- Everstar Merchandise Co., Ltd. v. Willis Electric Co., Ltd.Rehearing deniedPTAB · Oct 22, 2020 · IPR2019-01484 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied Everstar’s rehearing request, leaving in place the denial of institution on claims 1–30 because it had not shown an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“As Petitioner points out, the ’097 patent characterizes reinforcing strands 102a–c as “extend[ing] axially through the center portion of wire 10[0].” Ex. 1001, 14:59–60. Our construction of “disposed at a central portion,” which requires strands to be positioned in the wire so as to occupy at least the center of the wire, is consistent with both the description of strands 102a–c as extending through the center portion of the wire in the ’097 patent specification and the depiction of strands 102a–c in the center of wire 100 in Figure 5. Petitioner appears to argue that because reinforcing strands 102a–c occupy a space that is larger than “simply the central axis of the wire,” any strands disposed inside the wire (i.e., within the outer insulating layer of the wire) are also “disposed at a central portion of the wire.” Req. Reh’g 5. Nothing in Figure 5 or the ’097 patent’s description of Figure 5, however, supports a construction of “disposed at a central portion” that means simply “disposed inside the wire.” To the contrary, Petitioner’s argument is undermined by the fact that the ’097 patent expressly refers to the reinforcing strands 102a–c as extending through the central portion, but does not use the same language to characterize the position of conducting strands 104.” slip op. at 5
- Expert testimonyDecided for patent owner
“We are not persuaded by Petitioner’s argument that a genuine dispute of material fact exists with regard to the parties’ proposed construction of “disposed at a central portion.” Petitioner acknowledges that its declarant, Dr. Fantone, testified that none of the claim terms required a specific construction and that the claim terms “would be understood by one of ordinary skill in the art.” Req. Reh’g 13–14 (citing Ex. 1009 ¶ 22). As Petitioner points out, Dr. Brown, Patent Owner’s declarant, did not offer any “statement of disagreement with Petitioner’s position that the terms should be afforded their ordinary and customary meaning.” Req. Reh’g 14. As a result, there is no “conflicting” testimony from the declarants on this point. Nor is there any conflicting testimony from the declarants regarding the ordinary and customary meaning of “disposed at a central portion.” Although Dr. Fantone testified generally that a person of ordinary skill in the art would understand what “disposed at a central portion” means, Dr. Fantone never explained what that understanding would be. Thus, there is no dispute of material fact on this record regarding the plain and ordinary meaning of the claim term.” slip op. at 9
Claim constructionPatents in suitUS 9,671,097 - PTAB · Sep 15, 2020 · IPR2020-00282 · APJ Christopher L Ogden · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving in place the denial of institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“a party requests rehearing on a decision on whether to institute inter partes review, we “review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c) (2019). There is an abuse of discretion if we have made “a clear error of judgment in weighing relevant factors or in basing [our] decision on an error of law or on clearly erroneous factual findings.” Bayer CropScience AG v. Dow AgroSciences LLC, 851 F.3d 1302, 1306 (Fed. Cir. 2017) (quoting Mentor Graphics Corp. v. Quickturn Design Sys., Inc., 150 F.3d 1374, 1377 (Fed. Cir. 1998)). In a request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We disagree. Nowhere in the cited passages in the Petition does Samsung argue that we should construe the term “row wrap-around connections” according to the explicit construction that Samsung now suggests for the plain and ordinary meaning. See Pet. 10–11, 25–30. Rather, Samsung argued that “Petitioners do not believe any term requires explicit construction.” Pet. 10–11. In the Reply, Samsung argued that all of the terms in the challenged claims should be construed according to their plain and ordinary meaning. See Reply 1, 4–5. However, apart from arguing that Samsung had proposed construing limitation 1C in the co-pending district court proceeding according to its plain and ordinary meaning,3 Samsung did not propose any specific construction for the phrase “row wrap-around connection,” or point to any evidence as to what the ordinary and customary meaning of that phrase was to a person of ordinary skill in the art. Therefore, we decline to adopt Samsung’s new proposed construction on rehearing.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We determined that Samsung had not provided sufficient evidence of its proposed motivation to combine the two references. See Dec. 16 (“[N]either Samsung nor Dr. Wolfe supports this conclusion with any evidence on the preliminary record.” (citing In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016); 35 U.S.C. § 322(a)(3))). In particular, we found that “Dr. Wolfe does not explain how or why the combination of Barkan and Tagg would minimize RC delay or allow for the use of lengthier columns and rows of electrodes, or cite to any facts, data, or authorities to support that opinion.” Dec. 17. We stated that “there is no evidence in the record suggesting that RC delay was a recognized problem . . . or that a person of ordinary skill in the art would have understood that a connection to both sides of a row of electrodes would be a solution to that problem.” Id. We also stated that Dr. Wolfe does not “provide any detail as to how a person of ordinary skill in the art would have modified Barkan’s leads 160 to incorporate external connections such as those in Tagg.” Id. (citing Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017)).” slip op. at 13
Claim construction§ 103 obviousnessPatents in suitUS 7,821,502 - Everstar Merchandise Co., Ltd. v. Willis Electric Co., Ltd.Rehearing deniedPTAB · Jun 30, 2020 · IPR2019-01484 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution for claims 1–30, finding no abuse of discretion in its claim-construction analysis or treatment of factual disputes.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“strands 102a–c as “extend[ing] axially through the center portion of wire 10[0].” Ex. 1001, 14:59–60. Our construction of “disposed at a central portion,” which requires strands to be positioned in the wire so as to occupy at least the center of the wire, is consistent with both the description of strands 102a–c as extending through the center portion of the wire in the ’097 patent specification and the depiction of strands 102a–c in the center of wire 100 in Figure 5. Petitioner appears to argue that because reinforcing strands 102a–c occupy a space that is larger than “simply the central axis of the wire,” any strands disposed inside the wire (i.e., within the outer insulating layer of the wire) are also “disposed at a central portion of the wire.” Req. Reh’g 5. Nothing in Figure 5 or the ’097 patent’s description of Figure 5, however, supports a construction of “disposed at a central portion” that means simply “disposed inside the wire.” To the contrary, Petitioner’s argument is undermined by the fact that the ’097 patent expressly refers to the reinforcing strands 102a–c as extending through the central portion, but does not use the same language to characterize the position of conducting strands 104.” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“construction of “plurality of reinforcing strands” contradicts the ’097 patent specification. Req. Reh’g 10–12. In our Decision, however, we never expressly construed this term. Instead, we noted that the ’097 patent addresses the possibility that yarn, which itself comprises multiple strands, can be used to form a single reinforcing strand. Dec. 34–35. We did not, as Petitioner contends, determine that “twisted strands must only be one reinforcing strand.” Req. Reh’g 10–11. To the contrary, as Petitioner itself points out, we expressly noted that the ’097 patent distinguishes between embodiments having a single reinforcing strand and those having multiple reinforcing strands. Req. Reh’g 10; Dec. 35. In view of this, we are not persuaded by Petitioner’s argument that we adopted a claim construction of “plurality of reinforcing strands” that contradicts the ’097 patent’s specification, which in turn “led to a clearly erroneous Institution Decision with respect to claims 16–22.” Req. Reh’g 12.” slip op. at 7
- Strike new argumentNew argument disregardedDecided for patent owner
“We first note that Petitioner presents new evidence for the first time in the Request for Rehearing. Pursuant to 37 C.F.R. § 42.104(b)(3), a petition must set forth how the challenged claims are to be construed. In this proceeding, the Petition contains one paragraph addressing claim construction. Pet. 7. In the paragraph, Petitioner states a claim should be “accorded its ‘ordinary and customary meaning . . . as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent’” and, in a single sentence within that paragraph, indicates that “no terms require a specific construction.” Pet. 7. Petitioner thus had the opportunity to present its claim construction arguments and supporting evidence in its Petition, and chose not to do so. By way of contrast, in the Request for Rehearing, Petitioner allocates seven pages to the construction of the term “disposed at a central portion.” Req. Reh’g. 2–8. Petitioner is attempting to use the Request for Rehearing as an opportunity to reply to our Decision and present new arguments and evidence on claim construction. A request for rehearing, however, is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or for Petitioner to present new arguments or evidence.” slip op. at 3
Claim constructionPatents in suitUS 9,671,097 - ROKU, Inc. v. Universal Electronics, Inc.Institution deniedPTAB · Mar 16, 2020 · IPR2019-01608 · APJ Sharon Fenick · IPR · Institution
The Board denied institution because Roku did not show a reasonable likelihood that claim 10 was unpatentable over any of the three asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“IV. CONCLUSION We have reviewed the Petition and Preliminary Response and have considered all of the evidence and arguments presented by Petitioner and Patent Owner. We find, on this record, Petitioner has not demonstrated a reasonable likelihood of showing claim 10 of the ’532 patent is unpatentable. V. ORDER Accordingly, it is hereby: ORDERED that the Petition is denied and no inter partes review is instituted.” slip op. at 25
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“But Petitioner contends that the claimed automatic creation is consistent with the process that the ’532 Patent describes as “manually” creating a macro—the programming by a user of a sequence of actions to be assigned to a single button as shown in Figures 22a–22g and related disclosure. Pet. 8–9 (citing Ex. 1001, 24:7–47, Figs. 22a–22g; Ex. 1011 ¶ 47). Patent Owner argues that a proper understanding of the claim term should not encompass manually created macros, which in the ’532 Patent are distinct from “automatically or semi-automatically” created macros. See Prelim. Resp. 17–18 (citing Ex. 1001 23:67–24:10; Ex. 2001 ¶¶ 93–103). We agree with Patent Owner. The Specification describes “two types of macros”—one “system generated” (automatically or semi-automatically) and one “user generated” such as a macro created when “the user . . . enter[s] a sequence of keystrokes to be stored as a macro.” Ex. 1001, 23:66– 24:10, 24:25–29, 19:67–20:19. Petitioner does not show support for a construction that would encompass the manually-created macros that are specifically described as distinct from the “automatically or semi-automatically” created macros. For these reasons we decline to adopt either proposed construction. Instead we determine that a macro generated when a user “manually program[s] a sequence of actions to be assigned to a single button such that that sequence can be repeated by a press of the single button” (Ex. 1001, 24:7–10) is not encompassed by the claim limitation. Beyond this, we do not deem it necessary to adopt a specific construction to resolve the controversy. Vivid Techs, 200 F.3d at 803.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner reviews and advocates for adoption of the District Court’s determinations and reasoning. Prelim. Resp. 21–22. The District Court’s construction was based on its determination that, as this term relates to “the automatically created sequence of instructions” (emphasis added), the method step of limitation [10.3] must temporally follow the step of limitation [10.2], in which a program is used “to automatically create the sequence of instructions.” Ex. 1012, 46–47 (“Claim 10 . . . requires creating a sequence of instructions first and executing that automatically created sequence of instructions second.”). Thus, the District Court determined that “these claim limitations support that a user first interacts with an interface to create a sequence of instructions, and then separately executes those ‘automatically created’ instructions by pressing a particular button on the controlling device.” Id. at 47. Petitioner’s arguments address what the impact of adopting the proposed construction would be, but Petitioner does not propose an alternate construction. Pet. Reply passim. We agree with the District Court’s determination that the step of “causing the automatically created sequence of instructions to be executed …” ([10.3]) must occur after the creation in the “using a program to automatically create the sequence of instructions . . .” limitation ([10.2]), and the balance of the District Court’s reasoning. We construe “selection of a user input element” as “selection of a user input element separate from the one or more user interactions involved in creating the sequence of instructions.”” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“motivated to combine Humpleman and Walkenbach, but does not address Petitioner’s discussion of the motivation. Prelim. Resp. 41–42; see Pet. 29– 30. More persuasively, Patent Owner argues that “Humpleman describes the exact type of manual entry of steps by a user successfully distinguished from the prior art during prosecution.” Prelim. Resp. 42–43; see id. at 36. We agree. Humpleman teaches that the player piano macro “save[s] the particular steps taken by a user while interacting with the device’s HTML pages” and “[w]hen the player piano macro executes, it performs the particular sequence of instructions as if the user was accessing the respective home device HTML page(s) and executing the sequence of steps directly.” Ex. 1003, 30:26–33. We determine that a macro generated when a user “manually program[s] a sequence of actions to be assigned to a single button such that that sequence can be repeated by a press of the single button” is not encompassed by the proper construction of limitation [10.2]. See supra § III.C.a. Even if, as Petitioner argues, a combination of Humpleman and Walkenbach would teach or suggest that the particular steps taken by the user to be repeated later would be stored in the form of computer code, this distinction does not change the fact that Petitioner relies upon Humpleman’s teachings regarding a user manually programming a sequence of actions which is repeated when the macro is selected, which is excluded by our construction from teaching or suggesting limitation [10.2]. Therefore, Petitioner does not demonstrate a reasonable likelihood of showing claim 10 is unpatentable over the combination of Humpleman and Walkenbach.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,895,532 - Everstar Merchandise Co. Ltd. v. Willis Electric Co. Ltd.Institution deniedPTAB · Feb 13, 2020 · PGR2019-00055 · APJ Stacey G White · PGR · Institution
The Board denied institution because Petitioner did not show that claims 1–10 were more likely than not unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4(a). We may not institute a post-grant review unless “the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a).” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“the invention “would have had at least a Bachelor of Science degree (or equivalent) in Electrical Engineering, or a comparable field, and at least five years of experience in the fields of design of electrical wiring and/or decorative lighting.” Pet. 9 (citing Ex. 1009 ¶ 21). Patent Owner argues that Petitioner’s proposed definition recites an unnecessarily high level of skill. Prelim. Resp. 21. Patent Owner contends that the appropriate level of ordinary skill “would have been (1) a technician with at least two years of experience in the design of electrical wiring and/or decorative lighting, or (2) a person with at least a bachelor’s degree in mechanical engineering, electrical engineering, or an equivalent field, and a basic familiarity with circuits used in decorative lighting.” Id. (citing Ex. 2001 ¶¶ 14–15). At this stage in the proceeding, we determine that the current record supports Patent Owner’s description of an ordinarily skilled artisan. For purposes of this Decision, therefore, we adopt Patent Owner’s description of an ordinarily skilled artisan.7 We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima, 261 F.3d at 1355.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party offers any proposed constructions for any claim terms. Pet. 8–9; Prelim. Resp. 20. Specifically, Petitioner indicates, “no terms require a specific construction, as they would be readily understandable to a [person of ordinary skill in the art].” Pet. 9 (citing Ex 1009 ¶ 22). Patent Owner also indicates, for purpose of its Preliminary Response, that no claim construction is necessary at this stage, but reserves the right to propose constructions should trial be instituted. Prelim. Resp. 20. On this record and for purposes of this decision, we determine that no claim term requires express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“gauge of Sylvania’s net lights. Prelim. Resp. 24. Petitioner provides Exhibit 1007, which is a series of photographs of the Sylvania net lights, its packaging, and its inserts from the box. See Ex. 1007; see also Ex. 1010 ¶ 7 (describing Ex. 1007 as “a collection of photographs”). Petitioner also submitted Exhibit 1010, which is a declaration from William Shelleman describing the purchase of Sylvania. See Ex. 1010. Finally, Dr. Fantone’s declaration includes a description of Sylvania. Ex. 1009 ¶ 28. We have reviewed Petitioner’s evidence and we agree with Patent Owner that Petitioner has not established the wire gauge of Sylvania’s net lights because none of these documents purport to indicate the gauge of the wires in Sylvania. Thus, the question is whether the recited wire gauge teaches the asserted combination.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,119,664 - Nichia Corporation / Osram Opto Semiconductors, Inc. v. Lighting Science Group Corp.Institution deniedPTAB · Jan 15, 2020 · IPR2019-01260 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any anticipation or obviousness challenge to claims 1, 2, 6, and 10.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Corp. (“Patent Owner”) filed a Preliminary Response. Paper 21 (“Prelim. Resp.”). Pursuant to our authorization, Petitioner filed a Reply and Patent Owner filed a Sur-Reply. Papers 23, 24. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for patent owner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. “The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 100(b); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Petitioner proposes that the term “base,” recited in independent claim 1 as well as dependent claim 6, be construed to mean “support or foundation,” and that the phrase “integral part of,” recited in dependent claim 2, be construed to mean “a part of a whole.” Pet. 20–24. Patent Owner contends that we “need not rule on Petitioners’ proposed claim constructions, because construction of those terms is not necessary in order to resolve the parties’ dispute.” Prelim. Resp. 8. Although we agree with Patent Owner that resolution of the parties’” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“dispute does not require construction of “base” or “integral part of,” we find it necessary, in light of the parties’ arguments, to consider the meaning of a “thermally conductive region in solderable thermal contact with the thermally conducting base,” recited in independent claim 1. Neither party addresses this phrase as a matter of claim construction, but both parties implicitly proffer a proposed construction in their arguments. See Pet. 41– 43; Prelim. Resp. 35–40. In particular, Petitioner takes the position that “the term ‘solderable’ does not mean that the ‘thermally conductive region’ is to be ‘solderable’ to the ‘thermally conducting base’; rather, ‘solderable’ requires the thermally conductive region to be ‘solderable’ to another structure outside the assembly.” Pet. 41–42. Conversely, Patent Owner contends that “the modifier ‘solderable’ in ‘solderable thermal contact’ . . . applies to the relationship between (1) the ‘thermally conductive region’ and (2) the ‘thermally conducting base.’” Prelim. Resp. 36. First, we find that the plain meaning of the phrase supports Patent Owner’s proposal. The adjectives “solderable” and “thermal” are grammatically parallel in the phrase, and there is no apparent reason why those adjectives do not each equivalently modify the noun “contact,” such that the “contact” between the thermally conductive region and the thermally conducting base must be both “solderable” and “thermal.” See Prelim. Resp. 35–36 (Patent Owner asserting that “[t]his term plainly requires ‘solderable” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,528,421 - Nichia Corporation / Osram Opto Semiconductors, Inc. v. Lighting Science Group Corp.Institution deniedPTAB · Jan 15, 2020 · IPR2019-01487 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution on claim 7 because Petitioner did not show a reasonable likelihood that Andrews anticipated or rendered the claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“But this argument is not commensurate with the scope of the claim as we have construed it. In particular, in advancing this contention, Petitioner does not present any argument or evidence that thermal contact pad 36 of Andrews is in “solderable thermal contact” with the combination of plate 51 and insulating film 49. Rather, because we agree with Patent Owner that “‘solderable thermal contact’ requires solderability between the region and the base, not some other unclaimed structure,” we also agree with Patent Owner that “the Petition fails to show that Andrews teaches a ‘thermally conducti[ve] region’ solderable to a ‘thermally conducting base.’” Prelim. Resp. 30. In addition, Patent Owner specifically addresses the possibility that Andrews’s thermal contact pad 36 and insulating film 49 are in solderable contact, notwithstanding the omission of such an argument in the Petition. See id. at 30–31. Patent Owner observes that the bottom layer of what Petitioner identifies as the recited “thermally conducting base” is an electrically insulating film, and what Petitioner identifies as the recited “thermally conductive region” is an electrical conductor, “such as gold, silver, [or] tin.” Id. at 31 (quoting Ex. 1008 ¶ 70). Patent Owner asserts that “[i]t is not possible to solder a conductor such as gold, silver, or tin to a nonconductive insulating film.” Id. at 31. That assertion is consistent with a technical dictionary’s definition of “solderability” as “[t]hat property of a metal surface to be readily wetted by molten solder.” See Ex. 3001 (definition by The Authoritative Dictionary of IEEE Standards Terms) (emphasis added). In light of these considerations, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of claim 7 as anticipated by Andrews.” slip op. at 16
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“F. Summary Because we conclude that the Petition does not present a reasonable likelihood of demonstrating that any challenged claim is unpatentable, we also deny the Motion for Joinder. See 35 U.S.C. § 315(c) (permitting joinder only where a properly filed petition “warrants the institution of an inter partes review under section 314”). We need not reach Patent Owner’s argument that the Petition should be denied under 35 U.S.C. § 314(a). See Prelim. Resp. 47–56. III. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied and no trial is instituted; and FURTHER ORDERED that the Motion for Joinder is denied.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that the level of skill in the art is apparent from the cited art and that such a person “would have had at least a B.S. in mechanical or electrical engineering or a related field, and four years’ experience designing semiconductor—including LED—packages.” Pet. 10 (citing Ex. 1003 ¶¶ 31–33). Patent Owner does not dispute this articulation, which we adopt for this Decision. See Prelim. Resp. 8.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“First, we find that the plain meaning of the phrase supports Patent Owner’s proposal. The adjectives “solderable” and “thermal” are grammatically parallel in the phrase, and there is no apparent reason why those adjectives do not each equivalently modify the noun “contact,” such that the “contact” between the thermally conductive region and the thermally conducting base must be both “solderable” and “thermal.” See Prelim. Resp. 25 (Patent Owner asserting that “[t]his term plainly requires ‘solderable thermal contact between a thermally conductive region and the thermally conductive base’”). Second, we find that the prosecution history of the ’421 patent also supports Patent Owner’s proposal. Although both parties cite the same relevant aspect of that prosecution history, they interpret it differently. See Pet. 33–34; Prelim. Resp. 26–29. When the application that matured into the ’421 patent was originally filed, independent claim 1 did not include the word “solderable,” but instead recited only that a bottom surface of the LED assembly include “a thermally conductive region in thermal contact with the thermally conducting base, for spreading heat transmitted to the base from the one or more LED die.” Ex. 1002, 21. After the Applicant successfully traversed an obviousness rejection based on a combination of U.S. Patent Nos. 5,847,935 (“Thaler”) and 6,565,239 (“Rizkin”), the Examiner rejected claim 1 as anticipated by U.S. Patent Publ. No. 2003/0189830 (Ex. 1011, “Sugimoto”). Id. at 109. Sugimoto describes a light-source apparatus using an LED in which light-emission efficiency is improved to achieve greater light-output intensity, operational life, and mechanical strength. Ex. 1011 ¶¶ 1, 17. In responding to the anticipation rejection during prosecution to distinguish Sugimoto, the Applicant made two amendments to independent claim 1. First, the claim was amended to add the last limitation of the issued claim (“further comprising an LED assembly mount selected from the group consisting of an electrically insulated fastener and a solderable bonding pad”). Ex. 1002, 124. Second, the claim was amended to add the word “solderable” in the limitation at issue, thereby requiring that the “thermally conductive region [be] in solderable thermal contact with the thermally conducting base” (emphasis added). Id. Both of these aspects of Applicant’s amendments were identified by the Examiner in the reasons for allowance as not disclosed by Sugimoto. Id. at 167.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,528,421 - Samsung Electronics America, Inc. / Asus Computer International, Inc. v. James B. GoodmanSome claims unpatentablePTAB · Oct 29, 2019 · IPR2017-02021 · APJ Kimberly Mcgraw · IPR · Final written decision
Claims 1, 5, 10, and 16 are unpatentable over Ooishi and Palaniswami, with Abe added for claims 10 and 16; claims 2–4, 6–9, and 11–15, 17–20 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“reasonable construction consistent with the Specification of a control device “for selectively electrically isolating said memory devices from respective address lines and respective control lines so that when said memory devices are electrically isolated, any signals received on said respective address lines and respective control lines do not reach said memory devices” as recited in independent claims 1 and 10 requires that the control device electrically isolate the memory devices from all address and control lines that communicate with the memory devices.10” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co, 383 U.S. 1, 17 (1966). Petitioner contends a person of ordinary skill in the art at the time of the alleged invention of the ’315 patent (a “POSITA”) would have had, inter alia, a bachelor’s degree in electrical, electronics, computer engineering; or the equivalent training, and would have had approximately 2 to 3 years of experience in computer systems, circuits, electronics, or a related discipline. Pet. 9; Ex. 1002 ¶¶ 27–30. Patent Owner does not contest Petitioner’s description of the level of ordinary skill. See PO Resp. 8. Based on our review of the ’315 patent, the cited prior art, and Dr. Wolfe’s testimony, we determine a specific finding regarding ordinary skill level is not required as the prior art reflects an appropriate level. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”). However, to the extent a specific finding regarding the level of skill is required, we find Petitioner’s articulation of a person of ordinary skill in the art is consistent with the teachings of the prior art and adopt Petitioner’s description of a POSITA as someone who “would have had a bachelor’s degree in electrical, electronics, or computer engineering; or the equivalent training, and would have had approximately two to three years of experience in computer systems, circuits, electronics, or a related discipline.” See Pet. 9.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). A reference is deemed publically accessible upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it. Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350–51 (Fed. Cir. 2008). Petitioner asserts JESD21-C was published January 1997 and is prior art under pre-AIA 35 U.S.C. § 102(b). Pet. 37–38. As support, Petitioner relies upon the Declaration of John J. Kelley (“the Kelley Declaration”), the current President of the Solid State Technology Association of the Joint Electron Device Engineering Council (“JEDEC”). See Ex. 1007 ¶ 2. Mr. Kelly states that JEDEC specification JESD21-C, Configurations for Solid State Memories, Release 7 (January 1997), a copy of which is attached to his declaration as Exhibit 17, “was made publicly available in January 1997.” Id. ¶¶ 4, 7. Mr. Kelley testifies that in January 1997 copies of the entire JESD21-C volume “would . . . have been available for purchase by anyone in the public” and that “pages comprising the specifically updated modules would have been sent to those who subscribed to the annual updating service for JESD21-C.” Id. ¶ 6. Patent Owner does not dispute that JESD21-C qualifies as prior art under 35 U.S.C. § 102(b). See PO Resp. 7. Based on the current record, we determine JESD21-C qualifies as a prior art printed publication under § 102(b).” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner has not persuasively shown that Dell discloses a control device that electrically isolates the memory devices as required under the claim construction set forth above in devices even when the devices are in a low-power or self-refresh mode, Petitioner has not shown that Dell’s memory devices are electrically isolated from “respective control lines” such that “any signals received on said . . . respective control lines do not reach said memory devices” as required by claims 1 and 10. Accordingly, we determine Petitioner has not shown by a preponderance of the evidence that claim 1 of the ’315 patent is unpatentable over Dell or that claim 10 is unpatentable over the combined teachings of Dell and Abe.” slip op. at 21
Patent outcomesUS 6,243,315 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,243,315 - Hulu, LLC v. Sound View Innovations, LLCAll claims unpatentablePTAB · Sep 9, 2019 · IPR2018-00864 · APJ Debra K Stephens · IPR · Final written decision
Claims 3, 5, and 9 are unpatentable under § 103 because the Board found the asserted prior-art combinations taught the limitations required by its claim construction.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“Petitioner asserts that a person of ordinary skill in the art at the time of the invention “would have [had] at least a Bachelor of Science degree in Electrical Engineering, Computer Science, or an equivalent field, as well as at least 2-3 years of academic or industry experience in the field of content delivery networks or comparable industry experience(s)” (Pet. 13 (citing Ex. 1002 ¶ 32)). Patent Owner does not dispute Petitioner’s assertion regarding the education or experience of an ordinarily skilled artisan at the time of the invention (see generally PO Resp.). We note that the assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima, 261 F. 3d at 1355). Based on our review of the ’074 Patent, the types of problems and solutions described in the ’074 Patent and cited prior art, and the testimony of Drs. Houh and Jones (Ex. 1002 ¶ 32; Ex. 2018 ¶¶ 19–20), we determine a skilled artisan would have possessed a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field, and two to three years of work experience with content delivery networks or applications or comparable education or work experience in the field.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“be understood by one of ordinary skill in the art in the context of the entire disclosure (In re Translogic Tech., Inc., 504 F.3d 149, 1257 (Fed. Cir. 2007)). An inventor may rebut that presumption by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision (In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)). In the absence of such a definition, limitations are not to be read from the specification into the claims (In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)). a) “helper server” The ’074 patent describes “helper server” in the following terms: “Helper Server (HS): a HS, also referred to as a helper, is one of a plurality of servers in the network that provide certain value-added services” (Ex. 1001, 4:11–13). Accordingly, we adopt this interpretation.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“1. Claim Terms Claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure (In re Translogic Tech., Inc., 504 F.3d 149, 1257 (Fed. Cir. 2007)). An inventor may rebut that presumption by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision (In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)). In the absence of such a definition, limitations are not to be read from the specification into the claims (In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)). a) “helper server” The ’074 patent describes “helper server” in the following terms: “Helper Server (HS): a HS, also referred to as a helper, is one of a plurality of servers in the network that provide certain value-added services” (Ex. 1001, 4:11–13). Accordingly, we adopt this interpretation. b) Other terms Based on the trial record, we determine that no additional terms require explicit construction (see, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)))).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“independent claims 3 and 9 were mutually exclusive (Dec. to Inst. 8–9). We stated: As a matter of law, therefore, we determine with respect to claims 3 and 9, only one of the conditional limitations needs to be satisfied in the prior art to render the claim anticipated or obvious (see Ex Parte Schulhauser (Appeal No. 2013-007847 (PTAB Apr. 28, 2016) (precedential), at 8–10 (holding that conditional steps in process claims need not be carried out when conditions precedent to those steps are not satisfied to be within the broadest reasonable interpretation of the claim))” slip op. at 11
Patent outcomesUS 9,462,074 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,462,074 - Unified Patents Inc. v. Sound View Innovations, LLCAll claims unpatentablePTAB · Sep 9, 2019 · IPR2018-00599 · APJ Debra K Stephens · IPR · Final written decision
Claims 3 and 9 are unpatentable under § 103 because the cited combinations teach the claimed limitations that the Board found limiting.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related subject, and two or three years of work experience with network-based applications and/or multimedia applications. A lack of experience can be remedied with additional education (e.g., a Master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 6-7 years) (Pet. 7–8 (citing Ex. 1005 ¶ 38)). Patent Owner does not dispute the educational level or experiential aspects of Petitioner’s definition in its Response (see generally PO Resp.; Ex. 2002 ¶¶ 19–20). We note that the assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima, 261 F.3d at 1355). Based on our review of the ’074 Patent, the types of problems and solutions described in the ’074 Patent and cited prior art, and the testimony of Drs. Reddy and Jones (Ex. 1005 ¶ 38; Ex. 2002 ¶¶ 19–20), we determine a skilled artisan would have possessed a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field, and two or three years of work experience with content delivery networks or applications or comparable education or work experience in the field.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“a. “helper server” The ’074 patent describes “helper server” in the following terms: “Helper Server (HS): a HS, also referred to as a helper, is one of a plurality of servers in the network that provide certain value-added services” (Ex. 1001, 4:11–13). Accordingly, we adopt this interpretation.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner that neither claim 3 nor claim 9 recites where the “receiving” step takes place and, in particular, neither claim recites “receiving said SM object” at the plurality of or one of the helper servers. [C]laim terms cannot be narrowed by reference to the written description or prosecution history unless the language of the claims invites reference to those sources. See, e.g., McCarty v. Lehigh Val. R.R., 160 U.S. 110, 116, 16 S. Ct. 240, (1895) (“[I]f we once begin to include elements not mentioned in the claim in order to limit such claim ..., we should never know where to stop.”); Renishaw [PLC v. Marposs Societa per Azioni], 158 F.3d 1243, 1249 [(Fed. Cir. 1998)]. In other words, there must be a textual reference in the actual language of the claim with which to associate a proffered claim construction (Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989–90 (Fed. Cir. 1999)). Here, we do not find a textual reference in “receiving said SM object.” We determine that the inventors did not introduce their own lexicographic definition, i.e., defining the term “receiving said SM object” or “receiving.” Furthermore, we are not persuaded “the term or terms chosen by the patentee[s] so deprive the claim of clarity that there is no means by which the scope of the claim may be ascertained from the language used” (see id. at 990 (citations omitted)). Nor do the preambles of claim 3 and 9, respectively, provide any textual reference that “receiving said SM object” should be interpreted as “receiving said SM object at a helper server.” Thus, “[i]n this case, the [disputed term] has a clear and well-defined meaning. This term is not so amorphous that one of skill in the art can only reconcile the claim language with the inventor’s disclosure by recourse to the specification” (Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998)).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“We disagree with Patent Owner’s assessment of the preambles of claims 3 and 9. The preamble of claim 3 recites: A method for storing a streaming media (SM) object in a network having a content server which hosts SM objects for distribution over said network through a plurality of helper servers (HSs) to a plurality of clients, said SM object being comprised of a plurality of successive time-ordered chunks, wherein a chunk is further comprised of a discrete number of segments, each segment allocated to a respective disk block of said plurality of HSs, and the preamble of claim 9 recites: A method for managing storage of a streaming media (SM) object in a network having a content server which hosts SM objects for distribution over said network through a plurality of servers to a plurality of clients (Ex. 1001, Claims). Neither of the preambles recites that storage depends on the availability of disk space. Patent Owner additionally points to Reactive Surfaces Ltd., LLP v. Toyota Motor Corp., IPR2016-01914, Paper 64 at 11–14 (PTAB Mar. 1, 2018) (PO Resp. 10). Claim 1 of Reactive Surfaces recites:” slip op. at 20
Patent outcomesUS 9,462,074 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,462,074
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.