- PTAB · Mar 19, 2024 · IPR2023-01421 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 21 and 23–34 over all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’405 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 21 and 23–34) of the ’405 patent, based on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have “had an undergraduate degree in mechanical or electrical engineering or physics and two to three years of experience in LiDAR design.” Pet. 12. Petitioner further contends that “[l]ess work experience may be compensated by a higher level of education or vice versa.” Id. Patent Owner “adopts Petitioner’s definition of a [person of ordinary skill in the art] as having an undergraduate degree in mechanical or electrical engineering or physics and two to three years of experience in LiDAR design” for purposes of its Preliminary Response. Prelim. Resp. 4. Accordingly, for purposes of this Decision, we apply Petitioner’s definition of a person of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“constructions in a co-pending ITC case3 involving the ’405 patent; however, no “terms require construction to resolve the patentability dispute.” Pet. 12. Petitioner further argues that “Petitioner demonstrates how the prior art renders obvious the challenged claims under any proposed construction.” Id. Patent Owner argues that Petitioner “proposed the following construction for the term ‘aperture’” in the ITC case: “a small hole that defines a field of view for an individual pixel.” Prelim. Resp. 16 (citing Ex. 2001, 2). Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We find on the current record that Petitioner has shown sufficiently that there is a motivation to combine Hall, Borowski, and Spector. We note that Patent Owner does not dispute, at this time, that there is a motivation to combine Hall and Borowski. We have reviewed Petitioner’s contentions with respect to the combination of Hall and Borowski and find it sufficient. We focus our analysis on combination of Hall and Spector. To begin with, we disagree with Patent Owner’s contentions that a person of ordinary skill would not have looked to Spector because Hall already solved the problem of cross-talk. See Prelim. Resp. 32–36. Although Patent Owner is correct that Hall offers some techniques to address the problem of cross-talk, Hall is clear that those methods are not the exclusive methods or universally solve the problem of cross-talk. For the first technique identified by Patent Owner, Hall states that “[i]n some embodiments, the delay time is set to be greater than the time of flight of the measurement pulse sequence to and from an object located at a maximum range of the LIDAR device. In this manner, there is no cross-talk among any of the sixteen multi-pulse illumination systems.” Ex. 1008, 9:13–17 (emphasis added). And for the second technique, Hall states In some other embodiments, measurement pulse may be emitted from one pulsed illumination system before a measurement pulse emitted from another pulsed illumination system has had time to return to the LIDAR device. In some of these embodiments, care is taken to ensure that there is sufficient spatial separation between the areas of the sur-rounding environment [interrogated] by each beam to avoid cross-talk.” Id. at 9:18–25 (emphasis added). Thus, Hall makes clear that these options for some embodiments, and that the technique works only if certain conditions are met. Thus, on this record, we do not agree that a person of ordinary skill would have been discouraged from looking at other techniques to address the cross-talk problem. Here, Hall discloses several, non-exclusive methods, that may address the cross-talk problem in certain circumstances, but we disagree with Patent Owner that would discourage a person of ordinary skill from looking to other methods of reducing cross-talk to improve Hall’s device. See Allied Erecting and 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.”). Patent Owner’s argument that Hall teaches away from the combination with Spector because Spector is a single-light-source device with a gimbal is also not persuasive. See Prelim. Resp. 37–39. Here, Petitioner proposes using the apertures used in Spector’s LIDAR device in Hall’s device. See Pet. 64–65. Petitioner does not propose incorporating Spector’s light source or its gimbal. Compare Pet. 65 (showing annotated version of Figure 1 of Spector showing aperture), with Prelim. Resp. 38 (showing annotated version of Figure 1 of Spector highlighting light source.). We disagree with Patent Owner that a person of ordinary skill in the art would ignore everything taught in Spector, which also discloses a LIDAR system, because Hall might criticize one component of Spector. We note that Hall does not appear to criticize Spector’s apertures or the components Petitioner seeks to rely on. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Indeed, “in many cases[,] a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420. Thus, we disagree that Hall teaches away from incorporating Spector’s apertures, as Patent Owner contends. Finally, on this record, we do not agree with Patent Owner that Spector teaches away from the combination. See Prelim. Resp. 41–47. We note that much of Patent Owner’s argument is based on its assertions of how the modified device would operate. See id. at 43–44. However, these assertions are supported only by attorney argument, and entitled to little weight. See Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) (“Attorney argument is not evidence.”). Moreover, we note that the proposed combination seeks to improve Hall’s device, not Spector’s, so it is unclear why a person of ordinary skill would necessarily compare the performance of Spector’s device versus the combined device. But even if we ignore these problems, we note that “[a] reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009). Spector’s discussion of obtaining a “complete scan of the scene,” Ex. 1005, 5:12, does not necessarily “criticize, discredit, or otherwise discourage,” anything less than “a complete scan of the scene.” Indeed, “[i]t’s not necessary to show that a combination is ‘the best option, only that it be a suitable option.’” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021). At this stage, Patent Owner does not provide any evidence suggesting that Petitioner’s expert’s testimony is incorrect. See Ex. 1003 ¶¶ 185–195. Accordingly, we find that Petitioner has shown sufficiently that a person of ordinary skill in the art would have been motivated to combine Hall and Spector.4 We note that this is only a preliminary finding and Patent Owner is free to develop further its various motivation to combine arguments by providing additional reasoning and evidence, and by cross examining Petitioner’s expert about his testimony.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,175,405 - PTAB · Feb 20, 2024 · IPR2023-01210 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on claims 1, 15, 18, 41, and 52 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition. Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far. This is not a final decision as to patentability of the challenged claims. Any final decision will be based on the full trial record, including any response to the Petition timely filed by Patent Owner.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“7. Conclusion We have considered the circumstances and facts before us in view of the Fintiv factors. Because our analysis is fact-driven, no single factor is determinative of whether we exercise our discretion to deny institution under § 314(a). We take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11, 6. Evaluating all of the factors on this record, we determine that weight of factors 1, 2, and 4 outweigh the remaining factors. Thus, based on our assessment of the Fintiv factors, we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny inter partes review.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems, having at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 13 (citing Ex. 1012 ¶ 30). Patent Owner does not dispute Petitioner’s definition for the level of ordinary skill in the art. Prelim. Resp. 30. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“The first four of Petitioner’s proposed constructions are consistent with the clam constructions issued by the district court in the Google Action—the only difference being that although the district court found the corresponding structure for “positioning determining equipment” indefinite, Petitioner applies the corresponding structure proposed by Patent Owner in the Google Action. Ex. 1028, 8, 10–16, 20; Pet. 16. Petitioner cites Exhibit 1024 as supporting its contention that the parties have stipulated as to the order of the “collecting,” “modifying,” and “comparing” steps in claim 1, but this Exhibit does not appear to support the stipulation. See Ex. 1024. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of [the] Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.”7 Prelim. Resp. 31. For purposes of this Decision, we adopt the undisputed claim constructions that Petitioner proposes. These constructions are consistent 7 In other sections of the Preliminary Response, Patent Owner appears to argue in favor of a modified construction of “grid point.” Prelim. Resp. 18– 25; see also id. at 32 (“As further explained above in Section III, the district court concluded that ‘grid point,’ as used in the ’358 Patent, specifically refers to ‘a point associated with representative calibration data for an area’ that is generated based on analysis of calibration data.”). We disagree with these arguments for the reasons discussed below. with the claim language and the specification of the ’358 patent and are further supported by the reasoning provided by the district court’s claim construction order. See Ex. 1028. We do not discern a need to construe explicitly any other claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,400,358 - PTAB · Feb 20, 2024 · IPR2023-01209 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 1–3 and 11 on all asserted grounds, finding a reasonable likelihood that Google would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“is finality as that relates to Fintiv issues. In a similar instance in Volvo, where a district court’s § 101 determination was appealed to the Federal Circuit, the Director determined that the Board had the authority to institute an inter partes review and a Fintiv analysis should be performed. See Volvo, Paper 15 at 1–8. The Director has additionally distinguished a Fintiv analysis under similar circumstances to those here, where “the district court’s judgment of invalidity under 35 U.S.C. § 101, i.e., a statutory ground that could not have been raised before the Board, does not raise concerns of inefficient duplication of efforts or potentially inconsistent results between the Board and the district court.” AviaGames, Inc., Paper 14 at 3. Further, the Director determined that, “the challenged claims have not yet been cancelled and remain in force until the opportunity to appeal has been exhausted,” noting that “[b]y the time an appeal will have concluded, Petitioner will be barred under 35 U.S.C. § 315(b) from bringing a new challenge in an IPR petition.” Id. at 3–4. Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. We also agree with Petitioner that the timing of the progress of the appeal and any potential remand to the district court is uncertain. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any anticipation or obviousness issues, the present circumstances with a” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems, having at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 13–14 (citing Ex. 1012 ¶ 31). Patent Owner does not dispute Petitioner’s definition for the level of ordinary skill in the art. Prelim. Resp. 31. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“The first four of Petitioner’s proposed constructions are consistent with the clam constructions issued by the district court in the Google Action (see Ex. 1028, 8, 10, 20) or a position taken by Patent Owner in the Google Action (see Ex. 1016 ¶¶ 108–109). Petitioner cites Exhibit 1024 as supporting its contention that the parties have stipulated as to the order of the “collecting,” “modifying,” and “comparing” steps in claim 1, but this Exhibit does not appear to support the stipulation. See Ex. 1024. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of [the] Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.”8 Prelim. Resp. 31. For purposes of this Decision, we adopt the undisputed claim constructions that Petitioner proposes. These constructions are consistent with the claim language and the specification of the ’104 patent and are further supported by the reasoning provided by the district court’s claim construction order. See Ex. 1028. We do not discern a need to construe explicitly any other claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 7,561,104 - PTAB · Feb 20, 2024 · IPR2023-01213 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1, 2, 10–13, 21, and 22 based on the reasonable likelihood they are obvious over Crane and Spain.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1, 2, 10–13, 21 and 22 of the ’784 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“present circumstances. At present, there is no parallel litigation at all. The District Court proceeding (which ultimately related to only claim 11 of the ’784 patent) is complete. There is no appeal. Fintiv, Volvo, and Snap are all distinguishable on this basis. Fintiv, according to the language of that decision, only applies when there are parallel proceedings, and the parties do not cite any precedent to extend Fintiv’s reasoning to situations where there are not parallel proceedings. The Director’s June 21, 2022, Guidance Memo likewise relates to “parallel district court litigation.” USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Guidance Memo”) (June 21, 2022) (emphasis removed). As such, Fintiv’s six-factor analysis does not apply to the present situation. We further observe that the thrust of both Fintiv and the Guidance Memo place an emphasis on efficiency. Fintiv, IPR2020-00019, Paper 11 at 5 (emphasizing a balance of “efficiency, fairness, and patent quality”), 6 (emphasizing “efficiency and integrity of the system”). Here, there is no risk of inefficient duplication of efforts because there is no ongoing Article III court activity concerning the ’784 patent at all. While the Article III courts may have finally adjudicated claim 11, the courts have not ruled on the validity of challenged claims 1, 2, 10, 12, 13, 21, or 22.6 Because there are 6 Patent Owner suggests that the District Court ruling as to claim 11 might also have implications as to the other challenged claims because these claims include the claim terms that the District Court focused on when addressing claim 11. Prelim. Resp. 5, n. 2. This, however, is not necessarily the case. Adjudicators must address indefiniteness on a claim-by-claim basis. Cox Communications, Inc. v. Spring Comm. Co. LP, 838 F.3d 1224, 1232 (Fed. Cir. 2016) (“[T]he dispositive question is whether the ‘claims,’ not particular claim terms, ‘read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.’”) (quoting Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014)). Here, for the sake of efficiency, we decline to conduct a § 112 validity analysis of claims the District Court did not rule upon where the analysis would be only for the purpose of determining whether or not it is efficient to move forward with a § 103 validity analysis. no concerns of inefficiency here, there is no basis for discretionary denial based on Fintiv. 4. Alternative consideration of the Fintiv Factors In the alternative, even if we were to consider the Fintiv factors, the factors would weigh against discretionary denial here. The first Fintiv factor, possibility of a stay of litigation, is irrelevant because there is no ongoing litigation. The second factor, proximity of trial date, is irrelevant because there is no ongoing litigation. The third factor, investment in the parallel proceeding, is irrelevant because there is no parallel proceeding. To the extent we consider the prior proceeding, this factor is neutral because the prior proceeding did not address the obviousness issues raised by the Petition. The fourth Fintiv factor, overlap of issues, weighs against discretionary denial. There is no ongoing proceeding with any overlap of issues, and the prior proceeding did not address any of the obviousness issues the Petition raises and did not address most of the claims the Petition challenges. The fifth Fintiv factor, identity of parties, is neutral because there is no ongoing proceeding. If we consider the prior proceeding, this factor would weakly favor discretionary denial. The sixth Fintiv factor, other circumstances including the merits, favors institution because, as we explain below, Petitioner presents strong evidence on the merits that the challenged claims are obvious. Absent a compelling reason to the contrary, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11 at 6. We have considered the circumstances and facts before us in view of the Fintiv factors and, to the extent the Fintiv factors apply at all here, we determine that the circumstances presented here do not support exercising our discretion under § 314(a) to deny institution of this inter partes review.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that one of ordinary skill in the art: would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems, having at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 14 (citing Ex. 1008 ¶ 40). Patent Owner does not dispute Petitioner’s definition for the level of ordinary skill in the art. Prelim. Resp. 22. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“As to other claim terms, Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim based on the ordinary and customary meaning of the claim terms. Thus, we determine that no other claim terms require express construction for purposes of this Decision. See, e.g., Nidec Motor Corp. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham · NautilusPatents in suitUS 9,097,784 - PTAB · Feb 20, 2024 · IPR2023-01212 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1, 7, 9, 32, 38, and 40, finding a reasonable likelihood of prevailing on anticipation by Spain and obviousness over Spain as evidenced by Agiwal.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. We also agree with Petitioner that the timing of the progress of the appeal and any potential remand to the district court is uncertain. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.6 Thus, we determine that this factor weighs against the exercise of discretionary denial.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“As Petitioner asserts, in the prosecution history, Dressler is only referred to for the rejection of dependent claims for limitations not found in the challenged claims. Ex. 1002, 56; see also Pet. 45–46; PO Resp. 9–10. Further, Petitioner points out that the Examiner’s reliance on Dressler was for a disclosure that is common to Spain, but is not relied upon in the Petition. Pet. 45–46, Ex. 1006 ¶ 53. As such, there is no evidence in the prosecution history that the Examiner’s reliance on Dressler is related to any issue in the challenges here. Moreover, while the Examiner’s reference to Dressler infers that the Examiner performed some evaluation of that reference, Spain contains additional disclosures that are not in Dressler. See Ex. 1006 ¶¶ 64–65, 67, 82–84, 70–72, 80, Fig. 15; Ex. 1016. Accordingly, any evaluation of Dressler does not reflect a full evaluation of Spain. There is no support in the prosecution history of an evaluation of Spain, except for the Examiner’s initialization of an Information Disclosure Statement, which is not indicative of a substantive evaluation. Similarly, the references to the prior art disclosures alleged by Patent Owner to be the same as Spain were only initialed on Information Disclosure Statements. See Prelim. Resp. 12. Accordingly, the record does not provide support that Spain was substantively evaluated by the Examiner during prosecution.” slip op. at 19
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“viii. Conclusion Accordingly, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is anticipated by Spain. b. Claim 32 Claim 32 is a system claim that recites similar limitations to the limitations of method claim 1. Petitioner relies on similar evidence and argument to that presented for claim 1 in support of Spain’s disclosures of the claim 32 limitations. Pet. 35–38. Patent Owner presents no additional arguments specifically directed to claim 32 that we have not already addressed. See generally Prelim. Resp. We have reviewed the Petition’s showing for this claim and find that sufficient evidence has been provided in support of the anticipation challenge at this stage of the proceeding. Accordingly, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 32 is anticipated by Spain.” slip op. at 34
- Prior constructionPrior construction adoptedDecided for petitioner
“The district court issued claim constructions in the Google action for all disputed terms of the ’753 patent claims at issue. Ex. 1028. Petitioner uses the district court’s construction for the terms: “calibration data,” “calibration points,” “grid point,” “network measurement report,” and the order of the “providing,” “generating,” “evaluating,” and “selecting” steps of claim 1. Pet. 19–21 (citing Ex. 1008 ¶ 54; Ex. 1024, 1, 2; Ex. 1028, 8, 18, 20). Petitioner proposes that any other claim terms not addressed by the district court should be interpreted consistent with the Phillips standard. Id. at 19. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of [the] Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.” Prelim. Resp. 39. For the purposes of this Decision, we will use the district court’s claim constructions, which have been agreed to by the parties at this juncture. We determine that we need not expressly construe any claim terms at this juncture. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,406,753 - Google LLC v. Geoscope Technologies Pte. Ltd.Institution deniedPTAB · Feb 20, 2024 · IPR2023-01214 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over Almgren or Haartsen, alone or with other prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, the Petitioner Preliminary Reply, the Patent Owner Preliminary Sur-reply, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’264 patent. Accordingly, for the reasons that follow, we decline to institute inter partes review of claims 1, 3, 6, 11, 13, 15, 20, 21, 23, and 25–27 of the ’264 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining 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 8 Petitioner asserts that Haartsen is prior art under § 102(b). Pet. 6. 9 US 5,491,837, filed March 7, 1994, issued February 13, 1996 (Ex. 1005, “Haartsen”). workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner, without the qualifier “at least” because its use introduces vagueness, for the purposes of this Decision because it is consistent with the ’264 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Petitioner, however, argues that “[t]he phrase ‘without disabling any other communication channel’ encompasses not dedicating a specific frequency channel for measuring path loss.” Pet. 25; see also Ex. 1008 ¶ 124. That is, Petitioner’s position appears to be that the recited limitation could be sufficiently disclosed or met by prior art if it instead meets the different requirement of “not dedicating a specific frequency channel for measuring path loss.” We do not agree. For support, Petitioner cites portions of the ’264 patent Specification that discuss not dedicating specific frequency channels for measuring path loss. Pet. 25 (citing Ex. 1001, 1:58– 61, 3:39–45, 3:48–50, 4:60–63). Petitioner does not explain, however, why the term “without disabling any other communication channel” should be taught by this disclosure of this alternative requirement or, in other words, Petitioner does not explain why that term should encompass “not dedicating a specific frequency channel for measuring path loss.” Mr. William does not provide any additional explanation and merely repeats the statements of the Petition in a conclusory manner. Ex. 1008 ¶ 124. As discussed above, and as the parties agreed, we will proceed with the assessment of the merits using the plain meaning of the claim term “without disabling any other communication channel.”” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“claim limitations at issue, and, specifically, the burden extends to negative limitations such as “without disabling any other communication.” See IBM v. Iancu, 759 F. App’x 1002, 1011 (Fed. Cir. 2019) (explaining that a reference’s silence was not by itself sufficient to establish that the reference teaches a process involving only one user authentication action). Petitioner does not appear to dispute its required showing, that is, Petitioner does not argue that the absence of an element in the prior art is sufficient per se to satisfy a negative limitation. Rather, the Petition affirmatively asserts that Almgren discloses or teaches the limitation “without disabling any other communication.” Pet. 25–26. Petitioner, however, argues that “[t]he phrase ‘without disabling any other communication channel’ encompasses not dedicating a specific frequency channel for measuring path loss.” Pet. 25; see also Ex. 1008 ¶ 124. That is, Petitioner’s position appears to be that the recited limitation could be sufficiently disclosed or met by prior art if it instead meets the different requirement of “not dedicating a specific frequency channel for measuring path loss.” We do not agree. For support, Petitioner cites portions of the ’264 patent Specification that discuss not dedicating specific frequency channels for measuring path loss. Pet. 25 (citing Ex. 1001, 1:58– 61, 3:39–45, 3:48–50, 4:60–63). Petitioner does not explain, however, why the term “without disabling any other communication channel” should be taught by this disclosure of this alternative requirement or, in other words, Petitioner does not explain why that term should encompass “not dedicating a specific frequency channel for measuring path loss.” Mr. William does not provide any additional explanation and merely repeats the statements of the Petition in a conclusory manner. Ex. 1008 ¶ 124. As discussed above, and as the parties agreed, we will proceed with the assessment of the merits using the plain meaning of the claim term “without disabling any other communication channel.”” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,320,264 - PTAB · Feb 20, 2024 · IPR2023-01211 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1, 4, 25, 26, and 35, finding a reasonable likelihood that Google would prevail on at least one asserted anticipation or obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1, 4, 25, 26, and 35 of the ’494 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“potential remand to the district court is uncertain. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.10 Thus, we determine that this factor weighs against the exercise of discretionary denial.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“in the pertinent art at the critical time. Graham, 383 U.S. at 17. The resolution of this question is important because it allows us to “maintain[] objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu–Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). 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). Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . while a higher level of skill favors the reverse.”). Petitioner contends that a person of ordinary skill in the art (POSITA) would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems, having at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 13 (citing Ex. 1012 ¶ 30). Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 30–31. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’494 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The first four of Petitioner’s proposed constructions are consistent with the clam constructions issued by the district court in the Google Action (see Ex. 1028, 8, 10, 20) or a position taken by Patent Owner in the Google Action (see Ex. 1016 ¶¶ 108–109). Petitioner cites Exhibit 1024 as supporting its contention that the parties have stipulated as to the order of the “collecting,” “modifying,” and “comparing” steps in claim 1, but this Exhibit does not appear to support the stipulation. See Ex. 1024. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of [the] Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.”6 Prelim. Resp. 31. For purposes of this Decision, we adopt the undisputed claim constructions that Petitioner proposes. These constructions are consistent with the claim language and the specification of the ’104 patent and are further supported by the reasoning provided by the district court’s claim construction order. See Ex. 1028. We do not discern a need to construe explicitly any other claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The 6 In other sections of the Preliminary Response, Patent Owner appears to argue in favor of a modified construction of “grid point.” Prelim. Resp. 17– 25; see also id. at 32 (“As further explained above in Section III, the district court concluded that ‘grid point,’ as used in the ’104 Patent, specifically refers to ‘a point associated with representative calibration data for an area’ that is generated based on analysis of calibration data.”) (Patent Owner’s emphasis). We disagree with these arguments for the reasons discussed below. Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,786,494 - Shenzhen Apaltek Co., Ltd. v. Asetek Danmark A/SAll claims unpatentablePTAB · Jan 24, 2024 · IPR2023-00667 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1, 3–19 are unpatentable as obvious over Batchelder and Shin; claims 12 and 14–16 are also obvious over Batchelder, Shin, and Nakano.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Karamanis, Petitioner contends that an ordinarily skilled artisan for the ’362 patent would have been knowledgeable regarding liquid cooling systems for computer systems, would have earned at least a bachelor’s degree, such as an B.S. (bachelor of science), or equivalent thereof, in electrical or mechanical engineering or a closely-related field, or would have possessed at least two or three years of experience in liquid cooling systems for computer systems or in similar systems. Pet. 5–6 (citing Ex. 1003 ¶¶ 14–19). Petitioner also contends that a “person with less education but more relevant practical experience, depending on the nature of that experience and degree of exposure to liquid cooling systems for computer systems, could also qualify as a POSITA in the field of the ’362 patent.” Id. at 6. Patent Owner did not file a Patent Owner Response, so it does not dispute this level of skill in the art. We adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’362 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner identifies “reservoir,” “chamber,” “impeller,” and “radiator” as needing construction. Pet. 6–8. Petitioner submits that the other terms do not require construction. Pet. 8. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“primary objective of this invention is to provide a low cost high reliability heat exchange apparatus that incorporates a composite substrate containing flow channels and a heat transfer fluid, providing low thermal resistance cooling to high density sources.” Pet. 25 (citing Ex. 1006, 2:40–45). And Shin similarly discloses or teaches that “[t]he heat generating element 1, such as an LSI chip, is installed on a wiring board 2, which is a motherboard” in a computer system. Id. (citing Ex. 1007 ¶ 24). Petitioner identifies Batchelder’s heat sink assembly as meeting limitation [1a]. Id. at 25–31 (citing Ex. 1006, 1:65, 3:49–51, 5:26–28, 7:23–26, 7:46–55, 8:4–12, 8:14–67, Figs. 2, 7; Ex. 1003 ¶¶ 40, 41). Petitioner argues that the combination of Batchelder and Shin accounts for limitations [1b], [1h], and [1i]. Pet. 31–42 (citing Ex. 1007 ¶¶ 23, 25–27, Figs. 1, 3; Ex. 1003 ¶¶ 43– 46; Ex. 1006, Fig. 2), 57. Petitioner contends that a person of ordinary skill in the art “would have been motivated to combine Shin with Batchelder to further increase heat management efficiency by using an external radiator that cools the heated cooling liquid after ‘snaking through the inside of the heat exchanger as shown by 28 and 29,’” because this “technique allows heat to more efficiently escape the system.” Id. at 36 (citing Ex. 1007 ¶ 25; Ex. 1003 ¶¶ 47–52). Petitioner argues that Batchelder accounts for limitations [1c], [1d], [1e], [1f], and [1g]. See Pet. 43–56 (citing Ex. 1006, 3:20–23, 4:53–55, 5:11–13, 5:26–32, 6:5–7, 6:5–18, 8:14–27, 8:36–47, 9:22–10:53, Figs. 2, 7, 8, 9, 10; Ex. 1003 ¶¶ 59–73). Patent Owner did not file a Patent Owner Response, so it does not offer arguments on this ground. Accordingly, Patent Owner has waived any argument regarding these contentions. See Paper 8, 9 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”). We have reviewed Petitioner’s contentions regarding claim 1, which Patent Owner does not contest, and adopt them as our own. Based on those contentions and evidence, we determine that Petitioner has shown by a preponderance of the evidence that claim 1 is unpatentable as obvious over Batchelder and Shin. We reach the same conclusion regarding Petitioner’s assertions for claims 3–11, 13, and 16, which depend from claim 1. See Pet. 57–71. Independent claim 17 is a method claim that recites similar limitations as independent claim 1. See id. at 71–73. Claims 18 and 19 depend from claim 17, and recite limitations similar to claims 5 and 8. We have reviewed Petitioner’s unopposed contentions regarding claims 17–19, and adopt them as our own. Thus, we also conclude that Petitioner has shown by a preponderance of the evidence that claims 17–19 are unpatentable as obvious over Batchelder and Shin.” slip op. at 17
Patent outcomesUS 8,240,362 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,240,362 - Shenzhen Apaltek Co., Ltd. v. Asetek Danmark A/SAll claims unpatentablePTAB · Jan 24, 2024 · IPR2022-01316 · APJ Kevin W Cherry · IPR · Final written decision
The Board held claims 1, 3–19 unpatentable as obvious over Batchelder and Shin, with claims 12 and 14–16 also relying on Nakano.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Karamanis, Petitioner contends that an ordinarily skilled artisan for the ’362 patent would have been knowledgeable regarding liquid cooling systems for computer systems, would have earned at least a bachelor’s degree, such as an B.S. (bachelor of science), or equivalent thereof, in electrical or mechanical engineering or a closely-related field, or would have possessed at least two or three years of experience in liquid cooling systems for computer systems or in similar systems. Pet. 5–6 (citing Ex. 1003 ¶¶ 14–19). Petitioner also contends that a “person with less education but more relevant practical experience, depending on the nature of that experience and degree of exposure to liquid cooling systems for computer systems, could also qualify as a POSITA in the field of the ’362 patent.” Id. at 6. Patent Owner did not file a Patent Owner Response, so it does not dispute this level of skill in the art. We adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’362 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner identifies “reservoir,” “chamber,” “impeller,” and “radiator” as needing construction. Pet. 6–8. Petitioner submits that the other terms do not require construction. Pet. 8. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“unpatentable under 35 U.S.C. § 103 as obvious over Batchelder, Shin, Nakano. Pet. 75–86. Patent Owner did not file a Patent Owner Response, so it does not offer arguments on this ground. Accordingly, Patent Owner has waived any argument directed to those contentions. See Paper 8, 9 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”). We reviewed Petitioner’s evidence and argument and adopt it as our own. For the reasons provided therein, Petitioner demonstrates that the combination of Batchelder, Shin, and Nakano accounts for the limitations of claims 12 and 14–16, that a person of ordinary skill in the art would have been motivated to combine the references in the manner proposed, and would have had a reasonable expectation of success in doing so. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that claims 12 and 14–16 would have been obvious over the combination of Batchelder, Shin, and Nakano. See Pet. 75–86.” slip op. at 18
- BurdenFwd all claims unpatentableUnpatentable
“IV. CONCLUSION5 We conclude Petitioner has shown the challenged claims are unpatentable. In summary:” slip op. at 19
Patent outcomesUS 8,240,362 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,240,362 - Shenzhen Apaltek Co., Ltd. v. Asetek Danmark A/SAll claims unpatentablePTAB · Jan 22, 2024 · IPR2022-01318 · APJ Jason W Melvin · IPR · Final written decision
Claims 1, 2, 6 are unpatentable as obvious over Duan; claims 5, 8 are unpatentable as obvious over Duan and Wu.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill would have been knowledgeable regarding liquid cooling systems for computer systems, would have had a Bachelor of Science (B.S.) in electrical or mechanical engineering, or similar advanced post-graduate education in this area, or would have possessed at least 2–3 years of experience in liquid cooling systems for computer systems or similar systems. A POSITA would be knowledgeable of the concepts, components, and their functions described as “prior art” in the ’355 patent such as, e.g., pumps, radiators, fans, reservoirs, and other techniques of heat dissipation and liquid cooling. (Ex- 1001,1:11–47.) In addition, a POSITA would be knowledgeable about electric motors and their components (e.g., electromagnetic coils, rotors, stators, AC/DC motors, etc.) Pet. 6–7 (citing Ex. 1003 ¶¶ 13–18). Patent Owner has not proposed a level of ordinary skill in the art. We adopt Petitioner’s proposed level of ordinary skill as it appears to be consistent with the level of skill reflected by the specification and in the asserted prior art references.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on our analysis of the proceeding, we conclude that no claim term requires express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“disclosures. Pet. 17–45. Petitioner maps the claimed reservoir to Duan’s “structure formed by an accommodation chamber 21, lower cover 225, cap 3, and cooling plate 1.” Id. at 18. Petitioner maps the claimed double-sided chassis to Duan’s accommodation chamber 21 and the claimed impeller cover to Duan’s lower cover 225. Id. at 22–27. Petitioner maps the claimed thermal-exchange chamber to Duan’s cap 3 and cooling plate 1, with heat-absorbing face 11 and cooling plate 1 corresponding to the claimed heat exchanging interface. Id. at 27–36. Petitioner maps the claimed radiator to Duan’s cooling stage 53. Id. at 36–39. Petitioner asserts that Duan’s inlet is “below a center of the impeller” because it is along the axis about which the impeller rotates. Id. at 39–41. Petitioner asserts that Duan’s lower cover 225 defines an outlet tangential to the impeller’s circumference. Id. at 41–45. In summary, Petitioner asserts that Duan, without modification, discloses all of claim 1’s limitations. Patent Owner does not challenge Petitioner’s contentions, as it has filed no Patent Owner Response. We have reviewed Petitioner’s contentions and conclude that they show by a preponderance of the evidence that claim 1’s subject matter would have been obvious over Duan. See Pet. 17– 45. We adopt Petition’s unchallenged contentions as our analysis.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“As to claim 5, Petitioner asserts that it would have been obvious to use Wu’s approach to securing chassis and heat-exchanging interface to the heat generating component, because Duan discusses the need to assemble its components but does not provide detailed instruction. Id. Thus, the modification would provide the benefit of securing Duan’s cooling plate module and cooling plate to the CPU. Id. at 72. For claim 8, Petitioner asserts that it would have been obvious to use Wu’s approach to blowing air through the radiator using a fan driven by a motor separate from the pump’s motor. Id. at 72–73. Petitioner reasons that doing so would improve Duan’s performance by increasing heat dissipation. Id. at 74. We agree that Petitioner’s contentions support the modification with rational underpinning.” slip op. at 12
Patent outcomesUS 10,078,355 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 10,078,355
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.