ 7–8. Moreover, even if Holmberg were limited to mid-span locations and distributing drop cables, as opposed to distribution cables for individual subscribers, as asserted by Patent Owner, Patent Owner does not dispute that a technician would still need periodic access to the area behind splice tray 230 in these mid-span devices. Tr. 38:3–39:1 (counsel agreeing that one would need to access the area behind splice tray 230 in Holmberg, albeit in “rare occasions”); Ex. 1003 ¶¶ 90–92; Ex. 1033 ¶¶ 7–8. Thus, whether used in the manner contemplated by Petitioner or Patent Owner, Petitioner persuasively demonstrates that access to the space behind splice tray 230 in Holmberg would be necessary. With access behind splice tray 230 required, Petitioner persuasively demonstrates that one of ordinary skill in the art would have seen a benefit to replacing Holmberg’s fasteners or screws with a hinged connection, such as that disclosed in Battey, to allow easier access to the area behind the splice tray. Pet. 41 (citing Ex. 1005 ¶ 39 (disclosing that a rotatable splice tray or shelf would “provide[] full and convenient access to the splice tray”)). First, Petitioner and Dr. Kiaei persuasively demonstrate that once the fibers of Holmberg are routed from behind splice tray 230 and the distribution cables spooled on this tray, a technician could not reasonably access fiber optic cables stored behind splice tray 230 without releasing or opening splice tray 230. Pet. Reply 14–15 (citing Ex. 1023, 60:20–61:15); Ex. 1033 ¶¶ 31–32. Second, Petitioner persuasively demonstrates that without a hinged connection, the technician would have to either hold the splice tray of Holmberg with one hand while performing the necessary routing and splicing steps, two screws would need to remain in place (essentially replicating a hinge), or the tray would have to be left to dangle, supported only by the routed and spliced fibers. Pet. Reply 19–20.” slip op. at 22
- Strike new argumentNew argument consideredDecided for petitioner
“Allegedly New Arguments on Reply Patent Owner contends that Petitioner’s arguments regarding the benefits of a hinged connection when performing the splicing and routing steps should be dismissed or ignored because they were improperly raised for the first time on reply. Sur-reply 19–20. We disagree. The Petition asserts that one of ordinary skill in the art would have sought to add a hinged connection, such as that disclosed in Battey, in Holmberg and would have seen a benefit to so doing. Pet. 40–44. Petitioner did not change its proposed combination or its stated rationale in its Reply. Rather, in response to Patent Owner’s counter-arguments, Petitioner expands upon the benefits of its proposed combination, i.e., the substitution of a hinged connection in place of fasteners. Pet. Reply 15–21. This is permissible, as a reply may properly expand on or extend previously raised arguments relating to the motivation to make the proposed changes to the prior art. See Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1385 (Fed. Cir. 2023) (explaining that the reply arguments properly relied on the same legal ground, the same prior art references, and same legal argument—the motivation to make the proposed changes to the prior art reference).” slip op. at 25
Patent outcomesUS 9,008,483 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,008,483 - Apple Inc. v. RJ Technology LLCSome claims unpatentablePTAB · Feb 18, 2025 · IPR2023-01350 · APJ Jon B Tornquist · IPR · Final written decision
Claims 5–10 are unpatentable as obvious; claims 11–14 were not shown unpatentable because the evidence did not establish the claimed capacity retention after 400 cycles.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art “would have held a Bachelor’s degree in chemistry or chemical engineering, with at least 4 years of experience in cell design, electrochemical techniques, and battery materials development.” Pet. 4. Petitioner further contends that a “Master’s Degree can substitute[] for some of the relevant experience,” and “[e]quivalent training with battery specific experience can accommodate other degreed fields.” Id. 9 The parties here do not address objective evidence of nonobviousness. Patent Owner does not dispute Petitioner’s definition of the ordinarily skilled artisan. PO Resp. 20. We adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the ’641 patent, the prior art of record, and the parties’ arguments.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties agree that the term “charge cut-off voltage” is “the maximum voltage to which the battery is configured to be charged.” PO Resp 21–22; Pet. Reply 1. The parties dispute, however, whether the “charge cut-off voltage” is a “battery property” or “the voltage applied to the battery during charging.” PO Resp. 21–24; Pet. Reply 1–6. We need not resolve the precise meaning of “charge cut-off voltage” because there is no dispute that Yamaki discloses this limitation under either party’s interpretation of the claim term. Upon review of the prior art and the parties’ arguments, we determine that no terms of the ’641 patent require express construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))); Pet. Reply 1 (asserting that the challenged claims are unpatentable under either parties’ construction of “charge cut-off voltage”).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Patent Owner’s arguments do not persuasively undermine Petitioner’s position. Sakamoto expressly discloses setting the ratio of negative to positive electrode active material in the range of 1.05 to 1.30. Ex. 1005 ¶ 8. Sakamoto also explains why this range is preferable, i.e., if the ratio is roughly equal “the charge-discharge cycle performance is insufficient due to significant deterioration from charging and discharging,” and if the ratio is 10 Citations to the prosecution history of Yamaki are to the page numbers added to the lower right corner of the document. too high “too much of the compound does not participate in charging and discharging.” Id. ¶¶ 6, 8. These disclosures are sufficient to explain why one of ordinary skill in the art would have found it obvious to select the ratios disclosed in Sakamoto in Yamaki. Id. ¶ 8 (providing a secondary battery with a capacity ratio between 1.05 and 1.30 and noting that by setting the ratio within this range the resulting secondary lithium battery is “safe due to low risk of heat being generated and an explosion occurring”). We also disagree that Sakamoto teaches away from elevated voltages or from increasing the amount of lithium in circulation. See PO Resp. 29. Contrary to Patent Owner’s arguments, Sakamoto provides no general teaching against using a charge cut-off voltage above 4.2 V, or against increasing the level of lithium in circulation. Nor does Sakamoto “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather, Sakamoto warns against setting the reversible capacities of the positive and negative electrode substantially equal as this may result in excess lithium plating on the surface of the electrode. Ex. 1005 ¶¶ 6, 8. We agree with Petitioner that this disclosure would lead one of ordinary skill in the art to design a battery with a higher capacity in the negative electrode active material than the positive electrode active material. Pet. 11–12.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We also disagree that Sakamoto teaches away from elevated voltages or from increasing the amount of lithium in circulation. See PO Resp. 29. Contrary to Patent Owner’s arguments, Sakamoto provides no general teaching against using a charge cut-off voltage above 4.2 V, or against increasing the level of lithium in circulation. Nor does Sakamoto “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather, Sakamoto warns against setting the reversible capacities of the positive and negative electrode substantially equal as this may result in excess lithium plating on the surface of the electrode. Ex. 1005 ¶¶ 6, 8. We agree with Petitioner that this disclosure would lead one of ordinary skill in the art to design a battery with a higher capacity in the negative electrode active material than the positive electrode active material. Pet. 11–12.” slip op. at 15
Patent outcomesUS 7,749,641 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,749,641 - Opticis Co., Ltd. v. Inneos LLCAll claims unpatentablePTAB · Jan 29, 2025 · IPR2023-01256 · APJ Terry J Owens · IPR · Final written decision
Claims 1, 2, 6, 7, and 9 are unpatentable as obvious over Kurita and Lemoff, with the Board declining to reach the remaining grounds.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“We accept the level of ordinary skill in the art stated by Petitioner and agreed with by Patent Owner with the exception of the open-ended language appears consistent with the ’416 patent and the prior art of record.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“describe elements that are not affirmatively recited in the claims, and in view of the “bedrock principle of patent law that the claims of a patent define the invention,” we conclude that none of the unrecited limitations identified by Patent Owner are required by the claims. See Thorner v. Sony Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (explaining that the standard for disavowal is “exacting,” and the use of “the present invention” is not necessarily sufficient to meet this standard).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“art would not have modified Kurita in view of Lemoff because Lemoff positions the signal emitters near the fiber to emulate WDM without the need for an external optical multiplexer or a similar device and discourages using optical wavelength multiplexers for short distances because the complexity of the design is often cost prohibitive (PO Resp. 47–48), Lemoff does not appear to limit the usefulness of the fiber connector to any particular optical signal transmission distance. Petitioner relies upon Lemoff for a suggestion to combine Lemoff’s fiber connector configuration teachings with Kurita’s multiplexer teachings to enable fibers to be plugged Fig. 2) (Pet 29, 31; Reply 17–18). Regarding Patent Owner’s argument that one of ordinary skill in the art would not have combined Lemoff’s receptacle and ferrule with discrete components in Kurita because the fiber would need to be manually fixed and aligned with or without a ferrule and, therefore, would serve no purpose (PO Resp. 48), Lemoff’s fiber connector appears to fix and align the fiber adequately for wavelength division multiplexing without manual fixation or alignment being required (Ex. 1006, 5:65–6:2, Fig. 2; Reply 18). The challenged claims do not require any greater degree of fixing and alignment than that provided by Lemoff’s fiber connector. Regarding Patent Owner argument that Lemoff’s device is not physically combinable with Kurita’s WDM multiplexer due to Lemoff’s device’s small size (PO Resp. 47–48; Reply 17–18), “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art” (In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Accordingly, we are not persuaded by Patent Owner’s argument.” slip op. at 26
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“stopped single optical fiber because fixing it in place does not passively align it with the optical components (PO Resp. at 35–37) is not persuasive because fixing Kurita’s fiber (40) in place in accord with Lemoff’s teaching regarding the ferrule (255) inserted until being stopped by the receptacle (260) (Ex. 1006, 5:50–6:15, Fig. 2) would align Kurita’s optical array (20), and lens (30)) (Ex. 1004 Fig. 3) passively in the same manner that Lemoff’s ferrule (255), after being inserted until stopped by the receptacle (260), passively aligns the optical fiber (250) with the optical components (optical imaging element 220 and light emitters within emission apertures 120) (Ex. 1006, 5:50–6:15, Fig. 2; Reply 15–16). Regarding Patent Owner’s argument that the light from each of Kurita’s lasers (11) depicted in Figure 3 cannot pass through a separate focusing lens (30) pie shaped sector because the lasers (11) and collimating lenses (21) are arranged linearly rather than being arranged about a circular axis (PO Resp. at 37–42), we do not agree. Claim 1 requires “focusing means having n separate radial sectors on its surface, and each of said n collimated beams passes through a separate one of said n sectors of said focusing means” (Ex. 1001, 5:34–37), claim 2 requires “four lasers and four collimating lenses are each formed in a two-dimensional, two by two array [centered on the focal axis of lens 30], wherein said focusing means is a single focusing lens, and wherein each radial sector is a pie-shaped quadrant” (id. at 5:41–44), and claim 7 requires “focusing means having four separate quadrants on its surface, and each of said four collimated beams passes through a separate one of said quadrants of said focusing means” (id. at 6:35–38). Kurita meets those claim requirements. Kurita’s two by two array (10A) of lasers (11), collimating lens (21) array (20), and focusing lens (30) are shown in Kurita’s Figure 3 (cropped) as follows: The image is a portion of Kurita’s Figure 3 showing Kurita’s laser array, collimating lens array, and focusing lens (30). Relative to a point at the center of the laser array (10A) or the collimating lens array (20), each laser (11) and each collimating lens (21) is in a separate quadrant that can be a quadrant of a circle (pie-shape) on lens 30 (Reply 12– 13, Ex. 1003 ¶¶ 85–91).” slip op. at 23
Patent outcomesUS 7,198,416 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,198,416 - PTAB · Jan 27, 2025 · IPR2024-01142 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution on claims 5, 6, 8, 13, 14, 16, and 18 under § 314(a), concluding the Fintiv factors favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“denial because district court is very likely to address patentability issues at trial before we would issue a final written decision. Factors 3 and 4 weigh marginally against discretionary denial. Factor 5 either weighs in favor of discretionary denial or is neutral, but even if it were neutral, factor 2 alone outweighs the marginal weight of factors 3 and 4. Based on our assessment, we determine that Fintiv Factors 1–5 favor exercising discretion to deny institution. With that determination in mind, we proceed to evaluate Fintiv Factor 6. G. Fintiv Factor 6: Other Circumstances that Impact the Board’s Exercise” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“We further note that Petitioner’s general view that it would have been obvious to a person of ordinary skill in the art to modify Jung to arrive at the pertinent limitation is not well supported and somewhat circular. See Pet. 42–43. It is inadequately explained why a skilled artisan would have reasonably sought to modify Jung so that it then “expressly teaches” what is required by the claims, as is advanced by Petitioner. See id. at 42. It is a dubious proposition that simply seeking to account for the requirements of the challenged claims serves as suitable reasoning that would have prompted modification of the “express[] teach[ings]” of a reference.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[A] person of ordinary skill in the art at the time of the alleged invention of the ’868 patent (“POSITA”) would have had a B.S. in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems. Ex-1003, ¶ 48. A POSITA would also have familiarity with the wireless standards and well-known protocols for accessing wireless networks. Id. More education may supplement practical experience or vice versa. Id. Pet. 20–21. Patent Owner does not offer an assessment of its own, or dispute Petitioner’s proposed level of ordinary skill in the art. For this decision, we adopt Petitioner’s proposed level of ordinary skill.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“proceeding. See Pet. 12. Patent Owner provides a construction of the phrase “to derive, based on a beam reference signal of the network beam, a UE beam,” which Patent Owner contends is not necessary to substantiate its arguments, but is offered to “elucidate[] the distinction between the ’868 Patent and the alleged prior art from the reasons” offered by Patent Owner in its Preliminary Response. PO Resp. 8. In particular, Patent Owner contends that the above-noted phrase means “selecting a UE beam from a plurality of candidate UE beams based on a beam reference signal of the network beam.” Id. Patent Owner explains the basis for its proposed construction of the relevant phrase through citation to content of the ’868 patent including Figures 21 and 22 of the patent along with description of those Figures. See Prelim. Resp. 8–10. In reviewing the basis for Patent Owner’s proposed claim construction, we conclude that the construction has ample and adequate support in the record before us. We determine that no other claim term need be addressed expressly 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 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,887,868
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.