- Epic Games, Inc. v. Ingenioshare, LLCNo claims unpatentablePTAB · May 19, 2023 · IPR2022-00294 · APJ Patrick M Boucher · IPR · Final written decision
Claims 7–12, 22–24, and 33–67 were not shown unpatentable because the petitioner did not establish that Diacakis disclosed the construed server-side network-based portal.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedDecided for patent owner
“entitled to no weight because it “repeats the [Patent Owner Response] nearly verbatim,” “appears to contain opinions he did not develop,” and “is contradicted by Dr. Rouskas’s own deposition testimony.” Reply 3–4. Although Petitioner makes multiple allegations of deficiencies in Dr. Rouskas’s direct testimony, none of these allegations is sufficiently developed with specific examples. First, we disagree that mere verbatim duplication between an expert declaration and an attorney brief defines “a classic example of a cursory expert declaration the Board disregards.” See id. at 3. The Board’s concern is rather whether expert testimony “cite[s] to any additional supporting evidence or provide[s] any technical reasoning to support [its] statement[s].” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential); see also id. at 16 (“Dr. Jones offers only a verbatim restatement of the assertion being supported, without any supporting evidence or technical reasoning” (emphasis added)). As Patent Owner asserts, “Petitioner fail[s] to provide a single example of how Dr. Rouskas’s testimony is ‘cursory or unsupported.’” Sur-reply 1.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation. See Ex. 1003 ¶¶ 92–97. Patent Owner does not propose any different expression of the level of ordinary skill, and Dr. Rouskas testifies that he has “employed Dr. Almeroth’s definition” in his Declaration. Ex. 2005 ¶ 21. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. 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 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“5. Summary As we note above, we find certain of Patent Owner’s arguments adequately rebutted by Petitioner, such that we do not consider them in our assessment. Nevertheless, Patent Owner retains compelling arguments for its proposed construction, supported by expert testimonial evidence, including dictionary definitions and the ’038 patent specification’s reference to a “portal or a gateway.” We find such references more compellingly refer to “portal” and “gateway” as synonyms rather than alternatives. In addition, Patent Owner provides convincing evidence and argument that rebuts the concern raised by the Board at institution whether Patent Owner’s proposed construction would exclude preferred embodiments. Petitioner, who bears the overall burden, addresses that concern only with attorney argument, which we accord less weight. In light of these considerations, we construe “network-based portal” as Patent Owner advocates, namely as residing on a server side of a network.” slip op. at 27
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Both the preamble and the body of independent claim 7 recite “a network-based portal.” Ex. 1001, 21:53, 21:58, 22:2, 22:14–15, 22:19, 22:20–21, 22:27, 22:33, 22:38–39; see PO Resp. 21 (Patent Owner noting repeated recitation of “network-based portal” in independent claim 7). Contending that a “network-based portal” is “a web page or interface that connects clients to a network,” Petitioner identifies client-resident user-interface 112 of Diacakis as meeting the claim’s requirement for such a feature. Pet. 34–35. As explained above, after evaluating the record evidence developed during the trial, we do not adopt such a broad construction of “network-based portal.” Supra § II.D. Instead, we construe “network-based portal” as Patent Owner advocates, namely as residing on a server side of a network. Id. Because Petitioner does not show that Diacakis discloses a “network- based portal” as so construed, we conclude that Petitioner does not show, by a preponderance of the evidence, that independent claim 7 is unpatentable under 35 U.S.C. § 103(a) over Diacakis. The same deficiency exists with respect to Petitioner’s analysis of independent claims 38 and 46. See Pet. 55–56 (Petitioner’s analysis of claim 38 relying substantially on analysis of claim 7), 57–58 (Petitioner’s analysis of claim 46 relying substantially on analysis of claim 7). Because the deficiency in Petitioner’s showing also applies to the dependent claims, which inherit the “network-based portal” limitations, we conclude that Petitioner does not show that any of claims 7, 10–12, 22–24, 33–36, 38–41, 46, 49, 51–53, 55, 57, 58, or 64–66 is unpatentable under 35 U.S.C. § 103(a) over Diacakis; that any of claims 8, 9, 43, 44, 47, 48, 50, or 54 is unpatentable under 35 U.S.C. § 103(a) over Diacakis and Loveland; that any of claims 37, 42, 56, 59–63, or 67 is unpatentable under 35 U.S.C. § 103(a) over Diacakis and Takahashi; or that claim 45 is unpatentable under 35 U.S.C. § 103(a) over Diacakis, Loveland, and Takahashi.” slip op. at 34
Patent outcomesUS 10,492,038 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,492,038 - T-Mobile USA, Inc. v. Traxcell Technologies, LLCAll claims unpatentablePTAB · May 15, 2023 · IPR2022-00669 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–30 are unpatentable under § 103(a) over the six asserted combinations of Bruce and Hancock with Meadows, Knockeart, and/or Moles.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Either proposal is consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation, although the conclusions reached in the decision would be the same even if Patent Owner’s proposal was adopted.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Claim terms need only be construed 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). Petitioner states, “[n]o claim term requires express construction.” Pet. 11. Patent Owner does not propose any claim constructions. PO Resp. 3–4. For purposes of this Decision, we do not construe any claim terms. D.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“not a communications device is a mobile wireless communications device, the reference states that the system can be used with a “landline or a mobile cellular telephone subscriber.” Ex. 1006, 3:49; see also Ex. 1006, 5:58–60 (“[t]elephone calls are primarily originated from either traditional fixed location landline telephones or mobile wireless telephones”); Ex. 1006, 5:66–6:3 (“[t]o identify the geographical location of the caller . . . several 6 Patent Owner argues that Hancock does not teach this claim requirement, and we have previously found that Hancock does not so teach. PO Resp. 15 (citing Van Essen Decl. ¶ 56); Google LLC v. Traxcell Techs., LLC, IPR2021-01004, Paper 7 at 18 (PTAB Dec. 7, 2021). techniques can be used depending on the particular telephone (i.e., landline or mobile telephone) originating the call”). The same system is used in Bruce for both fixed and mobile devices, and the same telephone number (411) is used whether fixed or mobile. Reply 7 (citing Ex. 1006, Fig. 1, 3:63–66, 5:56–58, 5:63–67; Braasch Decl. ¶ 60). We are persuaded by Petitioner’s reliance on a patent to Karp, et al. as background art, to confirm that it was well known that the phone number of a caller is used to identify whether or not a call is on a mobile phone, and that the use of Automatic Number Identification (ANI) is not limited to fixed landlines. Pet. 24 (citing Ex. 1009, Fig. 11B, 12:20–22; Braasch Decl. ¶ 70); Reply 8–9 (citing Ex. 1009, 1:39–44, 12:24–27).7 The record further includes support for Petitioner’s contention in the form of declarant testimony that explains, “[a] POSITA would have recognized that to select an appropriate location system 17 for a communication received over a landline or wireless network, the switch 16 or the location system 17 would first identify whether a request was made from a landline or a wireless device.” Braasch Decl. ¶ 70 (cited in the Petition at page 24); see also id. ¶ 71 (explaining that the determination would be made even if the incoming call uses a landline or a modem). We are persuaded by this evidence and credit the Braasch testimony in this regard.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We have considered Petitioner’s arguments and evidence summarized above (which we adopt) and determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combination of Bruce and Hancock, and the preponderance of the evidence establishes that a person of ordinary skill would have been motivated to make that combination.” slip op. at 15
Patent outcomesUS 9,918,196 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,918,196 - T-Mobile USA, Inc. v. Traxcell Technologies, LLCAll claims unpatentablePTAB · May 15, 2023 · IPR2021-01552 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–30 are unpatentable under § 103(a) over the six combinations of references listed in the decision.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Either proposal is consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation, although the conclusions reached in the decision would be the same even if Patent Owner’s proposal was adopted.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Claim terms need only be construed 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). Petitioner states, “[n]o claim term requires express construction.” Pet. 11. Patent Owner does not propose any claim constructions. PO Resp. 3–4. For purposes of this Decision, we do not construe any claim terms. D.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“3. The Combination of Bruce and Hancock Petitioner argues that one of ordinary skill would have been motivated to combine the geographic location-based systems of Bruce and Hancock, resulting in a combination that would have rendered obvious, for example, independent claim 1. Pet. 14–19. Petitioner first argues that one of ordinary skill would have been motivated to add to the Bruce system, the capability of accessing routing information via the Internet, as disclosed in Hancock. Pet. 15–17. Petitioner cites the fact that one embodiment of Bruce uses a computer with a modem to allow a user to obtain directions from the system, and that providing such access via the Internet, as disclosed in Hancock, would have provided well-known advantages of higher data rates, storage capacity, and additional Internet services. Id. (citing Ex. 1005, 1:38–40; Ex. 1008, 42:38–42; Ex. 1011, 24:16–19, 25:1–7, 27:39–67, 32:32–41; Braasch Decl. ¶¶ 46–49). Petitioner also argues that one of ordinary skill would have been motivated to improve Bruce by providing more flexibility and variety in the ways for entering a destination, for which directions are requested, as disclosed in Hancock. Pet. 17–18. For example, Hancock discloses the ability to enter the names of businesses, to specify specific distances to destinations, and to use menus of possible destination locations. Id. (citing Ex. 1006, 2:40–43, 8:2–3; Ex. 1011, 8:66–9:3, 13:7–15, 28:49–29:1, 30:12– 14; Braasch Decl. ¶¶ 50–51). Petitioner further argues that one of ordinary skill would have been motivated to improve Bruce by using Hancock’s improved methods of formatting requests for directions via the use of data packets. Pet. 18–19 (citing Ex. 1011, 27:27–39, 27:64–67, 28:58–65; Braasch Decl. ¶¶ 52–54). Patent Owner does not specifically respond to these arguments. See generally PO Resp. We have considered Petitioner’s arguments and evidence summarized” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As to the above claims, Patent Owner repeats its arguments with respect to claim 1 (which, as discussed above, are not persuasive), and submits additional arguments directed to claims 5, 10, and 11. PO Resp. 21–23. In regard to claim 5, Patent Owner argues that “PSTN” in the claims means “a plurality of PSTNs which service to provide location of fixed location phones,” and that Bruce provides only one PSTN. Id. at 22 (citing Van Essen Decl. ¶ 83). This argument is unpersuasive as not commensurate with the scope of the claim. Reply 15. For claims 10 and 11, Patent Owner argues that the disclosure in Bruce providing for searches for establishments “in the proximity of the caller” is not a teaching of searches for nearby businesses because “[t]he caller is distinct from ‘business.’” Id. at 23 (citing Van Essen Decl. ¶¶ 85–86) (emphasis omitted). We are unpersuaded by this argument, because a nearby business is within the proximity of a caller. Reply 16. We have considered Petitioner’s arguments and evidence summarized above (which we adopt) and we determine that Petitioner has proved by a preponderance of the evidence that claims 4, 5, 7, 8, 10, and 11 are unpatentable under 35 U.S.C. § 103(a) over the combination of Bruce and Hancock.” slip op. at 25
Patent outcomesUS 9,918,196 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,918,196 - Netflix, Inc. v. Robocast, Inc.Institution deniedPTAB · May 11, 2023 · IPR2023-00081 · APJ David C Mckone · IPR · Institution
The Board denied institution because Netflix had not shown a reasonable likelihood of proving claims 1, 2, 37, or 38 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). 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 explained below, we decline to institute an inter partes review of the ’451 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not see a substantial difference between the parties’ proposals. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by 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). However, our Decision would be the same under Patent Owner’s proposal.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for patent owner
“we consider whether that construction was intended to encompass varying durations during the creating step or the displaying step. In its opinion, the Microsoft court observed that the defendants in that case argued that “before created,” and that “the ‘duration information’ is a parameter that the user can then interact with in order to vary the display of each resource.” Ex. 1014, 22. Patent Owner, the court continued, argued that “all that is required is for the user to maintain control over the actual presentation of the resource during the ‘displaying’ step, and that no duration information need be provided during the ‘creating a show structure of nodes’ step.” Id. at 22–23. The Microsoft court “agree[d] with [Patent Owner] that the user should be able to vary the duration of the content during show structure playback. This is the ‘interactive’ component of the claim.” Id. at 23; see also Prelim. Resp. 29 (arguing that this reasoning supports Patent Owner’s position that “the claim language expressly requires that the end user be able to ‘vary said duration’ for how long resource content currently ‘is being displayed’ to the user in ‘accordance with said show structure’ to which the resource belongs”). Here, the Microsoft court expressly states that the duration is varied during show structure playback, which is a clear reference to claim 1’s step of “displaying a content corresponding to each of said resources automatically in accordance with said show structure.” The Microsoft court “also finds that some duration information must be provided when the show structure of nodes is created,” that “‘parameter’ is a helpful concept for construction,” and that “the ‘duration information’ may be understood to be synonymous with a ‘parameter,’ as that timing information is the variable that will specify how long a particular content will be displayed.” Ex. 1014, 23. Thus, the Microsoft court construed claim 1 to require providing a variable duration parameter in the creating” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“As noted above, the Microsoft court construed “interactively variable duration information” to mean “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1014, 22. The construction itself suggests that the duration information is varied during display, because it is in the context of resources being displayed sequentially and “the viewer of the content can change the parameter.” As to Escobar, Petitioner contends that “[w]hen playing decision lists/timelines in the authoring tool using Button 174 (invoking subroutine E), the user is the viewer of the content.” Pet. 49 (citing Ex. 1004, 6:40–45). Thus, Petitioner appears to contend that, during the process of creating a show structure, the creator is a viewer if the creator can view the edited content corresponding to a node as the show structure is being created. Here, Petitioner would satisfy the “viewer” aspect of the Microsoft court’s construction by pointing to a creator viewing a piece of the show structure during the creating step, although Escobar does not teach that the creator can vary the duration of content while viewing it or that durations can be varied while a show structure (as opposed to a node being created) is being displayed in the displaying step, as discussed in more detail below.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,155,451 - Crowdstrike, Inc. v. Webroot Inc.InstitutedPTAB · May 5, 2023 · IPR2023-00126 · APJ Aaron W Moore · IPR · Institution
The Board instituted review of claims 1–4, 7–8, 10–13, and 16–19 on all presented grounds; Morris-based challenges met the reasonable-likelihood threshold, while Capalik challenges did not.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, 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.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. We accordingly institute an inter partes review of claims 1–4, 7–8, 10–13, and 16–19 of the ’224 patent on all presented challenges. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018) (“The agency cannot curate the claims at issue but must decide them all.”). B.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“7. Assessment As discussed above, the second, third, fourth, and fifth Fintiv factors weigh against exercising our discretion to deny institution; and the first and sixth factors are neutral. Given the parties’ relatively modest investment thus far in the related litigation and the likelihood that trial will occur in the related litigation several months after we reach a Final Written Decision in this proceeding, we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny the Petition. B.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We apply a two-part analysis under § 325(d), first assessing whether the same or substantially the same art or arguments were previously presented to the Office, and if so, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (Feb. 13, 2020) (precedential).” slip op. at 16
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We have reviewed the portions of the district court complaint that Patent Owner cites. Although Patent Owner characterizes those passages as “providing evidence” of a long-felt need, they cite only to the ’224 patent itself. See Ex. 2015, 72–82. We do not discern evidence with the kind of specificity for objective indicia of nonobviousness, notably including evidence of a nexus with the merits of the challenged claims, that would cause us to fault Petitioner for failing to address the evidence in its Petition. See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33, 31–35 (PTAB Jan. 24, 2020). We accordingly decline to deny the Petition on this basis alone. The parties will have an opportunity during the trial to develop Patent Owner’s evidence of objective indicia of nonobviousness so that it may be fully considered. D.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,257,224 - Solaredge Technologies Ltd. v. Koolbridge Solar, Inc.All claims unpatentablePTAB · Apr 17, 2023 · IPR2022-00013 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–17 are unpatentable under § 103(a), principally over Iwata and Bower, with additional references applied to dependent claims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a bachelor’s degree in electrical engineering or a similar discipline, and three years of design experience with power electronics, including experience designing power converters.” Pet. 21 (citing Ex. 1002 ¶¶ 20–23). Patent Owner neither expressly addresses Petitioner’s proposal nor proffers its own articulation of the level of ordinary skill in the art. But Patent Owner’s expert, Dr. Foty, states that he “do[es] not dispute the Petitioner’s proposed level of ordinary skill in the art.” Ex. 2006 ¶ 43. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Baker, we adopt it for purposes of this Decision. 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 11
- Expert testimonyDecided for petitioner
“We have considered Patent Owner’s reiterated argument, and note that the only specific example Patent Owner identifies relates to whether Iwata’s series-connected inverters include transformers. See PO Resp. 9–10. Below, we discuss the propriety of Petitioner’s reliance on Dr. Baker’s testimony within the specific context of that example. See infra § II.E.2.a. More generally, we disagree with Patent Owner’s broader implication that there must be perfect alignment between a petition and a supporting expert declaration because “[m]erely repeating an argument from the Petition in the declaration of a proposed expert does not give that argument enhanced probative value.” Kinetic Techs, Inc. v. Skyworks Solutions, Inc., IPR2014- 00529, Paper 8 at 15 (PTAB Sept. 23, 2014); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB Aug. 24, 2022) (precedential) (according “little weight” to declaration testimony that contains a verbatim restatement of a petition’s arguments without additional supporting evidence or reasoning). Indeed, expert discussion of evidence with technical reasoning to support conclusions is a valuable and important part of expert testimony that our regulations expect to be included in a declaration. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quoting Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)); Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[a]ll claim terms herein should be given their ordinary and customary meaning to a [person of ordinary skill in the art], consistent with the prosecution history, as they would be given in a civil action.” Pet. 21 (citing 37 C.F.R. § 42.100(b)). Patent Owner states that it “does not believe any explicit claim construction is required to resolve the issues presented in the Petition.” PO Resp. 2. We agree with the parties and do not find it necessary expressly to construe any term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).6” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We find Petitioner’s reasoning sufficient. In particular, Dr. Baker’s testimony provides rational underpinning for Petitioner’s reasoning to combine the teachings of Iwata and Bower as proposed. Patent Owner disputes limited aspects of Petitioner’s analysis, which we consider below.” slip op. at 30
Patent outcomesUS 10,784,710 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,784,710 - Solaredge Technologies Ltd. v. Koolbridge Solar, Inc.All claims unpatentablePTAB · Apr 17, 2023 · IPR2022-00007 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–13 and 20 are unpatentable: claims 1–3 and 8–10 over Tracy, claims 4 and 11 over Tracy and Fujimoto, claims 6 and 20 over Tracy and De, claim 7 over Tracy and Bond, and …
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“IV. CLAIM CONSTRUCTION In the Decision to Institute we declined to treat any of the claim terms as mean-plus-function terms because the terms have an ordinary and customary meaning. Dec. to Inst. 14–15. Neither party has proposed any other claim constructions. We apply the plain and ordinary meaning in this Decision.” slip op. at 7
- Expert testimonyPetitioner expert creditedOther
“Dr. Baker’s testimony is persuasive evidence that Tracy discloses the claimed floating DC power source, as Tracy’s terminals are not permanently connected to the neutral.” slip op. at 24
- Skill levelOther
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner that Patent Owner unrealistically reads this definition to mean there can never be a connection to ground or neutral, because Patent Owner ignores the disclosure in the ’822 patent of temporarily connecting one or the other of the floating DC sources to neutral, as discussed above. Id. at 9–10 (citing Ex. 1001, 3:52–60, 4:27–40, 10:44–47, 11:1–7, 11:25–28, 23:47–52; Ex. 1074, Baker Reply Decl. ¶¶ 12–13).” slip op. at 20
Patent outcomesUS 8,937,822 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,937,822 - Solaredge Technologies Ltd. v. Koolbridge Solar, Inc.All claims unpatentablePTAB · Apr 17, 2023 · IPR2022-00010 · APJ Thu A Dang · IPR · Final written decision
Claims 14–19 are unpatentable under § 103 based on combinations of Suzui, Boniface, and Gilmore, with additional references for claims 16, 17, and 19.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had “a bachelor’s degree in electrical engineering or similar discipline,” and “three years of design experience with power electronics, including experience designing power converters.” Pet. 21–22 (citing Ex. 1402 ¶¶ 20–23). Patent Owner does not propose any definition for a POSITA, and Dr. Foty states that he “does not dispute the Petitioner’s proposed level of ordinary skill in the art.” See generally PO Resp.; Ex. 2006 ¶ 42. We adopt and apply Petitioner’s definition of a POSITA at the time of the claimed invention because, based on the record, this proposal is consistent with the ’822 patent, the asserted prior art, and is supported by the testimony of Dr. Baker.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We determine that it is unnecessary to construe any claim term expressly to resolve the disputed issues before us. 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)). As Petitioner contends that Suzui discloses this limitation (Pet. 42–43), we do not ignore this limitation but address the limitation based on the parties’ explicit arguments with respect to Suzui.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We are not persuaded by Patent Owner’s argument that the claimed detector must look for “a specific unusual current with specific characteristics, i.e., ‘with said common mode waveform at said characteristic frequency.’” PO Resp. 15. In particular, claim 14 recites “creating” a common-mode AC probe signal waveform “from said DC to AC converter at a characteristic repetition frequency that is in phase on both said DC positive and negative input conductors,” and the claimed detector is adapted to “detect with said” common mode waveform at said characteristic repetition frequency. See Ex. 1401, 43:21–37 (emphasis added). That is, contrary to Patent Owner’s contention that the claimed detector “must look for” the unusual current with the common mode waveform, claim 14 recites that the common mode wave form is created from the DC to AC converter at the characteristic frequency, and the detector then detects the unusual current with said created common mode waveform at the characteristic frequency. Id. As pointed out by Petitioner during oral argument, “the existence of a common [mode] waveform in Suzui is not in dispute.” Tr. 9:23–24. We find persuasive Petitioner’s reliance on Suzui to disclose “creating a common mode AC probe signal waveform from a DC to AC converter at a characteristic repetition frequency” as recited in claim 14. Pet. 37. As Dr. Baker testified, “[f]rom the DC input voltage output by solar battery 1, Suzui’s inverter generates an output AC waveform—specifically a 60 Hz, sine-shaped alternating current” which “corresponds to the claimed ‘AC output having an output waveform with an output repetition frequency,” which is then “received by Suzui’s single-phase three-wire commercial power system 3.” See Ex. 1402 ¶ 192 (citing Ex. 1406, 3:26–30, 4:60–65, 5:15–24, 5:32–40, 5:51–67, 7:43–52, Fig. 2). Further, we are also persuaded by Petitioner’s contention that Suzui and Gilmore teach “detecting an imbalance current generated by the common-mode voltage.” Pet. Reply 17 (citing Pet. 37–42; Ex. 1474 45–46). In particular, we are persuaded by Petitioner’s contention, supported by Dr. Baker’s declaration, that Suzui’s current detector 10 “detects an imbalance between the currents flowing in the positive and negative DC conductors (zero-phase current) of the inverter (the claimed ‘a detector adapted to detect an unusual current’),” which “is generated by the 120 Hz AC voltage to ground (the claimed ‘with said common mode waveform at said characteristic repetition frequency’).” Pet. 37; see also Ex. 1402 ¶ 205. That is, we are persuaded by Dr. Baker’s testimony that, “because Suzui’s current detector 10 detects an imbalance in the zero-phase current of the DC circuit of the inverter,” a POSITA would understand Suzui to disclose “a detector adapted to detect an unusual current,” wherein “because this ‘unusual current’ is generated by the AC voltage to ground that has a frequency of 120 Hz,” the POSITA would also understand Suzui to disclose the claimed “with said common mode waveform at said characteristic repetition frequency.” Ex. 1402 ¶ 205 (citing Ex. 1406, 5:47–51, 7:46–61, Fig. 2).” slip op. at 29
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“10. Instead, we are persuaded by Dr. Baker’s testimony that Suzui’s solar battery 1 “is formed as a solar battery string by connecting a plurality of solar battery modules 1M1 to 1Mx in series such that an appropriate voltage can be output as the input voltage to the system interconnection inverter 2.” Ex. 1402 ¶ 186 (citing Ex. 1406, 4:66–5:2). We find persuasive Dr. Baker’s testimony that Suzui’s solar battery modules 1M1 to 1Mx are “arranged in an array,” wherein a POSITA “would understand that they are composed of photovoltaic cells.” Id. at ¶ 187 (citing Ex. 1406, 4:59–5:6, Figs. 2, 8).” slip op. at 20
Patent outcomesUS 8,937,822 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,937,822 - PTAB · Apr 12, 2023 · IPR2022-01428 · APJ Daniel J Galligan · IPR · Institution
Instituted IPR of claims 1–34 on all grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute 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 the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we institute an inter partes review of all challenged claims on all grounds raised in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“For the reasons explained below in section II.E.3.a, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing under the district court’s construction and also under that construction as interpreted by Patent Owner. Because the constructions advocated by Patent Owner do not impact the decision whether to institute, we need not resolve this claim construction issue at this time. 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))). 2. “Chip Select Signals,” ”Chip Select Conduits” Claims 6, 11–14, 16–19, and 29–34 recite “chip select signals” or “chip select conduits.” Patent Owner argues that the district court construed the term “chip select signals” and associated “chip select conduits” to “exclude[] situations in which a chip select signal could enable multiple array dies at once” and contends that we should adopt this construction. Prelim. Resp. 23–24 (citing Ex. 2004, 33–34). For the reasons explained below in section II.E.6, we determine that Petitioner has demonstrated a and, therefore, we need not further address this claim construction at this time.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed skill level at this time. See Prelim. Resp. 20 (“For purposes of this preliminary response only, Patent Owner applies the skill level proposed by Petitioner.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, with the exception of the qualifier “at least,” which introduces vagueness as to the amount of experience.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,787,060 - PTAB · Apr 12, 2023 · IPR2022-01427 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–20 over all grounds, finding a reasonable likelihood of prevailing on the asserted obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Interim Procedure 9. Here, Petitioner has filed such a stipulation, which provides the following: Samsung stipulates that, if the Patent Trial and Appeal Board institutes an IPR proceeding for U.S. Patent No. 9,318,160 on the grounds presented in Samsung’s petition in IPR2022-01427, Samsung will not pursue an invalidity defense in the Eastern District of Texas action (C.A. No. 21-463-JRG) that the patent claims subject to the instituted IPR are invalid based on grounds that were raised or reasonably could have been raised in the IPR. Ex. 1051. Thus, in light of Petitioner’s stipulation, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Pet. 23. Patent Owner argues that we should apply the district court’s constructions for “array die” and “chip select signals.” Prelim. Resp. 21–25. We provide a preliminary analysis of each of these terms below. The parties may address these and any other claim construction issues during the trial, and our final decision including any claim constructions will be based on the full record developed during the trial. 1. “Array Die” The district court construed “array die” as “array die that is different from a DRAM circuit” based on an argument during prosecution of the ’060 DRAM circuits 206A–D in U.S. Patent Application Publication 2008/0025137 A1 (Ex. 1011 (“Rajan137”)). Ex. 2004, 31–32 (citing January 13, 2014 Amendment at 10); see Ex. 1002 (’060 prosecution history), 465 (January 13, 2014 Amendment at 10) (“Rajan does not disclose ‘a plurality of stacked array dies.’ Rajan merely stacks DRAM circuits 206A–D, which are different from array dies.”). Patent Owner argues that we should adopt the district court’s construction so that there is a “consistent construction” between the two proceedings. Prelim. Resp. 23–24. Patent Owner, however, qualifies its position by arguing that “the statements it made during prosecution were specific to Rajan137’s DRAM circuits 206A–D and this should be made clear to the jury through the order instead of having the expert explain it at trial.” Prelim. Resp. 24 n.4 (citing Ex. 2005 (Patent Owner’s objections to the district court claim construction order), 1–2); see Ex. 2005, 2 (“[T]he Court should make clear that the claimed array die is one that is ‘different from Rajan’s DRAM circuits 206A–D.’”). Although Patent Owner appears to walk this qualification back by arguing in its Sur-reply that it withdrew its objections to the district court claim construction (Sur-reply 1–2 (citing Exs. 2010, 2011)), Patent Owner’s position here still appears to be that the term “array die” is one that is different from DRAM circuits 206A–D of Rajan137. For example, in disputing Petitioner’s unpatentability contentions, Patent Owner argues that “the Petition contains no analysis on how or why Kim’s or Riho’s memory dies are different from Rajan137’s DRAM circuits.” Prelim. Resp. 26–27; see also Prelim. Resp. 27 (“Missing from the Petition is any analysis on why the referenced DRAM dies in Grounds 1 and 2 differ from Rajan137’s” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that a person of ordinary skill in the art “would have had an advanced degree in electrical or computer engineering, or a related field, and two years working or studying in the field of design or development of memory systems, or a bachelor’s degree in such engineering disciplines and at least three years working in the field.” Pet. 5 (citing Ex. 1003 ¶ 60). Petitioner also asserts that “[a]dditional training can substitute for educational or research experience, and vice versa,” and Petitioner identifies particular technology with which a person of ordinary skill in the art would 7 At this stage, Patent Owner does not present any objective evidence of nonobviousness (i.e., secondary considerations) as to any of the challenged claims. Council) industry standards and DRAM (dynamic random access memory) and SDRAM (synchronous DRAM) memory modules. Pet. 5. Patent Owner does not dispute Petitioner’s proposed skill level at this time. See Prelim. Resp. 21 (“For purposes of this preliminary response only, Patent Owner applies the skill level proposed by Petitioner.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner with the exception of the qualifier “at least,” which introduces vagueness as to the amount of experience.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Pet. 98–99 (citing Ex. 1016 ¶¶ 40, 45–46; Ex. 1030, 135–36; Ex. 1038, 68; Ex. 1003 ¶¶ 589–606). Petitioner argues that Riho teaches that varying impedances between TSVs that result from, for example, manufacturing processes and chip placement, should be taken into account. Pet. 99–100 (citing Ex. 1016 ¶¶ 55–56, 61); see Ex. 1016 ¶ 61 (discussing that the chip located closest to the control chip has “smaller penetrating through resistance” than a chip farther from the control chip). Petitioner contends that a person of ordinary skill “would have been motivated by Riho2 to account for these variations by selectively activating one or more drivers . . . to achieve the optimal driving strength for each ‘data conduit,’ thus saving power.” Pet. 100 (citing Ex. 1018 ¶¶ 96–97, Fig. 7A; Ex. 1017, 1:22–24, 5:11–14, Fig. 5; Ex. 1003 ¶¶ 598–603); see also Pet. 100–01 (asserting that “[o]ther contemporaneous references confirm that adjusting the driver strength to account for the position of a die in stack was well known at the time” (citing Ex. 1039, code (57), 7:46–49, Fig. 6)). 3. Patent Owner’s Arguments and Our Preliminary Analysis Patent Owner makes two arguments against Petitioner’s challenge to” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 9,318,160
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.