- Apple, Inc. v. Corephotonics Ltd.No claims unpatentablePTAB · Nov 8, 2021 · IPR2020-00905 · APJ John F Horvath · IPR · Final written decision
Claims 1–16, 18, 23–38, and 40 were not shown unpatentable because the asserted obviousness combinations did not establish a fused image with both Wide perspective and position POV.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In a dual-aperture camera image plane, as seen by each sub-camera (and respective image sensor), a given object will be shifted and have different perspective (shape). This is referred to as point-of-view (POV). The system output image can have the shape and position of either sub-camera image or the shape or position of a combination thereof. If the output image retains the Wide image shape then it has the Wide perspective POV. If it retains the Wide camera position then it has the Wide position POV. The same applies for Tele images position and perspective. As used in this description, the perspective POV may be of the Wide or Tele sub-cameras, while the position POV may shift continuously between the Wide and Tele sub-cameras. In fused images, it is possible to register Tele image pixels to a matching pixel set within the Wide image pixels, in which case the output image will retain the Wide POV ("Wide fusion"). Ex. 1001, 5:10–26.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We find Petitioner sets forth sufficient reasoning with rational underpinning to combine the teachings of Parulski and Konno. Parulski lenses, but fails to give lens prescription data for the two camera lenses. Konno discloses lens prescription data for a dual-lens camera utilizing two thin lenses. The combination, therefore, is one of familiar elements according to known methods to obtain predictable results or a substitution of one element for another known in the field to obtain a predictable result. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. As we explain in § II.D.1, supra, claims 1 and 23 require generating a fused image having a Wide perspective POV and a Wide position POV. Petitioner’s only argument for how the combination of Parulski and Konno teaches this limitation is Parulski’s teaching of generating a fused image having a Wide position POV, i.e., having the field of view (FOV) of the Wide camera. See Pet. Reply 13 (“Parulski teaches . . . producing an output image that maintains the Wide position POV or the field of view of the Wide camera when the image was captured.”). Petitioner fails to demonstrate how Parulski’s image fusion method would also maintain the Wide perspective POV as required by independent claims 1 and 23. Accordingly, for the reasons discussed above, Petitioner has failed to demonstrate by a preponderance of evidence that claims 1 and 23 are unpatentable as obvious over the combination of Parulski and Konno.” slip op. at 21
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Patent Owner argues that Petitioner and Dr. Durand have failed to demonstrate that Parulski teaches “the ‘fused image with a point of view (POV) of the Wide camera’ limitation” because their “sole argument that Parulski meets this limitation is based on the output [image] having the ‘wide image’s field of view.’” PO Resp. 29 (citing Ex. 1003 ¶ 51). Patent Owner further argues that “[n]othing in Parulski suggests that whatever image data from the tele image that might be ‘fused’ into the output would be modified to have the shapes and positions from the wide image POV” and “nothing in Dr. Durand’s declaration even attempts to establish [that] this admitted during his deposition that he had not provided an opinion about whether Parulski generates a fused image having both a Wide perspective POV and a Wide position POV. See PO Sur-Reply 5 (citing Ex. 2041, 52:25–54:20). We agree with Patent Owner. As we explain in § II.D.1, supra, claims 1 and 23 require generating a fused image having a Wide perspective POV and a Wide position POV. Petitioner’s only argument for how the combination of Parulski and Konno teaches this limitation is Parulski’s teaching of generating a fused image having a Wide position POV, i.e., having the field of view (FOV) of the Wide camera. See Pet. Reply 13 (“Parulski teaches . . . producing an output image that maintains the Wide position POV or the field of view of the Wide camera when the image was captured.”). Petitioner fails to demonstrate how Parulski’s image fusion method would also maintain the Wide perspective POV as required by independent claims 1 and 23.” slip op. at 20
Patent outcomesUS 10,225,479 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,225,479 - Apple Inc. v. Corephotonics, Ltd.Rehearing grantedPTAB · Nov 4, 2021 · IPR2020-00487 · APJ Monica S Ullagaddi · IPR · Rehearing
Claims 1–18 are unpatentable under §103: claims 1–4, 7, 10–13, and 16 over Golan and Martin; the remaining claims over combinations adding Ahiska, Levey, or Parulski.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We initially concluded that Petitioner failed to establish a reasonable likelihood of prevailing in demonstrating that the challenged claims are unpatentable. Paper 9 (“Decision Denying Institution” or “DDI”). Specifically, we concluded that Petitioner’s rationale for combining Golan and Martin was not sufficiently supported by a rational underpinning. Dec. 26 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Accordingly, we declined to institute trial on the challenged claims of the ’233 patent. Id. Petitioner filed a request for rehearing (Paper 10, “Rehearing Request” or “Reh’g Req.”) of our Decision Denying Institution. We granted that request and instituted trial (Paper 13, “Institution Decision” or “Inst. Dec.”) on all challenged claims on all grounds set forth in the Petition. Patent Owner filed a Response (Paper 16, “Patent Owner Response” or “PO. Resp.”).1 Petitioner filed a Reply (Paper 25, “Petitioner’s Reply” or “Pet.” slip op. at 2
- Expert testimonyOther
“Dr. Durand testifies that “a POSITA would have understood that Martin’s teachings of critical alignment for stable transition between images of different points of view apply to electronic camera systems providing continuous zoom video output [i]mages as taught in Golan, regardless of whether a three dimensional illusion is provided.” Ex. 1003 ¶ 59. Citing Ahiska (Ex. 1007), Border (Ex. 1009), Orimoto (Ex. 1014), and Hansen (Ex. 1019) to support his testimony, Durand further testifies that It was well known in the art that for seamless transition between two images of different points of views in continuous zoom video applications, when calibration between two cameras (e.g., the electronic calibration of Golan) is not sufficient alone (e.g., because of shocking, vibration, thermal variation, etc.), image registration of two images from two imaging sections for position matching (e.g., critical alignment of Martin) may be used. Id. ¶ 57 (citing Ex. 1007, 4:58–62, 10:2–5; Ex. 1014, 1:63–2:1; Ex. 1019, 1059; Ex. 1009 ¶¶ 41, 42). The portion of Hansen (Ex. 1019) cited by Dr. Durand addresses how extrinsic calibration errors occur and “a method to recalibrate extrinsic parameters online to correct drift or bias.” Ex. 1019, 1059 (emphasis omitted). Orimoto discloses how misalignment occurs, irrespective of “how exactly the dual lens camera has been conditioned and adjusted by the manufacturer.” Ex. 1014, 1:63–2:1. Border addresses image registration as an alternative to correspondence (i.e., calibration). Ex. 1009 ¶¶ 41, 42. And Ahiska disclose image registration or matching, when calibration is insufficient, to provide a seamless transition between master and slave cameras and “create the quality of a continuous zoom function.” Ex. 1007, 4:58–62, 10:2–5 (“[i]f calibration between the [wide-angle] master and slave cameras is insufficient alone, image registration or matching can be carried out,” “transition[ing] between the master view and the slave view as seamlessly as possible to create the quality of a continuous zoom function”). Petitioner’s third and fourth reasons for combining Golan and Martin are supported by Dr. Durand’s testimony quoted above, which is in turn supported by Ahiska and Border. The portions of Border cited by Dr. Durand address image registration as an alternative to correspondence (i.e., calibration). Ex. 1009 ¶¶ 41, 42. The portions of Ahiska cited by Dr. Durand address the additional step of image registration or matching, when calibration is insufficient, to provide a seamless transition between master and slave cameras and “create the quality of a continuous zoom function.” Ex. 1007, 4:58–62, 10:2–5. Thus, each of Border and Ahiska show a relation between electronic calibration and registration. As such, and for the foregoing reasons, we are persuaded that Petitioner’s rationale for combining Golan and Martin is supported by sufficient rational underpinning, based on the entirety of the record developed at trial. See KSR, 550 at 418.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends [A] Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or the equivalent degree in electrical and/or computer engineering or a related field and 2–3 years of experience in imaging systems including optics and image processing. Pet. 5. Petitioner supports its contention with the testimony of Dr. Durand. Ex. 1003 ¶ 17. Patent Owner “adopts Petitioner’s definition of the level of ordinary skill. . . .” PO Resp. 7 (citing Pet. 3; Ex. 2015 ¶¶ 31–33). The level of ordinary skill in the art proposed by Petitioner is consistent with the ’233 patent and the asserted prior art. Where pertinent, we apply Petitioner’s definition in making the findings and conclusions rendered in this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“understood ‘reduce an image jump effect seen in video output images’ to mean “reduce a discontinuous image change in video output images.’” Pet. 6 (citing Ex. 1003 ¶¶ 41–43). Petitioner asserts the Specification supports this proposed construction. Id. (citing Ex. 1001, 10:30–40). Patent Owner “adopts, for this IPR proceeding only, Petitioner’s proposed construction for the phrase ‘reduce an image jump effect seen in video output images’ and appl[ies] it in [its] analysis herein.” PO Resp. 8 (citing Ex. 2015 ¶¶ 34–36). We do not discern a dispute between the parties regarding this limitation and we need not expressly construe this limitation to resolve the controversy before us. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,661,233 - Apple Inc. v. Corephotonics, Ltd.Some claims unpatentablePTAB · Nov 2, 2021 · IPR2020-00878 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 2, 4–6, 9–15, 17, 18, 20–23, and 25–29 are unpatentable; claims 3, 8, 16, 19, 24, and 30 were not shown unpatentable.
RulingsFinal written decision- BurdenMixed
“35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 1, 2, 4–6, 9–15, 17, 18, 20–23, and 25–29 of the ’897 patent are unpatentable and that Petitioner has not shown, by a preponderance of the evidence, that claims 3, 8, 16, 19, 24, and 30 of the ’897 patent are unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would include someone who had, at the priority date of the ’897 Patent, (i) a Bachelor’s degree in Physics, Optical Sciences, or equivalent training, as well as (ii) approximately three years of experience in designing multi-lens optical systems. Such a person would have had experience in analyzing, tolerancing, adjusting, and optimizing multi-lens systems for manufacturing, and would have been familiar with the specifications of lens systems and their fabrication. In addition, a POSITA [person of ordinary skill in the art] would have known how to use lens design software such as Code V, Oslo, or Zemax, and would have taken a lens design course. Pet. 6–7 (citing Ex. 1003 ¶¶ 19–20). Patent Owner applied the same level of skill for the purposes of this IPR. PO Resp. 14–15 (citing Ex. 2001 ¶ 19). We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Therefore, for purposes of this Final Written Decision, we adopt Petitioner’s assessment of the level of skill in the art because it is consistent with the ’897 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Patent Owner argues that no “dispute between the parties in this IPR depends on the construction of EFL, TTL, or of any other claim term [and] submits that the Board should refrain from construing any terms in the patent for the purposes of this proceeding.” PO Resp. 17. Petitioner does not respond to this argument. See generally Pet. Reply. We agree with Patent Owner. If we were to adopt either construction, it would not change the determination made in this Decision. Thus, we decline to construe any claim terms for purposes of this Final Written Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“unpatentable under 35 U.S.C. § 102 as anticipated by Ogino. Pet. 10–40. Patent Owner does not present arguments related to this ground. See generally PO Resp. For the reasons that follow, we are persuaded that the evidence supports Petitioner’s arguments and thus, Petitioner establishes by a preponderance of the evidence that claims 1, 4, 9–15, 17, 20, and 25–29 are unpatentable under 35 U.S.C. § 102 as anticipated by Ogino.” slip op. at 17
Patent outcomesUS 10,330,897 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,330,897 - Apple Inc. v. Corephotonics, Ltd.Some claims unpatentablePTAB · Nov 2, 2021 · IPR2020-00877 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 2, 5–7, 11–13, 15, 16, 18, 20, and 21 are unpatentable as obvious; claims 3 and 4 were not shown unpatentable because the May combination was insufficiently supported.
RulingsFinal written decision- BurdenMixed
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). The burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, 800 F.3d at 1378 (citing Tech. Licensing Corp. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in an inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” Magnum, 829 F.3d at 1380. Thus, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art render the challenged claims unpatentable. slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends [A] person of ordinary skill in the art (“POSITA”) would include someone who had, as of the priority date of the ’840 Patent (i) a Bachelor’s degree in Physics, Optical Sciences, or equivalent training, as well as (ii) approximately three years of experience in designing miniature lens systems for mobile device applications. . . . Such a person would have had experience in analyzing, tolerancing, adjusting, and optimizing multi-lens systems, and would have been familiar with the specifications of lens systems, especially lenses configured for use in mobile devices, such as cell phones. . . . In addition, a POSITA would have known how to use lens design software such as Code V, Oslo, or Zemax, and would have taken a lens design course. . . . Such a POSITA would have been familiar with photographic lenses and with mechanical and electronic devices. Lack of work experience can be remedied by additional education, and vice versa. Pet. 6–7 (citing Ex. 1003, 10). Patent Owner “applies the level of ordinary skill in the art set forth in the petition and used by the Board in its Institution Decision.” PO Resp. 3 (Inst. Dec. 8). We determine that the level of ordinary skill in the art proposed by Petitioner is consistent with the ’840 patent and the asserted prior art. We apply Petitioner’s definition in making the findings and conclusions rendered in this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Independent claim 1 recites “the Telephoto lens unit and the Wide lens unit having, respectively, total track length (TTL)/effective focal length (EFL) ratios smaller and larger than 1 and defining separate Telephoto and Wide optical paths.” Ex. 1001, 19:48–52. Petitioner asserts that “a POSITA would find, in light of the specification, the term ‘total track length (TTL)’ to include ‘the length of the optical axis spacing between the object-side surface of the first lens element and the image plane.’” Pet. 8 (citing Ex. 1003, 20) (emphasis omitted). Petitioner further asserts that, although the Specification of the ’840 patent does not expressly define EFL, “its meaning is well known in the art, as exemplified in Li ([Ex.] 1007), which states that ‘[t]he focal length of a lens assembly [is] also referred to as the effective focal length[.]’” Pet. 8–9 (quoting Ex. 1007, 2:59–61) (alterations in the original). Patent Owner “does not believe that any terms require construction to resolve the disputes addressed in this response.” PO Resp. 3. We do not discern a dispute as to the claim terms TTL and EFL in this proceeding and as such, we need not expressly construe these terms. Nidec Motor Corp., 868 F.3d at 1017. .” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“(2) Discussion of Rationale for Combining We have reviewed the record developed at trial including the cited portions of Parulski, Huang, and Tang. We determine that Petitioner has supported its seven reasons for combining Parulski, Huang, and Tang with sufficient rational underpinning evidenced by the exhibits cited above. Patent Owner does not dispute Petitioner’s rationale for combining. See generally PO Resp. We determine that Petitioner has shown that an ordinarily skilled artisan would have been motivated to combine Parulski, Huang, and Tang, and that such motivation is supported by sufficient rational underpinning. Based on the complete record developed at trial, we determine that cited portions of Parulski, Huang, and Tang sufficiently support Petitioner’s contentions with respect to the telephoto lens unit and the wide lens unit as claimed.” slip op. at 22
Patent outcomesUS 10,288,840 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,288,840 - PTAB · Oct 26, 2021 · IPR2021-00715 · APJ Christopher L Ogden · IPR · Institution
The Board instituted inter partes review of claims 8, 13–16, and 18 on both obviousness grounds because Roku showed a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“(see Prelim. Resp. 49), a decision instituting or denying inter partes review in this proceeding is due by October 28, 2021. See 35 U.S.C. § 314(b)(1). Because the trial date in the parallel district court proceeding is set for roughly six months before the Board’s statutory deadline for issuing a final written decision, this factor weighs in favor of denying institution.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“at this stage, that a person of ordinary skill in the art would have had reason to modify Larsson’s system by incorporating encryption as taught in Ortiz, to achieve limitation 8[m] with a reasonable expectation of success. And for all the above reasons, having considered Roku’s arguments and supporting declaratory testimony regarding claim 8 as a whole and Flexiworld’s responsive arguments and evidence, we determine that Roku has shown that there is a reasonable likelihood that it would prevail with respect to claim 8.” slip op. at 34
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field with at least two years of experience developing software,” and “[a] person with less education but more relevant practical experience may also meet this standard.” Pet. 12 (citing Ex. 1002 ¶¶ 24–25). Flexiworld does not address the level of ordinary skill in the art in its Preliminary Response. Because Roku’s uncontested articulation of that level of skill is supported by testimonial evidence and appears reasonable at this stage in light of the subject matter of the ’114 patent, we adopt it for this decision. If Flexiworld contests this articulation at trial, we will consider any evidence that Flexiworld submits, in light of the full trial record.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“dispute the construction of “one or more servers” and “one or more devices.” Pet. 11. But Roku argues that these constructions are irrelevant for this proceeding, and Roku “does not believe that any claim constructions are needed.” Id. Flexiworld also refers to this dispute in the Related Action, but does not propose explicit constructions for these or any other terms. See Prelim. Resp. 8 (citing Ex. 2010). We agree that the meaning of “one or more servers” and “one or more devices” is not pertinent to the outcome of our decision. To the extent any term needs construction, we address the term in the arguments below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,346,114 - Juniper Networks, Inc. v. Correct Transmission, LLCInstitution deniedPTAB · Oct 22, 2021 · IPR2021-00814 · APJ Stephen E Belisle · IPR · Institution
The Board denied institution on claims 1–3, 6, 7, 9–15, 18–24, 26, 27, and 30–32 because neither obviousness ground showed a reasonable likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2020). We may not institute an inter partes review “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). Applying those standards, and upon consideration of the information presented in the Petition, Preliminary Response, and supplemental briefing, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of challenged claims 1–3, 6, 7, 9–15, 18–24, 26, 27, and 30–32 of the ’928 patent. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, constrained by the record before us, we deny institution of an inter partes review of the ’928 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a closely related field, and one to two years of experience in the design and development of network communication systems. Alternatively, a POSITA would have a Master’s degree or similar post-graduate work in electrical engineering, computer engineering, computer science, or a closely related field, and less years of design and development experience. Pet. 7 (citing Ex. 1003 ¶¶ 67–71). Patent Owner does not present an alternative definition at this stage of the proceeding. Prelim. Resp. 30. We regard Petitioner’s proposed definition as reasonable, and” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Petitioner does not propose any claim terms for construction. Pet. 7 (“For purposes of this proceeding, Petitioner construes each of the ’928 claim terms as having its ordinary and custom[ary] meaning.”). Although, Petitioner does submit that, “[f]or purposes of this IPR only, Petitioner relies on the claim scope positions Patent Owner has advanced in district court for ‘port definer module.’” Pet. 8. Similarly, Patent Owner argues each claim term should have its ordinary and customary meaning, except that, as in the parallel district court proceeding, the function of alleged means-plus-function term “port definer module” should be construed to be “designating any one physical link of the logical link and examining the designated link of the logical link.” Prelim. Resp. 11–12. We note that, in the Preliminary Response, Patent Owner does not appear to identify any structure in the Specification for performing that function. See generally Prelim. Resp. Regardless, we do not find that the express construction of any term is necessary for this decision. See 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.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner has not explained sufficiently, let alone with particularity, why the skilled artisan, but for hindsight, would have (1) taken Y.1731, which says nothing concerning aggregated physical links with a single logical link to which packets are directed; (2) then turned to the architectural basis for Y.1731, namely “Ethernet specification G.8010/Y.1306”; (3) then turned to standards “IEEE 802.1D, 802.1Q, and 802.3,” which are “account[ed] for” by G.8010/Y.1306, and specifically selected to pursue 802.3 from among those; (4) then, without any reference or indication in Y.1731 itself, turned specifically to standard IEEE 802.3ad within the set of 802.3 standards, and specifically to its disclosure of aggregated physical links with a single logical link; and then (5) upon making all of these connections, understood Y.1731 itself to disclose or teach aggregated physical links with a single logical link, particularly in the context of the Challenged Claims as a whole. See InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014) (“It appears that [the expert] relied on the [] patent itself as her roadmap for putting what she referred to as pieces of a ‘jigsaw puzzle’ together.”); Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)) (“To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.”). Although “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton” (KSR, 550 U.S. at 421), the Federal Circuit has observed that “‘the prejudice of hindsight bias’ often overlooks that the ‘genius of invention is often a combination of known elements which in hindsight seems preordained.’” Polaris Industries, Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068 (Fed. Cir. 2018).” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,768,928 - PTAB · Oct 13, 2021 · IPR2021-00713 · APJ Brent M Dougal · IPR · Institution
The Board instituted IPR on claims 7, 8, 10, 11, 14, 15, 17, and 19 on all petition grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“argue that the reason to combine Ikonen and Gu is insufficient. Prelim. Resp. 47–52. However, Patent Owner’s argument misidentifies the proposed combination. While Patent Owner argues that there is no reason “why a POSA would have been motivated to substitute Ikonen’s Bluetooth solution with Gu’s (HTTP and TCP/IP based) UPnP networking framework,” the actual combination appears to be to implement Gu’s UPnP framework on Ikonen’s wireless LAN. Pet. 42 (“UPnP relies on IP networking . . . which a POSA would have known to be compatible with Ikonen’s wireless LAN option.”); Ex. 1002 ¶ 140 (Petitioner’s declarant explaining that UPnP could be implemented over a wireless LAN); see also Pet. 40–42 (the section entitled “Motivation to Combine” includes no explicit references to Ikonen’s teaching of Bluetooth, but rather only discusses Ikonen’s wireless LAN). All of Patent Owner’s arguments over the reason to combine focus on Ikonen’s teaching of Bluetooth, rather than Ikonen’s wireless LAN. See Prelim. Resp. 47–52. But, as we view the Petition to clearly set forth a reasonable rationale to combine Gu’s UPnP with Ikonen’s wireless LAN, and to provide evidence in support, Patent Owner’s arguments do not identify any shortcomings that undermine Petitioner’s showing at this stage. We do note that the Petition often refers to both of Ikonen’s teachings of Bluetooth and wireless LAN when discussing Ikonen individually. But, the Petition only refers to Ikonen’s teachings of wireless LAN when discussing the combination with Gu.” slip op. at 14
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedReference not prior artDecided for patent owner
“the ’101 provisional for each claim element of claims 7, 8, 10, and 11 of the ’066 patent. Prelim. Resp. 39–40. In response to Petitioner’s arguments about the prior art status of Yamaguchi (Reply 1–5), Patent Owner offers the testimony of Todor Cooklev, Ph.D. (Ex. 2029) in support. Sur-reply 1–4. Patent Owner also relies on the testimony of Petitioner’s declarant Samrat Bhattacharjee, Ph.D. (Ex. 1002). Sur-reply 2. Based on the current record, and for the reasons discussed below, we agree with Patent Owner that claims 7, 8, 10, and 11 of the ’066 patent are supported by the ’101 provisional and therefore, Yamaguchi is not prior art.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“In essence, Petitioner has offered two positions as to the meaning of “wireless output device” in claim 7; one outlined in the Petition, supported by Petitioner’s declarant, Patent Owner, and Patent Owner’s declarant, and a second position outlined in the Reply that contradicts the Petition and is not supported by either of the declarants.10 It is on the basis of this new claim construction that Petitioner argues that the ’101 provisional does not provide support for this aspect of claim 7. As we reject Petitioner’s new claim construction as unsupported by the evidence, at this stage of the proceeding, it is unnecessary to review Petitioner’s argument that the wireless output device of claim 7 is unsupported by the ’101 provisional based on this claim construction.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 10,740,066 - Unified Patents, LLC v. Ideahub Inc.All claims unpatentablePTAB · Sep 15, 2021 · IPR2020-00702 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1 and 4 are unpatentable as obvious over Kalevo and Song; the revised contingent motion to amend with substitute claim 19 is denied for lack of written-description support.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityNot time barredDecided for petitioner
“On this record, we determine that we need not address whether the Unnamed RPIs were improperly excluded because, “even if [they] were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 32 (Oct. 6, 2020) (precedential) (“SharkNinja”). Like in SharkNinja, the Unnamed RPIs here are currently members of Unified. Unlike in SharkNinja, however, neither Petitioner nor any of the Unnamed RPIs were sued. Pet. Reply 18 (asserting that “[n]o Unified member is an RPI, especially because . . . to the best of Unified’s knowledge, none has been sued or threatened with suit by Ideahub,” and that thus, “there are no . . . time-bar issues”). Petitioner also asserts that none of the Unnamed RPIs have challenged the ’849 patent. Id. (asserting that “[n]o Unified member is an RPI, especially because . . . no Unified member has filed its own patent challenge to the ’849 patent” and that thus, “there are no estoppel . . . issues”). Accordingly, we determine that neither issues of time bar nor issues of estoppel are implicated. Under the Board’s precedential decision in Lumentum Holdings, Inc. v. Capella Photonics, Inc., the Board’s jurisdiction to consider a petition does not require a “correct” identification of all RPIs in a petition. IPR2015- 00739, Paper 38 at 6 (PTAB Mar. 4, 2016) (precedential); see also Blue Coat Sys., Inc. v. Finjan, Inc., IPR2016-01444, Paper 11 at 10 (PTAB July 18, 2017) (“Evidence [of failure to identify all RPIs] is, at best, suggestive of an issue that is not jurisdictional.”). The Federal Circuit has held that § 312(a)(2) is not jurisdictional. See Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019) (“[I]f a petition fails to identify all real parties in interest under § 312(a)(2), the Director can, and does, allow the petitioner to add a real party in interest.”) (quoting Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en banc)). In the present proceeding, there is no allegation that Petitioner’s exclusion of the Unnamed RPIs should result in termination of the proceeding or denial of institution of review for any reason other than for the alleged failure of a procedural requirement that can be corrected pursuant to Board precedent. Additionally, there is no allegation or evidence that any of the Unnamed RPIs is barred or estopped from this proceeding, or that Petitioner purposefully omitted any of the Unnamed RPIs to gain some advantage.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“After our Institution Decision, Patent Owner raised two claim construction issues in its Patent Owner Response: (1) “wherein the intra mode for the current block is determined by using a [first/second] set of one or more mathematical expressions, if the intra mode for the neighboring block is the [nondirectional/directional] mode” and (2) “wherein the second set of one or more mathematical expressions is different from the first set of one or more mathematical expressions.” PO Resp. 10–18. We determine that no construction of these terms is necessary for this Final Written Decision. 1. Other Claim Terms We discern no other terms in need of express interpretation. Accordingly, we apply the legal standards set forth above when reading the claims. C. THE PARTIES’ POST-INSTITUTION ARGUMENTS” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner proposes that a person of ordinary skill A person of ordinary skill in the art at the priority date for the ’849 Patent (“POSITA”) would have had a bachelor’s degree in electrical or computer engineering, or a closely related scientific field such as physics or computer science, and two years of work experience with video processing. A lack of experience can be remedied with additional education (e.g., a Master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 4–5 years). Pet. 10–11 (citing Ex. 1003 ¶ 48). Patent Owner does not dispute this definition of a person of ordinary skill. See generally PO Resp. Patent Owner’s expert, Dr. Reader, however, testifies that It is my opinion that one of ordinary skill in the art in the field of video compression in the 2009 time period, would have had a bachelor’s degree in electrical engineering or computer science, or an equivalent degree, and two to three years of experience in the field of video compression. Ex. 2001 ¶ 45. We see no meaningful distinction between these definitions relevant to the particular issues necessary to decide this case. We adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the level of skill reflected by the Specification and in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 13
- Strike new argumentNew argument consideredDecided for petitioner
“We do not agree with Patent Owner that Petitioner’s so-called “third” theory is untimely and should be disregarded. To begin with, there is no dispute that the theory is, at least, raised with respect to claim limitation [1.8]. See PO Sur-Reply 6. Patent Owner disputes the particularity of this contention, but we find that it is sufficiently clear. The theory is not complicated and the sentence, especially given the detailed explanation of the other theories and of how Kalevo works, is sufficient to provide notice. Moreover, the cited paragraph of Dr. Freedman’s First Declaration (Paragraph 140) provides additional detail to clarify the theory. Ex. 1003 ¶ 140. Petitioner’s reply does explain how this third theory fits into Patent Owner’s arguments and claim constructions, but Petitioner’s Reply does not expand the theory beyond the contours provided in the Petition. As for limitations [1.9] and [1.10], we also find that the third theory was disclosed. To begin with the cited sentence in limitation [1.8] and supporting paragraph from Dr. Freedman’s declaration discusses the mapping of both directional and non-directional modes to classes, thus including both limitations [1.8] and [1.9]. As Petitioner points out, the Petition’s analysis of limitation [1.9] repeatedly refers back the analysis for limitation [1.8] and explicitly describes on page 52 of the Petition that Additionally, as a further teaching of this limitation, for the above case in which block L is classified as context class C3 (mapped to from directional class D4) and block U is classified as context class C4 (mapped from any one of directional classes D5, D6, or D7), the determination of each neighboring block’s classification, and thus, the determination of the intra prediction mode for the neighboring block, is based on a second set of one or more mathematical expressions. Pet. 52. Finally, with respect limitation [1.10], we note that, although it is less clear, the analysis of limitation [1.10] does explain how classes C1–C6 are not the same in that they involve different underlying rules. Id. at 55–57. Finally, Patent Owner’s arguments that “the Petition provided no analysis as to how the mapping constitutes a mathematical expression that is used in the process of determining the current block’s intra mode” is belied by the Petition’s detailed explanation of how Kalevo operates. See Pet. 16–25. Although Petitioner supports this argument with new evidence in its Reply, the Reply does not raise a new issue or argument. See Chamberlain Group, Inc. v. One World Techs., Inc., 944 F.3d 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Moreover, Patent Owner has had an adequate opportunity to address this new evidence in its Sur-Reply. See In re NuVasive, Inc., 841 F.3d 966, 972 (Fed. Cir. 2016) (finding “an opportunity to respond was needed when the petitioner . . . newly pointed to a previously unmentioned portion of the . . . prior-art patent, even though it had earlier focused extensively on other portions of that prior-art patent”).” slip op. at 24
Patent outcomesUS 9,641,849 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,641,849 - NVIDIA Corporation v. Invensas CorporationAll claims unpatentablePTAB · Sep 1, 2021 · IPR2020-01735 · APJ Bryan F Moore · IPR · Final written decision
Claims 16–22 are unpatentable as obvious over Jaso and Stine1998, and over Jaso, Stine1998, and Pramanik1998.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner responds that, because Jaso discloses a damascene process with trenches, Patent Owner’s proposed claim construction is “unnecessary.” Reply 33. We agree that the damascene process of Jaso is the same damascene process to which Patent Owner seeks to limit this claim term. Patent Owner does not argue otherwise in its Sur-reply. See Sur-reply. Thus, we decline to construe the term “trenches in a dielectric layer.”” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“requirement that every claim directed to that invention be limited to encompass all of them.”) (citations omitted). Additionally, notwithstanding the importance of a specification, limitations in the specification must not be read into the claims absent lexicography or disclaimer/disavowal. Hill-Rom Services, Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention of the ’946 patent “would have had a Bachelor of Science degree in physics, chemistry, materials science, electrical engineering, mechanical engineering, or related discipline, in addition to 3–5 years of experience in the fabrication of integrated circuit devices. Additional years of experience could substitute for formal education, and vice versa.” Pet. 20 (citing Ex. 1002 ¶ 35).” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“look at Figure 8 and form any understanding of its structures at all” and thus, Dr. Boning’s opinions should be disregarded in their entirety. Id. at 43 (citing Ex. 2011 ¶¶ 181–189). We find that the explanations by Dr. Boning are a reasonable attempt to explain what one of ordinary skill in the art, with general background knowledge in the art, would glean from Figure 8 of Stine1998 and are supported by additional cited references, such as Maly1991 and the StineThesis. See, e.g., Ex. 1052 ¶¶ 72 (citing Maly Fig. 4), 92 (citing Ex. 2016 (StineThesis), 92 (Ex. 2016, 165), 93. “[A] skilled artisan’s background knowledge is relevant to the reading of the prior art on which the obviousness challenge is based and . . . it is permissible, and sometimes even necessary, to establish such background knowledge by pointing to other prior art. Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1027 (Fed. Cir. 2017). Despite Patent Owner’s criticism, Dr. Boning’s testimony cited by Patent Owner evidences Dr. Boning’s opinion that a person of ordinary skill in the art was aware of common artifacts and limitations in downscaled layouts. Reply 23 (citing PO Resp. 37–38; Ex. 1052 ¶¶ 65, 98).12 Dr. 12 Dr. Givens testifies that, because there is a discrepancy in Dr. Boning’s testimony regarding the inserts for various regions of Figure 8 of Stine1998 and the lack of any other inserts, one of ordinary skill would not assume the white areas contain no metal lines. Ex. 2011 ¶¶ 185–186. And, based on his magnification experiment, Dr. Givens testifies that Figure 4 of Maly1991 may contain metal lines. Id. We consider the fact that Dr. Givens testimony is largely based on what a person of ordinary skill could discern from Figure the general background knowledge of one of ordinary skill. Ex. 1002 ¶¶ 65 (citing Ex. 1009 (Mead Textbook)), 74 (citing Ex. 1010 (Rabaey Textbook)), 75, 76, 152–157. Thus, we credit Dr. Boning’s testimony and do not disregard his testimony wholesale based on those alleged inconsistencies. Below, we focus on the testimony that is at issue in this IPR.” slip op. at 35
Patent outcomesUS 6,849,946 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 6,849,946 - NVIDIA Corporation v. Invensas CorporationAll claims unpatentablePTAB · Sep 1, 2021 · IPR2020-00602 · APJ Bryan F Moore · IPR · Final written decision
Claims 16–22 are unpatentable as obvious over Jaso and Stine1998, and independently over Jaso, Stine1998, and Pramanik1998.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“requirement that every claim directed to that invention be limited to encompass all of them.”) (citations omitted). Additionally, notwithstanding the importance of a specification, limitations in the specification must not be read into the claims absent lexicography or disclaimer/disavowal. Hill-Rom Services, Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). Petitioner contends that the use of the transitional phrase term “comprising” in the claim means that the claim allows additional intervening structures. Reply 33 (citing Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997)). Additionally, Petitioner contends that specifying that the region to which the dummy trenches are added has no conductive structures would add a negative limitation to the claim and require “express disclaimer or independent lexicography in the written description that would justify adding [it].” See id. (citing Omega Engineering, Inc, v. Raytek Corp., 334 F.3d 1314, 1322–23 (Fed. Cir. 2003)) (quotation added here).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art at the time of the invention of the ’946 patent “would have had a Bachelor of Science degree in physics, chemistry, materials science, electrical engineering, mechanical engineering, or related discipline, in addition to 3–5 years of experience in the fabrication of integrated circuit devices. Additional years of experience could substitute for formal education, and vice versa.” Pet. 20 (citing Ex. 1002 ¶ 35). qualifications of a POSA for the purposes of this IPR.” PO Resp. 10. We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Therefore, for purposes of this Final Written Decision, we adopt Petitioner’s assessment of the level of skill in the art because it is consistent with the ’946 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Overall, we have considered all of Patent Owner’s arguments but do not find that they undermine the overall credibility of Dr. Boning. However, we will consider any question regarding his credibility on any specific issue raised by Patent Owner in the obviousness analysis below, where appropriate.” slip op. at 17
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“In addition, we are not persuaded by Patent Owner’s argument that Stine1998 is not “salient to the Relevant Problems disclosed in the ’946 patent” because Stine1998 “relates to oxide CMP in a subtractive process,” which, according to Patent Owner, is directed to different problems, and different CMP than the metal CMP in a damascene process. PO Resp. 35. As Petitioner points out, Jaso, Stine1998, and the ’946 patent each address the “erosion of dielectric and dishing of metal” during CMP, which gives rise to “a non-planar surface.” Pet. 6 (citing Ex. 1001, 3:25–44, Fig. 4), 30– 31 (citing Ex. 1004, 2:7–19), 36–37 (citing Ex. 1004, 3:29–64; Ex. 1005, 668). Patent Owner’s assertion that different issues cause dishing and erosion too narrowly confines the problem that the references address. See Unwired Planet v. Google, 841 F.3d 995, 1001 (Fed. Cir. 2016) (“The field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.”). Patent Owner also asserts “Jaso’s reference to ‘dishing’ is categorically different from the problems with which the ’946 patent is concerned: dishing of wide interconnect and erosion of oxide between dense narrow interconnect.” PO Resp. 63. We are not persuaded by this conclusory statement.10 Furthermore, to the extent Patent Owner argues the references are non-analogous art, all the references are directed to the creation of metal lines in chip manufacturing, as discussed above, and fall within the same field of endeavor.” slip op. at 31
Patent outcomesUS 6,849,946 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 6,849,946
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.