- NVIDIA Corporation v. Invensas CorporationAll claims unpatentablePTAB · Sep 1, 2021 · IPR2020-01729 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–8 are unpatentable under §103 over the listed combinations of Jaso, Stine1998, Pramanik1997, and Robinson.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner responds that, because Jaso discloses a damascene process with trenches, Patent Owner’s proposed claim construction is “unnecessary.” Reply 32. We agree that the damascene process of Jaso is the same damascene process to which Patent Owner seeks to limit this claim term. Patent Owner does not argue otherwise in its Sur-reply. See Sur-reply. Thus, we decline to construe the term “etching . . . trenches into a dielectric layer.”” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art at the time of the invention of the ’231 patent “would have had a Bachelor of Science degree in physics, chemistry, materials science, electrical engineering, mechanical engineering, or related discipline, in addition to 3–5 years of experience in the fabrication of integrated circuit devices. Additional years of experience could substitute for formal education, and vice versa.” Pet. 22 (citing Ex. 1002 ¶ 35). Patent Owner “does not dispute Petitioner’s description of the qualifications of a POSA for the purposes of this IPR.” PO Resp. 9. We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 Therefore, for purposes of this Final Written Decision, we adopt Petitioner’s assessment of the level of skill in the art because it is consistent with the ’231 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Overall, we have considered all of Patent Owner’s arguments but do not find that they undermine the overall credibility of Dr. Boning. However, we will consider any question regarding his credibility on any specific issue raised by Patent Owner in the obviousness analysis below, where appropriate.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Petitioner argues it would have been obvious to a person of ordinary skill in the art to combine Jaso and Stine1998 “to etch a plurality of dummy trenches in a dielectric layer between a first (wider) trench and a series of second (narrower) trenches.” Id. at 66 (citation omitted). Petitioner argues that a person of ordinary still in the art “would be motivated to combine the teachings in Jaso and Stine1998, as both references are directed to the addition of dummy conductors to equalize pattern density to improve CMP planarity.” Id. at 38–39 (citing Ex. 1004, code (57), 3:29–64; Ex. 1005, 668). In particular, Petitioner states that “Stine1998 enhances and improves upon the disclosure in Jaso by providing general teachings and specific methods that are widely applicable to dummy metal-fill techniques for addressing added capacitance.” Id. at 39 (citing Ex. 1005, 670–672). Petitioner points out that “Stine1998 expressly motivates a [person of ordinary skill in the art] to apply its teachings to a damascene process requiring dummy-fill to enhance planarity” because Stine1998 states its methodology can be extended to “inlaid metal techniques such as copper (emphasis omitted). Analysis of Patent Owner’s Arguments 1) Prior Art Does not “Look for” a Specific Configuration Patent Owner argues “Stine1998 does not tell the POSA to look for a specific configuration of structures, and then insert dummy metal into a particular location within that configuration (as the Relevant Solution does.)” PO Resp. 36–37. Patent Owner also argues that Jaso and Stine1998 “together accordingly tell the POSA to focus on pattern density, and to take steps to ensure that variations in pattern density across the chip are minimized” as opposed to looking for the particular configuration called out by the claims. Id. at 58. There is no requirement in the claims for the prior art to “look for” specific structures, but rather it must disclose those structure required by the claims. For the reasons articulated in the Petition, we agree that the combined teachings of Jaso and Stine1998 teach the structure required by claim 1. Pet. 38–39 (citing Ex. 1004, code (57), 3:29–64; Ex. 1005, 668), 50–52 (citing Ex. 1005, 670). We also credit Dr. Boning’s testimony that these references’ teachings “to locate dummies in sparse regions proximate to wide and narrow lines...would obviously include placing dummies in regions between such lines.” Ex. 1002 ¶ 183 (emphasis added). The fact that Jaso and Stine1998 may not purposefully seek out the configuration relied on by Patent Owner does not undermine Petitioner’s showing that the proper configuration would result from an obvious combination of the references. Thus, we are not persuaded by these arguments.” slip op. at 28
Patent outcomesUS 6,232,231 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 6,232,231 - NVIDIA Corporation v. Invensas CorporationAll claims unpatentablePTAB · Sep 1, 2021 · IPR2020-00603 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–8 are unpatentable under §103: claims 1–4 and 8 over Jaso and Stine1998, with alternative grounds adding Pramanik1997; claims 5–7 over combinations adding Robinson.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“Patent Owner is correct that “[a] patent’s statement of the described invention’s purpose informs the proper construction of claim terms.” Kaken Pharm. Co. v. Iancu, 952 F.3d 1346, 1352 (Fed. Cir. 2020). Nevertheless, a claim is not required to encompass all of the advantages or purposes of the invention. See Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1345 (Fed.Cir.2008) (“An invention may that every claim directed to that invention be limited to encompass all of them.”) (citations omitted). Additionally, notwithstanding the importance of a specification, limitations in the specification must not be read into the claims absent lexicography or disclaimer/disavowal. Hill-Rom Services, Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art at the time of the invention of the ’231 patent “would have had a Bachelor of Science degree in physics, chemistry, materials science, electrical engineering, mechanical engineering, or related discipline, in addition to 3–5 years of experience in the fabrication of integrated circuit devices. Additional years of experience could substitute for formal education, and vice versa.” Pet. 22 (citing Ex. 1002 ¶ 35). Patent Owner “does not dispute Petitioner’s description of the qualifications of a POSA for the purposes of this IPR.” PO Resp. 9. We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 Therefore, for purposes of this Final Written Decision, we adopt Petitioner’s assessment of the level of skill in the art because it is consistent with the ’231 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“look at Figure 8 and form any understanding of its structures at all” and thus, Dr. Boning’s opinions should be disregarded in their entirety. Id. at 44 (citing Ex. 2011 ¶¶ 191–199). We find that the explanations by Dr. Boning are a reasonable attempt to explain what one of ordinary skill in the art, with general background knowledge in the art, would glean from Figure 8 of Stine 1998 and are supported by additional cited references, such as Maly1991 and the StineThesis. See, e.g., Ex. 1052 ¶¶ 72 (citing Maly Fig. 4), 92 (citing Ex. 2016 (StineThesis), 92 (Ex. 2016, 165), 93. “[A] skilled artisan’s background knowledge is relevant to the reading of the prior art on which the obviousness challenge is based and . . . it is permissible, and sometimes even necessary, to establish such background knowledge by pointing to other prior art.” Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1027 (Fed. Cir. 2017). Despite Patent Owner’s criticism, Dr. Boning’s testimony cited by Patent Owner evidences Dr. Boning’s opinion that a person of ordinary skill in the art was aware of common artifacts and limitations in downscaled Boning also relies on secondary references to support his testimony about the general background knowledge of one of ordinary skill in the art. Ex. 1002 ¶¶ 65 (citing Ex. 1009 (Mead Textbook)), 74 (citing Ex. 1010 (Rabaey Textbook)), 75, 76, 152–157. Thus, we credit Dr. Boning’s testimony and do not disregard his testimony wholesale based on those alleged inconsistencies. Below, we focus on the testimony that is at issue in this IPR. There are three main reasons why Figure 8 of Stine1998 is at issue. First, Petitioner asserts that the white areas in Figure 8 are open areas between a wide trench and narrow trenches with no metal lines into which dummy conductors would be placed. See Pet. 37–38; Ex. 1002 ¶¶ 112, 152, 157. Patent Owner opposes that contention (PO Resp. 56) but, as explained in association with claim construction, we do not rely on a construction that requires no intervening trenches or other structures between the wide trench and narrow trenches. Additionally, Petitioner relies on the typical layout of chips and the figures of Jaso to support its interpretation of Figure 8. Pet. 45–46, 52–53. 13 Dr. Givens testifies that, because there is a discrepancy in Dr. Boning’s testimony regarding the inserts for various regions of Figure 8 of Stine1998 and the lack of any other inserts one of ordinary skill in the art would not assume the white areas contain no metal lines. Ex. 2011 ¶¶ 195–196. And, based on his magnification experiment, Dr. Givens testifies that Figure 4 of Maly1991 may contain metal lines. Id. We consider the fact that Dr. Givens’s testimony is largely based on what a person of ordinary skill in the art could discern from Figure 8 of Stine1998 and Figure 4 of Maly1991 alone rather than what one or ordinary skill in the art may glean based on their background knowledge in the art—for example whether Figure 8 of Stine1998 is consistent with conventional chip designs as Dr. Boning testified. Thus, we give slightly more weight to Dr. Boning’s testimony.” slip op. at 35
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Analysis of Patent Owner’s Arguments 1) Prior Art Does not “Look for” a Specific Configuration Patent Owner argues “Stine1998 does not tell the POSA to look for a specific configuration of structures, and then insert dummy metal into a particular location within that configuration (as the Relevant Solution does.)” PO Resp. 36–37. Patent Owner also argues that Jaso and Stine1998 “together accordingly tell the POSA to focus on pattern density, and to take steps to ensure that variations in pattern density across the chip are minimized” as opposed to looking for the particular configuration called out by the claims. Id. at 58. There is no requirement in the claims for the prior art to “look for” specific structures, but rather it must disclose those structure required by the claims. For the reasons articulated in the Petition, we agree that the combined teachings of Jaso and Stine1998 teach the structure required by claim 1. Pet. 38–39 (citing Ex. 1004, code (57), 3:29–64; Ex. 1005, 668), 50–52 (citing Ex. 1005, 670). We also credit Dr. Boning’s testimony that these references’ teachings “to locate dummies in sparse regions proximate to wide and narrow lines...would obviously include placing dummies in regions between such lines.” Ex. 1002 ¶ 183 (emphasis added). The fact that Jaso and Stine1998 may not purposefully seek out the configuration relied on by Patent Owner does not undermine Petitioner’s showing that the proper configuration would result from an obvious combination of the references. Thus, we are not persuaded by these arguments. Dummy Trenches We also disagree with Patent Owner’s argument that “Stine1998 does not teach or suggest any ‘trenches in a dielectric layer.’” PO Resp. 47, 55– 56. Patent Owner argues that Stine1998’s “subtractive process used for the manufacture of the disclosed chip does not involve the formation of such trenches.” Id. at 47 (citing Ex. 2011 ¶ 171). That is, Patent Owner asserts Stine1998 deposits a dielectric layer around already-formed metal lines. This argument, however, is not commensurate with the scope of the claims as properly construed. As noted above, to the extent that a damascene process is required, Jaso teaches such a process. Pet. 44. Additionally, assuming arguendo Patent Owner’s argument is correct, it stands to reason that the spaces where dielectric is not deposited are free of dielectric (due to the presence of metal lines) and, therefore, the “trenches” are free of dielectric. Patent Owner also asserts Stine1998 does not disclose dummy trenches because it “states in passing that certain areas of its test chip would be ‘prime candidates’ for ‘metal-fill,’ but does not actually disclose the particular location of any alleged ‘dummy’ conductor.” PO Resp. 56 (citation omitted) (citing Ex. 2011 ¶ 205). Patent Owner’s argument improperly attacks Stine1998 alone when Petitioner argues that the combination of Jaso and Stine1998 teaches “trenches.” See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Petitioner points out that Jaso describes “a damascene method wherein, in general, a via or trench pattern is etched into a planar dielectric layer.” Pet. 44 (emphasis omitted) (citing Ex. 1004, 1:28– 31; 8:5–8; Ex. 1002 ¶¶ 142–144). Petitioner states that Figure 11B of Jaso includes “trenches (15a-d) [which] correspond to trenches for interconnects 45. Patent Owner does not address the trenches taught by Jaso, much less teachings of Jaso in combination with the teachings of Stine1998. See PO Resp. 33–36, 55–61. Accordingly, we are not persuaded that the combination of Jaso and Stine1998 fails to teach “trenches.”” slip op. at 29
Patent outcomesUS 6,232,231 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 6,232,231 - Polycom, Inc. v. Directpacket Research, Inc.All claims unpatentablePTAB · Jan 11, 2021 · IPR2019-01235 · APJ Russell E Cass · IPR · Final written decision
Claims 1–23 are unpatentable as obvious under §103 over Krtolica and Rosenberg, with Eisenberg and DSDP added for certain dependent-claim grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“with the claim language itself, we agree with Petitioner that the ordinary meaning of “multimedia communication data” is data related to multimedia communication, and that this may comprise signaling data required for communicating multimedia between two or more locations. We see nothing in the claim language that requires that data must include the underlying media content itself (such as video or voice signals) in order to qualify as “multimedia communication data.” We also are not persuaded by Patent Owner’s argument that Petitioner’s construction of “multimedia” “means no media” (PO Supp. 1 (emphasis omitted)), because Petitioner is not arguing that media content cannot be present, but instead is simply arguing that media content is one type of “multimedia communication data,” with” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418 (For an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (A finding of a motivation to combine “must be supported by a ‘reasoned explanation.’” (citation omitted)). D. Ground 1: Obviousness over Krtolica and Rosenberg — Claims 1, 3–5, 9–11, 13, 14, 16, 17, 22, and 23 Petitioner contends that claims 1, 3–5, 9–11, 13, 14, 16, 17, 22, and 23 are unpatentable as obvious under 35 U.S.C. § 103(a) over Krtolica and Rosenberg. Pet. 30–70. For the reasons that follow, Petitioner has demonstrated by a preponderance of the evidence that claims 1, 3–5, 9–11, 13, 14, 16, 17, 22, and 23 are unpatentable on this ground. 1. Overview of Krtolica Krtolica is directed to a system that sends information data packets” slip op. at 18
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“H. Objective Indicia of Nonobviousness Patent Owner also presents arguments and evidence of objective indicia or secondary considerations of nonobviousness. PO Resp. 51–57; PO Sur-Reply 19–22. Objective indicia of nonobviousness may include long-felt but unsolved need, failure of others, unexpected results, commercial success, copying, licensing, industry praise, and expert skepticism. Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1379 (Fed. Cir. 2012). “[O]bjective indicia ‘may often be the most probative and cogent evidence of nonobviousness in the record,’” and “help turn back the clock and place the claims in the context that led to their invention.” Id. at 1378 (quoting Ortho–McNeil Pharm. v. Mylan Labs., Inc., 520 F.3d 1358, 1365 (Fed. Cir. 2008)). Evidence of objective indicia of nonobviousness “must always when present be considered en route to a determination of obviousness.” Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012); see also Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en banc). Objective indicia of nonobviousness are “only relevant to the obviousness inquiry ‘if there is a nexus between the claimed invention and the [objective indicia of nonobviousness].’” In re Affinity Labs of Tex., LLC, 856 F.3d 883, 901 (Fed. Cir. 2017) (quoting Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006)). For objective indicia of nonobviousness to be accorded substantial weight, their proponent must establish a nexus between the evidence and the merits of the claimed invention. ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). As the Federal Circuit has explained, “a patentee is entitled to a rebuttable presumption of nexus between the asserted evidence of secondary considerations and a patent claim if the patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). That is, presuming nexus is appropriate “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Id. (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). On the other hand, the patentee is not entitled to a presumption of nexus if the patented invention is only a component of a commercially successful machine or process. Id. Once “the patentee has presented a prima facie case of nexus, the burden of coming forward with evidence in rebuttal shifts to the challenger . . . to adduce evidence to show that the commercial success was due to extraneous factors other than the patented invention.” Demaco, 851 F.2d at 1392–93. However, “[a] finding that a presumption of nexus is inappropriate” slip op. at 82
- ExcludeMotion to exclude, grantedGranted
“highly confidential source for the STNS system, and seeks to seal that identification. Paper 29, 1. The Motion is unopposed. We have reviewed the redacted portion of the document, as well as the explanations of the confidential nature of the materials for which sealing is sought, as discussed in the Motion. We grant the Motion and the associated request to enter the Protective Order.” slip op. at 92
Patent outcomesUS 8,560,828 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,560,828 - Polycom, Inc. v. Directpacket Research, Inc.Some claims unpatentablePTAB · Jan 11, 2021 · IPR2019-01234 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 2–5, 15–17, 23–26, 29, and 30 are unpatentable over the stated obviousness grounds; claims 8, 9, 19, 20, 27, and 28 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Decision on Institution, we adopted Petitioner’s proposed skill level, that is, that one of ordinary skill in the art would have a Bachelor’s degree or equivalent in electrical engineering, computer engineering, or similar field, and at least two years of experience in a relevant field such as telecommunications or multimedia communications. Inst. Dec. 20. We also agreed with Petitioner that one of ordinary skill would have some familiarity with the design and implementation of VoIP and multimedia networks. Id. We did not agree, however, that the level of qualifications included monitoring and maintaining VoIP and multimedia networks, as Petitioner asserted, and therefore declined to adopt those requirements. Id. ordinary skill in the art adopted in the Decision on Institution to include “familiarity with the design and implementation of VoIP and multimedia networks,” but further described this requirement to include other requirements: an understanding of the techniques employed by network firewalls and the issues they present with respect to establishing and conducting multimedia communication sessions; an understanding of the performance demands placed on the network by multimedia communications, and the constraints that such demands place on processing and security measures that could be adopted; and a recognition of the distinctions between prior art firewall traversal solutions and the inventions of the ’978 Patent. PO Resp. 21–22. Patent Owner refers to GPAC, which identifies the factor of the “type of problems encountered in the art” as a consideration in determining the level of ordinary skill in the art. Id. at 22 (citing In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995)). We have reviewed the relevant technology and claims of the ’978 patent, as well as the technology of the asserted prior art, and we adopt the same qualifications as those adopted in the Decision on Institution because they are commensurate with the relevant technology. These qualifications are similar to presented by Petitioner, with the” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner relies on the ordinary and customary meaning of the claim terms as understood by one of ordinary skill in the art. Pet. 20. Patent Owner indicates that its arguments are also based upon the ordinary and customary meaning of the terms as they would be understood by one of ordinary skill in the art. PO Resp. 22. We determine that it is not necessary to provide an express interpretation of any of the terms of the claims. 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 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed
“As discussed above, we agree with Petitioner that Kirchhoff discloses the use of SSL, a protocol that uses data encryption (Ex. 1005, 8:47–49). We also agree with Petitioner that Krtolica discloses the use of HTTP protocols on port 80 (Ex. 1004, 6:23–24), and does so with a goal of maintaining high network security (id. at 1:7–10, 2:33–36). As Kirchhoff discloses, and Dr. Lavian’s testimony supports, one of ordinary skill in the art would have been aware that port 443, rather than port 80, would be used for secure web connections using SSL, which includes the use of encryption, and this would have resulted in enhanced network security. See Ex. 1005, 3:38–41; Ex. 1002 ¶¶ 52, 69, 108. As Dr. Lavian testifies, SSL/TLS was the most widely deployed security protocol in the world and the well-known use of SSL in HTTPS protocol enables secure web-based e-commerce. Ex. 1002 ¶¶ 69, 108; Ex. 1035 ¶ 8; Ex. 1006, 5. And, Krtolica has a stated goal to maintain network security. Ex. 1004, 1:7–10, 2:33–37. We find this evidence provides a sufficient rational underpinning in support of obviousness for combining the teachings of Krtolica and Kirchhoff. See KSR, 550 U.S. at 418. Owner’s arguments that use of encryption in SSL was optional and adding encryption would allegedly undermine network security. Nor do we find persuasive the argument that the Petitioner’s motivation to combine based on efficiency is insufficient, because Petitioner relies on another rationale for the combination of Krtolica and Kirchhoff, that is, enhanced network security, also discussed above. We additionally do not find persuasive Patent Owner’s arguments that combining Krtolica and Kirchhoff would render the system of Krtolica unsatisfactory for its intended purpose because, as Petitioner argues, this assertion is contradicted by the state of the art at the time. See Pet. Reply 9. As discussed above, Dr. Lavian explains that there were known systems having firewalls with SSL traversal at the time of the invention. Ex. 1002 ¶¶ 53, 59–65; Ex. 1035 ¶ 20; Ex. 1014. Moreover, the ’978 patent uses encryption with firewalls using a single-port protocol, and Patent Owner does not direct us to any disclosure in that patent that indicates that the use of encryption with a single-port protocol was inventive in that the system, or that encryption had to be done in a special manner. See Pet. Reply 3 (citing Ex. 1001, Fig. 3 (at 311, 341), Fig. 5 (503, 508)); see also Ex. 1001, 6:4–8. In a similar vein, Patent Owner argues that due to incompatibilities the combination of SSL with Krtolica would be unsuccessful, and we address this issue below.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Where the prior art contains “apparently conflicting” teachings (i.e., where some references teach the combination and others teach away from it) each reference must be considered “for its power to suggest solutions to an artisan of ordinary skill . . . consider[ing] the degree to which one reference might accurately discredit another.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). In Hosner, AES encryption appears to have one of the higher processing speeds of the algorithms tested. See Ex. 1006, 23. Further, the ’978 patent itself supports the acceptable performance of AES encryption in single-port protocol, stating that “[a]ny method or algorithm of encryption may be used” with its invention “including, but not limited to 128-bit find Patent Owner’s argument on the use of AES to be persuasive. We have reviewed Petitioner’s explanations and supporting evidence as to how the combination of Kirchhoff and Krtolica teach the limitations of claims 4, 16, and 24, and we agree with and adopt Petitioner’s analysis. Pet. 75–76, 81.” slip op. at 65
Patent outcomesUS 7,710,978 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,710,978 - Precision Planting LLC / Agco Corporation v. Deere & CompanyNo claims unpatentablePTAB · Dec 2, 2020 · IPR2019-01048 · APJ Barry L Grossman · IPR · Final written decision
Claims 1–20 were not proven unpatentable over Hedderwick and Koning because Petitioner did not establish a persuasive motivation to combine the references as proposed.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Based on the prior art, Dr. Glancey’s opinion testimony and analysis, and providing some, but minimal, weight to Dr. Taylor’s opinion testimony, we determine that the evidence favors Patent Owner’s proposed level of skill, primarily based on Dr. Glancey’s analysis and reasons summarized above. Accordingly, we determine that a person of ordinary skill in a technology pertinent to the challenged claims would have had an undergraduate degree in mechanical engineering, agricultural engineering, or similar field, and two years of experience designing agricultural products or related machinery, or five years of experience designing agricultural products or related machinery, without a four-year undergraduate engineering degree. A recipient of other academic degrees may qualify as a person of ordinary skill if they have taken coursework or have experience in the pertinent technology. Additional education could offset less work experience; additional work experience could offset less education or coursework.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that an explicit construction of the claims is not necessary for the purposes of determining whether the challenged claims are not patentable. slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“sufficiently persuasive evidence, even in combination, to establish why a person of ordinary skill would have modified Hedderwick by (1) selectively gleaning only a portion of Koning’s conveying system, i.e., belt 44 with bristles 45, (2) selectively excluding Koning’s belt 23, and then (3) modifying Koning’s brush belt by reversing its orientation so that it carries seeds deposited into the bristles, as in the ’906 patent, rather than covering and guiding seeds carried by a separate and distinct conveyor belt, as in Koning. See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (finding an absence of a motivation to reverse parts to an orientation that was “totally backwards” from what one of skill in the art would even attempt). Petitioner’s arguments do not acknowledge the different function of Koning’s brush belt, or explain why a person of ordinary skill would have been motivated to adapt Koning’s brush belt to such a use and reasonably expect success in doing so. We determine Petitioner fails to meet its burden of providing a sufficiently persuasive explanation or reason for concluding that one of skill in the art would have combined these particular references to produce the claimed invention. “Without any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias.” Metalcraft v. Toro, 848 F.3d at 1367. “[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.” Id.” slip op. at 30
- ExcludeOther
“II. MOTION TO EXCLUDE Petitioner and Patent Owner each move to exclude a substantial number of exhibits on a number of different evidentiary grounds. See Pet. Mot. Excl.; PO Mot. Exclude. As our analysis does not refer to any of those exhibits, we dismiss each motion as moot.” slip op. at 12
Patent outcomesUS 9,686,906 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,686,906 - Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentablePTAB · Nov 30, 2020 · IPR2019-01044 · APJ Timothy J Goodson · IPR · Final written decision
Claims 1–8 were not shown unpatentable under § 103 over Hedderwick, Koning, and Benac because Petitioner did not establish motivation to combine or a reasonable expectation of success.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedPetitioner expert discountedDecided for patent owner
“have had either (1) a bachelor’s degree plus four years of experience in mechanical engineering, agricultural engineering, or a related field or (2) a master’s degree plus two years of experience in mechanical engineering, agricultural engineering, or a related field.” Pet. 42 (citing Ex. 1002 ¶¶ 19– 20). In the testimony the Petition cites in support of that proposal, Mr. Prairie lists factors that are typically considered in assessing the level of ordinary skill in the art, and then states “[b]ased on these factors together with my experience and expertise,” his opinion of the level of ordinary skill in the art is the same as Petitioner proposes. Ex. 1002 ¶¶ 19–20. This conclusory testimony is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construed 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).” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).6 That standard “includ[es] 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.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). V. OBVIOUSNESS OVER HEDDERWICK, KONING, AND BENAC” slip op. at 14
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Patent Owner’s expert, Dr. Glancey, explains that [i]f a wheel is used to load and place seeds within a moving belt with brush hairs, the wheel must be able to disengage from seeds while the seeds remain in between brush hairs. If the wheel maintains contact with the seed after the seed has moved into the brush hairs, the wheel will continue to apply force to the seed and eject or remove the seed from the profile of the brush hairs . . . . Ex. 2200 ¶ 223. Dr. Glancey testifies, credibly, that in Petitioner’s combination, seeds would have been rejected from the belt because, as the paddle wheel rotates, seeds “would be scooped through the belt.” Id. ¶ 225.” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“way the references use endless members in the form of brush belts and paddle wheels, versus the way Petitioner uses those components in the proposed combination. Contrary to Petitioner’s and Mr. Prairie’s assertions, the proposed combination does not merely apply known techniques to a known device, because none of the cited references use brush belts and paddle wheels in the manner Petitioner proposes. As discussed in greater detail below, Benac teaches that a paddle wheel can be used to ensure that seeds jammed in vacuum holes are released reliably, and then dropped to the ground. Benac does not address brush belts as an endless member and, therefore, does not teach that paddle wheels can be used to guide seeds into the bristles of a brush belt, as Petitioner proposes. See Pet. 64. And Koning does not teach a brush belt that captures seeds released from above, as Petitioner and Mr. Prairie propose. See Pet. 61–62; Ex. 1002 ¶ 104; Ex. 2193, 190:10–191:3; Ex. 2263, 167:21–170:9. Rather, Koning’s brush belt maintains the relative position of potatoes lying on a conveying surface by holding them from above while the conveyor moves them to the furrow. Ex. 1004, 3:16–24, 5:3–14, Fig. 4. Petitioner’s arguments do not adequately account for these differences between the references’ use of a brush belt as an endless member and paddle wheels versus the proposed combination. Moreover, Patent Owner points out problems ordinarily skilled artisans would have encountered in attempting to combine the references as Petitioner proposes. Petitioner does not persuasively explain how those issues could have been overcome, and instead simply asserts, essentially, that ordinarily skilled artisans could have figured it out. See, e.g., Ex. 1135 ¶ 80. It is Petitioner’s burden to establish that ordinarily skilled artisans would have been motivated to combine the success in doing so. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Petitioner’s arguments and evidence do not carry that burden.” slip op. at 28
Patent outcomesUS 8,813,663 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,813,663 - Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentablePTAB · Nov 30, 2020 · IPR2019-01046 · APJ Timothy J Goodson · IPR · Final written decision
Claims 1 and 3 were not shown unpatentable over Hedderwick, Koning, and Yamahata under § 103 because Petitioner did not establish motivation to combine or a reasonable expectation of success.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Based on the evidence and arguments of record, we determine that the evidence favors Patent Owner’s proposed level of skill. Our determination is primarily based on Dr. Glancey’s analysis and reasons summarized above, as well as the prior art of record and the sophistication of the technology of the ’199 patent. We have considered Mr. Prairie’s opinion, but we give that testimony minimal weight due to the lack of supporting explanation. Accordingly, we adopt Patent Owner’s proposed level of ordinary skill in the art. Specifically, we determine that a person of ordinary skill in agricultural engineering, or a similar field, and two years of experience designing agricultural products or related machinery. Alternatively, a person of ordinary skill in the art would have had five years of experience designing agricultural products or related machinery, without a four-year undergraduate engineering degree.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“IV. CLAIM CONSTRUCTION “In an inter partes review proceeding, a claim of a patent . . . shall be construed 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).” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).7 That standard “includ[es] 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.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent” slip op. at 14
- BurdenNot shown unpatentable
“Ex. 1135 ¶ 51. Yet it is Petitioner’s burden to show motivation and reasonable expectation of success for the proposed combination, not Patent Owner’s burden to show that the prior art demonstrates the futility of the proposed combination. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Here, Petitioner’s affirmative showing on motivation and reasonable expectation of success for using Koning’s brush belt in the proposed combination is unpersuasive for the reasons discussed above. And Patent Owner’s evidence of difficulties an ordinarily skilled artisan would have expected to encounter in that proposal serves to highlight the issues that Petitioner’s showing ignores. Petitioner additionally contends that Patent Owner’s arguments are based on the erroneous premise that an ordinarily skilled artisan must be able to physically combine the references. See Pet. Reply 7 (citing In re Mouttet, 686 F.3d 1322, 1332–33 (Fed. Cir. 2012)). We disagree. Patent Owner’s arguments, summarized above, simply point out that an ordinarily skilled artisan would not have expected success in combining the references’ teachings in the way Petitioner proposes. Motivation to combine and reasonable expectation of success are properly assessed with reference to the combination as Petitioner has framed it. The Federal Circuit has explained that doing so is not inconsistent with Mouttet. See Samsung, 925 F.3d at 1382–83 (“We will not fault the Board for analyzing Petitioners’ obviousness grounds in the way presented in the Petition.”).” slip op. at 34
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner’s and Mr. Prairie’s analysis does not acknowledge, much less bridge, the gap between Koning’s use of a brush belt to hold potatoes from above as they lie on a conveying surface, versus the brush belt’s use in above.10 During his deposition, Mr. Prairie resisted agreeing that the potatoes are lying on the conveyor in Koning, testifying that he takes from Koning’s description that “they are captured within the belt with brush hairs. And that there is some weight that’s along the conveying member 23.” Ex. 2193, 96:24–99:25. Mr. Prairie testified that he “do[es]n’t believe the brush hairs support the full weight of the potatoes,” but that Koning did not provide him sufficient information to answer whether the conveying member supports the majority of the weight of the potatoes. Id. at 106:22–107:21. In our view, it is clear from Koning’s description that the potatoes lie on the conveyor and the purpose of the brush belt is to maintain their position relative to each other while they are moved by the conveyor. Ex. 1004, 3:16–24, 5:3–14, Fig. 4; see also Ex. 2205 ¶¶ 140–141 (Patent Owner’s expert, Dr. Glancey, testifying that a simple mechanical analysis shows that in Koning, about 87% of the potatoes’ weight is supported by the conveying member). Mr. Prairie’s refusal to acknowledge the differences between the brush belt’s function in Koning versus the proposed combination undermines the credibility of his testimony that the proposed combination would have been a simple application of a known technique to a known device. 10 See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (noting expert testimony that supported the absence of a motivation to combine: “[I]f I can equate this one to kind of a simple analogy, if you’re trying to build a piece of furniture. What’s a typical thing? You put on a piece of wood. You take a nail, and you hit the nail with a hammer. In control terms, what Mr. Phipps is suggesting is that you put the hammer on the workbench, pick up the piece of furniture and bash the piece of furniture onto the hammer. It’s totally backwards from what I believe one of skill in the art would even attempt . . . .”). have been simple for an ordinarily skilled artisan to adapt Koning’s brush belt for use in the proposed combination, where seeds are deposited onto the brush belt from above—is further undermined by his testimony that he “can’t recall a time where I’ve seen a seed being dropped into a brush belt.” Ex. 2193, 113:5–9; see also Ex. 2263, 81:2–12 (“Q. And you never attempted to drop a seed onto a moving brush belt to see whether that would be inserted into the brush belt, correct? A. As I stated, for the purposes of this case, I did not do any physical experimentation with a moving brush belt as I didn’t feel it was necessary. The prior art discloses sufficient information.”) (objection omitted). Mr. Prairie has “had some industrial design projects where we’ve had to utilize brushes for various applications,” but he “ha[s] not used a brush belt to convey seed.” Ex. 2194, 297:6–16. Mr. Prairie testified that “prior to writing this declaration, brush belt technology was not a specific area that I study, that I was researching.” Ex. 2263, 79:6–9. Indeed, during his initial deposition in this case, the only specific example of a moving brush belt Mr. Prairie could recall seeing was Patent Owner’s ExactEmerge product. Ex. 2193, 108:6–110:10. The basis for Mr. Prairie’s opinion, that a seed would be expected to enter a moving brush belt in the proposed combination, appears to only be Koning itself. Ex. 1002 ¶¶ 79–81; Ex. 2193, 116:12–19, 118:7–23; Ex. 2263, 159:5–160:2. When asked at his deposition, Mr. Prairie did not explain any other engineering analysis he performed to make that determination. Ex. 2193, 114:23–117:12. Mr. Prairie testified that he “did not operate a brush belt for this declaration because [he] didn’t feel it was necessary to make my assessments” and he “did not do study or experimentation on a brush belt as I did not feel it was necessary.” unpersuasive because, as discussed above, Koning does not teach using a brush belt to receive and convey seeds that have been dropped onto it from above. Mr. Prairie does not account for that difference by explaining why an ordinarily skilled artisan would expect Koning’s brush belt to effectively capture and carry seeds dropped from above, as in the proposed combination.” slip op. at 26
Patent outcomesUS 9,480,199 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,480,199 - Apple Inc. v. Uniloc 2017 LLCAll claims unpatentablePTAB · Oct 15, 2020 · IPR2019-00918 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 3–6, and 8–10 are unpatentable under § 103 over Charbonnier, RFC793, SMS Specification, and DECT Speakerphone; claims 4 and 9 also over Lee.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“person having such skill “would have had a Bachelor’s degree in computer science or a comparable field of study, plus approximately two to three years of professional experience with cellular phone and IP networks, or other relevant industry experience. Additional graduate education could substitute for professional experience and significant experience in the field could substitute for formal education.” Pet. 11 (citing Ex. 1002 ¶ 41). Patent Owner “does not offer a competing definition at this stage of the proceeding.” PO Resp. 4. We determine that Petitioner’s description of the 9 Patent Owner does not put forth evidence it alleges tends to show secondary considerations of non-obviousness in its Patent Owner Response. level of ordinary skill in the art is supported by the record. Therefore, we adopt Petitioner’s proposal.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We do not adopt Petitioner’s construction. First, for reasons discussed below, Petitioner’s construction does not find sufficient support. Second, Petitioner’s construction does not resolve the controversy between the parties. We also do not adopt Patent Owner’s construction, that the “terminal” must be capable of short-range wireless communications, such as Bluetooth communications, that may be employed by computers, for the reasons discussed below.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner argues it would have been obvious to modify Charbonnier’s DECT base 7 to include a digital speakerphone as taught by DECT Speakerphone. Pet. 67. We find persuasive Petitioner’s rationale for the combination because both Charbonnier and DECT Speakerphone relate to DECT phones, and DECT Speakerphones provides several express motivations to combine by teaching digital speakerphones in DECT base stations. Id. at 66–67 (citing Ex. 1029, 1). Furthermore, DECT Speakerphone provides several reasons to include a digital speakerphone, including: (1) making and receiving calls from the base unit even when the handset is elsewhere, (2) hand free for more convenience, and (3) conference calling where more than one person can listen or speak. Id. (citing Ex. 1029, 1). We are persuaded by Petitioner’s argument that a person of ordinary skill in the art would have had a reasonable expectation of success in adding a speakerphone to Charbonnier’s DECT base station 7 based on, for example, DECT Speakerphone and other documents showing Samsung and other phones with similar DECT speakerphones in the base station. Id. at 67 (citing Ex. 1046, Exhibit A). Furthermore, we find persuasive Petitioner’s argument that DECT” slip op. at 30
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“For the reasons above, we are persuaded that Petitioner has shown by a preponderance of the evidence that Charbonnier, RFC793, SMS Specification, and DECT Speakerphone teach the limitations of claims 1 and 6.” slip op. at 44
Patent outcomesUS 8,369,298 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,369,298 - Google LLC v. Uniloc 2017 LLCInstitution deniedPTAB · Jul 13, 2020 · IPR2020-00170 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–14 and 17–20 obvious over Hull and Barber.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. In an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. Further, “[t]o satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the alleged invention of the ’201 patent would have had “a bachelor’s degree in electrical engineering, computer science, or computer engineering and had two years of relevant experience, or a graduate degree with a focus, in the field of image processing.” Pet. 18 (citing Ex. 1003 ¶¶ 52–53). Patent Owner does not offer a proposal regarding the level of ordinary skill in the art. Prelim. Resp. 24. On the present record, we determine that Petitioner’s proposed level of ordinary skill in the art is consistent with the ’201 patent and asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes a construction for any claim term. Petitioner contends that no claim terms require express construction for purposes of applying the prior art. Pet. 19. Patent Owner argues that, at this stage of the proceeding, the Board should adopt the ordinary and customary meaning of the claim terms. Prelim. Resp. 25. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“distortion, we determine that a person of ordinary skill in the art would have considered the invariant nature of Hull’s descriptors to be a significant feature of the disclosed system. The Petition refers to this feature only once, asserting that “Hull primarily utilizes text descriptors that are invariant through rotation and scaling,” but that Hull “does not require or limit itself to descriptors that are invariant to translation, rotation and scaling distortions.” Pet. 40 (citing Ex. 1005, 9:46–49, 6:63–7:1 (stating that Hull’s descriptors are “preferably invariant of translation, rotation, scaling, format, font and subdivision”), claim 2 (requiring invariance in a dependent claim)). In asserting that invariance is not required, however, the Petition fails to address Hull’s other passages suggesting invariance is an essential feature of Hull’s descriptors.” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,253,201 - Apple Inc. v. Corephotonics Ltd.All claims unpatentablePTAB · Apr 6, 2020 · IPR2019-00030 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1–5 are unpatentable as obvious over Ogino and Beich; claims 1–4 are also unpatentable over Ogino alone, but claim 5 is not shown unpatentable on that ground.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We construe claim terms to the extent necessary. 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 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“supported by the cited evidence. We are persuaded, instead, that “the image plane and the sensor are taught by the ’568 patent to be coincident,” and “[t]hus, there is no ambiguity in the ’568 patent about where the image plane is located or that TTL is measured to the image plane,” as Petitioner argues in its Reply. Reply 13 (Ex. 1026 ¶ 5; Ex. 1003, 33–35). Patent Owner acknowledges as much, noting that “as these terms[, i.e., the image plane and the sensor,] are used in the specification of the ’568 patent, the image plane is the surface of the sensor.” Sur-reply 2. We find that the ’568 patent discloses that the electronic sensor corresponds to or is coincident with the image plane and thus, the TTL could be measured with respect to either the sensor (electronic or film) or the image plane and reach the same result. Based upon the complete trial record, we maintain our construction of TTL from the ’1140IPR and the ’1146IPR3, which encompasses “the length of the optical axis spacing between the object-side surface of the first lens element and one of: an electronic sensor, film, and an image plane corresponding to either the 3 The panel authorized, and the parties filed, supplemental briefing to address this construction before it was adopted in both the related ’1140IPR and ’1146IPR, and that the parties responded to this construction in the hearing in this proceeding (with citations to the transcript). See, e.g., Paper 28 (PO’s demonstratives), 5; ’1140IPR, Paper 31; ’1146IPR, Paper 30; see also Trial Practice Guide Update 13–14 (July 2019), https://www.uspto.gov/sites/default/files/documents/trial-practice-guide-update3.pdf; Hamilton Beach Brands, Inc. v. f’real Foods, LLC, 908 F.3d 1328, 1339 (Fed. Cir. 2018) (finding that the Board did not violate the Administrative Procedure Act when it adopted its own claim construction in the final decision because the parties had notice and an opportunity to be heard). electronic sensor or a film sensor.” See ’1140IPR, Paper 37, 18; ’1146IPR, Paper 37, 14.” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Even assuming, arguendo, we were to credit Patent Owner’s expert testimony as to the disjointed nature of optical lens assembly design experience and manufacturing experience, we are not persuaded that a person of ordinary skill in the art at the time of the invention having only design experience would be so completely unaware of manufacturing considerations so as to preclude taking into account the very general guidance of Beich. See Reply 24–25. Beich teaches that a lens designer should have a basic understanding of the manufacturing process, which would include the limits for fabricating lens elements in an optical lens assembly. Ex. 1020, 7. We are persuaded that the information conveyed in Beich would have been understood, known, and applied by the ordinarily skilled lens designer (see Reply 4–6 (citing Ex. 2014, 4, 9, 11, Fig. 9.2)), irrespective of whether such person had manufacturing experience. Stated differently, although an ordinarily skilled designer of an optical lens assembly may not have had any real-world manufacturing experience, we are persuaded that such person would still have taken into account manufacturing concerns. Although there are differences between the definitions proposed, our conclusions rendered in this decision do not turn on selecting a particular definition for the level of ordinary skill in the art, for the reasons discussed above. We determine, on this record, that the level of ordinary skill proposed by Patent Owner is consistent with the ’568 patent and the asserted prior art. We agree with Patent Owner’s proposal regarding the level of ordinary skill except for Patent Owner’s arguments about manufacturing discussed above. As such, we adopt Patent Owner’s proposal.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“As noted by Petitioner, The Handbook of Optics discloses that “[i]n the case of both negative and positive lens elements, it is good policy to avoid element forms wherein the center-to-edge thickness ratio exceeds three for positive elements.” Ex. 1019 § 34.15. Thus, we are persuaded by Petitioner’s fourth reason that the cited disclosure provides evidence that the ordinarily skilled artisan would have selected a particular diameter for the first lens element disclosed in Ogino in conformance with manufacturing considerations known to the ordinarily skilled artisan. We are further persuaded that, from the selection of that particular diameter, a Z1 value for the object-side surface and a Z2 value for image-side surface at the minimum usable edge of the first lens element can be obtained and, in turn, circumferential edge thickness L1e can be obtained. Pet. 35–36 (citing Ex. 1003, 42; Ex. 1005, 15:1–3). We are further persuaded by Petitioner’s supporting reasoning that “a POSITA would understand the manufacturing benefits of maintaining the lowest possible center-to-edge thickness ratio since ‘the preferred shape of a molded element is one that has fairly uniform thickness.’” Id. at 42 (quoting Ex. 1018, 92) (citing Ex. 1003, 48). Based on our review of the complete record, we find that the record supports Petitioner’s contentions concerning claim 1. Petitioner demonstrates by a preponderance of the evidence that claim 1 is unpatentable as obvious over Ogino.” slip op. at 37
Patent outcomesUS 9,857,568 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,857,568
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.