- Innoscience (Zhuhai) Technology Company, Ltd / Innoscience America, Inc. v. Efficient Power Conversion CorporationAll claims unpatentablePTAB · Mar 18, 2025 · IPR2023-01381 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–3 and 7–9 are unpatentable as obvious over Uemoto and Smith; the motion to amend is granted, and proposed substitute claims 13 and 14 are not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In order to determine whether an invention would have been obvious at the time the application was filed, we consider the level of ordinary skill in the pertinent art. Graham, 383 U.S. at 17. In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation omitted). Petitioner contends a person of ordinary skill in the art “would have possessed at least a four-year degree in electrical engineering, chemical engineering, physics, or material science, or a closely related field, and at least two years of experience in semiconductor device design or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies.” Pet. 5–6. Petitioner contends “[a]dditional education could substitute for professional experience and vice versa.” Id. at 6. Patent Owner contends that a person of ordinary skill in the art would have had “at least a four-year degree in electrical engineering, physics, material science, or a closely related field, and three years of professional work experience in the epitaxial growth, design, and fabrication of semiconductor electronic devices, including those of GaN.” PO Resp. 7 (citing Ex. 2009 ¶ 82). Upon review of the evidence of record and the parties’ arguments, we adopt Petitioner’s definition of the person of ordinary skill in the art as it is consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). We note, however, that the conclusions reached in this Decision would be the same under either proposed definition of the ordinarily skilled artisan. See Ex. 2009 ¶ 83 (Dr. Schubert testifying that his opinions would be the same under either proposed definition); Ex. 1033 ¶ 9 (Dr. Shealy testifying that the differences in proposed definitions of the ordinarily skilled artisan “would not change the outcome of the invalidity analysis in any material manner”); PO Resp. 7; Pet. Reply 1.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“compensated GaN layer above the barrier layer, and a gate contact above the compensated GaN layer.” Ex. 1001, 5:12–18. Petitioner contends the term “compensated” indicates that the step of compensating the GaN layer has already occurred, such that the term “compensated GaN layer” should be construed as a “‘[d]oped GaN layer formed with a step to passivate its impurities’ which is a ‘product-by-process’ limitation.”5 Pet. 12–14. And, because compensation with hydrogen was the “critical step” distinguishing the claims from the prior art, and because hydrogenation in as-grown III-nitride materials had been well known for over a decade by 2009, Petitioner contends “compensated” “cannot be interpreted as mere hydrogen presence in as-grown material, a well-known property of doped GaN.” Id. at 15. Patent Owner contends “compensated GaN material” should be construed as “a semiconductor GaN gate material in which one type of impurity (for example, donor) cancels the electrical effects of the other type of impurity (for example, acceptor).” PO Resp. 11 (citing Ex. 2009 ¶ 92) (emphasis added). Patent Owner contends this construction is consistent with the IEEE dictionary, which defines “compensated semiconductor” as 5 Given that product-by-process steps in a device claim are not entitled to patentable weight, Petitioner contends “the prior art only need show a material with passivated impurities to show unpatentability, not the step to achieve it.” Pet. 15–16. “[a] semiconductor in which one type of impurity or imperfection (for example, donor) partially cancels the electric effects of the other type of impurity or imperfection (for example, acceptor).” PO Resp. 14 (quoting Ex. 2004). Patent Owner contends its construction is also consistent with the written description of the ’294 patent, which explains that a compensated GaN material is part of the gate and includes a p-type impurity that imparts an electrical effect (i.e., conductivity), as well as a second impurity, e.g., hydrogen, that partially cancels the electrical effect of the p-type impurity, rendering the layer semi-insulating. Id. at 14–15 (citing Ex. 1001, 3:10–13, 3:43–45). On this record, we construe “compensated GaN layer” as “a GaN layer in which one type of impurity (for example, donor) partially cancels the electric effects of the other type of impurity (for example, acceptor).” This is consistent with the disclosures of the ’294 patent, the IEEE dictionary definition, and the construction ultimately adopted by the ITC. Ex. 2004, 3; Ex. 1049, 16–17 (ITC construing “compensated GaN layer” to mean “a GaN layer in which one type of impurity partially cancels the electrical effects of another type of impurity”); Ex. 1001, 3:43–45 (explaining that the compensated GaN layer of the ’294 patent is formed through the “passivation of a p-type impurity using hydrogen”). For the reasons set forth below, however, we decline to construe “compensated GaN layer” as a product-by-process claim term (as asserted by Petitioner), or to limit the compensated GaN layer to a gate material (as asserted by Patent Owner).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“There are two exceptions to the general rule that we apply the ordinary and customary meaning of a claim term: (1) when a patentee sets out a definition and acts as his own lexicographer, or (2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution. See Thorner, 669 F.3d at 1365. The standards for lexicography and disclaimer, however, are “exacting.” Id. at 1366. There is no argument that the patentees acted as their own lexicographer to redefine the term “compensated GaN layer.” With respect to disavowal, a “patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Thorner, 669 F.3d at 1366 (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)). As noted by Patent Owner, the title of the ’294 patent is, in part, “Compensated Gate MISFET” and much of the discussion of the ’294 patent is of a compensated GaN layer that is directly below the gate contact and above a barrier layer and operates in conjunction with the gate contact to control the on/off state of the transistor. PO Resp. 12–14. We are presented with insufficient argument or evidence to conclude, however, that these disclosures rise to the level of a disclaimer. For example, although the title of the ’294 patent is directed to a “Compensated Gate MISFET,” claim 1 is more broadly directed to “[a] column III Nitride transistor.” Ex. 1001, 5:12, code (54). Nor are we directed to an expression or statement of manifest exclusion in the ’294 patent that would serve to disclaim any “compensated GaN layer” that is not directly below the gate and/or that does not function in concert with the gate electrode to control the on/off state of the transistor. See Thorner, 669 F.3d at 1366. With respect to the stated goals of the invention, as noted by Patent Owner, one of the primary purposes of the compensated GaN layer of the ’294 patent is to reduce gate leakage and gate capacitance. Ex. 1001, 2:13– 19, 3:18–21 (“[U]sing a compensated semiconductor layer 38 leads to low gate leakage during device operation.”). We cannot use the goals of the invention, however, to rewrite the claims or insert terms that are not present. See Thorner, 669 F.3d at 1366. Moreover, the prior art of record indicates that a compensated GaN layer that is below the gate contact and above a barrier layer, but not part of the active gate structure, may also “decrease the leakage current between the gate and the drain.” Ex. 1006 ¶¶ 44 (“Even when a positive bias of 5 V or higher is applied to the gate electrode, no significant gate-leakage current is observed.”), 61. As such, evidence of record suggests that a person of ordinary skill in the art would have understood that one of the primary goals disclosed in the ’294 patent is achieved regardless of whether the compensated GaN layer is part of the gate, or simply in close vicinity to the gate. In view of the foregoing, we are not persuaded that the written description of the ’294 patent indicates that the “compensated GaN layer” must be part of the gate structure.” slip op. at 17
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“To be probative, Patent Owner must prove there is a nexus between the presented evidence and the merits of the claimed invention. See Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). A rebuttable presumption of nexus applies when the “patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco, 851 F.2d at 1392). “That is, presuming nexus is appropriate ‘when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.’” Id. (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). If the praise is not limited to the features of the claimed invention, the patent owner may still prove nexus “by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. at 1373–74 (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). Patent Owner contends that the compensated gate of the ’294 patent “was a breakthrough invention and resulted in the first commercially viable enhancement-mode GaN transistor.” PO Resp. 60 (citing Ex. 2009 ¶¶ 192– 193, 197; Ex. 2021). Patent Owner further contends that this achievement required the counter-intuitive use of a compensated gate material in the gate structure, and represented “a technological leap that laid the foundation for viable enhancement-mode GaN transistors.” Id. at 61–62. For this achievement, Patent Owner contends the inventor, Dr. Alex Lidow, received the 2015 SEMI Award. Id. at 60 (citing Ex. 2021). Upon review of Patent Owner’s evidence and the parties’ arguments, we find that Patent Owner’s objective indicia evidence is entitled to little, if any, weight. The evidence of praise relied upon by Patent Owner is not clearly linked to the claimed invention or any particular product having each of the claimed features of the ’294 patent. Ex. 2021. For example, the 2015 SEMI award was provided to Dr. Lidow “for commercialization of GaN power devices.” Id. An article explaining the award indicates that “high cost” previously “limited [the] commercial success” of GaN technologies, but Dr. Lidow was able to overcome these issues, “from resolving packaging limitations to establishing a low-cost supply chain,” “through persistence.” Id. This praise is not demonstrably linked to the claimed invention or any particular device, and does not mention the use of a compensated gate, or any other relevant feature recited in the claims. In view of the foregoing, we determine that Patent Owner’s objective evidence of non-obviousness is entitled to little, if any, weight.” slip op. at 20
Patent outcomesUS 8,350,294 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 8,350,294 - Apple Inc. v. RJ Technology, LLCInstitutedPTAB · Aug 20, 2024 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Institution
The Board instituted review of claims 1–18 on all asserted grounds and granted Apple’s motion to join IPR2023-01183.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . 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). Having considered the arguments and evidence presented by Petitioner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’641 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’641 patent on all the grounds of unpatentability set forth in the Petition. And, for the reasons set forth below, we grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In considering a motion for joinder, and whether such joinder is appropriate, the Board may consider “whether a new ground of unpatentability is raised in the second petition, how the cost and schedule of the first proceeding will be impacted if joinder is granted, and whether granting joinder will add to the complexity of briefing and/or discovery.” Patent Trial and Appeal Board Consolidated Trial Practice Guide November 20197 at 76 (citing Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).” slip op. at 9
- 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 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. at 11–12 (citing Ex. 1002 ¶¶ 50–51). Upon review of the prior art of record and the Petitioner’s arguments, we adopt Petitioner’s uncontested definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the ’641 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner provides constructions for the terms “A method for improving . . . characterized in that,” “ratio of positive electrode material to negative electrode material as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V” (claim 5), “as calculated by a specific capacity with a charge voltage limited to 4.2 V” (claim 1), and “at least 7500 of capacity” (claim 11). Pet. 8–11. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (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 8
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 7,749,641 - PTAB · May 9, 2024 · IPR2024-00158 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–4, 7–14, 16, 17, 21, and 22 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Pham and Wu, and granted joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Conclusion for Claim 1 Having reviewed the Petition and Preliminary Response, we determine that Petitioner has a reasonable likelihood of success in showing that the subject matter of claim 1 would have been obvious in view of Pham and Wu. E. Conclusion on the Merits of the Petition We have found that the Petition warrants institution based on Petitioner’s showings for claim 1. We have reviewed Patent Owner’s arguments about the other grounds, but they largely rely on the earlier unpersuasive arguments for claim 1. On whole, we determine that Petitioner has shown that the Petition warrants institution.” slip op. at 18
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“FURTHER ORDERED that the Motion for Joinder with IPR2023- 00703 is granted, and Palo Alto Networks, Inc. and Fortinet, Inc. are joined as a party in IPR2023-00703;” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on the related district court matters identified above. Opp. Mot. Join 4–12. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3. Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the copending district court litigation the specific ground asserted in the petition, or any other ground that was raised or could have been reasonably raised in an IPR (i.e., grounds that could have been raised under §§ 102 or 103 on the basis of prior art patent or printed publications)” (Reply Mot. Join 4–5), we do not discretionarily deny institution under Fintiv.” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“factor one necessarily outweighs the other General Plastic factors.”) (Director Review). Patent Owner focuses its analysis on factor 5 and proposed factor 8. Id. at 13–15. As to factor 5, which looks for an explanation of the time between petition filing, we determine that Petitioner sufficiently explained the time between Cisco’s petition and its own when it noted that it merely filed its petition and request for joinder when the statute permitted it. Reply Mot. Join 6 (citing 37 C.F.R. § 42.122(b)). In particular, the statute requires the earlier petition to be instituted before joining a party. 35 U.S.C. § 315(c) (requiring joinder to be to instituted proceedings). Thus, the time elapsed between filings is motivated by the statutory and regulatory procedures. See also 37 C.F.R. § 42.122(b) (requiring the joinder motion to be filed “no later than one month after the institution date of any inter partes review for which joinder is requested”). As to proposed factor 8, we agree with Petitioner that the present situation does not apply. Reply Mot. Join. 6–7; see also Shenzhen, IPR2018-00761, Paper 15, 18–19 (Saindon, concurring) (“There are legitimate reasons why a petition may be filed after [a decision on institution)].”). Proposed factor 8 analyzes situations where a second petitioner strategically waits to file its petition to see what happens to an earlier filed petition. Shenzhen, IPR2018-00898, Paper 9 at 7. If both of the petitioners were sued at or around the same time, but one waits until the other goes first, it can lead to an inference that the delay in filing a different petition was to gain an unfair advantage. Id. at 14 (looking with disfavor on a wait-and-see strategy to use the first petition as a “test case”). That is not the case here, where the second petition is a copycat petition. The Petition here cannot be said to have been filed second in order to glean knowledge from the first petition because it is the same petition. Thus, we do not see this Petition as being a strategic attempt to use Cisco’s petition as a “test case,” and do not consider factor 8 to weigh toward denial. Finally, reviewing factor 6, we do not find that granting Petitioner’s motion to join would cause an undue burden on the Board. Petitioner is serving as an “understudy” and thus, from our perspective, Petitioner’s presence does not change the existing Cisco IPR. Patent Owner argues that if Cisco were to settle then Petitioner would continue the proceeding. Opp. Mot. Join. 15. We do not see this as an undue burden in this situation. Petitioner’s Motion for Joinder serves to lessen our burden (as well as Patent Owner’s) compared to the scenario of it filing its own unique petition. We do not see the present case as similar to the Apple case, in which a copycat joinder petition was denied. See Apple, IPR2020-00854, Paper 9. That case, in our view, turned on the fact that the petitioner had already filed a petition that was denied on the merits. See id. at 4 (“In effect, it would be as if [the petitioner] had brought the second challenge to the patent in the first instance,” and labeling this a “serial attack.”). The situation here is not analogous to the Apple case because this is Petitioner’s only petition against the ’436 patent. The Petition is not a “serial attack” on the ’436 patent, it is merely Petitioner’s statutorily required vehicle to join as a party to an existing petition. Accordingly, we do not find factor 6 to weigh towards denial. Reviewing the General Plastic factors as a whole, including proposed factor 8, we find no factors to weigh toward denial and decline to exercise our discretion to deny institution.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,566,612 - PTAB · May 9, 2024 · IPR2024-00099 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–4, 7–14, 16, 17, 21, and 22 on all asserted grounds and granted joinder to IPR2023-00673.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). 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 “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 provided below, we determine that Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’436 patent is unpatentable, we institute an inter partes review. 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“compressed, or use security protocols, then the packets transit the packet engine. Pet. 41–42 (citing Ex. 1004 ¶¶ 49, 51, 53). Patent Owner argues that only the SA parameter association task in Pham may be offloaded. Prelim. Resp. 26–27 (citing Ex. 1004 ¶¶ 38, 51). Patent Owner’s argument here implies that the filtering function remains at the ingress processor and that some packets will be filtered and never reach the packet engine. See id. (citing, e.g., Ex. 1004 ¶ 38); Ex. 1004 ¶ 38 (“In the preferred embodiments of the present invention, the ingress processors 30, 34 are tasked with filtering and routing functions . . . .”). The statement Patent Owner relies on is not in the same section as the one Petitioner relies on. In other words, it does not appear on this record that we can limit the disclosure of paragraph 51 based on the statements in paragraph 38. On this record, we are not persuaded that only the SA parameter association task can be offloaded. As Pham notes, tasks can be moved between processors to perform load balancing. Ex. 1004 ¶ 54. We see no disclosure that prevents certain tasks from being load balanced or otherwise tasked to the security processor.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“find them persuasive on this record. Id. at 32–33. At a high level, Patent Owner’s arguments are that Petitioner’s modification to Pham would “increase[] complexity and resources.” Id. at 33. On this record, this argument is unpersuasive because even if the addition of Wu’s intrusion detection system was somehow more complex, the reason to combine it is to gain certain beneficial features. See, e.g., Pet. 30–31. Patent Owner’s arguments do not show that the alleged increase in complexity would somehow dissuade a person of ordinary skill in the art from including these beneficial features. See, e.g., Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (“[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (alteration in original); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”).” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on the related district court matters identified above. Opp. Mot. Join 4–12. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3. Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the copending district court litigation the specific ground asserted in the petition, or any other ground that was raised or could have been reasonably raised in an IPR (i.e., grounds that could have been raised under §§ 102 or 103 on the basis of prior art patent or printed publications)” (Reply Mot. Join 4–5), we do not discretionarily deny institution under Fintiv.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,685,436 - Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentablePTAB · Dec 5, 2022 · IPR2022-00362 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–3, 5–10, and 12–17 are unpatentable over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable because the evidence did not establish the sensors were fixed relative to each other.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“After institution, LG Electronics, Inc. and LG Electronics U.S.A., Inc. filed a petition and a motion for joinder to this proceeding. IPR2022-00092, Papers 1, 3. We granted the motion for joinder, and IPR2022-00092 was joined with this proceeding and dismissed. Paper 12, 11–12. In addition, Google LLC filed a petition and a motion for joinder to this proceeding. IPR2022-00362, Papers 2, 3. We granted the additional motion for joinder, and IPR2022-00362 was joined with this proceeding and dismissed. Paper 16, 5–6. Consequently, Apple Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., and Google LLC are joined in this proceeding.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“C. Claim Construction In inter partes reviews, the Board interprets claim language using the district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. capture command causes the digital camera to store an image to memory” in claim 1, “capturing an image to the digital camera in response to . . . the image capture command” in claim 8, and “correlate the gesture detected . . . with an image capture function and subsequently capture an image using the digital camera” in claim 13. Pet. 8. Specifically, Petitioner asserts that these phrases “should be construed broadly enough to encompass capturing/storing video or still images,” and provides reasons supporting its assertion. Id. at 8–10. Patent Owner does not contest Petitioner’s proposed claim constructions. PO Resp. 5. We agree with Petitioner’s supporting reasoning and accordingly adopt Petitioner’s proposed claim constructions.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24
Patent outcomesUS 8,878,949 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,878,949 - Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentablePTAB · Dec 5, 2022 · IPR2021-00921 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–3, 5–10, and 12–17 are unpatentable as obvious over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“We agree with Patent Owner that the Petition does not establish sufficiently that Numazaki’s unit 102 and camera 351 are fixed relative to one another. Without more, the mere fact that unit 102 and camera 351 are arranged in parallel and have overlapping fields of view does not establish that the structures are fixed. At the oral hearing, counsel for Petitioner indicated that Petitioner’s position was not an inherency argument but relied on Dr. Bederson’s analysis and interpretation of Numazaki’s fifth embodiment. Tr. 17:7–15. The Petition, however, does not reference any such analysis in connection with the subject matter of claims 4, 11, and 18. 27–28 of the Petition, which pertain to limitation 1[(a)]) discuss the overlapping fields of view but not assert that overlapping fields of view require the structures to be fixed with respect to one another. For the foregoing reasons, we determine that Petitioner has not shown by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 4, 11, or 18. 6. Dependent Claims 2, 3, 5–7, 9, 10, 12, and 14–17 Petitioner provides reasonable and detailed explanations, supported by the testimony of Dr. Bederson, indicating where in the references the limitations of claims 2, 3, 5–7, 9, 10, 12, and 14–17 are disclosed. Pet. 33– 43, 44, 47, 49. Further, Patent Owner offers no arguments particularly directed to these dependent claims. PO Resp. 22, 25, 28. We have considered the evidence and arguments of record and determine that Petitioner has demonstrated by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 2, 3, 5–7, 9, 10, 12, and 14–17 for the reasons discussed in the Petition and as supported by the testimony of Dr. Bederson.” slip op. at 34
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“After institution, LG Electronics, Inc. and LG Electronics U.S.A., Inc. filed a petition and a motion for joinder to this proceeding. IPR2022-00092, Papers 1, 3. We granted the motion for joinder, and IPR2022-00092 was joined with this proceeding and dismissed. Paper 12, 11–12. In addition, Google LLC filed a petition and a motion for joinder to this proceeding. IPR2022-00362, Papers 2, 3. We granted the additional motion for joinder, and IPR2022-00362 was joined with this proceeding and dismissed. Paper 16, 5–6. Consequently, Apple Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., and Google LLC are joined in this proceeding.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. slip op. at 8
Patent outcomesUS 8,878,949 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,878,949 - Peag LLC (D/B/A Jlab Audio) / Audio Partnership LLC et al. v. Varta Microbattery GmbHAll claims unpatentablePTAB · Jan 5, 2022 · IPR2020-01214 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1–8 are unpatentable as obvious over Kobayashi and skilled-artisan knowledge; the contingent motion to amend is granted for substitute claims 9–16.
RulingsFinal written decision- ExcludeNew argument disregardedNew argument consideredGranted in part
“regarding (1) the motivation to combine Kaun with Kobayashi based on dendrite formation (id. at 2–4), (2) additional motivations to modify Kaun with Kobayashi (id. at 4–6), (3) a reasonable expectation of success relating to Kaun’s central fastener (id. at 6–7), and (4) a reasonable expectation of success regarding Kobayashi’s modified electrode assembly (id. at 7–9). Because we do not reach Petitioner’s challenge based on the combination of Kaun and Kobayashi, as discussed below, we similarly need not reach Patent Owner’s Motion to Exclude Mr. Gardner’s opinions as they relate to the Kaun/Kobayashi combination. Accordingly, we dismiss Patent Owner’s Motion to Exclude these purportedly new opinions as moot. We address Patent Owner’s remaining concerns, relating to Mr. Gardner’s allegedly new testimony regarding Kobayashi, below.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Decision on Institution, we determined that a person of ordinary skill in the art at the time of the invention of the ’913 patent would have had at least a bachelor’s degree in mechanical engineering, or a similar field, such as materials engineering, chemical engineering, or physics with at least five years of experience in the field of battery design and manufacturing. A person with a master’s degree in one of the above fields could have less practical experience of approximately three years. A person with a PhD could have less practical experience, about two years. A person with less education but more relevant practical experience may also meet this standard. DI 20–21 (adopting Petitioner’s proposed definition). For purposes of this Final Written Decision, we maintain our determination from the Decision on Institution because neither party asserts that our decision depends on that determination and because the level of skill is consistent with the record. See PO Resp. 8 (stating that “[t]he claims are patentable regardless of which definition is used.”); see generally Pet. Reply; MTA Opp. 1–2 (“Regardless of which definition is used, however, Patent Owner’s Substitute Claims are still not patentable.”).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“In their briefing, the parties dispute the meaning of three claim terms or phrases—(1) “insulating means”, (2) “connected to one another by at least one flat separator,” and (3) “button cell.” See Pet. 17–21; PO Resp. 9–12. We discern no material difference between the parties’ respective constructions. Additionally, Patent Owner, during the hearing, expressed a general view that claim construction was unlikely to affect the parties’ positions.6 In particular, Patent Owner states that “[o]ur position is that really nothing turns on claim construction. You don’t have to engage in claim construction in this case.” Tr. 56:18–20, 56:21–24 (explaining that 6 The parties disagree as to what the newly added phrase “the cup casing include[ing] a first part proximal to the flat bottom area and a second part disposed in the overlapping area, the first part of the casing being disposed radially inward with respect to the second part” means. See generally MTA Opp.; MTA Reply; MTA Sur-reply. Neither party proposes an express construction for this phrase. Id. We address the interpretation of this phrase below and only to the extent necessary to resolve the dispute raised by the parties’ substantive arguments. limitations were submitted for construction “to gain some benefit in the co-pending litigations.”). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) in the context of an inter partes review). Because the outcome of our decision does not depend on either parties’ claim construction position, we determine that none of the identified claim terms require construction to resolve the issues in dispute in this proceeding.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“On this issue, we agree with Petitioner. Mr. Gardner explains that the skilled artisan “would further recognize that the output conductor can be comprised of various materials . . . . which could be metal or various materials . . . . [and] the shape of the output conductor is not particularly limited.” Ex. 1003 ¶ 322. Mr. Gardner further testifies that a person of ordinary skill in the art “would recognize, not only that metal foil conductors could be inserted into these grooves without difficulty, but also that the depth of the grooves can be altered in order to better accommodate metal foil output conductors.” Ex. 1041 ¶¶ 53, 70. We recognize Patent Owner’s argument that numerous factors must be considered and that conventional battery design does not necessarily translate to button cell designs (PO Resp 25–26), but as Mr. Gardner testifies, “this may be true in some cases, [but] the lessons and advantages of using techniques from conventional battery design and applying it to button cell would be obvious to a [person of ordinary skill in the art].” Ex. 1041 ¶ 103. He continues to explain that “[n]aturally, such transposition of techniques would require some modification and adjustments. . . . [and that] each of these adjustments, . . . would be well within the skill of a [person of ordinary skill in the art].” Id. ¶ 104 (describing, for example, “reducing the thickness of the conductor plates of Kobayashi”). We credit Mr. Gardner’s testimony. Moreover, Patent Owner does not allege that any proposed modification would be beyond the skill of a person of ordinary skill in the art or explain how any of the “constraints unique to . . . button cell design” (PO Resp. 25) are relevant to the proposed substitution of a metal foil for a metal terminal electrode plate. See generally id.; Sur-reply. Finally, Patent Owner argues that “[r]eliance upon the general knowledge of a [person of ordinary skill in the art] to provide a missing element in a combination of references is an exception rather than the rule” and “is particularly true where the proposed modification goes to the essence of the claims.” PO Resp. 26. Patent Owner states that “Petitioners have provided no more than ‘conclusory statements and unspecified expert testimony’ to supply a metal foil that is admittedly missing from Kobayashi, and is not shown in any other button cell art.” Id. at 27. We disagree. As the Federal Circuit has explained ‘common sense and common knowledge have their proper place in the obviousness inquiry,’ (a) invoking ‘common sense . . . to supply a limitation that was admittedly missing from the prior art’ should generally only be done when the [missing] limitation in question [is] unusually simple and the technology particularly straightforward;’ and (b) references to common sense ‘cannot be used as a wholesale substitute for reasoned analysis and evidentiary support’ Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1338 (Fed. Cir. 2020)(quoting Arendi S.A.R.L v. Apple Inc., 832 F.3d 1355, 1361–1362 (Fed. Cir. 2013)). Here, Petitioner proposes to substitute a metal foil for a metal terminal electrode plate to provide contact with the inner surface of the button cell housing. Ex. 1006 ¶ 34. As detailed above, Petitioner and Mr. Gardner direct our attention to the prior art of record which suggests use of foil within small battery cells to provide electrical contact was well-known and explains why the skilled artisan would have reduced the thickness of the terminal electrode plate to maximize the available space for active electrode components. Accordingly, unlike the expert in Arendi, Petitioner here provides more than “conclusory statements and unspecific expert testimony.” Arendi, 832 F.3d at 1366.” slip op. at 22
Patent outcomesUS 9,799,913 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,799,913 - Peag LLC (D/B/A Jlab Audio) / Audio Partnership LLC et al. v. Varta Microbattery GmbHAll claims unpatentablePTAB · Jan 5, 2022 · IPR2020-01212 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1–12 are unpatentable as obvious over Kobayashi and Kaun; the contingent motion to amend is granted for substitute claims 14–25.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“that “Kaun discloses that the cell is sealed ‘by a ‘U’ shaped insulator/gasket 32 . . . to seal the cell without pressure-loading,’” and therefore, venting via a pressure release seal is not required. Pet. 64 (citing Ex. 1005 ¶ 120). In an alternate embodiment, Kaun provides a means to relieve gas pressure “via the peripheral gasket which can reseal after an event.” Ex. 1005 ¶ 91. As Petitioner explains, “Kaun discloses that it is sealed, but upon the application of certain conditions, the internal pressure of gases within the cell can cause gases to vent. During such events, Kaun discloses ‘[t]he specified limit for internal pressure is handled by release via the peripheral gasket which can reseal after an event.’” Pet. Reply 13 (citing Ex. 1041 ¶¶ 37–39; Ex. 1005 ¶¶ 91, 101). Thus, while Kaun discloses venting to prevent pressure build up, Kaun “is otherwise sealed at all times during functioning.” Id. (citing Ex. 1041 ¶¶ 38–39; Ex. 1005 ¶ 101). Neither the ’835 patent nor Patent Owner’s own proposed construction of “closed without being beaded over” requires closure at all times. Furthermore, Mr. Gardner testifies that “[i]f a battery which, upon application of significant internal pressure, would be considered not ‘closed’ at other times, th[e]n almost no battery could be considered closed. [Because] [a]ny battery, when subjected to certain pressures, would leak or burst.” Ex. 1041 ¶ 39. We credit Mr. Gardner’s undisputed testimony in this regard. Mr. Gardner reasons that a person of ordinary skill in the art would understand that Kaun is closed.” Id. Dr. Peckerar similarly testifies that Kaun shows a housing that is closed without being beaded over. Ex. 1034, 131:4–11; 237:19–238:22 (describing Kaun as “closed during normal operation”). Accordingly, the record evidence supports Petitioner’s assertion that the combination of Kobayashi and Kaun suggests a button cell that is closed without being beaded over.” slip op. at 28
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We discern no material difference between the parties’ respective constructions. Additionally, Patent Owner, during the hearing, expressed a general view that claim construction was unlikely to affect the parties’ positions.8 In particular, Patent Owner states that “[o]ur position is that really nothing turns on claim construction. You don’t have to engage in 8 The parties disagree as to what the newly added phrase “the cup casing include[ing] a first part proximal to the flat bottom area and a second part disposed in the overlapping area, the first part of the casing being disposed radially inward with respect to the second part” means. See generally MTA Opp.; MTA Reply; MTA Sur-reply. Neither party proposes an express construction for this phrase. Id. We address the interpretation of this phrase below and only to the extent necessary to resolve the dispute raised by the parties’ substantive arguments. claim construction in this case.” Tr. 56:18–20, 56:20–24 (explaining that limitations were submitted for construction “to gain some benefit in the co-pending litigations.”). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) in the context of an inter partes review). Because the outcome of our decision does not depend on either parties’ claim construction position, we determine that none of the identified claim terms require construction to resolve the issues in dispute in this proceeding.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Thus, Patent Owner identifies three claimed features—i.e., the jelly- roll configuration, the insulating layer, and a housing closed without being beaded over—as responsible for the improved performance of the VARTA CoinPower® button cell batteries. Id. However, Patent Owner’s declarants testify further and explain that it is the combination of the three identified features, in addition to a flat foil conductor resting flat between the electrode top and housing and welding the foil conductor from outside the housing, that are responsible for improved performance. In particular, Mr. Miehlich, employed in VARTA’s marketing and sales department, testifies that the new cell design, which “provided unprecedented increases in performance, including in energy density, charge capacity, and cycling stability,” consisted of a “jelly roll electrode coil packed tightly into an uncrimped, button-like housing. The electrode coil was protected against short-circuiting by [an] insulating means, and was connected to the cell terminals by a flexible flat foil conductors resting flat between the electrode top and housing, and welded to the housing components from the outside. These features are all found in the claims of the VARTA patents here under review. Ex. 2045 ¶¶ 15–16. And, Dr. Lindner, one of the named inventors of the ’835 patent, testifies that the complex issues we faced were how to safely pack the required amount of electrode material into the very small “button”-sized housing and protect it against short circuits; how to connect the “jelly roll” electrode to the terminals in such a confined space without itself consuming much volume, and how to seal the top and bottom of the cell housing, all while accommodating the expansion and contraction of the electrode winding and the resulting mechanical forces. Ex. 2046 ¶ 33. According to Dr. Linder, the jelly-roll configuration with an insulator, flexible foil output conductors, sealing the cell without crimping, and welding the foil conductors from outside the housing each contributed to the improved battery performance. Id. ¶¶ 34–43. Thus, it is the combination of five elements—not the three claimed in the ’835 patent—that are purportedly responsible for the “vastly increased performance characteristics” of the CoinPower® products. Id. ¶ 43; see also id. ¶ 45 (noting that “various aspects of our invention are covered by 10 issued patents, including the four United States patents here under review” (emphasis added)); Tr. 84:24–85:10 (explaining that welding, for example, is “also part of the success”). Like the patent owner in Fox Factory, “[i]n light of the patentee’s own assertions about the significance of the unclaimed features, no reasonable fact finder could conclude that these features are insignificant.” Fox Factory, 944 F.3d 1375. As a result, the patent claims are not coextensive with the CoinPower® products because those products include “‘critical’ unclaimed feature[s] that [are] claimed by a different patent and materially impacts the product’s functionality.” Id.” slip op. at 40
Patent outcomesUS 9,153,835 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,153,835 - Saudi Arabian Oil Company v. SK Innovation Co., Ltd.All claims unpatentablePTAB · May 9, 2019 · IPR2018-00159 · APJ Monté T Squire · IPR · Final written decision
Claim 2 was held unpatentable as anticipated by Novomer 1; the contingent motion to amend was granted, substituting claim 5.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we granted Petitioner’s request and instituted an inter partes review for challenged claim 2. Paper 9 (“Institution Dec.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner agrees with Petitioner’s assessment regarding the level of ordinary skill in the art. Mot. Amend 7. We determine the level of ordinary skill proposed by Petitioner is consistent with the ’979 patent and the asserted prior art, and we adopt that level in construing and deciding the patentability of claim 2.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Institution Decision, we determined that the phrase “A poly(alkylene carbonate) represented by Formula 10” did not require construction at that stage. Institution Dec. 9; see also id. at 7 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms which are in controversy need be construed and only to the extent necessary to resolve the controversy)). Neither party has argued post-institution that this phrase of claim 2 needs be construed. See PO Resp. 2; Pet. Reply 1–3. We conclude that no further construction of this phrase is necessary.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In the Institution Decision, we agreed with Petitioner that the variable construction of the phrase “each independently” is the broadest reasonable interpretation in light of the specification, and construed the phrase to mean that “each variable R81, R82, R83, and R84 is independent from one instance to another throughout the polymer.” Institution Dec. 13–14. Based on that construction, we also determined in the Institution Decision that claim 2 encompasses the following genera: (1) “Genus A,” which includes a poly(ethylene glycol) chain transfer agent flanked by poly(ethylene carbonate) chains (Pet. 24); (2) “Genus B,” which includes a poly(propylene glycol) chain transfer agent flanked by poly(propylene carbonate) chains (id. at 25–26); (3) “Genus C,” which includes a poly(propylene glycol) chain transfer agent flanked by poly(ethylene carbonate) chains (id. at 26); and (4) “Genus D,” which includes a poly(ethylene glycol) chain transfer agent flanked by poly(propylene carbonate) chains (id. at 27). Institution Dec. 12–13. Neither party opposes adopting the variable construction of the phrase “each independently” and the determination that, under the variable construction, claim 2 encompasses Genus A, Genus B, Genus C, and Genus D. PO Resp. 2; Pet. Reply 1–3. We maintain the variable construction of the phrase “each independently” on the complete record.” slip op. at 11
Patent outcomesUS 9,023,979 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,023,979 - Skechers USA, Inc. v. Adidas AGNo claims unpatentablePTAB · Apr 25, 2018 · IPR2017-00127 · APJ Josiah C Cocks · IPR · Final written decision
Claims 1–30 were not shown unpatentable under §103 because the proposed prior-art modifications lacked adequate support and rational underpinning.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The basis of disagreement boils down to an evaluation of a skilled artisan’s experience. In that respect, Petitioner urges that the artisan generally has “substantial experience in the structural design of flexible elements and plastic polymers,” whereas Patent Owner characterizes the experience as directed to “biomechanical systems.” The ’079 patent is clearly directed to matters of shoe construction, and takes note, for instance, of the desirability of “cushioning and biomechanically supporting the foot.” Ex. 1001, 1:27–29. It is also apparent that an overarching focus of the ’079 patent is concern with “balance” and “support” of a “foot against misorientations such as pronation and supination (i.e. a tilting movement of the forefoot part to the medial and the lateral side, respectively).” Id. at 2:34–39. Such concerns, in our view, go beyond general experience in the design of flexible elements and plastic polymers. In that regard, we credit the testimony of Patent Owner’s declarant, Dr. Hinrichs, that a person of ordinary skill in the art would have experience with biomechanical systems, such as shoes. See Ex. 2001 ¶¶ 14–15. We have considered the respective opinions of the parties when it comes to the level of ordinary skill in the art. In reaching our decision as to the merits of this proceeding, for the reasons discussed above, we are persuaded by Patent Owner’s evidence as to the ordinary skill of an artisan.” slip op. at 12
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“substantial dissection and modification of Luthi ’202’s Figure 17. That dissection is premised on Mr. Ganaja’s assessment of what a person of ordinary skill in the art would take from the record at hand. Yet, in our view, neither Mr. Ganaja nor Petitioner explains adequately how the teachings of the prior art would have led one down the path that they advocate. For instance, it is decidedly unclear from the record that any “longitudinal groove” as advanced in Petitioner’s annotated illustrations of Luthi ’202’s Figure 17 reproduced herein exists in the configuration proposed by Petitioner. Although Petitioner and Mr. Ganaja postulate that it does exist, Luthi ’202’s teachings are less than determinative in that respect. We credit the testimony of Dr. Hinrichs and Dr. Luthi, that no such groove or “gap” exists as proposed by Petitioner. PO Resp. 21–25 (citing Ex. 2001 ¶¶ 32–35, 42–43; Ex. 2005 ¶¶ 6, 8–13).” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We observe that Patent Owner relies on content of the ’079 patent at column 11, lines 31–34 to support the meaning of “leaf spring[s]” and “leaf spring element[s]” that it advances. That portion of the ’079 patent describes embodiments of the invention appearing in Figures 19 to 25. Referencing particular leaf spring elements 22 and 23 of those embodiments, the ’079 patent states that “[t]ypically the restoring force exerts a force that has a component orthogonal to the sole plate (e.g., for cushioning) and a component parallel to the sole in the rearward direction (e.g., for acceleration).” Ex. 1001, 11:31–34. While that language mirrors the meaning of “leaf spring[s]” and “leaf spring element[s]” proposed by Patent Owner, we discern that the noted clause also begins with the term “[t]ypically.” That leaf spring elements may “typically” include a component parallel to the sole in the rearward direction does not lend itself to the conclusion that a “leaf spring” necessarily includes such a component. Rather, it conveys the opposite. In that respect, the plain understanding of the pertinent content of the ’079 patent is that, while, perhaps, not typical, the ’079 patent contemplates other component arrangements, logically including those in which the parallel component is not in the rearward direction.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“substantial dissection and modification of Luthi ’202’s Figure 17. That dissection is premised on Mr. Ganaja’s assessment of what a person of ordinary skill in the art would take from the record at hand. Yet, in our view, neither Mr. Ganaja nor Petitioner explains adequately how the teachings of the prior art would have led one down the path that they advocate. For instance, it is decidedly unclear from the record that any “longitudinal groove” as advanced in Petitioner’s annotated illustrations of Luthi ’202’s Figure 17 reproduced herein exists in the configuration proposed by Petitioner. Although Petitioner and Mr. Ganaja postulate that it does exist, Luthi ’202’s teachings are less than determinative in that respect. We credit the testimony of Dr. Hinrichs and Dr. Luthi, that no such groove or “gap” exists as proposed by Petitioner. PO Resp. 21–25 (citing Ex. 2001 ¶¶ 32–35, 42–43; Ex. 2005 ¶¶ 6, 8–13). Moreover, even if such groove does exist, neither Petitioner nor Mr. Ganaja adequately explains why the presence of such groove would create at least two leaf springs or leaf spring elements that are “integrally joined to form a single end not directly connected to the sole plate,” as required by all the claims involved in this proceeding. We agree with, and credit, the testimony of Dr. Hinrichs that “Luthi ’202 consistently discloses that the strut elements run the entire width of the shoe.” Ex. 2001 ¶ 32 (citing Ex. 1005, 3:47–50 (“the strut elements 22 extend substantially from the medial edge of the lateral edge of lower plate 26 . . .”)). In extending the entire width of the shoe, strut elements 22 (and 222) are more appropriately viewed as a single element (e.g., a spring element) rather than multiple spring elements that come together integrally. Petitioner and Mr. Ganaja also inadequately explain why combination of Luthi ’202’s teachings with those of either Luthi ’800 or Chan would result in the above-noted “central cavity” as a part of the directional element of Luthi ’202’s Figure 17. Although Luthi ’800 and Chan may show spaces or cavities in components of their shoes, there appear substantial differences in the designs of those shoes, and in particular the cushioning aspects, as compared with Luthi ’202’s Figure 17. We credit Dr. Hinrichs’s and Dr. Luthi’s testimony that the presence of such a cavity as shown in Luthi ’800 and Chan would prove detrimental to the medial-lateral stability of Luthi ’202’s shoe, and specifically the directional element of such a shoe that is depicted in Luthi ’202’s Figure 17. See Ex. 2001 ¶ 42; Ex. 2005 ¶¶ 11–13. To that end, we also find inadequate Petitioner’s general position that combining the teachings of Luthi ’202, Luthi ’800, and Chan would result simply in a “combination of familiar elements according to known methods that would yield predictable results,” and “well within the knowledge and skill of persons of ordinary skill in the art . . .” Pet. 35. We are not persuaded that any such combination would yield the “predictable results” advanced by Petitioner, or that “well within the knowledge and skill” of an artisan cited by Petitioner constitutes rational underpinning to support an obviousness conclusion. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (An assertion of unpatentability based on “obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)” slip op. at 22
Patent outcomesUS 9,339,079 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,339,079
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.