• Apple Inc. v. Varia Holdings LLCInstituted
  PTAB · Mar 11, 2025 · IPR2024-01363 · APJ Norman H Beamer · IPR · Institution

  The Board instituted IPR on claims 1–32 and all grounds, finding a reasonable likelihood that Apple would show at least one challenged claim unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “We do not agree that Zalewski is substantively identical to Willgert. As discussed below in Section IV.D.4.c), Zalewski disclosed an RFID transponder in a removable cover for a phone that was completely separate from the voice call components of the telephone itself. Ex. 2001, 7:63–8:3. Based on this, Applicant successfully distinguished Zalewski because the RFID transponder functionality, being contained in a removable cover, was completely independent of the phone device, and thus the claim requirement of a “communication device determining the mobile communication device is in an operational space” was not met. Ex. 1002, 94–95. On this basis, Applicant also argued that claim requirements of switching between a voice call state and an RFID transponder state were not met. Ex. 1008, 18, 91, 134–135, 155; Ex. 1002, 530. In contrast, Willgert discloses an RFID transponder that is integrated with a mobile telephone, and so it cannot be distinguished on the basis that was used for Zalewski. Ex. 1004 ¶ 32. Accordingly, we decline to exercise discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 9

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to challenged claims 1–32 and the grounds raised in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “[W]ould have been someone knowledgeable in mobile communication devices and components used therein, cellular radio systems, and wireless communications, such as those used for voice calling and radio frequency identification (RFID). That person would have at least a Bachelor’s degree in Electrical Engineering, with a background in radio frequency communications as well as approximately two years of experience working with or researching radio frequency communication systems. Ex. 1003 ¶ 20. Patent Owner does not offer a specific definition of a person of ordinary skill in the art. See, generally, Prelim. Resp. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’947 patent specification. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner

    “not agree, based on the current record, that the claims should be construed to encompass a device that has independent RFID transponder components that are separate from and independent of the components that provide voice call capability. During prosecution of related applications, in distinguishing Zalewski, Applicant disavowed such a broad interpretation. For example, Applicant asserted: The term “transceiver” . . . is well understood by those of ordinary skill in the art. One of ordinary skill in the art would not reasonably interpret a "transceiver" so broadly as to incorporate an entire mobile device's circuitry, and in particular to be read on by two separate transmitters . . . . Ex. 1008, 40. Also: [A] person having ordinary skill in the art would have understood “a transceiver of a mobile communication device” to be a transmitter and receiver combined in a single package/housing/unit and sharing at least some common circuitry for both transmission and reception located within a mobile communication device. . . . . A person having ordinary skill in the art would understand Applicants’ disclosure as describing a single transceiver that can be switched from a first state in which it transmits voice call signals to a second state in which it transmits RFID signals. Id. at 92, 94. However, Petitioner also argues, and provides expert testimony in support, that it would have been obvious to integrate Willgert’s communications unit with the voice call capability of a mobile telephone. Pet. 53–54 (citing Ex. 1003 ¶¶ 129–130). At this stage of the proceeding, we find support for this position, including the fact that Willgert specifically teaches that the communications unit can be integrated into a mobile telephone. Ex. 1004 ¶ 32. Patent Owner challenges this argument based on the statement in Willgert that the communications unit can be “constructed so that the transponder will also function when the mobile telephone is switched-off.” Prelim. Resp. 13–15 (citing Ex. 1004 ¶ 31). However, Willgert provides this as one option, and we do not find that this statement teaches away from a fully integrated approach alternative.” slip op. at 30

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 9,405,947
• Apple Inc. v. Varia Holdings LLCInstituted
  PTAB · Mar 11, 2025 · IPR2024-01364 · APJ Norman H Beamer · IPR · Institution

  The Board instituted inter partes review of claims 1–39 on all grounds in the Petition, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “Under 35 U.S.C. § 325(d), the Board may exercise discretion to deny a petition that presents the same or substantially the same art or arguments as were previously presented to the Office. See 35 U.S.C. § 325(d); 37 C.F.R. § 42.4(a) (providing that the Board institutes on behalf of the Director). The Board has outlined factors it considers in determining whether to exercise discretion to deny institution under § 325(d): (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8, 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton Dickinson”). The Becton Dickinson factors apply when a petition relies on art or arguments previously presented to the Office during any proceeding pertaining to the challenged patent, including reexamination, reissue, and AIA post-grant proceedings. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8–10 (PTAB Feb. 13, 2020) (precedential). Advanced Bionics explains how the Becton Dickinson factors fit into a two-part framework that examines: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” slip op. at 8

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to challenged claims 1–19 and the grounds raised in the Petition.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther

    “Petitioner argues that this combination would have been motivated by the fact that the Willgert teaches that integrating its communications unit into a mobile telephone designed for Bluetooth communication was a “highly user-friendly application,” and that it was well known practice to use a Bluetooth headset wirelessly communicating with the phone to enable hands-free phone calls, as specifically taught by Mooney. Pet. 12–14 (citing Ex. 1004 ¶¶ 8, 30–32; Ex. 1005, Fig. 3, ¶¶ 7, 39, 46–48; Ex. 1021; Ex. 1003 ¶¶ 72–76). Petitioner further argues that Bluetooth headsets were widely available, that incorporating the headset involved known methods yielding predictable results, and that one of ordinary skill would have reasonably expected to succeed in combining the teachings of Willgert and Mooney. Id. at 15–16 (citing Ex. 1004 ¶¶ 8, 10; Ex. 1005, ¶ 8; Ex. 1017, 1, 3; Ex. 1021, 2; Ex. 1003 ¶¶ 77–79). Patent Owner does not address the issue of motivation to combine Willgert and Mooney. See generally Prelim. Resp. We find, based on the current record, that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Willgert and Mooney.” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAOther

    “Willgert/Mooney combination does not teach or suggest the voice call signal requirements of the claims. As stated in the ’984 patent, the voice call signals relate to “the primary function of [the mobile communications device], i.e. to facilitate a user in communicating with another user of another communication device.” Ex. 1001, 3:47–49. The proffered combination of wirelessly connecting a Bluetooth headset to the Bluetooth receiver/transmitter of Willgert’s communications unit includes the fact that the Willgert communications unit is integrated into a mobile telephone. Ex. 1004 ¶¶ 30, 32. Thus, when the telephone is being used for its “primary purpose” of communicating with another user, the same voice call signal involved in that communication is also being transmitted from the telephone to the Bluetooth headset. We see no reason why the claimed “voice call signals” must be construed to exclude such signals. Patent Owner declined to address claim construction in its Preliminary Response, but is free to explore this issue post-institution. We also disagree, based on the current record, with Patent Owner’s assertion that Willgert’s RFID transponder 2 does not transmit “RFID transponder data” or “RFID transponder signals.” The very term itself — RFID transponder — as well as the explicit disclosures in Willgert, establish that the RFID transponder transmits RFID signals and data. Ex. 1004 ¶¶ 4, 14–19. Although, as Patent Owner points out, the ’984 patent discloses embodiments that “emulate” an RFID transponder, there is no reason to confine the scope of the claims to the disclosed embodiments and there is nothing in the ’984 specification or claims that disavows including Willgert’s RFID transponder within the scope of the claims. Also, Patent Owner’s reliance on the prosecution history regarding the Zalewski patent is misplaced. As Patent Owner has explained, Zalewski disclosed “‘an RFID transponder 110’ embedded in a removable cover for a phone or other device ‘such as an MP3 player.’” Prelim. Resp. 14 (citing Ex. 2001, 7:63–8:3). Based on this, Applicant successfully distinguished Zalewski because the RFID transponder functionality, being contained in a removable cover, was completely independent of the phone device, and thus the claim requirements of a transceiver or transmitter switching between a voice call state and an RFID transponder state were not met. Ex. 1002, 18, 91, 134–135, 155; Ex. 1009, 530. Zalewski was not distinguished based on whether or not the RFID transponder was emulated. Again, Patent Owner is free to explore the scope of the claim terms “transceiver” and “transmitter” post-institution.” slip op. at 22

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,127,984
• Amphenol Corp. v. PPC Broadband, Inc.All claims unpatentable
  PTAB · Feb 19, 2025 · IPR2023-01363 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1, 2, and 10–13 are unpatentable as obvious over the stated combinations of Holmberg, Battey, Blankenship, and Cowen.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least 1 year of experience related to communication networks or the equivalent.” Pet. 7. Petitioner further contends that “[a]dditional education could substitute for professional experience or significant experience in the field could substitute for formal education.” Id. at 7–8 (citing Ex. 1003 ¶¶ 29–31). Dr. Eldering agrees that one of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least one year of experience related to communication networks or the equivalent.” Ex. 2001 ¶ 24. According to Dr. Eldering, “[a] person with less relevant practical experience but with additional experience would also qualify.” Id. Patent Owner contends that” slip op. at 9

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

    “Although Patent Owner disagrees with Petitioner’s construction, it contends “the Board need not resolve this claim construction dispute because Petitioner’s proposed grounds 1-5 are all insufficient under either construction.” PO Resp. 19. Upon review of the parties’ arguments and the prior art of record, we determine that no claim terms require express construction for purposes of this decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For example, we discuss below in Section III.G why we do not reach the claim construction issue presented by Petitioner.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We find that Holmberg expressly contemplates using its wall box within multi-dwelling units, notes that multi-dwelling wall boxes in the prior art were “typically provided” on every floor, and discloses that the multi-dwelling wall boxes would contain optical couplings for each resident on a given floor. Ex. 1004 ¶¶ 7, 34; Pet. Reply 8–10. In view of these disclosures, we credit the testimony of Dr. Kiaei that one of ordinary skill in the art would have sought to use Holmberg’s wall box in multi-dwelling units and would have seen a need to access the area behind spice tray 230 to connect and disconnect subscribers. Ex. 1003 ¶ 92; Ex. 1033 ¶¶ 7–8. Moreover, even if Holmberg were limited to mid-span locations and distributing drop cables, as opposed to distribution cables for individual subscribers, as asserted by Patent Owner, Patent Owner does not dispute that a technician would still need periodic access to the area behind splice tray 230 in these mid-span devices. Tr. 38:3–39:1 (counsel agreeing that one would need to access the area behind splice tray 230 in Holmberg, albeit in “rare occasions”); Ex. 1003 ¶¶ 90–92; Ex. 1033 ¶¶ 7–8. Thus, whether used in the manner contemplated by Petitioner or Patent Owner, Petitioner persuasively demonstrates that access to the space behind splice tray 230 in Holmberg would be necessary. With access behind splice tray 230 required, Petitioner persuasively demonstrates that one of ordinary skill in the art would have seen a benefit to replacing Holmberg’s fasteners or screws with a hinged connection, such as that disclosed in Battey, to allow easier access to the area behind the splice tray. Pet. 41 (citing Ex. 1005 ¶ 39 (disclosing that a rotatable splice tray or shelf would “provide[] full and convenient access to the splice tray”)). First, Petitioner and Dr. Kiaei persuasively demonstrate that once the fibers of Holmberg are routed from behind splice tray 230 and the distribution cables spooled on this tray, a technician could not reasonably access fiber optic cables stored behind splice tray 230 without releasing or opening splice tray 230. Pet. Reply 14–15 (citing Ex. 1023, 60:20–61:15); Ex. 1033 ¶¶ 31–32. Second, Petitioner persuasively demonstrates that without a hinged connection, the technician would have to either hold the splice tray of Holmberg with one hand while performing the necessary routing and splicing steps, two screws would need to remain in place (essentially replicating a hinge), or the tray would have to be left to dangle, supported only by the routed and spliced fibers. Pet. Reply 19–20.” slip op. at 22

  • Strike new argumentNew argument consideredDecided for petitioner

    “Allegedly New Arguments on Reply Patent Owner contends that Petitioner’s arguments regarding the benefits of a hinged connection when performing the splicing and routing steps should be dismissed or ignored because they were improperly raised for the first time on reply. Sur-reply 19–20. We disagree. The Petition asserts that one of ordinary skill in the art would have sought to add a hinged connection, such as that disclosed in Battey, in Holmberg and would have seen a benefit to so doing. Pet. 40–44. Petitioner did not change its proposed combination or its stated rationale in its Reply. Rather, in response to Patent Owner’s counter-arguments, Petitioner expands upon the benefits of its proposed combination, i.e., the substitution of a hinged connection in place of fasteners. Pet. Reply 15–21. This is permissible, as a reply may properly expand on or extend previously raised arguments relating to the motivation to make the proposed changes to the prior art. See Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1385 (Fed. Cir. 2023) (explaining that the reply arguments properly relied on the same legal ground, the same prior art references, and same legal argument—the motivation to make the proposed changes to the prior art reference).” slip op. at 25

  Patent outcomesUS 9,008,483 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,008,483
• Apple Inc. v. RJ Technology LLCSome claims unpatentable
  PTAB · Feb 18, 2025 · IPR2023-01350 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 5–10 are unpatentable as obvious; claims 11–14 were not shown unpatentable because the evidence did not establish the claimed capacity retention after 400 cycles.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art “would have held a Bachelor’s degree in chemistry or chemical engineering, with at least 4 years of experience in cell design, electrochemical techniques, and battery materials development.” Pet. 4. Petitioner further contends that a “Master’s Degree can substitute[] for some of the relevant experience,” and “[e]quivalent training with battery specific experience can accommodate other degreed fields.” Id. 9 The parties here do not address objective evidence of nonobviousness. Patent Owner does not dispute Petitioner’s definition of the ordinarily skilled artisan. PO Resp. 20. We adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the ’641 patent, the prior art of record, and the parties’ arguments.” slip op. at 6

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

    “The parties agree that the term “charge cut-off voltage” is “the maximum voltage to which the battery is configured to be charged.” PO Resp 21–22; Pet. Reply 1. The parties dispute, however, whether the “charge cut-off voltage” is a “battery property” or “the voltage applied to the battery during charging.” PO Resp. 21–24; Pet. Reply 1–6. We need not resolve the precise meaning of “charge cut-off voltage” because there is no dispute that Yamaki discloses this limitation under either party’s interpretation of the claim term. Upon review of the prior art and the parties’ arguments, we determine that no terms of the ’641 patent require express construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))); Pet. Reply 1 (asserting that the challenged claims are unpatentable under either parties’ construction of “charge cut-off voltage”).” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “Patent Owner’s arguments do not persuasively undermine Petitioner’s position. Sakamoto expressly discloses setting the ratio of negative to positive electrode active material in the range of 1.05 to 1.30. Ex. 1005 ¶ 8. Sakamoto also explains why this range is preferable, i.e., if the ratio is roughly equal “the charge-discharge cycle performance is insufficient due to significant deterioration from charging and discharging,” and if the ratio is 10 Citations to the prosecution history of Yamaki are to the page numbers added to the lower right corner of the document. too high “too much of the compound does not participate in charging and discharging.” Id. ¶¶ 6, 8. These disclosures are sufficient to explain why one of ordinary skill in the art would have found it obvious to select the ratios disclosed in Sakamoto in Yamaki. Id. ¶ 8 (providing a secondary battery with a capacity ratio between 1.05 and 1.30 and noting that by setting the ratio within this range the resulting secondary lithium battery is “safe due to low risk of heat being generated and an explosion occurring”). We also disagree that Sakamoto teaches away from elevated voltages or from increasing the amount of lithium in circulation. See PO Resp. 29. Contrary to Patent Owner’s arguments, Sakamoto provides no general teaching against using a charge cut-off voltage above 4.2 V, or against increasing the level of lithium in circulation. Nor does Sakamoto “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather, Sakamoto warns against setting the reversible capacities of the positive and negative electrode substantially equal as this may result in excess lithium plating on the surface of the electrode. Ex. 1005 ¶¶ 6, 8. We agree with Petitioner that this disclosure would lead one of ordinary skill in the art to design a battery with a higher capacity in the negative electrode active material than the positive electrode active material. Pet. 11–12.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “We also disagree that Sakamoto teaches away from elevated voltages or from increasing the amount of lithium in circulation. See PO Resp. 29. Contrary to Patent Owner’s arguments, Sakamoto provides no general teaching against using a charge cut-off voltage above 4.2 V, or against increasing the level of lithium in circulation. Nor does Sakamoto “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather, Sakamoto warns against setting the reversible capacities of the positive and negative electrode substantially equal as this may result in excess lithium plating on the surface of the electrode. Ex. 1005 ¶¶ 6, 8. We agree with Petitioner that this disclosure would lead one of ordinary skill in the art to design a battery with a higher capacity in the negative electrode active material than the positive electrode active material. Pet. 11–12.” slip op. at 15

  Patent outcomesUS 7,749,641 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,749,641
• Opticis Co., Ltd. v. Inneos LLCAll claims unpatentable
  PTAB · Jan 29, 2025 · IPR2023-01256 · APJ Terry J Owens · IPR · Final written decision

  Claims 1, 2, 6, 7, and 9 are unpatentable as obvious over Kurita and Lemoff, with the Board declining to reach the remaining grounds.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “We accept the level of ordinary skill in the art stated by Petitioner and agreed with by Patent Owner with the exception of the open-ended language appears consistent with the ’416 patent and the prior art of record.” slip op. at 7

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

    “describe elements that are not affirmatively recited in the claims, and in view of the “bedrock principle of patent law that the claims of a patent define the invention,” we conclude that none of the unrecited limitations identified by Patent Owner are required by the claims. See Thorner v. Sony Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (explaining that the standard for disavowal is “exacting,” and the use of “the present invention” is not necessarily sufficient to meet this standard).” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “art would not have modified Kurita in view of Lemoff because Lemoff positions the signal emitters near the fiber to emulate WDM without the need for an external optical multiplexer or a similar device and discourages using optical wavelength multiplexers for short distances because the complexity of the design is often cost prohibitive (PO Resp. 47–48), Lemoff does not appear to limit the usefulness of the fiber connector to any particular optical signal transmission distance. Petitioner relies upon Lemoff for a suggestion to combine Lemoff’s fiber connector configuration teachings with Kurita’s multiplexer teachings to enable fibers to be plugged Fig. 2) (Pet 29, 31; Reply 17–18). Regarding Patent Owner’s argument that one of ordinary skill in the art would not have combined Lemoff’s receptacle and ferrule with discrete components in Kurita because the fiber would need to be manually fixed and aligned with or without a ferrule and, therefore, would serve no purpose (PO Resp. 48), Lemoff’s fiber connector appears to fix and align the fiber adequately for wavelength division multiplexing without manual fixation or alignment being required (Ex. 1006, 5:65–6:2, Fig. 2; Reply 18). The challenged claims do not require any greater degree of fixing and alignment than that provided by Lemoff’s fiber connector. Regarding Patent Owner argument that Lemoff’s device is not physically combinable with Kurita’s WDM multiplexer due to Lemoff’s device’s small size (PO Resp. 47–48; Reply 17–18), “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art” (In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Accordingly, we are not persuaded by Patent Owner’s argument.” slip op. at 26

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “stopped single optical fiber because fixing it in place does not passively align it with the optical components (PO Resp. at 35–37) is not persuasive because fixing Kurita’s fiber (40) in place in accord with Lemoff’s teaching regarding the ferrule (255) inserted until being stopped by the receptacle (260) (Ex. 1006, 5:50–6:15, Fig. 2) would align Kurita’s optical array (20), and lens (30)) (Ex. 1004 Fig. 3) passively in the same manner that Lemoff’s ferrule (255), after being inserted until stopped by the receptacle (260), passively aligns the optical fiber (250) with the optical components (optical imaging element 220 and light emitters within emission apertures 120) (Ex. 1006, 5:50–6:15, Fig. 2; Reply 15–16). Regarding Patent Owner’s argument that the light from each of Kurita’s lasers (11) depicted in Figure 3 cannot pass through a separate focusing lens (30) pie shaped sector because the lasers (11) and collimating lenses (21) are arranged linearly rather than being arranged about a circular axis (PO Resp. at 37–42), we do not agree. Claim 1 requires “focusing means having n separate radial sectors on its surface, and each of said n collimated beams passes through a separate one of said n sectors of said focusing means” (Ex. 1001, 5:34–37), claim 2 requires “four lasers and four collimating lenses are each formed in a two-dimensional, two by two array [centered on the focal axis of lens 30], wherein said focusing means is a single focusing lens, and wherein each radial sector is a pie-shaped quadrant” (id. at 5:41–44), and claim 7 requires “focusing means having four separate quadrants on its surface, and each of said four collimated beams passes through a separate one of said quadrants of said focusing means” (id. at 6:35–38). Kurita meets those claim requirements. Kurita’s two by two array (10A) of lasers (11), collimating lens (21) array (20), and focusing lens (30) are shown in Kurita’s Figure 3 (cropped) as follows: The image is a portion of Kurita’s Figure 3 showing Kurita’s laser array, collimating lens array, and focusing lens (30). Relative to a point at the center of the laser array (10A) or the collimating lens array (20), each laser (11) and each collimating lens (21) is in a separate quadrant that can be a quadrant of a circle (pie-shape) on lens 30 (Reply 12– 13, Ex. 1003 ¶¶ 85–91).” slip op. at 23

  Patent outcomesUS 7,198,416 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,198,416
• Samsung Electronics Co., Ltd. / Apple Inc. v. RJ Technology LLCSome claims unpatentable
  PTAB · Jan 17, 2025 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 2–4 and 6–18 are unpatentable as obvious over Abe and Guyomard, with claims 9–10 also obvious over Iwaizono; claims 1 and 5 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years of experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. (citing Ex. 1002 ¶¶ 50–51). Patent Owner “does not dispute Petitioner’s level of ordinary skill.” PO Resp. 17. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the disclosures of the ’641 patent and the prior art of record.” slip op. at 9

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

    “We also agree with Patent Owner that the charge cut-off voltage is not necessarily the applied voltage during charging. PO Resp. 20. Rather, depending on the charging protocol used and when in the charging cycle the voltage is applied, the applied voltage could be higher than the battery voltage. Ex. 2013; Ex. 2006 ¶ 91. For example, as discussed in more detail below with respect to the Uemura grounds, when fast charging using constant current is used and the charging rate is not slow, the applied voltage will be higher than the battery voltage when the constant current charging phase is stopped. Ex. 2006 ¶ 91; Ex. 2013. Likewise, during constant current/constant voltage charging, the applied voltage approximates the battery voltage only when the battery is nearly completely charged. Ex. 2013; Ex. 2006 ¶ 91. Thus, the applied voltage may be, but is not necessarily, the charge cut-off voltage. In view of the foregoing, we construe “charge cut-off voltage” in claims 1 and 5 as “the maximum value to which the battery is configured to be charged.” PO Resp. 18; Ex. 2008, 217:6–11; Pet. Reply 5. Contrary to Patent Owner’s arguments, however, we do not understand the phrase “configured to be charged” to necessarily represent a single voltage for the battery that is determined based on the structure and chemistry of the battery. Pet. Reply 4–5. Rather, the charge cut-off voltage is a selected potential, or voltage, of the battery or cell at the end of charging that is controlled by a circuit or device, such as a charger or control circuit within the battery. Ex. 1001, 9:50–55; Ex. 1048, 2, 7–8; Ex. 1008, 3:9–13. And, for the reasons discussed herein, the charge cut-off voltage may be, but is not necessarily, the same as the applied voltage during charging. PO Resp. 20.” slip op. at 15

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

    “charge cut-off voltage “greater than 4.2 V but less than 5.8 V” and calculating a specific or theoretic capacity “with a charge cut-off voltage limited to 4.2” (claim 1) or “with a charge cut-off voltage set at 4.2 V” (claim 5). Ex. 1001, 16:56–61, 17:6–11. Although the parties dispute the precise scope of these claim terms, the parties agree that the first use of “charge cut-off voltage” in claims 1 and 5 refers to the potential of the battery as a whole (between the cathode and the anode), and not a half-cell voltage using lithium metal as a counter electrode.10 Tr. 17:1–3 (agreeing 10 With respect to the phrase “as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V,” the parties in fact appear to be in that the first use of “charge cut-off voltage” in claim 5 refers to a full-cell voltage); Sur-reply 5; PO Resp. 22. We need not further construe the claims to resolve the disputes between the parties. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 16

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Given Mr. Juzkow’s unambiguous testimony that Uemura uses constant current charging that would stop when the applied voltage reached 11 The chart is reproduced from SAFT, Charging your lithium-ion batteries: 5 expert tips for a longer lifespan, (https://www.saft.com/energizing-iot/charging-your-lithium-ion-batteries-5-expert-tips-longerlifespan#:~: text=When%20the%20battery%20provides%20current,This%20restore s%20the%20battery's%20capacity). 4.3 V, as well as Dr. Yao’s persuasive testimony that Uemura’s constant charging rate is not slow, we credit the testimony of Dr. Yao that one of ordinary skill in the art would have understood that the internal voltage to which the battery of Uemura was charged is less than 4.3 V. Ex. 2006 ¶ 119. In particular, Dr. Yao persuasively testifies that one of ordinary skill in the art would have believed that the charge cut-off voltage was no more than 4.2 V, and most likely equal to “about 4 V.” Id. ¶¶ 119–122.” slip op. at 21

  Patent outcomesUS 7,749,641 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,749,641
• Samsung Electronics Co., Ltd. / Apple Inc. v. RJ Technology LLCSome claims unpatentable
  PTAB · Jan 17, 2025 · IPR2023-01183 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 2–4 and 6–18 are unpatentable as obvious over Abe and Guyomard, with claims 9 and 10 also obvious over Iwaizono; claims 1 and 5 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years of experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. (citing Ex. 1002 ¶¶ 50–51). Patent Owner “does not dispute Petitioner’s level of ordinary skill.” PO Resp. 17. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the disclosures of the ’641 patent and the prior art of record.” slip op. at 9

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

    “constructions. First, we agree with Petitioner that the ’641 patent indicates that the charge cut-off voltage selected for a particular battery need not be a fixed property of the battery or something that is set by the design and chemistry of the battery. Consistent with this conclusion, the ’641 patent discloses that a “charging device controls the charge cut-off voltage of the single lithium-ion cell within a range from 4.3 V to 5.8 V.” Ex. 1001, 9:50– 55. This strongly suggests that the charge cut-off voltage is controlled by the charger and is not necessarily an inherent property of the battery. Patent Owner contends that this is merely an unclaimed embodiment, but the relevant disclosure states that the charging device for the “present invention” may be any type of device “with the proviso that said charging device controls the charge cut-off voltage.” Id. at 9:50–53.” slip op. at 12

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

    “charge cut-off voltage “greater than 4.2 V but less than 5.8 V” and calculating a specific or theoretic capacity “with a charge cut-off voltage limited to 4.2” (claim 1) or “with a charge cut-off voltage set at 4.2 V” (claim 5). Ex. 1001, 16:56–61, 17:6–11. Although the parties dispute the precise scope of these claim terms, the parties agree that the first use of “charge cut-off voltage” in claims 1 and 5 refers to the potential of the battery as a whole (between the cathode and the anode), and not a half-cell voltage using lithium metal as a counter electrode.10 Tr. 17:1–3 (agreeing 10 With respect to the phrase “as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V,” the parties in fact appear to be in that the first use of “charge cut-off voltage” in claim 5 refers to a full-cell voltage); Sur-reply 5; PO Resp. 22. We need not further construe the claims to resolve the disputes between the parties. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 16

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Given Mr. Juzkow’s unambiguous testimony that Uemura uses constant current charging that would stop when the applied voltage reached 11 The chart is reproduced from SAFT, Charging your lithium-ion batteries: 5 expert tips for a longer lifespan, (https://www.saft.com/energizing-iot/charging-your-lithium-ion-batteries-5-expert-tips-longerlifespan#:~: text=When%20the%20battery%20provides%20current,This%20restore s%20the%20battery's%20capacity). 4.3 V, as well as Dr. Yao’s persuasive testimony that Uemura’s constant charging rate is not slow, we credit the testimony of Dr. Yao that one of ordinary skill in the art would have understood that the internal voltage to which the battery of Uemura was charged is less than 4.3 V. Ex. 2006 ¶ 119. In particular, Dr. Yao persuasively testifies that one of ordinary skill in the art would have believed that the charge cut-off voltage was no more than 4.2 V, and most likely equal to “about 4 V.” Id. ¶¶ 119–122. Petitioner argues that because the battery of Uemura is charged “to” a maximum voltage of 4.3 V, Uemura discloses the claimed charge cut-off voltage under either Petitioner’s or Patent Owner’s construction of the term. Pet. Reply 11–12 (citing Ex. 1009 ¶ 81; Ex. 1044 ¶¶ 56–59). This argument is not persuasive because Mr. Juzkow unambiguously testified that charging in Uemura stopped when the applied voltage reached 4.3 V, and Uemura discloses that the battery was charged “at” a voltage ranging from 4.3 V to 2.0 V, not “to” such a voltage. Ex. 1009 ¶ 81; Ex. 2008, 113:2–13; Ex. 2006 ¶ 119 n.64; Sur-reply 9. In view of the foregoing, we determine that Petitioner has not demonstrated by a preponderance of the evidence that Uemura anticipates independent claims 1 and 5 of the ’641 patent.” slip op. at 21

  Patent outcomesUS 7,749,641 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,749,641
• Motorola Mobility LLC v. Largan Precision Co., Ltd.Institution denied
  PTAB · Jan 3, 2025 · IPR2024-00689 · APJ Norman H Beamer · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–34 were obvious over Fukaya or Cai.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “3. Analysis Petitioner has not shown a reasonable likelihood that a person of ordinary skill, as of the August 2014 priority date of the ’845 patent, would have been motivated to modify the Fukaya seven-lens system to change the bi-convex/bi-concave design of the sixth and seventh lenses to a double gullwing/meniscus design. Redesigning a lens system is extraordinarily complicated, requiring protracted trial-and-error experimentation with nearly an infinite number of possible solutions in a highly multidimensional space. Ex. 1010, 11; Ex. 1011, 169. We conclude that Petitioner and its expert navigate along one path out of many to the particular redesign they propose using improper result-oriented hindsight as a guide.” slip op. at 23

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “paragraph) (“Becton Dickinson”). The Becton Dickinson factors apply when a petition relies on art or arguments previously presented to the Office during any proceeding pertaining to the challenged patent, including reexamination, reissue, and AIA post-grant proceedings. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6, 8–10 (PTAB Feb. 13, 2020) (precedential). Advanced Bionics explains how the Becton Dickinson factors fit into a two-part framework that examines: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review. Id. at 8–9. Here, as discussed above, the same art that Petitioner relies on — Fukaya and Tsai/Cai — was previously presented to the Office. Thus, Patent Owner has shown that the first part of the Advanced Bionics framework is satisfied. Turning to the second part of the Advanced Bionics framework, we determine that Petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims.” slip op. at 12

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

    “3. Analysis Petitioner has not shown a reasonable likelihood that a person of ordinary skill, as of the August 2014 priority date of the ’845 patent, would have been motivated to modify the Fukaya seven-lens system to change the bi-convex/bi-concave design of the sixth and seventh lenses to a double gullwing/meniscus design. Redesigning a lens system is extraordinarily complicated, requiring protracted trial-and-error experimentation with nearly an infinite number of possible solutions in a highly multidimensional space. Ex. 1010, 11; Ex. 1011, 169. We conclude that Petitioner and its expert navigate along one path out of many to the particular redesign they propose using improper result-oriented hindsight as a guide. Petitioner’s expert’s recitation of the at least 25 steps taken to journey from the original Fukaya design to the modified design is instructive: (i) inputting into lens design software the original Fukaya lens parameters; (ii) evaluating its off-axis performance; (iii) increasing the number of analysis field points; (iv) deciding to focus on lenses 5–7, which requires that all aspherics be varied; (v) modifying lens 6 aspherics; (vi) adding CARD operands in the merit function to change the curvature radius values on the lens surfaces; (vii) adding FTGT operands to control spacing between the lenses and lens thicknesses; (viii) adjusting CENY to set the field height; (ix) using a 20x20 rectangular grid of rays for the spot rms part of the merit function; (x) making all aspherics and conics variable, except on the objectside surface of the seventh lens; (xi) increasing the f-number to 2; (xii) increasing sampling to 40x40; (xiii) targeting a positive curvature on the image-side surface of lens 6 with the CVGT 0 operand; (xiv) increasing FTGT to 0.2 on lens 7; (xv) increasing the focal length of lens 6 to 3mm; (xvi) targeting a positive curvature on the object side of lens 7 with the CVGT 0 operand; (xvii) reducing the power of lens 7; (xviii) increasing the target focal length on lens 6; (xix) releasing the focal length constraint on lens 7; (xx) releasing the focal length constraints on lenses 5 and 6; (xxi) reducing f-number in steps to 1.65; (xxii) adding DIMX operands; (xxiii) freezing the conics on surfaces 10 and 14; (xxiv) adding FCGT and FCGS commands to limit field curvature; (xxv) adding LONAs into the merit function — thus “resulting” in the Fukaya lens system with a meniscus-gullwing lens pair for lenses 6 and 7.5 Ex. 1001 ¶¶ 82–85. We are not persuaded that this exercise is sufficiently free of hindsight motivation. For purposes of this Decision, we accept that gullwing/meniscus designs were well-known as of the priority date.6 However, the fact that such designs were available and could have been used does not mean that they would have been used. Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). We agree with Patent Owner that there is no evidence that that Fukaya was in need of any improvements to its compactness, aberrations, or chief ray angle. Prelim. Resp. 27. As Patent Owner establishes, the original Fukaya track length is actually shorter than the track length of the redesigned lens systems proposed by Petitioner, aberrations are properly corrected in the unmodified Fukaya lens system, and Petitioner’s redesign provides only minimally improved off-axis relative illumination. Id. at 27–33.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner

    “ordinary skill, as of the August 2014 priority date of the ’845 patent, would have been motivated to modify the Fukaya seven-lens system to change the bi-convex/bi-concave design of the sixth and seventh lenses to a double gullwing/meniscus design. Redesigning a lens system is extraordinarily complicated, requiring protracted trial-and-error experimentation with nearly an infinite number of possible solutions in a highly multidimensional space. Ex. 1010, 11; Ex. 1011, 169. We conclude that Petitioner and its expert navigate along one path out of many to the particular redesign they propose using improper result-oriented hindsight as a guide. Petitioner’s expert’s recitation of the at least 25 steps taken to journey from the original Fukaya design to the modified design is instructive: (i) inputting into lens design software the original Fukaya lens parameters; (ii) evaluating its off-axis performance; (iii) increasing the number of analysis field points; (iv) deciding to focus on lenses 5–7, which requires that all aspherics be varied; (v) modifying lens 6 aspherics; (vi) adding CARD operands in the merit function to change the curvature radius values on the lens surfaces; (vii) adding FTGT operands to control spacing between the lenses and lens thicknesses; (viii) adjusting CENY to set the field height; (ix) using a 20x20 rectangular grid of rays for the spot rms part of the merit function; (x) making all aspherics and conics variable, except on the objectside surface of the seventh lens; (xi) increasing the f-number to 2; (xii) increasing sampling to 40x40; (xiii) targeting a positive curvature on the image-side surface of lens 6 with the CVGT 0 operand; (xiv) increasing FTGT to 0.2 on lens 7; (xv) increasing the focal length of lens 6 to 3mm; (xvi) targeting a positive curvature on the object side of lens 7 with the CVGT 0 operand; (xvii) reducing the power of lens 7; (xviii) increasing the target focal length on lens 6; (xix) releasing the focal length constraint on lens 7; (xx) releasing the focal length constraints on lenses 5 and 6; (xxi) reducing f-number in steps to 1.65; (xxii) adding DIMX operands; (xxiii) freezing the conics on surfaces 10 and 14; (xxiv) adding FCGT and FCGS commands to limit field curvature; (xxv) adding LONAs into the merit function — thus “resulting” in the Fukaya lens system with a meniscus-gullwing lens pair for lenses 6 and 7.5 Ex. 1001 ¶¶ 82–85. We are not persuaded that this exercise is sufficiently free of hindsight motivation. For purposes of this Decision, we accept that gullwing/meniscus designs were well-known as of the priority date.6 However, the fact that such designs were available and could have been used does not mean that they would have been used. Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). We agree with Patent Owner that there is no evidence that that Fukaya was in need of any improvements to its compactness, aberrations, or chief ray angle. Prelim. Resp. 27. As Patent Owner establishes, the original Fukaya track length is actually shorter than the track length of the redesigned lens systems proposed by Petitioner, aberrations are properly corrected in the unmodified Fukaya lens system, and Petitioner’s redesign provides only minimally improved off-axis relative illumination. Id. at 27–33.” slip op. at 23

  Claim construction§ 103 obviousnessDiscretionary denialcites Graham
  Patents in suitUS 9,366,845
• LG Energy Solution, Ltd. v. Molecular Rebar Design, LLCInstituted
  PTAB · Dec 16, 2024 · IPR2024-01012 · APJ Julia Heaney · IPR · Institution

  The Board instituted IPR on claims 1–16 and all asserted grounds, finding a reasonable likelihood of unpatentability and declining Fintiv discretionary denial.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition in view of the record at this stage, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. We also determine that the arguments and evidence of record do not support discretionary denial of the Petition under 35 U.S.C. § 314(a). Accordingly, we grant institution of an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “parties on the present record, we are persuaded Petitioner sufficiently shows the combination of Bosnyak-392 and Son teaches or suggests all of the limitations of claim 1, and sufficiently explains how a person of ordinary skill in the art would have used Bosnyak-392’s teaching of using exfoliated, open-ended carbon nanotube fibers having two different aspect ratios in a composition with improved electrical and mechanical properties, with Son’s implementation of a specific bimodal distribution of aspect ratios, to arrive at the composition of claim 1 with a reasonable expectation of success. We do not find persuasive Patent Owner’s arguments that Bosnyak- 392 teaches away from using nanotubes with a lower aspect ratio, or that Bosnyak-392 has an objective of maintaining longer nanotubes. See Prelim. Resp. 5–9. Patent Owner’s arguments appear to be based on a mischaracterization of Bosnyak-392, which read as a whole, discusses methods for exfoliating carbon nanotubes and physical properties of exfoliated nanotubes, such as length and diameter, that are not apparent when the nanotubes are aggregated. E.g., Ex. 1005 ¶ 37. Although Bosnyak-392 recognizes that nanotube exfoliating techniques tend to reduce nanotube length (see Ex. 1003 ¶ 28), it does not discourage the use of shorter nanotubes. Rather, it recognizes that using short and long nanotubes together can produce a composite with improved electrical and mechanical properties. See id. (citing Ex. 1005 ¶ 73). See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a reference does not teach away from a claimed invention unless it “criticizes, discredits, or otherwise discourages” the claimed solution).” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “We do not find persuasive Patent Owner’s arguments that Bosnyak- 392 teaches away from using nanotubes with a lower aspect ratio, or that Bosnyak-392 has an objective of maintaining longer nanotubes. See Prelim. Resp. 5–9. Patent Owner’s arguments appear to be based on a mischaracterization of Bosnyak-392, which read as a whole, discusses methods for exfoliating carbon nanotubes and physical properties of exfoliated nanotubes, such as length and diameter, that are not apparent when the nanotubes are aggregated. E.g., Ex. 1005 ¶ 37. Although Bosnyak-392 recognizes that nanotube exfoliating techniques tend to reduce nanotube length (see Ex. 1003 ¶ 28), it does not discourage the use of shorter nanotubes. Rather, it recognizes that using short and long nanotubes together can produce a composite with improved electrical and mechanical properties. See id. (citing Ex. 1005 ¶ 73). See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a reference does not teach away from a claimed invention unless it “criticizes, discredits, or otherwise discourages” the claimed solution).” slip op. at 18

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “Having considered both sides’ arguments as to Fintiv factors 2 and 3, we determine that the considerations of these factors weigh against exercising discretionary denial. Neither party directs us to any substantive order issued by the district court in the parallel litigation, which indicates the court has not yet considered claim construction or potential invalidity of the ’282 patent. The Markman hearing will not occur until June 2025, and the expert discovery cutoff is not until August 2025. Ex. 2002. Thus, although the parties have begun discovery as to invalidity issues, much further work remains in the parallel district court litigation. We also take into account Petitioner’s prompt filing of the Petition, as weighing against exercising discretionary denial. See Fintiv 11 (“If the evidence shows that the petitioner filed the petition expeditiously, such as promptly after becoming aware of the claims being asserted, this fact has weighed against exercising the authority to deny institution . . . .”).” slip op. at 34

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,608,282
• LG Energy Solution, Ltd. v. Molecular Rebar Design, LLCInstituted
  PTAB · Dec 16, 2024 · IPR2024-01005 · APJ Julia Heaney · IPR · Institution

  The Board instituted IPR on claims 1–23 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been shown unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. We also determine that the arguments and evidence of record do not support discretionary denial under 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “under the sixth Fintiv factor only after a determination that the first five Fintiv factors favor discretionary denial. CommScope, 4–5. Here, we do not find the first five factors cumulatively weigh in favor of discretionary denial. Therefore, we determine that the circumstances here do not warrant an analysis of whether the Petition presents compelling merits, and the considerations of the sixth Fintiv factor weigh against exercising discretionary denial. F. Conclusion Having considered the parties’ arguments in view of the Fintiv factors, and taking into account Petitioner’s stipulation, we determine that the circumstances here do not warrant exercising discretion under § 314(a) to deny institution. IV.” slip op. at 35

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

    “Thus, although both parties indicate that no claim construction is necessary at this stage of the proceeding, it is apparent that they disagree as to the meaning of “discrete carbon nanotubes.” While Petitioner appears to construe “discrete carbon nanotubes” as “nanotubes that are generally individually distinct” (Pet. 13), Patent Owner argues a more restricted construction requiring that “discrete carbon nanotubes” not be reacted with other components. Prelim. Resp. 3. The evidence relating to claim 10 In quotations from the Preliminary Response throughout this Decision, we have retained bolding and underlining added to the text by Patent Owner. construction that Patent Owner offers on the current record, however, does not address its proposed restriction. See id. at 9, n. 4, citing Ex. 1001, 3:9, 5:39–40 (“The ’649 Patent describes the ‘discrete carbon nanotubes’ as, for example, ‘individually dispersed’, ‘individualized carbon nanotubes’, ‘dispersed as individual nanotubes’, and ‘essentially discrete individual fibers, not entangled as a mass.’”). As discussed in Section II.D.2 below, we determine based on the record at this stage of the proceeding that Petitioner demonstrates sufficiently for purposes of institution that Sun discloses or suggests “discrete carbon nanotubes.” Therefore, we do not explicitly construe any claim terms in this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we 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))). If either party intends to argue a claim construction at trial, however, including what is the ordinary meaning of a term, they should do so in a clearly designated section of their briefing. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 21, 2019) (“CTPG”), 46, 49 (available at https://www.uspto.gov/TrialPracticeGuideConsolidated); O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the parties’ dispute.”). Claim construction arguments should not be relegated to patentability arguments on the facts.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had at least [a] Master’s degree in materials science, chemistry, chemical engineering, a field relevant to polymer science and engineering, or the equivalent, and at least three years of experience in nanomaterials, electrochemistry, batteries, or polymer related activities.” Pet. 5 (citing Ex. 1003 ¶ 19). Petitioner further argues that “[a]dditional work experience can compensate for less formal education, and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 4. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’649 patent and the asserted prior art.” slip op. at 9

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 9,636,649

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.