• Integrated Dna Technologies, Inc. v. Tecan Genomics, Inc.No claims unpatentable
  PTAB · Apr 6, 2026 · IPR2025-00016 · APJ Zhenyu Yang · IPR · Final written decision

  The Board found claims 1–3, 5–12, and 14–19 not shown unpatentable because Meyer did not disclose the claimed enrichment, which the obviousness grounds did not supply.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “for purposes of this Decision, we find a POSA would have had a Ph.D. in the field of chemistry, molecular biology, or biochemistry. Alternatively, a POSA would have had a B.S. or M.S. degree with three to five years of experience working in any of those fields. Additionally, the POSA would have had knowledge of how those methods functioned. Id. at 12.” slip op. at 8

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

    “As an initial matter, we acknowledge that the definition “to process so as to add or increase the proportion of a desirable ingredient” has two possible interpretations. In the first interpretation, “add or increase” shares the same object “the proportion of a desirable ingredient.” When the proportion of one ingredient goes higher, the proportion of at least another ingredient would necessarily go lower. Thus, the enrichment process under this interpretation results in a higher proportion of the desirable ingredient relative to other ingredients. Patent Owner adopts this interpretation. See PO Resp. 17 (“In the context of preparing a sequencing library, [Patent Owner] Tecan proposes that a nucleic acid sequence of interest is ‘enriched’ when the proportion of nucleic acid fragments containing the sequence of interest is increased relative to other nucleic acid fragments in the sample.”). According to Patent Owner, “amplifying the one or more oligonucleotide extension products . . . thereby enriching the nucleic acid sequence of interest, by generating amplified products comprising the enriched nucleic acid sequence of interest” in step (c) means “increas[ing] the proportion of the nucleic acid sequence of interest relative to the nucleic acid fragments in the solution not containing the sequence of interest by amplifying the oligonucleotide extension product and its complement.” Id. at 19–20. Under the second interpretation, the object for “add” is “a desirable ingredient,” whereas the object for “increase” is “the proportion of a desirable ingredient.” This interpretation is broader than the first one in that the result of the enrichment process not only encompasses a higher proportion of the desirable ingredient relative to other ingredients, but also more desirable ingredient in raw number.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Dr. Sims. As explained above, the amplification step must result in at least some enrichment of the sequence of interest, even though it does not have to be the only cause. See supra Section II.C.2.b. Indeed, Petitioner acknowledges that “at least some of the enrichment must result from the recited steps.” Reply 12. Because Meyer’s enrichment for mRNA using the SMART protocol occurred before any recited steps of claim 1, we find it does not meet the claimed “enrichment” under our construction.” slip op. at 22

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “shown that Meyer discloses step (c) of claim 1, and Petitioner does not address that limitation in this ground, we find Petitioner has not met its burden to show that claims 8, 17, and 18 would have been obvious over Meyer. F. Alleged Obviousness over Meyer and Siebert Claim 2 depends from claim 1, and further recites “the nucleic acid fragment comprises genomic DNA.” Petitioner asserts that claim 2 would have been obvious over the combination of Meyer and Siebert. Pet. 62–65. Petitioner relies on Siebert for teaching the additional limitation recited in claim 2 only. Id. Because Petitioner has not shown that Meyer discloses step (c) of claim 1, and Petitioner does not rely on Siebert for teaching that limitation, we find Petitioner has not met its burden to show that claim 2 would have been obvious over the combination of Meyer and Siebert.” slip op. at 34

  Patent outcomesUS 10,876,108 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,876,108
• Integrated Dna Technologies, Inc. v. Tecan Genomics, Inc.No claims unpatentable
  PTAB · Apr 6, 2026 · IPR2025-00015 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 1–3 and 5–22 were not shown unpatentable because Meyer does not disclose the claimed enrichment, and the other grounds rely on Meyer for that limitation.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “for purposes of this Decision, we find a POSA would have had a Ph.D. in the field of chemistry, molecular biology, or biochemistry. Alternatively, a POSA would have had a B.S. or M.S. degree with three to five years of experience working in any of those fields. Additionally, the POSA would have had experience with NGS sequencing methods and a working knowledge of how those methods functioned. Id. at 14. After institution, Patent Owner states that, for purposes of this proceeding, it adopts the Board’s definition of a POSA. PO Resp. 18. After reviewing the record developed during trial, we see no reason to change our finding on this issue. As we stated in the DI, our “definition of a POSA is consistent with the skill level reflected in the disclosures of the ’012 patent and prior art.” DI 14.” slip op. at 11

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

    “to “enrich” means to “increase[] relative to the rest of the fragments.” Tr. 12:25–26. The panel asked: “In the starting material, there are three components, A, B, C, that say it’s 30 percent, 50 percent and 20 percent. You do PCR and it -- they all get amplified and the end result is still 30 percent, 50 percent, and 20 percent. Anything got enriched?” Id. at 12:18–21. Petitioner responded that “petitioner’s position is that in that situation, there is no enrichment.” Id. at 12:22–23. In other words, Petitioner does not disagree with Patent Owner that mere increase in the raw number is not enrichment. See also id. at 13:7–9 (“[W]e would agree that if it is truly unbiased amplification, that does not result in an increase in the proportion, and so that does not meet the plain meaning of enrich.”). We find the record, including the testimony from all three declarants, supports Patent Owner’s argument. See Sur-reply 1–5 (citing Ex. 1125, 283:1–6, 286:22–287:14; Ex. 1126, 170:18–171:1; Ex. 2037, 150:18–22, 173:15–17; Ex. 2038 ¶ 95), 8 (citing Ex. 1125, 271:10–15; Ex. 2037, 188:22–189:1). Thus, we adopt Patent Owner’s proposal that “a nucleic acid sequence of interest is ‘enriched’ when the proportion of nucleic acid fragments containing the sequence of interest is increased relative to other nucleic acid fragments in the sample.”9 See PO Resp. 19.” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Dr. Sims. As explained above, the amplification step must result in at least some enrichment of the sequence of interest, even though it does not have to be the only cause. See supra Section II.C.2.b. Indeed, Petitioner acknowledges that “at least some of the enrichment must result from the recited steps.” Reply 12. Because Meyer’s enrichment for mRNA using the SMART protocol occurred before any recited steps of claim 1, we find it does not meet the claimed “enrichment” under our construction.” slip op. at 27

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “F. Alleged Obviousness over Meyer and Siebert Claim 2 depends from claim 1, and further recites “the nucleic acid fragment comprises genomic DNA.” Petitioner asserts that claim 2 would have been obvious over the combination of Meyer and Siebert. Pet. 69–72. Petitioner relies on Siebert for teaching the additional limitation recited in claim 2 only. Id. Because Petitioner has not shown that Meyer discloses step (d) of claim 1, and Petitioner does not rely on Siebert for teaching that limitation, we find Petitioner has not met its burden to show that claim 2 would have been obvious over the combination of Meyer and Siebert. G. Alleged Obviousness over Meyer and Kelley Claim 9 depends from claim 1, and further recites “the barcode sequence is 12 nucleotides in length.” Petitioner asserts that claim 9 would have been obvious over the combination of Meyer and Kelley. Pet. 72–74. Petitioner relies on Kelley for teaching the additional limitation recited in claim 9 only. Id. Because Petitioner has not shown that Meyer discloses step (d) of claim 1, and Petitioner does not rely on Kelley for teaching that limitation, we find Petitioner has not met its burden to show that claim 9 would have been obvious over the combination of Meyer and Kelley. H. Alleged Obviousness over Meyer, Caruccio, and Bronner Each of claims 15 and 17–19 depends from claim 1. Claim 15 further recites “the second strand of the partial duplex adaptor is ligated to a 3′ end of the nucleic acid fragment.” Claim 17 recites “[t]he method of claim 1, further comprising performing bridge amplification of the annealed strand after step e).” Claim 18 further recites “the sequencing comprises use of four labeled reversible terminators.” And claim 19 further recites “the sequencing comprises semiconductor sequencing.” Petitioner asserts that claims 15 and 17–19 would have been obvious over the combination of Meyer, Caruccio, and Bronner. Pet. 75–80. Petitioner relies on Caruccio and Bronner for teaching the additional limitation recited in claims 15 and 17–19 only. Id. Because Petitioner has not shown that Meyer discloses step (d) of claim 1, and Petitioner does not rely on Caruccio and Bronner for teaching that limitation, we find Petitioner has not met its burden to show that claims 15 and 17–19 would have been obvious over the combination of Meyer, Caruccio, and Bronner.” slip op. at 38

  Patent outcomesUS 10,036,012 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,036,012
• Axion Biosystems, Inc. v. Agilent Technologies, Inc.No claims unpatentable
  PTAB · Feb 2, 2026 · IPR2024-01467 · APJ David Cotta · IPR · Final written decision

  Claims 1–8 and 11–15 were not shown unpatentable over Xu-752 and Jones because the proposed combination did not establish obvious millisecond time resolution.

  RulingsFinal written decision

  • 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 (“POSA”) as of May 2009 “would have had a B.S. in electrical/mechanical/biomedical engineering or biological science, or a related field, and approximately 2 years of relevant experience or equivalent study in systems and methods for bioanalysis of cells.” Pet. 14 (citing Ex. 1003 ¶¶ 23–25). Patent Owner adopts this definition for purposes of this proceeding. PO Resp. 9 (citing Ex. 2009 ¶ 19). We find Petitioner’s description of the level of ordinary skill in the art to be consistent with the level of skill reflected in the ’508 patent and in the prior art of record. Accordingly, we apply Petitioner’s definition in this decision.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “As used herein, “impedance measurement at millisecond time resolution” refers to the ability to perform a series of at least two consecutive impedance measurements within milliseconds of one another for each and every well of the system where each well is associated with an electrode array for impedance measurement. In each instance the time between two consecutive impedance measurements are less than 300 milliseconds from one another. Id. at 10:8–15. There does not appear to be any dispute as to the definitional nature of the first sentence in the passage above. That is, the parties agree that millisecond time resolution should be construed to mean: “the time between two consecutive impedance measurements for each and every well being evaluated in the claimed apparatus or system.” PO Resp. 15 (proposing construction); Pet. Reply. 23 (“Axion also agrees that the term ‘millisecond time resolution’ is ‘the time between two consecutive impedance measurements for each and every well being evaluated in the claimed apparatus or system.’”). The parties also agree that we do not need to determine whether the time interval between two consecutive impedance measurements is less than 300 milliseconds, as set forth in the definition portion of the specification, or whether it can be met by some other time interval, as suggested by other portions of the specification. See e.g., Ex. 1001, 23:49–55 (explaining that “[i]n some embodiments 500 millisecond time resolution is sufficient”), 24:37–39 (similar); PO Resp. 15 (arguing that “the distinction between 300 milliseconds and 500 milliseconds is immaterial to the dispute in this IPR because Jones teaches a 1.5 second update period, thus at least three times longer than the 500 milliseconds formulation”); Pet. Reply 23–24 (section headed “[Petitioner] Agrees That, In This IPR, The 300 Versus 500 Milliseconds Distinction is Immaterial To Addressing the Unpatentability of the Challenged Claims”), see also, Pet. Reply 24–26 (asserting that the claims are indefinite because it is not clear whether they require a 300 or a 500 millisecond time interval, but arguing that “the claims’ unpatentability can be determined without resolving the 300 versus 500 milliseconds indefiniteness issue”). We agree with the parties that “millisecond time resolution” should be construed to mean: “the time between two consecutive impedance measurements for each and every well being evaluated in the claimed apparatus or system.” PO Resp. 15; Pet. Reply. 23. We further agree that resolution of this case does not require that we determine whether the period between two consecutive impedance measurements is less than 300 or less than 500 milliseconds because Petitioner has not carried its burden under either time interval.” slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Ex. 1003 ¶ 179. But Dr. Kim does not cite to any additional supporting evidence or provide any technical reasoning to support his statements. The notion that one can reduce the time between measurements by, e.g., reducing the number of frequencies measured, has intuitive appeal and appears mathematically correct. However, the absence of technical reasoning and supporting evidence diminishes the persuasiveness of Dr. Kim’s testimony that the POSA would made such modifications to reduce the time between measurements. Dr. Kim does provide some technical reasoning in connection with his discussion of eliminating all reference channels as a way to get the time resolution down to the levels required by, e.g., claim 14, which recites a millisecond time resolution of “less than 5 milliseconds.” See e.g., Ex. 1003 ¶ 172 (“A POSA seeking to study biological cell phenomena occurring on the order of a few milliseconds would have recognized that after measuring the reference network channels at the start, the reference network channels would not need measured again for some time, e.g., because temperature and other drift factors do not change appreciably on a millisecond time scale.”). However, even if we were to credit this testimony, Dr. Kim still lacks support and reasoning for the selection of the other parameters in his noreference-channel calculations. See, e.g., id. ¶ 173 (positing, but not providing technical reasoning for using, a no-reference-channel impedance system with 16 wells, a single 10kHz measurement frequency, and 16 daughter boards that measure simultaneously rather than sequentially).” slip op. at 29

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable

    “Given that Jones’s only exemplified embodiment targets a 1.5 second update period, that Jones does not suggest reducing the update period, and that much of Jones’s focus is on benefits other than speed of measurement, Jones’s impedance analyzer seems an unlikely choice for a POSA seeking to take measurements having millisecond time resolution. Put another way, we find no persuasive non-hindsight reason that supports Petitioner’s assertion that the POSA would have sought to apply Jones’s impedance analyzer to Xu-752’s system in order to take measurements in millisecond time resolution.” slip op. at 22

  Patent outcomesUS 11,906,508 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,906,508
• Quasar Science LLC v. Colt International Clothing, Inc. D/B/A Colt LedNo claims unpatentable
  PTAB · Oct 7, 2024 · IPR2023-00614 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 1–3, 6–18, 21–24, and 27–29 were not shown unpatentable under either § 103 ground because the evidence did not establish all limitations or a reason to combine the cited teachings.

  RulingsFinal written decision

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

    “Claim Construction In an inter partes review, we construe a claim term “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b) (2020). Under that standard, the words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). The parties agree that, for purposes of this Decision, no claim term needs specific construction beyond its plain and ordinary meaning. Pet. 14; PO Resp. 10. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to expressly construe any claim term.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Here, Petitioner argues that a person of ordinary skill in the art (“POSITA”) would have had “at least a Bachelor of Science degree in electrical engineering, or a closely related field, along with at least two years of experience in the design of entertaining lighting systems, and the design and use of LEDs.” Pet. 14 (citing Ex. 1003 ¶ 32). Patent Owner argues that a POSITA would have had “2 to 4 years’ experience in electrical engineering/design of film and television lighting systems, including the design and use of LED lights, combined with two to three years of work experience as a set lighting technician in television and/or motion picture industry.” PO Resp. 9 (citing Ex. 2047 ¶¶ 16–17; Ex. 2100 ¶¶ 156–161). Patent Owner does not identify any specific instance in which the differences between the parties’ respective descriptions of the level of ordinary skill in the art impacts the analysis or conclusions of either party, or either party’s declarant, in this case. In fact, Patent Owner acknowledges that any differences between the parties’ respective descriptions do not impact the conclusions in this case. Id. (“Regardless of which definition of a POSITA is applied, the conclusion(s) would be the same.”). For purposes of this Decision, and to the extent necessary, we adopt Petitioner’s definition of a POSITA because it is consistent with the prior art’s demonstration of the skill level at the time of the invention.” slip op. at 9

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

    “would have been obvious to combine the cited teachings of Kit and Katzir. Petitioner argues that “Katzir further discloses daylight and tungsten temperature ranges within the claimed temperature ranges.” Pet. 24 (citing Ex. 1006 ¶¶ 53, 54, Figs. 5A, 5B). Petitioner relies on the Holmes Declaration to show that “[a] POSITA would have been motivated to look to Katzir to design an LED array to be retrofit in a fluorescent tube.” Id. at 19 (citing Ex. 1003 ¶ 102). Mr. Holmes testifies that [b]oth Kit and Katzir teach using LEDs of various colors in a fluorescent tube form factor, like a T8 or T12 fluorescent tube. Katzir also discloses various LED array layouts that a POSITA would have a looked to when designing an LED tube lighting like that disclosed in Kit. A POSITA would have had strong motivation to look to Katzir to design an LED array to be retrofit in a fluorescent tube form factor. Ex. 1003 ¶ 102 (internal citations omitted). As discussed above, however, the cited passages of Kit describe a light with LEDs that produces a single, consistent temperature of warm white, commercial white, or cool white. Ex. 1004, 3:28–36, 22:9–25. Neither Petitioner nor Mr. Holmes sufficiently explains why a POSITA would have modified Kit to include Katzir’s particular layout that includes both cool white LEDs and warm white LEDs. See Pet. 19, 24; Ex. 1003 ¶ 102; In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016) (instructing that we must articulate a reason why a POSITA would combine the prior art references). We identified the aforementioned deficiencies for this asserted challenge in the Decision on Institution. DI 21–23. Petitioner did not address those deficiencies in the Reply. See generally Reply; Tr. 6:16–7:10. Thus, based on the entire record developed at trial, and for the foregoing reasons, Petitioner has not shown that claim 1 would have been obvious over Kit, Ianiro, Ducharme, and Katzir.” slip op. at 13

  • Expert testimonyPetitioner expert discountedOther

    “Petitioner asserts that Mr. Holmes cited Hasnain’s heat dissipation techniques. Reply 10 (citing Ex. 1003 ¶ 490; Ex. 1049 ¶¶ 41–49). Paragraph 490 of Exhibit 1003 relates to Ducharme, not Hasnain, and thus, does not support Petitioner’s argument. Although paragraphs 41 to 49 of Exhibit 1049 span more than seven pages, other than the single citation in the Reply, Petitioner does not discuss any of the testimony presented therein. We, thus, do not consider this portion of the Holmes Supplemental Declaration. See 37 C.F.R. §§ 42.6(a)(3). Furthermore, we would not be persuaded by Mr. Holmes’ testimony even if we considered it. For example, Mr. Holmes testifies that Hasnain’s heat-dissipating structure “a variety of heat dissipating techniques are disclosed by Hasnain, any one of which could readily be used in a T12 form factor LED light, as expressly recognized by Hasnain.” Ex. 1049 ¶ 46. We disagree with Mr. Holmes that Hasnain teaches enclosing its heat-dissipating structure in a fluorescent light tube. Hasnain teaches “a replacement LED light source for fluorescent tube 22 [that] plug[s] into the same connectors and operate[s] from the voltage patterns generated by the ballasts.” Ex. 1008, 3:23–26. Hasnain also teaches that “the replacement LED light source has a plurality of LEDs mounted on a heat-dissipating substrate that has a width that is less than or equal to the diameter of the fluorescent tube that the light source is designed to replace.” Id. at 5:52–56. Thus, Hasnain teaches that its LED light fits into, and connects with, an existing structure that previously held a fluorescent light tube. Id. at 2:50–56, 3:23–26, 4:58–64, 5:52–56, Figs. 1A, 4. As discussed above, however, Hasnain’s heat-dissipating structure is not enclosed in a tubular housing in order to dissipate heat to the surrounding air or via thermal contact with the existing structure that a fluorescent light tube is inserted into. Id. at 2:50–56, 4:23–28, 4:51–64, Figs. 1A, 3, 4.” slip op. at 22

  Patent outcomesUS 10,566,895 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,566,895
• Quasar Science LLC v. Colt International Clothing, Inc. D/B/A Colt LedNo claims unpatentable
  PTAB · Oct 7, 2024 · IPR2023-00613 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–3, 6–14, 16–19, 21–24, and 26–31 were not shown unpatentable over either asserted obviousness combination.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “Patent Owner does not identify any specific instance in which the differences between the parties’ respective descriptions of the level of ordinary skill in the art impacts the analysis or conclusions of either party, or either party’s declarant, in this case. See id. In fact, Patent Owner acknowledges that any differences between the parties’ respective descriptions do not impact the conclusions in this case. Id. at 9 (“Regardless of which definition . . . is applied, the conclusion(s) would be the same.”). Therefore, to the extent necessary, we adopt Petitioner’s description, which is supported by the testimony of Petitioner’s declarant, Mr. Fred Holmes, and is consistent with the asserted prior art. Ex. 1003 ¶ 32.” slip op. at 8

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

    “the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 13; PO Resp. 10. We determine that no claim terms require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability. See Sections II.D.1, II.E.1.” slip op. at 8

  • BurdenNot shown unpatentable

    “Thus, Petitioner’s assertion that Hasnain’s LED light emits at least 1000 lumens requires distributing LEDs on a heat-dissipating structure that transfers heat to the surrounding air or via thermal contact with another existing structure. Id. at 4:23–28, 4:51–5:6, Figs. 3, 4; see Ex. 2080 ¶¶ 49, 5 Figure 4 shows heat-dissipating structure 59, not heat-dissipating structure 47. Ex. 1008, Fig. 4. But Hasnain describes those structures similarly. Id. at 4:51–5:6. 66. Petitioner, though, does not explain how Hasnain’s heat-dissipating structure would work when combined with Ducharme’s tubular housing. See Pet. 62–63; Pet. Reply 10; Ex. 1003 ¶ 490; Ex. 1049 ¶¶ 41–49. In particular, Petitioner does not explain how Hasnain’s heat- dissipating structure would dissipate sufficient heat to the surrounding air when enclosed in Ducharme’s tubular housing. See id. Petitioner also does not explain how Hasnain’s heat-dissipating structure would dissipate sufficient heat via thermal contact with another existing structure when enclosed in Ducharme’s tubular housing. See id. Furthermore, Petitioner does not propose combining Ducharme and Hasnain so that Hasnain’s heatdissipating structure is in thermal contact with Ducharme’s tubular housing. See id. Thus, Petitioner does not show sufficiently how the proposed combination of Ducharme and Hasnain was supposed to work. See Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017) (“[T]he Board nowhere clearly explained, or cited evidence showing, how the combination of the two references was supposed to work.”).” slip op. at 20

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

    “person of ordinary skill in the art would have had reason to achieve high lumen output, we determine that Petitioner does not show sufficiently that a person of ordinary skill in the art would have had reason to combine the specific cited teachings of Ducharme and Hasnain.” slip op. at 17

  Patent outcomesUS 10,411,582 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,411,582
• Sigray, Inc. v. Carl Zeiss X-Ray Microscopy, Inc.No claims unpatentable
  PTAB · May 22, 2023 · IPR2022-00218 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1–15 were not shown unpatentable because the prior art did not establish the claimed projection magnification or scintillator; the revised contingent motion to amend was dismissed as moot.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We determine that the level of ordinary skill in the art, as articulated by Patent Owner, more accurately reflects the subject matter of the ’704 Patent and the asserted prior art than does Petitioner’s articulation. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself reflects an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Petitioner does not explain how “control theory” and “applied mathematics” (Pet. 16) relate to the subject matter of the ’704 Patent and the asserted prior art, and Petitioner’s reference to requisite level of skill. Furthermore, whereas Petitioner requires a POSITA to have “x-ray and computing imaging experience” (id.), Patent Owner more particularly specifies “x-ray microtomography experience” (PO Resp. 5), which is the field of art for the ’704 Patent, as well as many of the asserted prior art references. Ex. 1001, code (54) (“High resolution direct-projection type x-ray microtomography system using synchrotron or laboratory-based x-ray source”); Ex. 1007 (discussing X-ray microcomputed tomography); Ex. 1008 (discussing X-ray nanotomography and microtomography); Ex. 1010, code (54) (“Method and apparatus for utilizing an electro-optic detector in a microtomography system”); Ex. 1011 (title: “Three-dimensional X-ray Microtomography”). For these reasons, we apply Patent Owner’s definition of a POSITA. Even if we applied Petitioner’s definition of a POSITA, however, the outcome would be the same because our resolution of the controversy does not turn on the differences between the parties’ contentions about level of ordinary skill in the art.” slip op. at 9

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

    “In an inter partes review, we apply the same claim construction standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). (“all claim terms should receive their plain and ordinary meaning”); PO Resp. 5 (applying the same constructions as Petitioner). We determine that no claim term requires express construction for purposes of resolving any controversy between the parties. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “On balance, we find that the testimony of Drs. Bentley and Arce about Jorgensen is more credible than Dr. Kia’s testimony, which is often conclusory and insufficiently supported by the evidence. Drs. Bentley and Arce do a better job of explaining and reconciling Jorgensen’s varying descriptions of the X-ray beam than does Dr. Kia. For example, although Dr. Kia relies on Jorgensen’s repeated references to a “cone-beam,” we find that Petitioner’s evidence does not outweigh the explanations provided by Drs. Bentley and Arce, particularly in view of Jorgensen’s description of the X-ray beam as “collimated” and “shielded by a lead-wrapped brass tube.” See II.D.2.d. and e., supra. Even if we consider Petitioner’s improper new reply argument about filling the CCD, we find that argument insufficient and does not outweigh Patent Owner’s unrebutted evidence about CCD pixel size. See II.D.2.f. and g., supra. In sum, viewing the record as a whole, we find that Petitioner has not shown persuasively that Jorgensen inherently discloses projection magnification within the claimed range.” slip op. at 38

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “standard.” Amgen Inc. v. Sandoz Inc., No. 2022-1147, 2023 WL 2994166, at *10 (Fed. Cir. Apr. 19, 2023). “Inherency . . . may not be established by probabilities or possibilities.” Oelrich, 666 F.2d at 581. “The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Id. (emphasis added). Rather, the patent challenger must “show that the natural result flowing from the operation as taught would result in the performance of the questioned function.” Id.; see PersonalWeb Technologies, LLC v. Apple, Inc., 917 F.3d 1376, 1382–83 (Fed. Cir. 2019) (determining that the Board’s reliance on inherency was improper because the structure relied upon to meet a claim element “does not necessarily exist” in the reference). As discussed above, it is undisputed that there can be no projection magnification unless the X-ray beam is diverging, and there is a vigorous dispute about whether Jorgensen teaches a diverging X-ray beam. See negatively impacted by Petitioner’s and Dr. Kia’s admittedly incorrect interpretations of Jorgensen’s disclosures concerning “projected at a 4° angle” and “the X-ray beam geometry is used to achieve magnification.” Ex. 1007, H1104; see II.D.2.b. and c., supra. On balance, we find that the testimony of Drs. Bentley and Arce about Jorgensen is more credible than Dr. Kia’s testimony, which is often conclusory and insufficiently supported by the evidence. Drs. Bentley and Arce do a better job of explaining and reconciling Jorgensen’s varying descriptions of the X-ray beam than does Dr. Kia. For example, although Dr. Kia relies on Jorgensen’s repeated references to a “cone-beam,” we find that Petitioner’s evidence does not outweigh the explanations provided by Drs. Bentley and Arce, particularly in view of Jorgensen’s description of the X-ray beam as “collimated” and “shielded by a lead-wrapped brass tube.” See II.D.2.d. and e., supra. Even if we consider Petitioner’s improper new reply argument about filling the CCD, we find that argument insufficient and does not outweigh Patent Owner’s unrebutted evidence about CCD pixel size. See II.D.2.f. and g., supra. In sum, viewing the record as a whole, we find that Petitioner has not shown persuasively that Jorgensen inherently discloses projection magnification within the claimed range.” slip op. at 37

  Patent outcomesUS 7,400,704 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,400,704
• Xilinx, Inc. / Xilinx Asia Pacific Pte. Ltd. v. Analog Devices, Inc.No claims unpatentable
  PTAB · Mar 11, 2022 · IPR2020-01559 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–25 were not shown unpatentable because the evidence did not establish sufficient motivation to combine the references or teach applying dither at the claimed sampling or conversion stages.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, supported by the testimony of Dr. Holberg, argues that a person of ordinary skill in the art (“POSITA”) “would [have] at least a Master’s degree in Electrical Engineering or equivalent field, including studies in the area of analog circuitry; or at least a Bachelor’s degree in Electrical Engineering and at least two years of experience working on analog circuitry design.” Pet. 23 (citing Ex. 1003 ¶¶ 54–56). Neither Patent Owner nor its declarant, Dr. Moon, dispute or offer an alternative level or skill in the art at this time. See generally PO Resp., see also Ex. 2001 ¶ 13 (Dr. Moon stating that Petitioner’s asserted level of ordinary skill in the art is “reasonable”). On the full record now before us, the parties do not dispute the proposed level of ordinary skill in the art. Petitioner’s proposed level of ordinary skill is consistent with our review and understanding of the technology and descriptions in the ’075 patent and the prior art references that disclose electronic circuits including analog-to-digital converters using modulation feedback signals and charge injection in MOS transistor circuits to account for differential non-linearity. For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 8

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

    “The term “perturbation” is, however, inextricably linked to “dither” in the context of the ’075 patent. It is clear from multiple descriptions in the ’075 patent that perturbation of the sampled voltage introduces dither into the analog to digital converter. See Ex. 1001, 7:62–8:4 (The ’075 patent states that “selective switching of capacitors within the sub capacitor array can be used to perturb the voltage that was sampled onto the main capacitor array during the sampling phase and hence introduce a positive or negative dither into the analog to digital converter.”); see also id. at 2:7–11 (The ’075 patent describing dithering where “[m]ultiple conversions of substantially the same input value can result in the input value being assigned different ‘bins’ within the conversion process as a result of different perturbations being applied at each individual sampling point.”).”) On the full record now before us, we agree with both parties to an extent. Considering Petitioner’s position, we find that dither has a broader meaning than perturbation in the context of the ’075 patent and, based on Dr. Holberg’s testimony, that a person of ordinary skill in the art would have understood perturbation as “a small change in movement, quality, or behavior of something, especially an unusual change.” Reply 5; Ex. 1003 ¶ 81. With respect to Patent Owner’s arguments and evidence, we do not agree that perturbation is simply random noise, but we find persuasive Patent Owner’s declarant, Dr. Moon, and his testimony that the ’075 patent uses this term “to describe the disturbance or agitation of the charge stored on the capacitor array, in a manner that introduces dither” into the analog to digital converter. PO Resp. 19–20. In sum, perturbation means “a small change in movement, quality, or behavior of something, especially an unusual change, and describes the disturbance or agitation of the charge stored on the capacitor array that introduces dither into the analog to digital converter.”” slip op. at 13

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

    “Ex. 1003 ¶ 83. This explanation potentially explains how one of skill in art could apply a perturbation, but does not explain why a person of ordinary skill in the art would do so after sampling or why such a person would find the result of applying perturbation after sampling predictable. At best, Dr. Holberg’s testimony describes that a person of ordinary skill in the art could change the offset capacitance code B0, B1 during the course of sampling the input voltage onto the capacitor array and after sampling. And, that this would achieve the claimed perturbation “after . . . sampling.” Id. This explanation, however, describes a result of manipulating Confalonieri’s CATT capacitance circuit and does not articulate sufficient reasoning as to why a person of ordinary skill in the art would have done so. Petitioner’s arguments and Dr. Holberg’s testimony are mostly conclusory and unsupported on this point. First, Petitioner points out what Confalonieri does not expressly disclose, namely “whether the offset perturbation is provided before or after sampling.” Pet. 28 (citing Ex. 1012, 6:28–46; 6:51–55). Second, Dr. Holberg testifies that a perturbation could be effected by “establish[ing] a first code to the capacitance CATT (i.e., switched capacitor digital to analog converter) during sampling, and then apply a different code to the capacitance CATT after the sampling phase has been completed.” Ex. 1003 ¶ 83. However, beyond this statement Dr. Holberg provides no persuasive supporting or evidentiary basis for reaching this conclusion, and no citation to Confalonieri for any disclosure of providing a first offset capacitance code during sampling, then another different capacitance code after sampling. On this point, Petitioner argues that Confalonieri states that “[t]he additional shunt capacitance in the lower array can be used as a component for further functions, such as an offset compensation.” Pet. 26 (citing Ex. 1012, 5:58–60) (emphasis added). In pointing out this language, Petitioner is insinuating that “further functions” includes perturbation. See id. at 28 (Petitioner states that “[t]he provision of offset in Confalonieri discloses the perturbation as claimed.”). We are not persuaded that this is an appropriate reading of Confalonieri. Prior to the language referenced by Petitioner, Confalonieri discusses that “the shunt capacitance operates as a voltage attenuator, so that it is easy to limit the dynamics at the node NSL by a proper selection of this capacitance.” Ex. 1002, 5:46–48. The following paragraph then explains that “[t]he additional shunt capacitance in the lower array can be used as a component for further functions, such as an offset compensation.” Id. at 5:56–58. A plain reading of Confalonieri, in context, is more reasonably understood as indicating that (1) the shunt capacitance CATT “provides a strong improvement of the converter linearity, while the operation speed is as high as the operation speed of the prior art basic design,” (2) “power consumption is also as low as in that prior art design,” and (3) the shunt capacitance can be used for “further functions, such as an offset compensation.” Id. at 5:53–57. Nowhere does Confalonieri indicate that shunt capacitance CATT is considered for perturbation or dithering, or to provide offset during or after the input voltage sample is sampled onto the upper and lower array. Indeed, this interpretation of Confalonieri by Petitioner never references any testimonial support from Dr. Holberg, nor do we find related support in Dr. Holberg’s testimony related to such an interpretation of Confalonieri and claim element 16[c]. See, e.g., Ex. 1003 ¶¶ 79–84. In this way, Petitioner and Dr. Holberg essentially rely on the absence” slip op. at 24

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

    “Petitioner’s reasoning “that dither as provided in Hiller could be provided in the system of Confalonieri instead of, or in addition to, offset in order to provide the known desirable and well known performance benefits of dither” arguably asserts a desired result, e.g., a more accurate circuit, but does not explain why a person of ordinary skill in the art would have replaced or supplemented offset compensation of an input voltage with dither. Id. This is particularly true where we have persuasive evidence that offset is a different technique and is applied for a different reason and result compared to dither. See Ex. 2017 ¶ 91 (Patent Owner’s declarant, Dr. Moon testifying that “Confalonieri discloses the provision of offset but does not disclose the provision of dither.”); Ex. 2001 ¶ 26 (Dr. Moon testifying that “instead of reducing errors, dither redistributes or smears out the errors.”); Ex. 2018, 74:9–10 (Petitioner’s declarant, Dr. Holberg testifying that Confalonieri “does not mention dither in—in his patent.”). Indeed Dr. Moon provides an explanation of how Confalonieri designed its circuit for improved linearity, as was the state of the art in 2005, not with dither, but by “a circuit design that allows all the capacitors (especially the coupling capacitor) to be sized in integer multiples of a unit capacitance, which improves capacitor matching.” Ex. 2001 ¶ 23 (citing Ex. 1012, 4:36–5:8). Confalonieri expressly discloses any problems of accuracy and linearity related with the dimensioning of the coupling capacitor Cs is solved simply by the addition of a shunt capacitor CATT in the lower array. Since all the capacitors of the converter can be designed as integer numbers of a unit capacitance, all the layout tools normally used for obtaining optimum matching of integrated components can be used. Ex. 1012, 4:65–5:4. Dr. Moon explains further that using capacitance matching for “addressing root causes of DNL directly reduces the DNL errors, dither as described in ’075 patent randomizes the errors. That is[], instead of reducing errors, dither redistributes or smears out the errors. Thus, how dither improves DNL is different than how improving capacitor matching improves DNL.” Ex. 2001 ¶ 26. It is not explained sufficiently by Petitioner, where linearity was already addressed by Confalonieri’s circuit design itself, even if one of ordinary skill in the art could have potentially added dither in an ADC using shunt capacitance CATT instead of, or in addition to compensating for offset, why a skilled artisan would have looked to Hiller’s teaching of dither. Considering the complete record now before us, we are not persuaded” slip op. at 31

  Patent outcomesUS 7,286,075 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,286,075
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Dynamics Inc.No claims unpatentable
  PTAB · Aug 10, 2021 · IPR2020-00499 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1 and 5–8 were not shown unpatentable under either § 103 ground because the evidence did not establish the claimed retrieval of a digital representation from multiple representations.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “Conclusory statements alone, even those provided by a declarant, are inadequate to demonstrate a rationale for why a person of ordinary skill in the art would have combined the teachings from prior art references. NuVasive, 842 F.3d at 1383. Instead, Petitioner’s arguments must be supported by a “reasoned explanation.” Id. (citing In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)). For example, Petitioner states that a person of ordinary skill in the art would have been motivated to use Shoemaker’s teachings to improve the functionality of Gutman’s card and make it more commercially convenient for card users.” Pet. 24–25 (citing Ex. 1002 ¶ 74). But neither the Petition nor its declarant, explain why altering either Gutman or Shoemaker would improve the functionality over what is expressly disclosed in each reference. Nor does the Petitioner or the declarant explain with how the combination of teachings would be more commercially convenient for card users over what is disclosed originally in each reference. Petitioner further contends that “because these changes would have been routine implementation details, a [person of ordinary skill in the art] would have had more than a reasonable expectation of success in implementing them.” Pet. 25 (citing Ex. 1002 ¶ 74). Accordingly, based on the entirety of the trial record, we find Petitioner presents insufficient persuasive evidence to demonstrate by a preponderance of the evidence that a person of ordinary skill in the art would have had reason to combine the teachings of Gutman with those of Shoemaker as articulated by Petitioner to render claims 1, 5–8 obvious under 35 U.S.C. § 103.” slip op. at 34

  • Skill levelSkill level board ownOther

    “Based on our review of the ’153 patent, the types of problems and solutions described in the ’153 patent and cited prior art, and the testimony of both Mr. Halliday (see Ex. 1002 ¶¶ 33–34) and Mr. Zatkovich (see Ex. 2033 ¶ 17), for purposes of this Decision, we find that a person of ordinary skill in the art at the time of the claimed invention would have had at least a Bachelor’s degree in electrical engineering, or an equivalent technical degree and three years of experience working with magnetic fields to transmit or otherwise convey information, magnetic stripe cards and emulators, RFID systems, and cellular network communications. Although we find Patent Owner provides insufficient evidence explaining why a person of ordinary skill in the art would have also had experience specifically with point of sale systems and therefore do not include that additional requirement in our finding above, we note that our analysis would be the same under either party’s proposed level of skill in the art.” slip op. at 13

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

    “Because no express construction is needed to resolve any dispute in this proceeding, we do not construe any of the claim limitations. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1005, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 14

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

    “Petitioner must articulate a reason why a person of ordinary skill in the art would have combined the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. 2016); Metalcraft of Mayville, Inc. v. The Toro Company, 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); see Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). Petitioner proffers arguments that a person of ordinary skill in the art could have combined the teachings of Gutman and Shoemaker, but fails to explain sufficiently why they would have chosen the specific features relied upon by Petitioner to read on the claim. See also Forest Labs., LLC v. Sigmapharm Labs., LLC, 918 F.3d 928, 934 (Fed. Cir. 2019) (“An invention is not obvious simply because all of the claimed limitations were known in the prior art at the time of the invention. Instead, we ask whether there is a reason, suggestion, or motivation in the prior art that would lead one of ordinary skill in the art to combine the references, and that would also suggest a reasonable likelihood of success.”) (citation omitted)). Rather, it appears that Petitioner selects disparate parts of the prior art to combine in order to meet the claim limitation. We understand that a person of ordinary skill is a person of ordinary creativity, not an automaton, but “[w]ithout any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against.” Metalcraft, 848 F.3d at 1367 (“‘[T]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,’ we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.” (quoting KSR, 550 U.S. at 420–21)). Conclusory statements alone, even those provided by a declarant, are inadequate to demonstrate a rationale for why a person of ordinary skill in the art would have combined the teachings from prior art references. NuVasive, 842 F.3d at 1383. Instead, Petitioner’s arguments must be supported by a “reasoned explanation.” Id. (citing In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)). For example, Petitioner states that a person of ordinary skill in the art would have been motivated to use Shoemaker’s teachings to improve the functionality of Gutman’s card and make it more commercially convenient for card users.” Pet. 24–25 (citing Ex. 1002 ¶ 74). But neither the Petition nor its declarant, explain why altering either Gutman or Shoemaker would improve the functionality over what is expressly disclosed in each reference. Nor does the Petitioner or the declarant explain with how the combination of teachings would be more commercially convenient for card users over what is disclosed originally in each reference. Petitioner further contends that “because these changes would have been routine implementation details, a [person of ordinary skill in the art] would have had more than a reasonable expectation of success in implementing them.” Pet. 25 (citing Ex. 1002 ¶ 74). Accordingly, based on the entirety of the trial record, we find” slip op. at 32

  Patent outcomesUS 8,827,153 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,827,153
• Netflix, Inc. / Comcast Cable Communications, LLC v. Realtime Adaptive Streaming LLCNo claims unpatentable
  PTAB · May 27, 2020 · IPR2019-01280 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1, 4, 8, 10, 11, 13, 14, 16, 17, 19, 21, 23, 24, 26, 27, 29–32, 34, and 35 were not shown unpatentable under the asserted obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art, but rather adopts it “[f]or purposes of this IPR proceeding.” PO Resp. 8. Dr. Zeger also adopts Petitioner’s definition of a person of ordinary skill in the art for his analysis. Ex. 2001 ¶ 26. Based on our review of the ’046 patent, the types of problems and solutions described in the ’046 patent and cited prior art, and the testimony of Dr. Storer and Dr. Zeger, we find that a person of ordinary skill in the art at the time of the claimed invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field with at least two years of experience in data compression, or a master’s degree in electrical engineering, computer science, or a similar field with a specialization in data compression.”” slip op. at 10

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

    “Our review does not identify any term whose construction is necessary to our analysis. Accordingly, we decline to construe any claim terms of the ’046 patent. 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 12

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

    “Even though a person of ordinary skill in the art could have applied the teachings of Couwenhoven to Imai’s system, we find Petitioner’s position lacking insofar as it fails to explain how Couwenhoven’s additional steps of monitoring of a rate buffer in relation to fill thresholds for an output buffer create a tighter feedback loop and why a person of ordinary skill in the art would forego the explicit teachings of Imai. Given Imai’s express teaching of controlling the rate of compression and providing its own method of doing so, we do not agree with Petitioner’s position that a person of ordinary skill would have been motivated to turn to Couwenhoven’s monitoring of a rate buffer in relation to fill thresholds for an output buffer for use with Imai’s system. Based on the entirety of the record, we find Petitioner does not provide sufficient rationale for why a person of skill in the art would have combined the teachings from the cited prior art to arrive at the inventions recited in the challenged claims. Accordingly, for this additional reason, we determine Petitioner has not established by a preponderance of the evidence that claims 1, 4, 8, 10, 11, 13, 14, 16, 17, 19, 21, 23, 26, 27, 29–32, 34, and 35 would have been obvious under 35 U.S.C. § 103 in view of Imai and Couwenhoven.” slip op. at 34

  Patent outcomesUS 7,386,046 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,386,046
• Axis Communications AB v. Avigilon Patent Holding 1 CorporationNo claims unpatentable
  PTAB · Jan 6, 2020 · IPR2018-01268 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–29 were not shown unpatentable because Okonnen did not disclose programming verification, and the Board found insufficient reason to combine Okonnen, Creamer, and Jacobson.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “on this issue, we determine that Dr. Jeffay’s testimony is entitled to less weight than Dr. Almeroth’s because Dr. Jeffay’s testimony is insufficiently supported by the evidence and in certain instances Dr. Jeffay appears to use the terms “authenticate” and “verify” interchangeably. First, Dr. Jeffay cites to Okonnen’s explicit disclosure of two methods of using a key to authenticate an update. See Ex. 1010 ¶ 25 (citing Ex. 1005, 3:9–11, 4:29– 30, 7:61–67); Ex. 1008 ¶ 194. Dr. Jeffay further notes that “Okonnen explains that during download of an update, a download agent or download client may use a key to authenticate the update” and “during its update activity (i.e., during the act of performing the update), an update agent may use a separate key to authenticate the update.” Ex. 1010 ¶ 25 (citing Ex. 1005, 3:9–11, 4:29–30, 7:61–67). Then Dr. Jeffay testifies that” slip op. at 44

  • Skill levelSkill level board ownOther

    “Based on our review of the ’607 patent, the types of problems and solutions described in the ’607 patent and cited prior art, and the testimony of Dr. Jeffay and Dr. Almeroth, we find that a person of ordinary skill in the art at the time of the claimed invention would have had “a Bachelor of Science degree in electrical engineering, computer engineering, or computer science, with approximately two years of work experience or research related to the development and programming of video or camera-based computer systems.” Although the’607 patent uses computer-based systems for security and surveillance purposes, we find that a person of ordinary skill in the art having experience with video- or camera-based computer systems would be able to apply such knowledge to security and surveillance systems. Our analysis would not differ, however, if we adopted Patent Owner’s or Dr. Almeroth’s definition.” slip op. at 15

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

    “programmable sensor agent,” “device programming file,” “programming key,” “configurable device,” and “programming . . . to perform at least said selected at least one new feature.” Pet. 14‒22. Although Patent Owner disputes Petitioner’s proposed constructions for these terms, Patent Owner argues no explicit construction of these terms is required. See PO Resp. 9– 17. We agree with Patent Owner and determine that none of the terms require construction for our analysis. slip op. at 16

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

    “on the facts of each case in light of the claim as a whole and the invention described in the patent.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (internal quotation marks omitted). “Absent clear reliance on the preamble in the prosecution history, or in situations where it is necessary to provide antecedent basis for the body of the claim, the preamble generally is not limiting.” Symantec Corp. v. Comput. Assoc. Int’l, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (internal quotation marks omitted). Additionally, preamble language that merely states the purpose or intended use of an invention generally is not treated as limiting the scope of a claim. See Boehringer Ingelheim Vetmedica, Inc. v. Schering–Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003); Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). Yet, when the limitations in the body of the claim rely upon or derive essential structure from the preamble, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). In the present case, we are persuaded that the preamble in the claims states an intended use for the recited methods. First, the body of each claim recites limitations that dictate the specific steps of the methods, specifically claiming what should be received, programmed, and verified during each part of the method. See Ex. 1001, 18:24–41, 18:63–19:15. Therefore, there is no reliance upon the preamble to define the steps or subject matter of the claimed invention because it is expressed explicitly in the body of the claims. Second, for both claims 1 and 10, the body of the claims recite that the method includes “receiving a device programming file in a programmable sensor agent of the security and/or surveillance system.” Id. Therefore, the preamble language is redundant of the language recited specifically in the body of the claims and merely states an intended purpose of the recited claim. Accordingly, we determine that the preamble to claims 1 and 10 in the ’607 patent are not limiting.” slip op. at 21

  Patent outcomesUS 8,508,607 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,508,607

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.