- Nokia Of America Corporation v. TQ Delta, LLCInstitution deniedPTAB · Sep 7, 2022 · IPR2022-00640 · APJ Jennifer Meyer Chagnon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that claims 17 or 18 were unpatentable under any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 314, which provides that an inter partes review may be instituted only upon a showing 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). Applying this standard, and upon consideration of the information presented in the parties’ briefing, as well as the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Based on these disclosures, we agree with Patent Owner that the Specification of the ’881 patent clearly distinguishes between methods of compensating for differences in latency and methods of reducing differences in latency. We also agree that the claim is directed to the reducing differences embodiment. See Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010) (“It is not necessary that each claim read on every embodiment.”); see also SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., 983 F.3d 1367, 1379 (Fed. Cir. 2021) (“We have noted that ‘[i]t is often the case that different claims are directed to and cover different disclosed embodiments. The patentee chooses the language and accordingly the scope of his claims.’ Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1383 (Fed. Cir. 2008); see also Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1381 (Fed. Cir. 2018) (same); PSN [Illinois, LLC v. Ivoclar Vivadent, Inc.], 525 F.3d [1159,] 1166” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“Gray teaches changing the rate at which packets are provided to the links based on the quality of the link. See Ex. 1007, code (57); see also id. at 6:53–59 (“A delay factor associated with each of the plurality of links is determined and communication packets are distributed among the plurality of links based upon the delay factor associated with each of the plurality of links. The communication packets may be distributed to the links by providing communication packets to a link of the plurality of links with the least delay.”). Rather than reducing the difference in latency between the links, Gray teaches compensating for the differences by sending more packets to higher quality links, and less packets to lower quality links. Section II.C.), we agree with Patent Owner that Petitioner has not shown sufficiently that Gray discloses “reducing a difference in latency between the bonded transceivers” as recited in claim 17. For this reason, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 17, or claim 18 which depends therefrom, is anticipated by Gray.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“Petitioner’s combination with Cooper, however, does not remedy the deficiencies discussed above with respect to the asserted ground based on Keller-Tuberg alone. See Section II.F. As noted above, Petitioner relies on Cooper’s teaching of a specific delay-reducing algorithm, but continues to rely on Keller-Tuberg for its alleged teaching of “equalizing the difference in latency between the bonded transceivers.” Pet. 53. As Patent Owner argues “dynamically balancing the receive queue lengths to compensate for difference in latency,” as in Petitioner’s combination of Keller-Tuberg and Cooper, “compensates for a difference in configuration latency without doing anything to the actual difference in latency much less ‘utilizing a transmission parameter to reduce a difference in latency.’” Prelim. Resp. 8 compensates for the differences in latency” (emphasis added)). Based on our construction of the “utilizing” term, discussed above (see Section II.C.), we agree with Patent Owner that Petitioner has not shown sufficiently that the combination of Keller-Tuberg and Cooper teaches “reducing a difference in latency between the bonded transceivers” as recited in claim 17. For these reasons, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 17, or claim 18 which depends therefrom, would have been obvious in view of Keller- Tuberg and Cooper.” slip op. at 30
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,453,881 - PTAB · Aug 18, 2022 · IPR2022-00471 · APJ Joni Y Chang · IPR · Institution
The Board instituted IPR on claims 8–10, 15, 24–26, and 31 over four asserted grounds: anticipation by G.992.1 and obviousness over SC-060, G.992.1 with SC-060, and G.992.1 with Wunsch.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredRpi dispute resolved for petitionerDecided for petitioner
“Petitioner “bears the ultimate burden of persuasion to show that its petitions are not time-barred under § 315(b) based on a complaint served on an alleged real party in interest more than a year earlier.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). 3. RPI Analysis” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Office (“USPTO”) issued a Memorandum8 titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation” (“the Memorandum” or “Memo”), which states, among other things, that “to benefit the patent system and the public good, the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memo, 2. The Memorandum explains that “compelling, meritorious challenges will be allowed to proceed at the PTAB even where district court litigation is proceeding in parallel.” Id. at 4. “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. “[W]here the PTAB determines that the information presented at the institution stage 8 Available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf 19 presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Id. at 4−5. “This clarification strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Id. at 5. In addition, “[t]he compelling evidence test affirms the PTAB’s current approach of declining to deny institution under Fintiv where the evidence of record so far in the case would plainly lead to a conclusion that one or more claims are unpatentable.” Id. at 5 n.6 (citing, e.g., Illumina Inc. v. Trs. Of Columbia Univ., IPR2020-00988, Paper 20 (PTAB Dec. 8, 2020) (declining to deny under Fintiv in light of strong evidence on the merits even though four factors weighed in favor of denial and remining factor was neutral)).” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“agreed[] that a flag signal does not include information indicating when the FIP settings are going to be used.” Prelim. Resp. 8. In its Claim Construction Memorandum Opinion, the District Court in the Delaware case, after considering both parties’ arguments and evidence, rejected Patent Owner’s proposed construction and adopted Defendants’ compromise construction, which does not import the negative limitation advanced by Patent Owner into the claims. Ex. 2027, 7−8; see also Ex. 1024, 2. The District Court in the Delaware case noted that “the patent does not provide lexicography for ‘flag signal,’” and “[Patent Owner] does not argue that a disclaimer supports it[s] construction.” Ex. 2027, 7−8. The ’835 patent discloses that “synchronization can be based on, for example, a synchronization using FEC codeword counters or a flag signal.” Ex. 1001, 11:7−9. The “flag signal” embodiment does not limit a flag signal to “an inverted sync symbol, or sync FLAG, as used in the ADSL2 G.992.3 OLR protocol,” as Patent Owner alleges. The portions of the Specification relied upon by Patent Owner and Dr. Madisetti use permissive language in explaining that “[f]or example, the flag signal could be an inverted sync symbol, or sync FLAG, as used in the ADSL2 G.992.3 OLR protocol.” Ex. 1001, 12:29−31. Moreover, Patent Owner conceded at the Markman hearing in the Delaware case that a flag signal may contain information that indicates when updated FIP settings are to be used, as long as the” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’835 patent, prior art of record, and supported by the testimony of Dr. Jacobsen, except that we do not accept the qualifier “at least,” which would expand the required amount of experience indefinitely.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,462,835 - TCT Mobile (US) Inc. / TCL China Star Optoelectronics Technology Co., Ltd. et al. v. Semiconductor Energy Laboratory Co., Ltd.Institution deniedPTAB · Jul 21, 2022 · IPR2022-00441 · APJ Jennifer Meyer Chagnon · IPR · Institution
The Board denied institution on claims 1–3 because Petitioner did not show a reasonable likelihood of proving obviousness over Umezaki and Lo or anticipation of claim 2 by Umezaki.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech. Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner proposes the following definition for the person of ordinary skill in the art: a graduate degree in electrical engineering or computer engineering or a similar discipline, with at least three years of relevant industry or research experience, including experience designing or implementing OLEDs in combination with pixel or/and driving circuits. Pet. 19–20 (citing Ex. 1002 ¶ 26). Patent Owner has not provided an assessment of the level of ordinary skill in the art and does not contest Petitioner’s proposal. See generally Prelim. Resp. For purposes of this Decision, we apply Petitioner’s proposed level of ordinary skill in the art, which is consistent with the ’290 patent and the asserted prior art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes constructions for two claim terms: “electrically connected” and “transistor.” See Pet. 15–19. Patent Owner does not propose any claim constructions at this stage of the proceeding. See generally Prelim. Resp. Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We determine that express construction of the terms identified by Petitioner is not necessary for purposes of this Decision.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We recognize that Petitioner cites to Umezaki’s disclosure that “[t]he first to eleventh wirings 121 to 131 can be freely connected as long as a flip-flop operates similarly to FIGS. 1A to 1C.” Ex. 1003 ¶ 204 (cited at, e.g., Pet. 25). We agree with Patent Owner, however, that “[t]his disclosure does not stand for the proposition that any input can be arbitrarily applied to any wiring without regard to their impact on the proper and intended operation of the circuit.” Prelim. Resp. 28; see also Ex. 1003 ¶ 204 (providing as an example that power supply lines 124, 128, 129, 131, and 131 of Fig. 1A are combined to a single power supply line 506 in Fig. 5A). As Patent Owner notes, Umezaki stresses that the flip-flop must operate similarly to that of Figures 1A to 1C. Prelim. Resp. 28 (citing Ex. 1003 ¶ 204). Petitioner does not explain sufficiently how Umezaki’s fourth wiring 504 is a power supply line or why a person of ordinary skill in the art would have been motivated to input a potential to fourth wiring 504 rather than inputting the disclosed clock signal. See Pet. 32 (simply stating that 504 is a power supply line without further explanation). Petitioner also does not demonstrate that the resulting flip-flop would operate similarly to the circuits in Figures 1A to 1C if such a change was made.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,777,290 - PTAB · Jul 5, 2022 · IPR2022-00149 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on claims 7–20 and all petitioned grounds, finding a reasonable likelihood that Samsung would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a). A claim is unpatentable under § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective indicia of non-obviousness (i.e., secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 8
- Parallel petitionsDecided for petitioner
“D. Parallel Petitions Concurrent with the filing of this Petition, Petitioner also filed a second Petition challenging claims 1–6 and 21–26 of the ’400 patent. IPR2022-00150, Paper 1, 1–2. In both cases, Petitioner filed a Notice Regarding Multiple Petitions. See Paper 3; IPR2022-0150, Paper 3. Petitioner ranks the petitions and requests that we institute both Petitions. Id. at 1–2, 5. Patent Owner filed a Response to Petitioner’s Notice of Multiple Petitions. Paper 13. Patent Owner disputes that we should institute both Petitions. Id. Petitioner ranks this Petition first. Paper 3, 1. We, therefore, have no reason to exercise our discretion under § 314(a) to deny the instant Petition on parallel proceeding grounds. We proceed to analyze the merits of the Petition.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a skilled artisan “would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and two or more years of experience with LED devices and/or related circuit design, or a related field.” Pet. 7 (citing Ex. 1002 ¶¶ 20–21). Petitioner further contends that “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner does not dispute Petitioner’s proposed level of skill. Prelim. Resp. 11. For the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art because it comports with the level of skill reflected in the ’400 patent and the prior art of record.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that “no special constructions are necessary.” Pet. 8. “Patent Owner interprets all claim terms in accordance with their ordinary and customary meaning.” Prelim. Resp. 10. Upon review of the present record, we determine that no claim terms require express construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, 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 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,687,400 - PTAB · Jun 9, 2022 · IPR2022-00100 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 8–10 and 15–18 on all asserted grounds, finding a reasonable likelihood that the challenged claims would have been obvious.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“Typically, “one petition should be sufficient to challenge the claims of a patent,” but “there may be circumstances in which more than one petition may be necessary.” CTPG 59. We agree that the claims challenged by these two petitions differ significantly. For example, as Petitioner notes:” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a). A claim is unpatentable as obvious if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). We resolve the question of obviousness based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the prior art and the claims; (3) the level of skill in the art; and (4) when in evidence, objective indicia of nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that [a] person of ordinary skill in the art [“POSITA”] . . . would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and two or more years of experience with LED devices and/or related circuit design, or a related field. . . . More education can supplement practical experience and vice versa. Pet. 5–6 (citing Ex. 1002 ¶¶ 20–21). Patent Owner does not dispute Petitioner’s proposed level of skill in the art at this stage. Prelim. Resp. 12. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’583 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In inter partes review, we construe claims 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), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b) (2021). The parties do not propose any constructions. Pet. 7; Prelim. Resp. 12. Based on our review of the preliminary record, we determine that no terms require construction at this stage. See 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.”) (internal quotation omitted).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,750,583 - PTAB · Jun 7, 2022 · IPR2022-00052 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on all asserted grounds for claims 2–5, 7, 11–13, 21, and 23, finding a reasonable likelihood that Petitioner would show them unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . 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 set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to the remaining challenged claims— claims 2–5, 7, 11–13, 21, and 23 of the ’251 patent. Accordingly, we institute an inter partes review with respect to these claims on all grounds asserted in the Petition. See SAS Inst. Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018).” slip op. at 2
- Parallel petitionsDecided for petitioner
“Typically, “one petition should be sufficient to challenge the claims of a patent,” but “there may be circumstances in which more than one petition may be necessary.” CTPG 59. For example, more than one petition may be necessary “when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. Given the priority date dispute addressed only in the -00051 Petition, and in light of Patent Owner’s decision not to challenge Petitioner’s filing of parallel petitions, we decline to exercise our discretion to deny either petition. See CTPG 61 (“The Board will consider the parties’ submissions in determining whether to exercise its discretion to institute inter partes review under 35 U.S.C. § 314(a).”).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under that standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have had to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party asserts that any claim terms of the ’251 patent require construction. Pet. 6–7; Prelim. Resp. 13. And, upon review of the parties’ arguments and supporting evidence, we find that no terms require construction for purposes of this Decision. 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“In view of the foregoing, and after reviewing the parties’ arguments and supporting evidence, we determine that Petitioner demonstrates a reasonable likelihood that Birrell and Schultz teach or suggest “at least one LED circuit having a plurality of LEDs . . . wherein the at least one LED circuit is mounted on a reflective substrate,” as recited in claim 1 of the ’251 patent. Petitioner also provides a sufficient rationale, supported by record evidence, explaining why one of ordinary skill in the art would have combined Birrell and Schultz. b) Reasonable Expectation of Success Patent Owner contends the Petition does not support institution because incorporating Schultz’s flexible, multilayer optical film in Birrell would present substantial challenges “for reconciling the build characteristics of the multi-layer rigid frame construction of Birrell with the flexible construction of Schultz.” Prelim. Resp. 22. And, given the differences in construction between the two lighting devices, Patent Owner contends the combination of Schultz’s reflective surface materials with Birrell’s circuit board 58 is not a “predictable use of known lighting design techniques and components according to their established functions,” as asserted by Petitioner. Id. at 21–22. Contrary to Patent Owner’s argument, Petitioner does not contend that one of ordinary skill in the art would have used Schultz’s specific reflective material in Birrell. Rather, Petitioner argues that the use of reflective substrates to provide mechanical support for an array of LEDs was well known in the art and, given Schultz’s disclosure of the benefits of such a reflective coating, one of ordinary skill in the art would have sought to apply a reflective coating in Birrell. Pet. 13–16. In addition, Dr. Baker, citing to multiple disclosures in the prior art, testifies that one of ordinary skill in the art would have reasonably expected success in implementing a reflective substrate in Birrell. Ex. 1002 ¶¶ 82–85. Patent Owner’s bare attorney argument is not sufficient to call this testimony into question at this stage of the proceeding. c) Conclusion with Respect to Claim 1 For the reasons set forth above, Petitioner demonstrates sufficiently” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,492,251 - PTAB · Jun 7, 2022 · IPR2022-00051 · APJ Jon B Tornquist · IPR · Institution
Instituted IPR on claims 1 and 6 over all asserted grounds because the petition showed a reasonable likelihood of prevailing on obviousness over Birrell and Schultz and over Piepgras.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“At bottom,” the two-part framework utilized for 35 U.S.C. § 325(d) “reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9. The art in the -01369 IPR has not yet been fully considered. There has been no definitive determination in that proceeding as to the scope of the prior art nor any definitive determination as to whether the submitted evidence is sufficient to show that any claims of the ’251 patent would have been obvious. As such, there is no reference point to determine whether the Office erred; there has simply been no definitive determination to analyze or reconsider. Accordingly, the framework described in Advanced Bionics is not yet applicable and does not support discretionary denial.6 Thus, we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d) on these facts. slip op. at 6
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“6 When different petitioners challenge the same patent, discretionary denial may be appropriate under 35 U.S.C. § 314(a), upon evaluation of the non-exhaustive factors set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19, at 15–16 (Sept. 6, 2017) (precedential). See Valve Corp. v. Elecs. Scripting Prods., Inc., IPR2019- 00062, Paper 11, at 2, 9 (April 2, 2019) (applying the General Plastic factors to a second petition filed by a different party). Application of the General Plastic factors, however, requires analysis of, among other things, any relationship between the different petitioners and the timing of the second petition with respect to Patent Owner’s preliminary response and the Board’s institution decision in the first proceeding. Id. at 9, 12. Patent Owner presents no persuasive evidence demonstrating that these factors counsel in favor of discretionary denial in this case, and Petitioner presents evidence that they do not. Pet. 81–84 (Petitioner asserting that it has no “significant relationship” with the petitioner in the -01369 IPR and that no preliminary response had been filed in the -01369 IPR when the Petition was filed). Accordingly, we do not consider discretionary denial under § 314(a).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party asserts that any claim terms of the ’251 patent require construction. Pet. 21–22; Prelim. Resp. 13. And, upon review of the 6 When different petitioners challenge the same patent, discretionary denial may be appropriate under 35 U.S.C. § 314(a), upon evaluation of the non-exhaustive factors set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19, at 15–16 (Sept. 6, 2017) (precedential). See Valve Corp. v. Elecs. Scripting Prods., Inc., IPR2019- 00062, Paper 11, at 2, 9 (April 2, 2019) (applying the General Plastic factors to a second petition filed by a different party). Application of the General Plastic factors, however, requires analysis of, among other things, any relationship between the different petitioners and the timing of the second petition with respect to Patent Owner’s preliminary response and the Board’s institution decision in the first proceeding. Id. at 9, 12. Patent Owner presents no persuasive evidence demonstrating that these factors counsel in favor of discretionary denial in this case, and Petitioner presents evidence that they do not. Pet. 81–84 (Petitioner asserting that it has no “significant relationship” with the petitioner in the -01369 IPR and that no preliminary response had been filed in the -01369 IPR when the Petition was filed). Accordingly, we do not consider discretionary denial under § 314(a). parties’ arguments and supporting evidence, we find that no terms require construction for purposes of this Decision. 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends that a person of ordinary skill in the art would have been able to apply a reflective coating, such as that disclosed in Shultz, to Birrell’s circuit board, and would have sought to do so because such coatings were well known in the art and it was understood that a reflective coating would improve the illumination provided by an LED lighting system. Pet. 29–30; Ex. 1002 ¶ 105. Petitioner’s arguments and rationale for the proposed combination are clear and supported by evidence of record. Pet. 29–30 (citing Ex. 1046 ¶¶ 47–49; Ex. 1002 ¶ 101; Ex. 1018, 6:6–18, 6:48–7:34; Ex. 1022, Abstract, ¶¶ 18, 34, 81). Accordingly, Petitioner sufficiently explains for purposes of institution why one of ordinary skill in the art would have sought to combine the disclosures of Birrell and Schultz to arrive at the subject matter of claim 1.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,492,251 - PTAB · May 5, 2022 · IPR2022-00063 · APJ Bryan F Moore · IPR · Institution
The Board instituted IPR on claims 1–34 and all asserted grounds after finding a reasonable likelihood that Samsung would prevail on obviousness over Ellsberry and Jeddeloh.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“another patent asserted in the Related Case was filed within a week of the Preliminary Response. Id. We decline to attempt to predict how the District Court would proceed should a stay be requested by either of the parties. Accordingly, we find that this factor neither favors nor weighs against discretionary denial of inter partes review. C. Factor 2 — Proximity of Court’s Trial Date Patent Owner admits that “[t]he district of Delaware has not yet set a trial date.” Id. Accordingly, this factor weighs against exercising our discretion to deny inter partes review.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Given the facts above, because Averbuj was not presented in combination with the other references asserted here and is only used in two of the four grounds, the combination of references asserted in the Petition do not qualify as art that was “previously presented” to the Office. Thus, we find that the combination of references asserted in the Petition, were not previously presented to the Office. Additionally, Patent Owner does not assert or explain sufficiently that Ellsberry, Jeddeloh, and/or Lee are cumulative of any reference cited during prosecution of the ’523 patent. Prelim. Resp. 41–43. On this record, we are not persuaded that Ellsberry, Jeddeloh, and Lee are cumulative of any reference cited during prosecution of the ’523 patent. Accordingly, the first condition of the first part of the Advanced Bionics framework is not satisfied, and we need not consider whether Petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Conclusion After evaluating the Becton, Dickinson factors within the Advanced” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” Pet. 6. Patent Owner does not dispute Petitioner’s characterization or offer its own. Accordingly, for purposes of this decision, we adopt Petitioner’s characterization of the level of ordinary skill, which we determine is consistent with the ’523 patent written description and the asserted prior art. slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner offers constructions of several terms which are not disputed by Patent Owner. Pet. 13–15. Nevertheless, we determine that it is not necessary to provide an express interpretation of any of the terms of the claims at this juncture. 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 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,217,523 - Maxlite, Inc. v. Jiaxing Super Lighting Electric Appliance Co., Ltd.All claims unpatentablePTAB · Apr 29, 2022 · IPR2020-00208 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 7, and 12–18 are unpatentable as anticipated by Duan under § 102(a)(1).
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“a B.S. degree in electrical engineering, or an equivalent field, as well as at least 2-4 years of academic or industry experience in lighting design, including knowledge of LEDs and related technology for driving LEDs. A person of ordinary skill in the art with a higher level of education may have fewer years of academic or industry experience, or vice versa. Pet. 22 (citing Ex. 1002 ¶ 10). Patent Owner does not contest Petitioner’s articulation of the level of skill in the art. PO Resp. 4–5. We regard Petitioner’s definition as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, we adopt Petitioner’s proposal.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“embodiments that operate with a low frequency driving signal in a double-ended configuration, Patent Owner did not recite “low frequency” or “double-ended” in its claims and instead chose the broader term “first driving mode.” See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). The fact that a limitation in the specification may define over the prior art does not justify importing that limitation into the claims unless a term is expressly defined such that the patentee becomes his own lexicographer or there is an express disavowal of claim scope. See GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1308–09 (Fed. Cir. 2014). There is no evidence of an express disavowal here. As to lexicography, we disagree with Patent Owner’s contention that the Specification defines the phrase “first driving mode.” Patent Owner relies on the mere fact that the specification describes an embodiment with a first driving mode that has a low frequency driving signal and is in a “double-ended” configuration, but this is not sufficient to define the term. The specification does not require that a low frequency driving signal must necessarily be used. In fact the specification, although not entirely clear, suggests that the driving signal may be from a high frequency ballast. Ex. 1001, 51:8–14. Thus, the fact that the patent here discloses a low frequency driving signal does not mean that all the claims are directed to such a driving signal. See E-Pass Tech., Inc. v. 3Com Corp., 343 F.3d 1364, 1368–69 (Fed. Cir. 2003). Indeed, dependent claim 15 recites “the first driving mode is performed when the external driving signal is a relatively low frequency or voltage signal,” while the independent claims were directed to a more general driving signal. The doctrine of claim differentiation suggests that the independent claims here should not include explicit limitations of a dependent claim. See Phillips, 415 F.3d at 1315 (“[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.”); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“We determine that Patent Owner has not shown sufficiently that the Chinese priority patent applications it relies on—the ’636 Chinese Application and the ’586 Application—provide written description support for the limitation of “a mode determination circuit, configured to generate a first determined result signal based on the external driving signal” and “a mode switching circuit, coupled to the filter circuit and the driving circuit, configured to determine whether to perform a first driving mode or a second driving mode based on the first determined result signal,” recited in claim 1. PO Resp. 31–34, 60–67. Specifically, Patent Owner relies on structures in the ’636 Chinese Application and the ’586 Application that are not sufficiently similar to structures in the ’826 patent i.e., DR Circuit 140, excluding diodes D5 and D6, as shown in Figs. 24i-j and 29b. Id. at 27 (citing Ex. 2001, 23–24, 29, and 33, Fig. 24i–j and 29b).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“For the reasons above, Patent Owner has not established that claim 1 of the ’826 patent is entitled to the effective filing date of the ’636 Chinese Application (i.e., June 10, 2015) or the ’586 Application (i.e., March 26, 2015). Because the remaining asserted claims are dependent claims, Patent Owner has also not established that claims 7 and 12–18 of the ’826 patent are entitled to the effective filing date of the ’636 Chinese Application or the ’586 Application. The application that led to the ’826 patent was filed on March 25, 2016. The ’826 patent claims it is a continuation-in-part of application No. 15/055,630 (“the ’630 Application”), filed on February 28, 2016. So, even if the challenged claims were entitled to the earlier February 28, 2016 filing date, Duan issued on July 1, 2015, and is, thus, prior art to the challenged claims of the ’826 patent under 35 U.S.C. § 102(a)(1).” slip op. at 18
Patent outcomesUS 9,807,826 unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites PhillipsPatents in suitUS 9,807,826 - Vudu, LLC v. Ideahub, Inc.All claims unpatentablePTAB · Apr 14, 2022 · IPR2020-01688 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 3, 4, 6, 8, 11, 13, 15, 18, 19, 21, and 23 are unpatentable over DIS 23009-1; the revised contingent motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 18–19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor 6 Patent Owner does not present objective evidence of nonobviousness. does it present its own definition. We adopt Petitioner’s definition as it is consistent with the specification of the ’830 patent and the cited references.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes that we construe “adaptation set,” “SegmentBase,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in its briefing. We need not construe any claim term to resolve any issues before us, and therefore, do not expressly define any claim term in our Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
“not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely because paragraph 253 uses the term “[h]ereinafter” before it discloses “two simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited 8 Ex. 2005 is Application No. 16/168,933 (“the ’933 application”). in limitations [38.6], [40.6], and [46.6]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicates a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. MTA 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 38, 40, and 46 do not find sufficient written description support in the ’644 application nor in the ’933 application, whether considered individually or collectively, and thus, these claims contain new matter.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“rationale for combining DIS 23009-1 with M20060, Petitioner persuasively contends that: A POSA would have been motivated to add the additional “metadata” described in M20060 to the MPDs described in the DIS 23001-6 or DIS 23009-1 references in order to enable the client to choose the most suitable version of media content among alternative versions of media content. For example, M20060 describes that the additional metadata (e.g., the extended accessibility element and the usedWith, equivalentTo, bitDepth, minBitDepth, and maxBitDepth attributes) helps “both users and clients to select appropriate representations” by, for example, “1) supporting accessibility, 2) describing relationships of representations, and 3) describing media’s bit depth.” Moreover, a POSA would have had an expectation of success in modifying the MPDs in DIS 23001-6 or DIS 23009-1 to include the additional metadata described below because it simply would have been a matter of adding additional metadata to the MPD XML schemas described in DIS 23001-6 or DIS 23009-1. Id. (citing Ex. 1094 ¶ 33; Ex. 1097 § 1, 1). Dr. Bestavros persuasively explains that “M20060 expressly references the DIS 23001-6 reference and proposes specific modifications to the MPEG DASH metadata included in the MPD XML schema.” Ex. 1094 ¶ 34 (citing Ex. 1097 § 1, 1 (introduction of M20060); Ex. 1097, 7 (references cited by M20060)).” slip op. at 41
Patent outcomesUS 10,270,830 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,270,830
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.