- Tesla, Inc. v. Autonomous Devices, LLCInstitutedPTAB · Oct 22, 2024 · IPR2024-00745 · APJ Russell E Cass · IPR · Institution
The Board instituted IPR of claims 45–47, 51, 56, 57, 59, 60, 68, and 69 on all asserted grounds, finding a reasonable likelihood of success on obviousness over Buibas and Sinyavskiy.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that 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 (2018); see also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“Considering the subject matter of the ’474 patent, the background technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for the person of ordinary skill in the art, except we decline to adopt “at least,” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’474 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, and based on the current record, except as noted above, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that, at this stage of the proceeding, “no formal constructions are presently necessary,” and that it “maps the prior art in this Petition in a manner consistent with Patent Owner’s allegations of infringement before the district court.” Pet. 8 (citing Ex. 1017; Ex. 1003 ¶¶ 21–25. Patent Owner does not propose a claim construction at this stage of the proceeding. See Prelim. Resp. For purposes of this Decision, we determine that it is not necessary to provide an express construction of any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner further argues that one of ordinary skill “would have reasonably expected success implementing the combination, especially as Buibas and Sinyavskiy describe highly similar systems involving spiking neural networks used for training/operating robots.” Pet. 15–16 (citing Ex. 1005 ¶ 92; Ex. 1003 ¶ 70). Indeed, Petitioner contends, “Buibas itself confirms that its spiking neural network can be partitioned, while Sinyavskiy provides the details for doing so.” Id. at 16 (citing Ex. 1005 ¶ 92; Ex. 1003 ¶ 70). In response, Patent Owner argues that Petitioner’s obviousness analysis is flawed because “there is no articulated reasoning regarding what specific element of claim 45 Buibas . . . does not disclose.” Prelim. Resp. 19–20. In other words, according to Patent Owner, Petitioner “failed to perform a proper obviousness analysis because Petitioner has failed to identify anything in the claims that Buibas lacks disclosure of for Ground 1A.” Id. at 20. Based on the present record, we determine that Petitioner has set forth sufficient reasoning to support a motivation to combine Buibas and Sinyavskiy for purposes of institution, as well as sufficient reasoning to support the conclusion that one of ordinary skill would have had a reasonable expectation of success in making the combination. We do not agree with Patent Owner’s argument that Petitioner’s obviousness analysis is flawed because it fails to identify what is lacking in Buibas’s disclosure. To the contrary, Petitioner explains that Buibas “broadly suggests” that its spiking neural networks “can be partitioned into modules for different tasks or behaviors” but “discloses little detail about the partitioning,” and that Sinyavskiy’s more detailed disclosure of partitioning spiking neural networks would fill in these details. See Pet. 12–13, 14–15, 24. Petitioner also relies on Sinyavskiy’s more detailed disclosures concerning partitioning the network to satisfy limitations [45.1] and [45.6]. Id. at 23–27, 35. Thus, Petitioner has sufficiently identified what is missing in Buibas (a detailed disclosure of partitioning spiking neural networks) and how that missing information is provided by Sinyavskiy (by disclosure of specific techniques for partitioning spiking networks).” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,663,474 - PTAB · Oct 11, 2024 · IPR2024-00773 · APJ Jeffrey W Abraham · IPR · Institution
The Board instituted review of claims 7–12 on all asserted grounds and granted Texas Instruments’ motion to join the Cirrus IPR in an understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Rather than pointing to anything in the prior art that would teach this claim limitation, the Petition assumes that any “graded concentration of dopants” would necessarily “aid the movement of minority carriers.” The Petition contains no analysis explaining why the “graded concentration of dopants” in the prior art meet the “aid the movement of minority carriers” limitation, apart from the fact that they are “graded concentration of dopants.” In other words, Petitioner reads the “aid the movement of minority carriers” limitation out of the claims completely.” slip op. at 13
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b)” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. A motion for joinder should (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for 7 Available at https://www.uspto.gov/TralPracticeGuideConsolidated. the existing review; and (4) address specifically how briefing and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC, IPR2013- 00004, Paper 15 (PTAB April 24, 2013). As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Regarding the “first static unidirectional electric drift field to aid the movement of minority carriers” limitation, Petitioner relies on the parent file history and cited references, arguing that “Payne’s downward-sloping graded-dopant concentration aids the movement of minority carriers from the surface layer to the substrate to the same extent to which Applicant relied on the prior art and admitted to the Patent Office that such carrier movement would occur under the same scenario.” Pet. 23. Petitioner also asserts that the direction in which carriers are forced with the concentration profile disclosed in Payne is downward, toward the substrate and away from the surface. Pet. 23–28 (quoting and citing Ex. 1046, 237–238, 253–254, 289– 290; citing Ex. 1003 ¶¶ 95–106; Ex. 1005, 5:7–17, 5:44–55; Ex. 1009, 2:11– 16, 2:67–3:18, Fig. 2; Ex. 1010, 2:27–32, 5:14–22; Ex. 1013, 431; Ex. 1030, 24). We find that Petitioner’s challenge to claim 7 based on Payne is sufficiently supported for purposes of institution.” slip op. at 12
§ 103 obviousnessPatents in suitUS 9,190,502 - PTAB · Oct 11, 2024 · IPR2024-00771 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted IPR on claims 1–6 of the ’195 patent on all asserted grounds and granted Texas Instruments’ motion to join the Cirrus IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the Preliminary Response in the instant case includes arguments pertaining to the sufficiency of the asserted prior art references, which were not raised in the preliminary response in the Cirrus IPR, we briefly address below the patentability of the challenged claims.” slip op. at 6
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“II. TIMELINESS OF THE PETITION UNDER 35 U.S.C. § 315(B) Pursuant to 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 10– 30. However, 35 U.S.C. § 315(b) also provides that the one-year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Because the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2024-00017), which we grant as further discussed below, Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, irrespective of whether Petitioner is in privity with time-barred entities.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“B. Whether to Join Petitioner as a Party to the Cirrus IPR Joinder may be authorized when warranted, but the decision to grant joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. A motion for joinder should (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC, IPR2013- 00004, Paper 15 (PTAB April 24, 2013). As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). As an initial matter, we find the Motion for Joinder meets the timing requirements of 37 C.F.R. § 42.122(b) because Petitioner filed it on April 4, 2024, no later than one month after the Cirrus IPR was instituted on May 1, 2024.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“5. “Aid the Movement of Minority Carriers” Patent Owner argues that the Petition fails to show that the applied prior art references disclose the claim limitations “requiring ‘aid the movement of minority carriers,’” as twice recited in claim 1. Prelim. Resp. 8. Patent Owner summarizes this dispute as follows: The challenged patent discloses and claims a semiconductor device with (among other things) a “drift layer having a graded concentration of dopants . . . [and] further having a first static unidirectional electric drift field to aid the movement of minority carriers.”[] The Petition should not be instituted, because (among other deficiencies) it fails to show that the prior art discloses the “aid the movement of minority carriers” claim limitation. Rather than pointing to anything in the prior art that would teach this claim limitation, the Petition assumes that any “graded concentration of dopants” would necessarily “aid the movement of minority carriers.” The Petition contains no analysis explaining why the “graded concentration of dopants” in the prior art meet the “aid the movement of minority carriers” limitation, apart from the fact that they are “graded concentration of dopants.” In other words, Petitioner reads the “aid the movement of minority carriers” limitation out of the claims completely. Id. at 1–2. Patent Owner includes additional details in support of its view that the asserted prior art fails to establish obviousness of the “aid carrier movement” limitations of claim 1. Prelim. Resp. 1–10.” slip op. at 8
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,421,195 - Quasar Science LLC v. Colt International Clothing, Inc. D/B/A Colt LedNo claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,566,895 - Quasar Science LLC v. Colt International Clothing, Inc. D/B/A Colt LedNo claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,411,582 - PTAB · Sep 27, 2024 · IPR2024-00674 · APJ Monica S Ullagaddi · IPR · Institution
The Board instituted review of claim 44 on all asserted grounds and granted Texas Instruments’ motion to join IPR2023-01244 in an understudy role.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“On the present record, we agree with Petitioner that the two petitions filed to challenge the claims of the ’222 patent will not substantially burden the Board or the parties. The petitions in IPR2024-00673 and IPR2024- 00674 challenge different claims, and those claims appear on the present record to have different claim scope, as Petitioner argues. Paper 3, 3–4 (arguing that claim 44, challenged in IPR2024-00674, recites “a ‘surface layer,’ a ‘single drift layer,’ and ‘at least one well region disposed in the single drift layer,’ which are not” recited in the claims challenged in IPR2024-00673); Ex. 1001, 4:39–8:39. In addition, there is little overlap between the prior art asserted in the two petitions, and what overlap there is—the use of Kawagoe in both petitions—is used in different prior-art combinations in each petition. Compare IPR2024-00673, Paper 4, 5 (asserting Kawagoe alone and in combination with Gupta or Silverbrook), with IPR2024-00674, Paper 4, 5 (asserting Kawagoe in combination with Sakai). Accordingly, we do not exercise our discretion to deny either of the petitions challenging the ’222 patent for being parallel petitions.” slip op. at 5
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 16– 37. However, 35 U.S.C. § 315(b) also provides that the one year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Since the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2023-01244), which we grant as further discussed below (see infra § V), Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, regardless of whether Petitioner is in privity with time-barred entities.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“statements made during prosecution of the ’195 patent contradict its arguments in the present proceeding. See generally Prelim. Resp. Based on the present record, Patent Owner’s statements during prosecution support a preliminary finding that a graded dopant concentration is enough to teach 9 The examined claims of the ’195 patent generally recited “a unidirectional drift field drawing all minority carriers from said surface layer to said substrate.” Ex. 1020, 286. Patent Owner amended the claims of the ’195 patent to recite “maintain[ing] a single static unidirectional electric drift field to aid the movement of minority carriers from said surface layer to said substrate.” Id. aiding carrier movement in a particular direction. Patent Owner does not dispute that Payne has a drift layer having a static unidirectional electric drift field and a well region having a graded concentration of dopants and a static unidirectional electric drift field at this stage of the proceeding. See generally Prelim. Resp. Patent Owner also does not dispute that Payne’s transistor has a surface layer and a substrate having an area with no active regions. Id. At this stage of the proceeding, Petitioner has the better position.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“statements made during prosecution of the ’195 patent contradict its arguments in the present proceeding. See generally Prelim. Resp. Based on the present record, Patent Owner’s statements during prosecution support a preliminary finding that a graded dopant concentration is enough to teach 9 The examined claims of the ’195 patent generally recited “a unidirectional drift field drawing all minority carriers from said surface layer to said substrate.” Ex. 1020, 286. Patent Owner amended the claims of the ’195 patent to recite “maintain[ing] a single static unidirectional electric drift field to aid the movement of minority carriers from said surface layer to said substrate.” Id. aiding carrier movement in a particular direction. Patent Owner does not dispute that Payne has a drift layer having a static unidirectional electric drift field and a well region having a graded concentration of dopants and a static unidirectional electric drift field at this stage of the proceeding. See generally Prelim. Resp. Patent Owner also does not dispute that Payne’s transistor has a surface layer and a substrate having an area with no active regions. Id. At this stage of the proceeding, Petitioner has the better position.” slip op. at 16
§ 103 obviousnessDiscretionary denialPatents in suitUS 11,121,222 - PTAB · Sep 27, 2024 · IPR2024-00673 · APJ Monica S Ullagaddi · IPR · Institution
The Board instituted review of claims 1–9, 13–28, and 32–42 on all asserted grounds and granted Texas Instruments’ motion to join IPR2023-01242 in an understudy role.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“On the present record, we agree with Petitioner that the two petitions filed to challenge the claims of the ’222 patent will not substantially burden the Board or the parties. The petitions in IPR2024-00673 and IPR2024- 00674 challenge different claims and, on the present record, those claims 8 Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“CTPG”). appear to have different claim scope, as Petitioner argues. Paper 3, 3–4 (arguing that claim 44, challenged in IPR2024-00674, recites “a ‘surface layer,’ a ‘single drift layer,’ and ‘at least one well region disposed in the single drift layer,’ which are not” recited in the claims challenged in IPR2024-00673); Ex. 1001, 4:39–8:39. In addition, there is little overlap between the prior art asserted in the two petitions, and what overlap there is—reliance on Kawagoe in both petitions—is applied in different prior art combinations in each petition. Compare IPR2024-00673, Paper 4, 5 (asserting Kawagoe alone and in combination with Gupta or Silverbrook), with IPR2024-00674, Paper 4, 5 (asserting Kawagoe in combination with Sakai). Accordingly, we do not exercise our discretion to deny either of the petitions challenging the ’222 patent for being parallel petitions.” slip op. at 5
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“III. WHETHER THE PETITION IS TIME-BARRED Pursuant to 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 19– 39. However, 35 U.S.C. § 315(b) also provides that the one-year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Because the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2023-01242), which we grant as further discussed below (see infra § V), Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, irrespective of whether Petitioner is in privity with time-barred entities.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“statements made during prosecution of the ’195 patent contradict its arguments in the present proceeding. See generally Prelim. Resp. Based on the present record, Patent Owner’s statements during prosecution support a preliminary finding that a graded dopant concentration is enough to teach 13 The examined claims of the ’195 patent generally recited “a unidirectional drift field drawing all minority carriers from said surface layer to said substrate.” Ex. 1016, 286. Patent Owner amended the claims of the ’195 patent to recite “maintain[ing] a single static unidirectional electric drift field to aid the movement of minority carriers from said surface layer to said substrate.” Id. aiding carrier movement in a particular direction. Patent Owner does not dispute that Kawagoe has a graded dopant concentration in the active region at this stage of the proceeding. See generally Prelim. Resp. Patent Owner also does not dispute that Kawagoe’s transistor has carriers in the active region or that the graded dopant concentration of Kawagoe is lowered from the surface to the bottom substrate (Ex. 1007, Fig. 17). See generally Prelim. Resp. At this stage of the proceeding, Petitioner has the better position.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“under the pre-AIA version of 35 U.S.C. § 112, first paragraph and found that “movement of minority carriers is affected by multiple forces and fields” and that “it does not appear that simply the presence of ‘a unidirectional drift field’ in itself can achieve ‘drawing all minority carriers from said surface layer to said substrate.’” Ex. 1016, 289 (emphasis added). Patent Owner responded with the following argument: [A] unidirectional drift (electric) field necessarily affects all the present minority carriers in the same way - moving all minority carriers in the same direction because of the unidirectional drift due to the existence of the electric field. See “Physics and Technology of Semiconductor Devices,” A.S. Grove, pp. 224– 225, John Wiley and Sons, Inc., New York, 1st Edition 1967 (“This same electric field will then be of such direction as to aid the motion of injected holes. Thus the injected minority carriers will now move not only by diffusion but also by drift due to the existence of this electric field.”). Depending on the particular slope of the graded concentration of dopant, all minority carriers are either swept “down” (from the surface layer to the substrate) or “up” (from the substrate to the surface layer). See Applicant’s Figs. 5(b) and 5(c). Id. Patent Owner further argued that the Examiner’s finding appears to not consider that the graded dopant concentration itself creates a “built-in” electrical field that forces the movement of carriers into a particular direction, whereby the “direction” of the electrical field and the resulting direction of the carrier movement depends solely on the slope of the graded concentration of dopant. With regard to the existence of a “built-in” electric field created by a graded dopant density, . . . this inherent “built-in” unidirectional electric field is the additional parameter for ensuring that all minority carriers are being moved in one direction and which parameter the Office Action deemed to be missing from the disclosure. Id. at 289–90 (emphases added). Also, “without conceding its position on this issue,” Patent Owner amended claims to eliminate reference to “all carriers” and instead, refer to “carriers.” 13 Id. at 290. 4. Analysis of Claim 1 At this stage of the proceeding, we determine that Patent Owner’s statements made during prosecution of the ’195 patent contradict its arguments in the present proceeding. See generally Prelim. Resp. Based on the present record, Patent Owner’s statements during prosecution support a preliminary finding that a graded dopant concentration is enough to teach 13 The examined claims of the ’195 patent generally recited “a unidirectional drift field drawing all minority carriers from said surface layer to said substrate.” Ex. 1016, 286. Patent Owner amended the claims of the ’195 patent to recite “maintain[ing] a single static unidirectional electric drift field to aid the movement of minority carriers from said surface layer to said substrate.” Id. aiding carrier movement in a particular direction. Patent Owner does not dispute that Kawagoe has a graded dopant concentration in the active region at this stage of the proceeding. See generally Prelim. Resp. Patent Owner also does not dispute that Kawagoe’s transistor has carriers in the active region or that the graded dopant concentration of Kawagoe is lowered from the surface to the bottom substrate (Ex. 1007, Fig. 17). See generally Prelim. Resp. At this stage of the proceeding, Petitioner has the better position.” slip op. at 18
§ 103 obviousnessDiscretionary denialPatents in suitUS 11,121,222 - PTAB · Sep 27, 2024 · IPR2024-00672 · APJ Julia Heaney · IPR · Institution
The Board instituted review of claims 1–18 on all asserted grounds and granted Texas Instruments’ motion to join IPR2023-01243 in an understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage of the proceeding, we determine that the arguments and evidence of record favor Petitioner. Both parties agree that a downward-sloping gradient, as disclosed in Kawagoe, will create an electrical field with a force in a direction toward the substrate. See generally Prelim. Resp.; Ex. 1007, 16:7–9. Patent Owner does not meaningfully dispute that Kawagoe has a graded dopant concentration in an active region. See generally Prelim. Resp. Further, Patent Owner contradictorily stated during prosecution of the ’195 patent that a graded dopant concentration itself creates “a built-in electrical field that forces the movement of carriers in a particular direction” (Ex. 1016, 289–290) and is “the additional parameter for ensuring that all minority carriers are being moved in one direction” (id. at 290). In light of this evidentiary record, which at most presents a material issue of fact for resolution at trial, we determine Petitioner establishes a reasonable likelihood of prevailing in its challenge of claim 1. We decline to further discuss the parties’ arguments or resolve any disputed issues as to challenges based on Kawagoe on this preliminary record, because the trial in the 1243 IPR is the better proceeding in which to do so. Specifically, as compared to the preliminary phase of this case, the instituted trial in the 1243 IPR affords the parties better opportunity to brief, argue, and develop evidence in support of their positions. Thus, for the same reasons stated in our Decision on Institution in the 1243 IPR, we determine the Petition here warrants institution.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“deficient because Kawagoe’s disclosure of graded dopant concentration teaches impeding carrier movement rather than aiding it, as required by claim element 1.5. Prelim. Resp. 13–14. Patent Owner relies on Kawagoe’s disclosure that the concentration gradient prevents electrons from entering the p-well. Id. at 14 (citing Ex. 1007, 16:7–11). Patent Owner further argues Kawagoe’s carriers are not in the active regions, as required by claim element 1.5. Id. at 14–16 (citing Ex. 1003 ¶ 91, n.5). At this stage of the proceeding, we determine that the arguments and evidence of record favor Petitioner. Both parties agree that a downward-sloping gradient, as disclosed in Kawagoe, will create an electrical field with a force in a direction toward the substrate. See generally Prelim. Resp.; Ex. 1007, 16:7–9. Patent Owner does not meaningfully dispute that Kawagoe has a graded dopant concentration in an active region. See generally Prelim. Resp. Further, Patent Owner contradictorily stated during prosecution of the ’195 patent that a graded dopant concentration itself creates “a built-in electrical field that forces the movement of carriers in a particular direction” (Ex. 1016, 289–290) and is “the additional parameter for ensuring that all minority carriers are being moved in one direction” (id. at 290). In light of this evidentiary record, which at most presents a material issue of fact for resolution at trial, we determine Petitioner establishes a reasonable likelihood of prevailing in its challenge of claim 1.” slip op. at 15
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“II. TIMELINESS OF PETITION UNDER 35 U.S.C. § 315(B) Pursuant to 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), included revisions to 35 U.S.C. §§ 102 and 103 that became effective in 2013, after the effective filing date of the challenged claims. See Ex. 1001, codes (22), (60). Therefore, we apply the pre-AIA versions of 35 U.S.C. §§ 102 and 103(a). 2 US 6,043,114, issued March 28, 2000 (Ex. 1007, “Kawagoe”). Petitioner asserts that Kawagoe is prior art under 35 U.S.C. § 102(b). Pet. 4. 3 US 6,163,877, issued December 19, 2000 (Ex. 1014, “Gupta”). Petitioner asserts that Gupta is prior art under 35 U.S.C. § 102(b). Pet. 5. 4 US 2003/0183856 A1, published October 2, 2003 (Ex. 1006, “Wieczorek”). Petitioner asserts that Wieczorek is prior art under 35 U.S.C. §§ 102(a),(e). Pet. 4. 5 Stanley Wolf and Richard N. Tauber, Silicon Processing for the VLSI Era, Vols. 1–4, Lattice Press (2000) (Ex. 1008, “Wolf”). Petitioner asserts that Wolf was published and publicly available no later than 2002, and is prior art under 35 U.S.C. § 102(b). Pet. 5 (citing Exs. 1012, 1013, 1036). Exhibit 1008 was submitted in four parts (A–D) and includes selected portions of Wolf. We cite to Wolf using its original page numbers and omit the exhibit part designations. Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 18– 39. However, 35 U.S.C. § 315(b) also provides that the one-year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Because the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2023-01243), which we grant as further discussed below, Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, irrespective of whether Petitioner is in privity with time-barred entities.” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Patent Owner’s first argument is not persuasive because it is based on speculation that Petitioner “is trying to block settlement with any of these defendants unless [Patent Owner] also settles with” Petitioner. Opp. Mot. Join. 5. As discussed below, we determine that Patent Owner will not be prejudiced unduly by the joinder. Moreover, we note that even in a situation where the petitioner and patent owner in the proceeding to be joined had settled (Code200 v. Bright Data Ltd., IPR2022-00861, Paper 17 at 5 (PTAB July 25, 2022) (vacated)), the Director nevertheless vacated a decision to deny a motion for joinder. Code200 v. Bright Data Ltd., IPR2022-00861, Paper 18 at 7 (Office of the Director of the USPTO Aug. 23, 2022) (precedential); see also eBay, Inc. v. Lexos Media IP, LLC, IPR2024-00336, Paper 11 at 13–15 (PTAB Feb. 23, 2024). Patent Owner’s second argument is moot because Patent Owner’s Request for Director Review has been denied. 1243 IPR, Paper 43 (PTAB Apr. 24, 2024). Based on the facts and circumstances discussed above, we determine Petitioner has established good cause for joining the 1243 IPR. Specifically, we find that joining Petitioner to the 1243 IPR is unlikely to require any delay or modification to the scheduling order already in place for the 1243 IPR. We also determine that Patent Owner will not be prejudiced unduly by the joinder of this proceeding. Thus, we determine that granting the Motion for Joinder would help “secure the just, speedy, and inexpensive resolution” of these proceedings. See 37 C.F.R. § 42.1(b). For the above reasons, we grant Petitioner’s Motion for Joinder and join Petitioner as a party to the 1243 IPR.” slip op. at 19
§ 103 obviousnessPatents in suitUS 10,510,842 - PTAB · Sep 17, 2024 · IPR2024-00617 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR on claims 1–7, 9–14, 16–18, and 20 on all asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any response . . . shows that 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). Further, when instituting an inter partes review, we “will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“’142 patent’s earliest claimed priority date “would have had at least a bachelor’s degree in a healthcare field as well as 1–2 years of experience with health information technology, including specific experience with computer-based systems for recording, tracking, and analyzing patient health information.” Pet. 6 (citing Ex. 1012 ¶ 36). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Bryan Bergeron. Ex. 1012 ¶ 36. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 2. We adopt Petitioner’s description for the purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction In an inter partes review proceeding, a patent claim is construed using 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. 7; Prelim. Resp. 10. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Douglas’s system includes Wager’s workforce management interface. Pet. 50–52 (citing Ex. 1012 ¶¶ 138–141). Petitioner presents evidence that doing so would have been obvious because “Douglas’s system is used to treat patients with a variety of needs,” and Wager’s interface “would have helped ensure that the assigned physician was equipped, in terms of skill set, to treat the patient.” Id. at 50–51 (citing Ex. 1002, 6:36–7:4; Ex. 1012 ¶¶ 138, 140). Petitioner also presents evidence that combining the cited teachings of Douglas and Wager “would have . . . helped ensure that the assigned physician had the capacity to effectively treat the patient.” Id. at 51 (citing Ex. 1012 ¶ 141). Patent Owner argues that Petitioner does not show sufficiently that it would have been obvious to combine the cited teachings of Douglas and Wager for several reasons. Prelim. Resp. 29–37. Specifically, Patent Owner argues that combining Douglas’s system with Wager’s interface is redundant because Douglas’s “patients are only subscribed to the system because they are already assigned to a physician.” Id. at 29–30. On this record, Patent Owner’s argument is unavailing. Even if a patient already saw a physician, the evidence of record indicates that Wager’s interface would have improved Douglas’s system by allowing the case administrator to assign a physician that has the appropriate skills and capacity to treat the patient. Ex. 1012 ¶¶ 140–141.” slip op. at 18
Claim construction§ 103 obviousnessPatents in suitUS 11,151,142 - Teladoc Health, Inc. v. Data Health Partners, Inc.Institution deniedPTAB · Sep 16, 2024 · IPR2024-00618 · APJ Andreas Baltatzis · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that the asserted obviousness combinations teach compiling provider data without client input to generate a score.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art relevant to the challenged claims, as of the earliest claimed priority date, “would have had at least a bachelor’s degree in a healthcare field as well as 1–2 years of experience with health information technology, including specific experience with computer-based systems for recording, tracking, and analyzing patient health information.” Pet. 7 (citing Ex. 1012 ¶ 36). At this time, Patent Owner does not oppose Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 2. For the purposes of this Decision, we adopt Petitioner’s formulation for a person of ordinary skill in the art, which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’812 patent.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We finally consider the disputed limitation “without input from the clients.” Petitioner argues that data inputted by a provider, and not the client, “is without input” from the client. See Pet. 51 (citing Ex. 1012 ¶ 141). Patent Owner distinguishes between entered data and compiled data. See Prelim. Resp. 19–20 (“[T]he element in claim 16 does not require data entry without input from the patients. Instead, . . . claim 16 recites that ‘instructions are executed by the processor to: . . . compile data’”). Patent Owner thus argues that the negative limitation “without” excludes client input from the compiled data to generate a score, not the entered data as a whole. See id. In other words, both providers and clients may input data, but the score is generated from data collected from the providers, not the clients. We agree with Patent Owner’s position—that the compiled data used to generate a score includes client data received from the providers and excludes (is without) input from the clients—as consistent with the plain and ordinary meaning of the claim limitation. This reading gives meaning to the express limitation “without input from the clients.” See Phillips, 415 F.3d at 1314 (“the use of a term within the claim [may provide] a firm basis for construing the term”). We next consider whether this interpretation is consistent with the intrinsic evidence.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Furthermore, Petitioner must explain with particularity how the prior art would have rendered the challenged claims unpatentable. 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). slip op. at 6
- BurdenNot shown unpatentable
“In sum, none of Petitioner’s citations to Douglas appear to address compiling data without input from the client to generate a score. Petitioner’s declarant, Dr. Bergeron, does not provide any further explanation of why one of ordinary skill in the art would compile data without input from the client to generate a score, nor a reason to modify Douglas to do so. See Ex. 1012 ¶¶ 141–142, 90–91. Instead, Dr. Bergeron merely provides the conclusion mirrored in the Petition. See Ex. 1012 ¶ 141. Finally, Petitioner does not rely on Klotsche, Virginia, or Wager for the disputed limitation “without input from the client.” See Pet. 32 (discussing Klotsche), 33 (discussing Virginia), and 58–59 (discussing Wager). Based on the record before us, Petitioner has not established that the asserted art teaches or suggests all of the claim elements and limitations of claim 16. Accordingly, Petitioner has not established a reasonable likelihood of prevailing on its assertion that claim 16, and dependent claim 17, would have been obvious over Douglas, Klotsche, and Virginia or Douglas, Klotsche, Virginia, and Wager.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,061,812
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.