- Samsung Electronics Co., Ltd / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 30, 2024 · IPR2023-01142 · APJ Georgianna W Braden · IPR · Final written decision
Claims 1–29 are unpatentable as obvious over Perego and JESD79-2; the Board did not reach the three remaining obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “applies the skill level proposed by Petitioner.” PO Resp. 8. According to Patent Owner, “no aspect of this IPR . . . turns on this dispute.” PO Sur-reply 4. We accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner disagrees that a rank can be a single memory device, but states that “the Board need not resolve that dispute to address the parties’ arguments regarding the challenged claims” because Patent Owner “applies Petitioner’s proposed construction” “[s]olely for purposes of responding to this Petition.” PO Resp. 8–9; PO Sur-reply 4–5. Patent Owner also apprises us of a construction of “rank” from related district court litigation. PO Resp. 8 (citing Ex. 2030, 12–15). Our Rules provide that “[a]ny prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the inter partes review proceeding will be considered.” 37 C.F.R. § 42.100(b). We have considered the district court’s construction, and we note that, like Petitioner’s proposed construction, it provides that a rank can be one memory device. See Ex. 2030, 14 (“Accordingly, the Court concludes a ‘rank’ can include a single memory device.”). For our patentability analysis, we apply the construction of “rank” used by both parties (i.e., the construction proposed by Petitioner), and we need not engage in any further claim construction because there are no claim construction disputes that bear on the 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))). D. Alleged Obviousness of Claims 1–29 in View of Perego and JESD79-2” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Based on the foregoing discussion, we find that Perego’s disclosure suggests a JEDEC-compliant interface to a memory controller. Furthermore, the evidence shows that JEDEC-compliant modules were dominant in the market at the relevant time. For example, Dr. Przybylski testifies that, in the 2004-2005 timeframe, the vast majority of the DRAM devices and modules sold would have been compliant with one of the JEDEC standards, such that a general reference to DRAM, especially in the context of usage main memory of general purpose computer and server systems, would suggest to a [person of ordinary skill in the art] the use of JEDEC-standard compliant SDRAM devices or modules. Ex. 2024 ¶ 72. Petitioner asserts that the dominance of JEDEC-compliant modules “provid[es] additional motivation for the proposed combination.” Pet. Reply 5–6. Patent Owner counters that the “mere fact that JEDEC-standardized modules dominated the market at the time of the invention also does not provide motivation to modify Perego.” PO Sur-reply 11 (citing Virtek Vision Int’l ULC v. Assembly Guidance Sys., Inc., 97 F.4th 882 (Fed. Cir. 2024). We agree with Petitioner on this point. In the case relied on by Patent Owner, the Federal Circuit stated that “KSR did not do away with the requirement that there must exist a motivation to combine various prior art references in order for a skilled artisan to make the claimed invention,” and the court reversed the Board’s conclusion of obviousness finding that there was “no evidence of a design need or market pressure.” Virtek, 97 F.4th at 887–88. Here, Patent Owner’s own expert explains that JEDEC was a driving market force at the relevant time. Patent Owner also argues that modification of Perego’s architecture and memory system with a JEDEC-compatible bus would make it non-function. PO Resp. 29–30, 23–24 (“JEDEC-complaint, chip-select-dependent RDIMM architecture defined in JESD21-C is fundamentally at odds with the Rambus point-to-point topology and variable bit width interfaces of Perego.”). But Patent Owner’s “proposed” modifications would make Perego’s system non-functional for Rambus, not for JEDEC, which was the dominant memory module style in the market. Given JEDEC as the standard, an ordinarily skilled artisan would have reason to pursue such a known option. Patent Owner also argues that “Perego contrasts its memory modules” slip op. at 32
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“4. Conclusion for the Perego and JESD79-2 Challenge We have considered the full trial record, and, for the reasons discussed above and based on Petitioner’s contentions and evidence, we conclude that claims 1–29 would have been obvious to a person of ordinary skill in the art based on the combined teachings of Perego and JESD79-2.” slip op. at 44
Patent outcomesUS 9,858,215 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,858,215 - Samsung Electronics Co., Ltd / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 30, 2024 · IPR2023-00455 · APJ Georgianna W Braden · IPR · Final written decision
Claims 1–29 are unpatentable as obvious over Perego and JESD79-2; the Board dismissed Petitioner’s motion to exclude.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “applies the skill level proposed by Petitioner.” PO Resp. 8. According to Patent Owner, “no aspect of this IPR . . . turns on this dispute.” PO Sur-reply 4. We accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Independent claim 1 recites memory devices arranged in ranks. Petitioner argues that a “rank” is “an independent set of one or more memory devices on a memory module that act together in response to command signals, including chip-select signals, to read or write the full bit-width of the memory module.” Pet. 27–28 (citing Ex. 1003 ¶ 126); Pet. Reply 1–2. Patent Owner disagrees that a rank can be a single memory device, but states that “the Board need not resolve that dispute to address the parties’ arguments regarding the challenged claims” because Patent Owner “applies Petitioner’s proposed construction” “[s]olely for purposes of responding to this Petition.” PO Resp. 8–9; PO Sur-reply 4–5. Patent Owner also apprises us of a construction of “rank” from related district court litigation. PO Resp. 8 (citing Ex. 2030, 12–15). Our Rules provide that “[a]ny prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the inter partes review proceeding will be considered.” 37 C.F.R. § 42.100(b). We have considered the district court’s construction, and we note that, like Petitioner’s proposed construction, it provides that a rank can be one memory device. See Ex. 2030, 14 (“Accordingly, the Court concludes a ‘rank’ can include a single memory device.”). For our patentability analysis, we apply the construction of “rank” used by both parties (i.e., the construction proposed by Petitioner), and we need not engage in any further claim construction because there are no claim construction disputes that bear on the 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))). D. Alleged Obviousness of Claims 1–29 in View of Perego and JESD79-2” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Based on the foregoing discussion, we find that Perego’s disclosure suggests a JEDEC-compliant interface to a memory controller. Furthermore, the evidence shows that JEDEC-compliant modules were dominant in the market at the relevant time. For example, Dr. Przybylski testifies that, in the 2004-2005 timeframe, the vast majority of the DRAM devices and modules sold would have been compliant with one of the JEDEC standards, such that a general reference to DRAM, especially in the context of usage main memory of general purpose computer and server systems, would suggest to a [person of ordinary skill in the art] the use of JEDEC-standard compliant SDRAM devices or modules. Ex. 2024 ¶ 72. Petitioner asserts that the dominance of JEDEC-compliant modules “provid[es] additional motivation for the proposed combination.” Pet. Reply 5–6. Patent Owner counters that the “mere fact that JEDEC-standardized modules dominated the market at the time of the invention also does not provide motivation to modify Perego.” PO Sur-reply 11 (citing Virtek Vision Int’l ULC v. Assembly Guidance Sys., Inc., 97 F.4th 882 (Fed. Cir. 2024). We agree with Petitioner on this point. In the case relied on by Patent Owner, the Federal Circuit stated that “KSR did not do away with the requirement that there must exist a motivation to combine various prior art references in order for a skilled artisan to make the claimed invention,” and the court reversed the Board’s conclusion of obviousness finding that there was “no evidence of a design need or market pressure.” Virtek, 97 F.4th at 887–88. Here, Patent Owner’s own expert explains that JEDEC was a driving market force at the relevant time. Patent Owner also argues that modification of Perego’s architecture and memory system with a JEDEC-compatible bus would make it non-function. PO Resp. 29–30, 23–24 (“JEDEC-complaint, chip-select-dependent RDIMM architecture defined in JESD21-C is fundamentally at odds with the Rambus point-to-point topology and variable bit width interfaces of Perego.”). But Patent Owner’s “proposed” modifications would make Perego’s system non-functional for Rambus, not for JEDEC, which was the dominant memory module style in the market. Given JEDEC as the standard, an ordinarily skilled artisan would have reason to pursue such a known option.” slip op. at 32
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“3. Objective indicia of non-obviousness Patent Owner does not present objective evidence of non-obviousness other than to respond to Petitioner’s assertion of evidence of “simultaneous invention.” PO Resp. 55–56. As discussed, the combination of Perego and JESD79-2 teaches or renders obvious all of the limitations of claim 1, and there is no objective evidence of non-obviousness in the record.” slip op. at 44
Patent outcomesUS 9,858,215 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,858,215 - Samsung Electronics Co., Ltd / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 30, 2024 · IPR2023-01141 · APJ Georgianna W Braden · IPR · Final written decision
Claims 1–15 are unpatentable as obvious over Perego and JESD79-2; the Board did not reach the other asserted grounds.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Thus, we consider the parties’ dispute to be resolved, and we adopt Petitioner’s construction with two modifications. First, we adopt the parties’ agreement that a person of ordinary skill in the art would have had knowledge about the design and operation of standardized DRAM and SDRAM memory modules and the operation of memory devices within those modules, omitting the Petition’s proposed requirement of knowledge of the design of standardized DRAM and SDRAM memory devices. This includes knowledge of JEDEC industry standards. Second, we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. Accordingly, a person of ordinary skill in the art would have had an advanced degree in electrical or computer engineering and two years working in the field, or a bachelor’s degree in such engineering disciplines and three years working in the field, where additional training could substitute for educational or research experience, and vice versa. Additionally, a person of ordinary skill in the art would have had knowledge about the design and operation of standardized DRAM and SDRAM memory modules and the operation of memory devices within those modules. We consider the resulting agreed-upon definition of the level of ordinary skill in the art to be consistent with the ’417 patent and the prior art of record.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Independent claim 1 recites memory devices arranged in ranks. Petitioner argues that a “rank” is “an independent set of one or more memory devices on a memory module that act together in response to command signals, including chip-select signals, to read or write the full bit-width of the memory module.” Pet. 26 (citing Ex. 1003 ¶ 126); Pet. Reply 1–2. Patent Owner disagrees that a rank can be a single memory device but states that “the Board need not resolve that dispute to address the parties’ arguments regarding the challenged claims” because Patent Owner “applies Petitioner’s proposed construction” “[s]olely for purposes of responding to this Petition.” PO Resp. 8–9. Patent Owner also apprises us of a construction of “rank” from related district court litigation. PO Resp. 8 (citing Ex. 2030, 12–15). Our Rules provide that “[a]ny prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the inter partes review proceeding will be considered.” 37 C.F.R. § 42.100(b). We have considered this construction, and we note that, like Petitioner’s proposed construction, it provides that a rank can be one memory device. See Ex. 2030, 14 (“Accordingly, the Court concludes a ‘rank’ can include a single memory device.”). In our patentability analysis, we adopt the construction of “rank” applied by both parties in this proceeding, and we need not engage in any further claim construction because there are no claim construction disputes that bear on the 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))). D. Alleged Obviousness of Claims 1–15 in View of Perego and JESD79-2” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We find that Perego suggests a JEDEC-compliant interface with its disclosure of a 64-bit module width, and we further find that a person of ordinary skill in the art would have been motivated to make a module JEDEC-compliant based on JEDEC’s dominance in the market at the time. See Ex. 1003 ¶ 183 (Dr. Wolfe’s testimony that a person of ordinary skill in the art “would have been motivated to implement Perego’s memory modules in a registered DIMM format that fits into the DIMM connectors of the time and uses the input and output signals of a DIMM module according to the relevant JEDEC standards, including JESD21-C.”).” slip op. at 30
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We do not agree with Patent Owner that Perego is incompatible with ranks. Perego expressly discloses the use of DDR2 SDRAM memory devices on the module. Ex. 1071, 56–59. Dr. Przybylski testifies that, in Perego, “the memory system can include modules that include either Direct RDRAMs, which are not organized into ranks as, for example, DDR2 SDRAMs are.” Ex. 2024 ¶¶ 113. Thus, Patent Owner’s own evidence shows that DDR2s would be organized in ranks. Based on this evidence, we find that a person of ordinary skill in the art at the critical time would have arranged Perego’s DDR2 memory devices into ranks because that is how DDR2s are organized. See Pet. 72 (asserting that ranks would have been obvious); Ex. 1062, 29, 35 (illustrating DDR SDRAM devices “surface mounted” on both sides of a PCB in a DIMM format); Ex. 1071, 2:4–6 (“DIMM”); Ex. 1003 ¶ 278. Because we agree with Petitioner’s obviousness assertions and Patent Owner’s admission that DDR2s would be in ranks, we need not address the parties’ contentions whether Perego alone discloses ranks, including whether Perego’s disclosure at column 15, lines 37–45 teaches ranks. See PO Resp. 35 (citing Ex. 2003, 202:8–202:10); see also Paper 35 (Petitioner’s Motion to Exclude, 1 (seeking to exclude Exhibit 2003, 202:8–202:10)).” slip op. at 35
Patent outcomesUS 11,093,417 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,093,417 - Samsung Electronics Co., Ltd / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 30, 2024 · IPR2023-00454 · APJ Georgianna W Braden · IPR · Final written decision
Claims 1–15 are unpatentable as obvious over Perego and JESD79-2; the Board did not reach the Ellsberry and Halbert grounds.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Thus, we consider the parties’ dispute to be resolved, and we adopt Petitioner’s construction with two modifications. First, we adopt the parties’ agreement that a person of ordinary skill in the art would have had knowledge about the design and operation of standardized DRAM and SDRAM memory modules and the operation of memory devices within those modules, omitting the Petition’s proposed requirement of knowledge of the design of standardized DRAM and SDRAM memory devices. This includes knowledge of JEDEC industry standards. Second, we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. Accordingly, a person of ordinary skill in the art would have had an advanced degree in electrical or computer engineering and two years working in the field, or a bachelor’s degree in such engineering disciplines and three years working in the field, where additional training could substitute for educational or research experience, and vice versa. Additionally, a person of ordinary skill in the art would have had knowledge about the design and operation of standardized DRAM and SDRAM memory modules and the operation of memory devices within those modules. We consider the resulting agreed-upon definition of the level of ordinary skill in the art to be consistent with the ’417 patent and the prior art of record.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Independent claim 1 recites memory devices arranged in ranks. Petitioner argues that a “rank” is “an independent set of one or more memory devices on a memory module that act together in response to command signals, including chip-select signals, to read or write the full bit-width of the memory module.” Pet. 26 (citing Ex. 1003 ¶ 126); Pet. Reply 1–2. Patent Owner disagrees that a rank can be a single memory device but states that “the Board need not resolve that dispute to address the parties’ arguments regarding the challenged claims” because Patent Owner “applies Petitioner’s proposed construction” “[s]olely for purposes of responding to this Petition.” PO Resp. 8–9. Patent Owner also apprises us of a construction of “rank” from related district court litigation. PO Resp. 8 (citing Ex. 2030, 12–15). Our Rules provide that “[a]ny prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the inter partes review proceeding will be considered.” 37 C.F.R. § 42.100(b). We have considered this construction, and we note that, like Petitioner’s proposed construction, it provides that a rank can be one memory device. See Ex. 2030, 14 (“Accordingly, the Court concludes a ‘rank’ can include a single memory device.”). In our patentability analysis, we adopt the construction of “rank” applied by both parties in this proceeding, and we need not engage in any further claim construction because there are no claim construction disputes that bear on the 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))). D. Alleged Obviousness of Claims 1–15 in View of Perego and JESD79-2” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Accordingly, based on the entirety of the trial record, we agree with Petitioner and find that Perego teaches the coupled circuitry and CAS latency as recited by the challenged claim. h) Objective evidence of non-obviousness Patent Owner does not present objective evidence of non-obviousness other than to respond to Petitioner’s assertion of evidence of “simultaneous invention.” PO Resp. 55. As discussed, the combination of Perego and JESD79-2 teaches or renders obvious all of the limitations of claim 1, and there is no objective evidence of non-obviousness in the record. i) Conclusion for Claim 1 We have considered the full trial record, and, for the reasons discussed above and based on Petitioner’s contentions and evidence, we conclude that claim 1 would have been obvious to a person of ordinary skill in the art based on the combined teachings of Perego and JESD79-2.” slip op. at 41
Patent outcomesUS 11,093,417 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,093,417 - PTAB · Jul 26, 2024 · IPR2024-00393 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1 and 3 on all asserted grounds, finding a reasonable likelihood that the Amit, Jacobsen, and Isaksson combination renders them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’518 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends as follows: A POSITA [(person of ordinary skill in the art)] would have a degree in electrical engineering, computer engineering, or a related field and experience working in signal processing and/or communication systems/networks, e.g., a bachelor’s and three or more years of experience; a master’s and at least one year of experience; or a doctorate and some work experience. Additional education could substitute for professional experience, or vice versa..” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that the challenged claims are “obvious under any reasonable interpretation,” so “no express constructions are required.” Pet. 3. Patent Owner does not offer construction of any claim term, so there is no dispute over claim construction that we need to resolve. We apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“and Jacobsen. Prelim. Rep. 36–41. Specifically, Patent Owner argues that Amit already identified and solved the reflection problem so there would be no need to make an additional modification to Amit. Id. at 36–37 (citing Ex. 1014, 19:65–20:43). This argument does not negate, however, Petitioner’s contention that a POSITA would have recognized that Jacobsen’s multicarrier modulation would improve upon Amit’s single-carrier modulation by mitigating distortion on the cable network, adapting to channel degradation, and providing increased computational efficiency. Pet. 49–50 (citing Ex. 1016, 312; Ex. 1004 ¶ 173); see KSR, 550 U.S. at 422 (motivation to combine established when POSITA would have appreciated the benefits achieved by the combination).” slip op. at 17
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,295,518 - PTAB · Jul 26, 2024 · IPR2024-00373 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–17 on all asserted grounds, finding a reasonable likelihood of unpatentability under § 103.
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 a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’249 patent on all challenges in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“deny institution under § 314(a) based on the factors set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 15–19 (§ II.B.4.i) (PTAB Sept. 6, 2017) (precedential) (“General Plastic”). Pet. 88–89; Prelim. Resp. 59–60. General Plastic addresses “[m]ultiple, staggered petitions challenging the same patent and same claims rais[ing] the potential for abuse.” General Plastic, Paper 19 at 17 (emphasis added). The parties point to no authority to support that General Plastic has ever been applied in the context of a reexamination filed before a petition similar to the facts of this case. We decline to consider further discretionary denial under General Plastic under the facts presented here.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating discretionary denial under § 325(d), the Board follows a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). The Advanced Bionics framework is further informed by the factors set forth in Becton, Dickinson” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends as follows: A POSITA would have had a Bachelor’s degree in electrical engineering, computer engineering, or a related field, and 2–3 years of experience in design or development of signal processing and communication systems or networks. . . . Additional education could substitute for professional experience, or vice-versa. Pet. 6 (citing Ex. 1002 ¶¶ 17–18). At this stage of the proceeding, Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we agree with and will use Petitioner’s proposed level for purposes of this Decision.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 7,594,249 - Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoAll claims unpatentablePTAB · Jul 15, 2024 · IPR2023-01321 · APJ Aaron W Moore · IPR · Final written decision
Claims 1–19 and 37–58 are unpatentable as obvious over Karlsson and Harbers, with Gotou or Braun added for certain dependent claims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“At institution, we adopted Petitioner’s proposal, except that we omitted the qualifier “at least” and set the level of experience at two years. See Ins. Dec. 8. In its Response, Patent Owner states that it “does not dispute the Board’s proposed level of ordinary skill.” PO Resp. 20. We accordingly maintain the level of ordinary skill in the art we adopted in the Institution Decision. B.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“At institution, we interpreted the term “light source” as the Specification defines it: “any system that is capable of receiving an electrical signal and producing light in response to the signal.” Inst. Dec. 8 (citing Ex. 1001, 17:7–10 (“As used herein, the term ‘light source’, LED or ‘solid state light source’ means any system that is capable of receiving an electrical signal and producing light in response to the signal.”)). Patent Owner agrees with that construction. See PO Resp. 20. However, the reason we interpreted “light source” in the institution decision was that there may have been a question about whether the individual “microbeams” described in the Beam reference were “light sources.” Because, as explained below, we do not reach the Beam grounds, we need not construe “light source” in this final decision. We further conclude that that no other express claim construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 8
- BurdenFwd all claims unpatentableDecided for petitioner
“III. CONCLUSION Petitioner has met its burden of showing that claims 1–19 and 37–58 of U.S. Patent 10,894,503 B2 are unpatentable.9” slip op. at 26
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We have reviewed Petitioner’s mapping of the claims to Karlsson (see Pet. 100–122) and conclude that Petitioner has shown that it discloses the subject matter of claim 1. As described above, Karlsson discloses a vehicle headlight system with a plurality of light clusters. The headlamps are capable of projecting light to illuminate sub-sections of a field-of-view with different illumination characteristics, the subsections being determined in response to sensor data indicating oncoming traffic. Control circuitry operates the light clusters and sensors obtain and provide data pertinent to the illumination requirements. A controller uses the sensor data to determine an illumination scheme that reduces illumination in a first subsection (i.e., one with the oncoming traffic) in order to reduce glare.” slip op. at 12
Patent outcomesUS 10,894,503 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 10,894,503 - Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoAll claims unpatentablePTAB · Jul 15, 2024 · IPR2023-00335 · APJ Aaron W Moore · IPR · Final written decision
Claims 1–19 and 37–58 are unpatentable as obvious over Karlsson and Harbers, with Gotou or Braun added for certain dependent claims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“At institution, we adopted Petitioner’s proposal, except that we omitted the qualifier “at least” and set the level of experience at two years. See Ins. Dec. 8. In its Response, Patent Owner states that it “does not dispute the Board’s proposed level of ordinary skill.” PO Resp. 20. We accordingly maintain the level of ordinary skill in the art we adopted in the Institution Decision. B.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“However, the reason we interpreted “light source” in the institution decision was that there may have been a question about whether the individual “microbeams” described in the Beam reference were “light sources.” Because, as explained below, we do not reach the Beam grounds, we need not construe “light source” in this final decision. We further conclude that that no other express claim construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 8
- BurdenDecided for petitioner
“We addressed this issue at institution, explaining that “we understand the asserted combinations” and that “[a]ssertions that both references disclose a particular claim element do not undermine or overly cloud Petitioner’s asserted combinations.” Inst. Dec. 14. That remains the case. Patent Owner’s attempt to spin some loose language in the Petition into “47 grounds” (PO Resp. 13) is not persuasive, particularly after the institution decision, in which we explained how we viewed the combinations presented by Petitioner. See Inst. Dec. 10–13. The combinations are simply not as multiplicated and complicated as Patent Owner contends, and Patent Owner acknowledged at the hearing that the alleged multiplicity did not prevent it from addressing any issue. See Tr. 36:1–2 (“[Q]: Which of these did you address in your papers? [A]: We address every single one for every single claim.”). Patent Owner also argues that “[the] lack of particularity is compounded by Petitioner’s other two petitions challenging the ’503 Patent that suffer the same lack of particularity issues––meaning Petitioner has asserted at least 149 grounds.” PO Resp. 32 (emphasis omitted). We again disagree with Patent Owner’s assessment of the number of “sub-grounds” at issue, and conclude, as we did at institution, that three petitions were justified given the number of asserted claims and differences in claim scope. See Inst. Dec. 14.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“This is not persuasive because Karlsson teaches that “light beam 7 . . . [is] controlled in such a manner that no light at all or light having a low intensity is emitted in those directions from which light is detected [such that] glaring or blinding of oncoming traffic is effectively prevented.” Ex. 1010, 9:18–26 (emphasis added); see Ex. 2006 ¶ 251. Light at a low intensity is “illumination,” even under the definition Patent Owner offers in the Response. See PO Resp. 64 (“The plain meaning of illuminate is ‘to supply or brighten with light’ or ‘to make luminous or shining.’”) That Petitioner may have described the shaded portions of Karlsson’s Figure 14 as having “no intensity,” is immaterial in view Karlsson’s “low intensity” disclosure, which Petitioner also cited. See Pet. 94–95.” slip op. at 13
Patent outcomesUS 10,894,503 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 10,894,503 - Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoSome claims unpatentablePTAB · Jul 15, 2024 · IPR2023-01320 · APJ Aaron W Moore · IPR · Final written decision
Claims 26–28, 30–36, 65–68, and 70 are unpatentable as obvious; claims 29 and 69 were not shown unpatentable because the asserted grounds did not establish sensed fog or snow.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“At institution, we adopted Petitioner’s proposal, except that we omitted the qualifier “at least” and set the level of experience at two years. See Inst. Dec. 8. In its Response, Patent Owner stated that it “does not dispute the Board’s proposed level of ordinary skill.” PO Resp. 3. We accordingly maintain the level of ordinary skill in the art we adopted in the Institution Decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“However, the reason we interpreted “light source” in the institution decision was that there was a question about whether the individual “microbeams” described in the Beam reference were “light sources.” See Inst. Dec. 11. Because, as explained below, we do not reach the Beam grounds, we need not construe “light source” in this final decision. We further find that that no other express claim construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 9
- BurdenMixed
“measurement by sensor 9 is not affected by “scattered reflected light” due to “dirty cover glass 19”). Moreover, even if fog or snow might make the cover glass “dirty” nothing in Karlsson senses that. Instead, the reference simply explains that the switching of the light is helpful if the glass happens to be dirty. Sensor 9 is used to detect light, such as from oncoming vehicles, not fog or snow (see Ex. 1010, 9:9–26), and none of the other passages of Karlsson cited in the Petition describe sensing fog or snow. Petitioner does not identify anything in Harbers that senses fog or snow, and we do not find a description of that ourselves. Harbers describes adjusting the light based on vehicle velocity, the position of the steering wheel, “weather conditions,” or road type (e.g., motorway or country road). See Ex. 1011, 3:27–4:32. It seems reasonable to assume that the velocity and position of the steering wheel are sensed, and the reference indicates that light distribution for road type can be adjusted “by the driver.” Id. at 4:22–25. The reference is silent, however, on how the adjustment based on “weather conditions” is made. Dr. Jiao cites a passage from Braun about how its “headlights . . . are programmed . . . to detect fog and . . . provide light appropriate for driving in fog” (see Ex. 1003 ¶ 590), but Braun is not included in this ground in the Petition (see Pet. 3), and neither Petitioner not Dr. Jiao attempts to provide a reason to combine Braun for these claims. We conclude that, in order to show that these claims would have been obvious, Petitioner would have needed to show that sensing would have been disclosed or inherent in the Harbers/Karlsson combination, obvious in view of Karlsson and Harbers, or that it would have been obvious to add Braun’s fog detection to the Karlsson/Harbers combination. As Petitioner did not argue an express or inherent disclosure of fog/snow sensing in Harbers/Karlsson, did not argue that it would have been obvious to use fog/snow sensing in the Karlsson/Harbers combination, and did not include Braun in the combination, we conclude that Petitioner has not shown that claims 29 and 69 are unpatentable” slip op. at 26
- Expert testimonyPetitioner expert creditedDecided for petitioner
“This argument is not persuasive because, we conclude, it overstates the problem. These claims require bluish light towards the center and yellowish light to the side. Were an oncoming vehicle in the yellow area, corresponding yellow lights would be dimmed. Were the oncoming vehicle then moved to straddle the yellow and blue areas, the corresponding yellow and blue lights would be dimmed. And if the vehicle were to move to the blue area, the corresponding blue lights would be dimmed. We agree with Dr. Jiao that one of ordinary skill in this art, which is fairly predictable, would be able to avoid or sufficiently minimize any color shifting problems. See Ex. 1051 ¶¶ 162–165. We also credit Dr. Jiao’s explanation that, in the combination, there would only be “subtle variations of illuminated color within the range, such as bluish white and yellowish white” and that “all light would be recognized as white light (as defined in standards and regulations)” that not would be problematic in practice. See id. ¶ 167.9” slip op. at 22
Patent outcomesUS 10,894,503 mixedClaim construction§ 103 obviousnessPatents in suitUS 10,894,503 - Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoSome claims unpatentablePTAB · Jul 15, 2024 · IPR2023-00328 · APJ Aaron W Moore · IPR · Final written decision
Claims 26–28, 30–36, 65–68, and 70 are unpatentable as obvious; claims 29 and 69 were not shown unpatentable because the grounds did not establish sensed fog or snow.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“At institution, we adopted Petitioner’s proposal, except that we omitted the qualifier “at least” and set the level of experience at two years. See Inst. Dec. 8. In its Response, Patent Owner stated that it “does not dispute the Board’s proposed level of ordinary skill.” PO Resp. 3. We accordingly maintain the level of ordinary skill in the art we adopted in the Institution Decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At institution, we interpreted the term “light source” as the Specification defines it: “any system that is capable of receiving an electrical signal and producing light in response to the signal.” Inst. Dec. 8 (citing Ex. 1001, 17:7–10 (“As used herein, the term ‘light source’, LED or ‘solid state light source’ means any system that is capable of receiving an electrical signal and producing light in response to the signal.”)). Patent Owner agrees with that construction. See PO Resp. 6. However, the reason we interpreted “light source” in the institution decision was that there was a question about whether the individual “microbeams” described in the Beam reference were “light sources.” See Inst. Dec. 11. Because, as explained below, we do not reach the Beam grounds, we need not construe “light source” in this final decision. We further find that that no other express claim construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 9
- BurdenDecided for petitioner
“We addressed this issue at institution, explaining that “we understand the asserted combinations” and that “[a]ssertions that both references disclose a particular claim element do not undermine or overly cloud Petitioner’s asserted combinations.” Inst. Dec. 15. That remains the case. Patent Owner’s attempt to spin some loose language in the Petition into “sixty-one grounds” (PO Resp. 7) is not persuasive, particularly after the institution decision, in which we explained how we viewed the combinations presented by Petitioner. See Inst. Dec. 11–13. The combinations are simply not as multiplicated and complicated as Patent Owner contends, and Patent Owner acknowledged at the hearing that the alleged multiplicity did not prevent it from addressing any issue. See Tr. 37:17–18 (“[Q]: Which of these did you address in your papers? [A]: We address every single one for every single claim.”). Patent Owner also argues that “[the] lack of particularity is compounded by Petitioner’s other two petitions challenging the ’503 Patent – Petitions that similarly implicate massive numbers of sub-grounds and comparably lacking particularity – resulting in Petitioner asserting at least 149 sub-grounds.” PO Resp. 19 (emphasis omitted). We again disagree with Patent Owner’s assessment of the number of “sub-grounds” at issue, and conclude, as we did at institution, that three petitions were justified given the number of asserted claims and differences in claim scope. See Inst. Dec. 15. D.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“a. Motivation to Combine Patent Owner first argues that “Harbers curved substrate alone has not been shown to add anything useful to the combination.” Patent Owner 56. This argument is unpersuasive because the combination does not require a curved substrate and Patent Owner does not address the motivation for the combination identified by Petitioner, which is that Harbers’ illumination schemes would have provided “improved visibility for different functions, thereby increasing safety.” See Pet. 82–84 (citing Ex. 1011, 5:14–26, 6:1–7, 6:27–7:19, 8:10–18, Figs. 1B–2; Ex. 1003 ¶ 450). b. Segmentation and Color Shifting Patent Owner next argues that “without segmentation the motivation to use Harbers hardware alone is lacking” and that “[f]urther, the use of Harbers’ colored array creates a color-shifting problem.” PO Resp. 57. With regard to “segmentation,” Patent Owner cities Section VII.A.2.b of the Response, which argues that “[w]hile the system would have included differently colored LEDs, there still would not be a single component of the combination that would have any idea how to segment the beams as Harbers suggests.” PO Resp. 34. We disagree. The combination contemplates use of Harbers’ illumination scheme, and Harbers explains, in connection with Figure 2, for example, how the light sources are controlled to produce the desired illumination pattern. See Ex. 1011, 7:20–9:6.” slip op. at 21
Patent outcomesUS 10,894,503 mixedClaim construction§ 103 obviousnessPatents in suitUS 10,894,503
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.