• Walt Disney Parks And Resorts U.S., Inc. v. Raven Sun Creative, Inc.Instituted
  PTAB · Apr 3, 2023 · IPR2022-01605 · APJ Michael L Woods · IPR · Institution

  The Board instituted IPR of claims 1 and 2 on all asserted grounds, finding a reasonable likelihood that both claims would have been obvious over Schreibfeder.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “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. 5 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. Interim Procedure 9 (emphasis added); see also PO Sur-Reply 5 (acknowledging that Petitioner stipulated after the Patent Owner’s Preliminary Response was filed). Under the Interim Procedure, “the PTAB will not deny institution of an IPR . . . 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 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). This is what Petitioner stipulates. Ex. 1021; see Reply 4 n.1 (stating that Petitioner is filing a “Sotera stipulation,” which “precludes discretionary denial” under the Interim Procedure); Sur-Reply 5. Accordingly, we decline to deny institution under Fintiv.” slip op. at 8

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “an inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under Section 325(d), specifically: (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”). Turning to the first prong of Advanced Bionics, neither Schreibfeder nor Threlkel was cited during prosecution of the ’028 patent. See Ex. 1002; see also Ex. 1001, code (56). Further, we do not find anything in the prosecution history of the ’028 patent, such as an office action on the merits, that suggests the Examiner considered “the same or substantially the same prior art” as these references. See Ex. 1002. We disagree with Patent Owner that the Examiner considered “the same prior art” simply because Schreibfeder or Threlkel may have fallen within the same classes searched by the Examiner. See Sur-Reply 3. We are aware of no authority, and Patent Owner cites none, to support this position. Because we do not find that the same or substantially the same art or” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had a minimum of a B.S. in engineering or a related field, as well as four to six years of industry experience designing or building amusement rides or motion simulator systems. Higher education by way of advanced degrees in a related field could substitute for years of experience. Pet. 6 (citing Ex. 1003 ¶ 43). Patent Owner does not dispute Petitioner’s definition of a POSITA. See generally, Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as we find that it is consistent with the ’028 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “controller” “should be construed as ‘one or more computer-based devices that issue control signals to engage and control the projector, the motor system, and actuator system.’” Pet. 7 (citing Ex. 1020). Patent Owner similarly proposes that the term “controller” should be construed as “one or more computer-based devices that issue control signals to engage and control the projector, the motor system, and actuator system.” See Prelim. Resp. 12. As both parties propose identical interpretations of the term “controller” (compare Pet. 7, with Prelim. Resp. 2), and Patent Owner at this time does not dispute that the asserted prior art (Schreibfeder) teaches the recited “controller,” this term is not in controversy, and we do not construe it in this Decision. See infra Section III.E.3.h; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 12

  Claim construction§ 103 obviousnessDiscretionary denialcites Graham
  Patents in suitUS 9,266,028
• Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCSome claims unpatentable
  PTAB · Dec 9, 2015 · IPR2014-01149 · APJ William A Capp · IPR · Final written decision

  Claims 18–22 and 43–44, 46–49 are unpatentable as obvious; claims 25–26, 55–59, and 62–63 were not shown unpatentable.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “The complete exclusion of Dr. Cimini’s testimony is not warranted or necessary here. Intellectual Ventures argues that the instant dispute concerning Dr. Cimini’s testimony should not affect the admissibility of his opinion, but merely the weight the Board accords his opinion. Paper 49, 12. This is the path we choose to follow. By shielding Dr. Cimini from the Robertson CMS reference so that he did not address it in his declaration and was unprepared to testify about it at this deposition, Intellectual Ventures deprived itself of an opportunity to respond to Ericsson’s case. Accordingly, we DENY Ericsson’s motion to exclude 60–65, 79, 80, and 93 of Dr. Cimini’s declaration testimony (Ex. 2009), but discount the weight to be given such testimony in light of the foregoing discussion.” slip op. at 9

  • Adverse judgmentDenied

    “Under 37 C.F.R. § 42.73, a party may obtain termination of a proceeding by requesting entry of adverse judgment. However, we do not interpret Ericsson’s request as a request for entry of adverse judgment. To the contrary, we view Ericsson’s motion as an effort to prevent entry of an adverse judgment under circumstances where Ericsson reserves the right to challenge the patentability of claims 55–59, in this or another forum. Finally, Ericsson relies on our extraordinary and discretionary powers under 37 C.F.R. § 42.5(a) as a basis for grant of the relief sought. In denying Ericsson’s previous motion to correct the petition, we considered whether it was an appropriate exercise of our extraordinary powers to allow Ericsson to correct its petition. Paper 31, 14–15. We concluded that it was not. Id. Many of the same considerations that informed our decision to deny Ericsson’s motion to correct its petition also militate against a grant of relief in the instant situation.” slip op. at 20

  • BurdenFwd mixedNot shown unpatentable

    “Ericsson concedes that the mistake in its Petition with respect to claims 55–59 is a “fatal flaw” and, consequently, it wants to remove those claims from the proceeding. Tr. 74:3–8, a copy/paste error that originated in Mr. Lanning’s Declaration resulted in a deficient analysis of independent claims 55 and its dependent claims 56–59 . . . [a]t this point in the trial, both Patent Owner and Petitioner agree that the Petition is defective with respect to claim 55–59. Paper 52, 5–6. In view of the foregoing, we find that Ericsson has failed to carry its burden of proof with respect to the unpatentability of independent claim 55 and claims 56–59 that depend therefrom.” slip op. at 23

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “In our Decision to Institute, we construed “systematic convolutional encoder” on a preliminary basis, as an encoder that may output both encoded data and also original data (or its equivalent). In the Decision to Institute, we criticized Ericsson’s proposed construction because it focused on what it means for a coding system to be systematic to the exclusion of how the adjective “convolutional” also modifies the word “encoder.” DI 8–9. Similarly, we criticized Intellectual Ventures’s proposed construction because it focused on what it means for a coding system to be “convolutional,” to the exclusion of what it means to be “systematic.” Id. at 9. In the Decision to Institute, we admonished the parties to give 18 Claim 18 claims a “systematic recursive convolutional encoder.” Ex. 1001, 25:49. 19 Claim 43 is a method claim that claims “systematic convolutional encoded output elements.” Ex. 1001, 29:57. 20 Claim 55 is a method claim that claims “systematic convolutional encoded intermediate output elements.” Ex. 1001, 30:61–62. 21 Claim 62 is a method claim that claims “systematic convolutional encoded output elements.” Ex. 1001, 31:60–61. attention to our points of criticism in their respective Patent Owner’s Response and Petitioner’s Reply. Id. We instituted a trial on less than all challenged claims. DI. In particular, we did not institute a trial on claim 6. DI 14. In its Patent Owner’s Response, Intellectual Ventures indicated that the Board need not construe this term to resolve the instituted grounds. PO Resp. 13. In its Petitioner’s Reply, Ericsson simply states that it agrees with the Board’s claim construction in the Decision to Institute. Reply 6. The parties’ respective positions, as developed in Intellectual Ventures’s Patent Owner’s Response and Ericsson’s Reply do not rely on competing constructions of this term. Accordingly, we do not modify the construction of this term as set forth in our Decision to Institute. 2. “coded output elements” - “encoded output elements” (Claims 18, 19,” slip op. at 24

  Patent outcomesUS 6,023,783 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,023,783
• Google Inc. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Dec 7, 2015 · IPR2014-01031 · APJ William A Capp · IPR · Final written decision

  Claims 1–8 and 21–27 are unpatentable: claims 1–6, 8, and 21–26 are anticipated by Pierzga, and the remaining claims are obvious over the stated combinations.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Rule 901 of the Federal Rules of Evidence provides that the requirement of admissibility is satisfied by evidence sufficient to support a finding that the material in question is what its proponent claims. The burden of proof for authentication is “slight.” Lexington Ins. Co. v. W. Penn. Hosp, 423 F.3d 318, 329 (3d Cir. 2005). Rule 901(b) lists nine examples of authentication techniques, the list of examples is not intended to be exclusive. United States v. Simpson, 152 F.3d 1241, 1249–50 (10th Cir. 1998). Rule 901(a) merely prescribes that a proponent produce sufficient evidence of authenticity to support a prima facie case that the item is genuine. Rickets v. City of Hartford, 74 F.3d 1397, 1409–11 (2d Cir. 1996). Courts maintain that a bona fide dispute as to the authenticity of evidence generally should be decided by the trier of fact. See id. Conflicting evidence of authenticity goes to weight, not admissibility, as long as some reasonable person could believe that the item is what it is claimed to be. Id. at 1411. In light of Dr. Madisetti’s testimony based on his personal experience and observation of the author/publisher and the reliability of the dates of publication that appear on the face of its publications, we find that Google has a laid a sufficient foundation for admission of Exhibit 1003 over Intellectual Ventures’s objection. Exhibit 1003 is not hearsay as it is not offered for its truth, but merely for what it states. We DENY Intellectual Ventures’s motion to exclude Exhibit 1003 and Exhibit 1019.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Rule 901 of the Federal Rules of Evidence provides that the requirement of admissibility is satisfied by evidence sufficient to support a finding that the material in question is what its proponent claims. The burden of proof for authentication is “slight.” Lexington Ins. Co. v. W. Penn. Hosp, 423 F.3d 318, 329 (3d Cir. 2005). Rule 901(b) lists nine examples of authentication techniques, the list of examples is not intended to be exclusive. United States v. Simpson, 152 F.3d 1241, 1249–50 (10th Cir. 1998). Rule 901(a) merely prescribes that a proponent produce sufficient evidence of authenticity to support a prima facie case that the item is genuine. Rickets v. City of Hartford, 74 F.3d 1397, 1409–11 (2d Cir. 1996). Courts maintain that a bona fide dispute as to the authenticity of evidence generally should be decided by the trier of fact. See id. Conflicting evidence of authenticity goes to weight, not admissibility, as long as some reasonable person could believe that the item is what it is claimed to be. Id. at 1411. In light of Dr. Madisetti’s testimony based on his personal experience and observation of the author/publisher and the reliability of the dates of publication that appear on the face of its publications, we find that Google has a laid a sufficient foundation for admission of Exhibit 1003 over Intellectual Ventures’s objection. Exhibit 1003 is not hearsay as it is not offered for its truth, but merely for what it states. We DENY Intellectual Ventures’s motion to exclude Exhibit 1003 and Exhibit 1019.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “alternative depending on the context of its use. Pet. 13–14 (“Skilled persons would . . . understand that either of these definitions applies”). Google further argues that the ’353 patent uses “bandwidth” as synonymous with data rate. Id. Google’s position that the ’353 patent uses bandwidth as synonymous with data rate is contradicted by the prosecution history evidence discussed above where the claims were amended essentially to substitute “bandwidth” for “chip rate” to distinguish over Boer’s disclosure of variable data rates. Thus, the intrinsic record supports a meaning of “bandwidth” that more closely conforms to definition number 1 above. We agree with Intellectual Ventures that, in the context of the ’353 patent, “bandwidth” does not mean “data rate” or “data transfer rate.” In view of the foregoing, we retain the same construction for “bandwidth” that we adopted for purposes of the Decision to Institute. Thus, for purposes of this Final Written Decision, we construe “bandwidth” to mean “a frequency range.” For purposes of clarification, we will provide the following example: a band of frequencies with a lower cut-off frequency of 10 MHz and an upper cut-off frequency of 40 MHz has a “bandwidth” of 30 MHz. 2. indication of operating bandwidth (claims 1, 21)” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “A person of ordinary skill in the art reading the Specification of the ’353 patent, as a whole, would understand that the “operating bandwidth” of claims 1 and 21 is the frequency range or bandwidth that is used for the transport channel. The person of ordinary skill in the art would also understand that the operating bandwidth is coordinated between the transmitter and the receiver using logic and filtering so that the frequency range that the transmitter uses to transmit the data portion of the signal is compatible with the frequency range that the receiver uses to receive the data. See Ex. 1001, claims 21, 22. In other words, the system operates at a range of frequencies, i.e., the “operating bandwidth,” that enables the receiver to receive what the transmitter has transmitted. Intellectual Ventures’s proposed construction merely substitutes the word “identification” in lieu of “indication” and then inserts the word “particular” as a modifier to “operating bandwidth.” Substituting “identification” for “indication” does nothing to clarify the meaning of this phrase. Furthermore, we do not agree with Intellectual Ventures that interjection of the word “particular” into the construction contributes anything meaningful to an understanding of the term. Thus, for purposes of this Decision, it is sufficient to construe “indication of an operating bandwidth” to mean that the first signal portion contains sufficient information so that when it is received, the receiver is able to configure itself to receive the data portion of the signal (or “further signal portion” or “transport channel”) at approximately the same frequency range or bandwidth at which it will be transmitted by the transmitter.11 11 In further regard to Intellectual Ventures’s contention that the bandwidth indication must be “particular,” we express no opinion as to whether the receiver must be set to the exact same lower cut-off frequency and upper cut-off frequency as the transmitter as a slightly narrower or broader transmitter or receiver bandwidth may still be adequate to transmit and receive the information contained in the signal and thus function as an “operating bandwidth.” The key consideration is that the receiver is able to receive the data that the transmitter transmits.” slip op. at 22

  Patent outcomesUS 7,848,353 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,848,353
• Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Dec 7, 2015 · IPR2014-00915 · APJ William A Capp · IPR · Final written decision

  Claims 6–10 and 28–32 are unpatentable as obvious over the specified combinations based on McFarland and over the specified combinations based on Trompower.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “We think Exhibit 1012 is probative of whether Trompower is analogous art to the ’079 patent and will admit it for this limited purpose. We DENY Intellectual Ventures’ motion to exclude Exhibit 1012.” slip op. at 7

  • Skill levelSkill level board ownOther

    “Neither party presents a detailed evidentiary showing under the factors recited in Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696– 97 (Fed. Cir. 1983).24 Notwithstanding the scant evidence on skill level presented by the parties, the level of skill in the art often can be determined from a review of the prior art. See Litton Indus. Products, Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985). Based on our review of the prior art, the applicable field of endeavor is wireless telecommunication. The person of ordinary skill in this field would have been generally familiar with transmitting information using packets that included a header portion and a data portion. Ex. 1002, 6:64– 24 Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field. Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. See id. These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). 7:3. The person of ordinary skill in the art would have been familiar with techniques for varying the signal rate and the occupied bandwidth of a signal on a packet-by-packet basis. Id. at 7:4–15. The ordinarily skilled artisan also would have been familiar with the fundamentals of OFDM communications technology. Id. 1:18–2:61. Such fundamentals of OFDM communications would have included synchronizing the timing and frequency of OFDM signals. Ex. 1003, 7:1–8, 9:1–23. The skilled artisan also would have been familiar with the basic principles underlying spread spectrum communication technology. Ex. 1007, Abstract. Such an artisan would have been familiar with modulating carrier waves, varying the modulation scheme used in different packet/signals, and synchronizing the modulation scheme between a transmitter and a receiver. Ex. 1004, 2:14– 19; 10:48–11:3. The person of ordinary skill in the art would also have familiarity with using Node-Bs in a UMTS environment. Ex. 1005; Ex. 1006.” slip op. at 41

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We think that Ericsson’s position is correct. Trompower discloses that: “for a given communication . . . the mobile terminal and the base station can adjust the PN code length and the chipping rate.” Ex. 1007, 5:42–44 (emphasis added); Ex. 1015 ¶ 49. Dr. Haas’s testimony at paragraphs 49–54 of his declaration is corroborated by statements in Trompower that the system can increase or decrease its spectral bandwidth depending on conditions. Ex. 1007, 6:27–39. 26 This change in spectral bandwidth is accomplished in connection with information that is gleaned from the header of a packet: The demodulator 814 demodulates the PN coded signal from the carrier frequency and forwards the PN coded signal to the filter 816. Prior to receiving the PN coded signal, the filter 816 receives the PN code chipping rate value signal from the microprocessor 730 and adjusts its spectral bandwidth based on the PN code chipping rate value received. Ex. 1007, 33:39–45. Thus, we agree with Ericsson that there is no material difference between the prior art and claimed invention with the respect to the “indication of an operating bandwidth” limitation in claims 6 and 28. 2. Claims 7, 10, and 29” slip op. at 54

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “As modern telecommunications technology has developed over time, the term “bandwidth” has acquired more than one meaning. For example, one on-line dictionary provides the following two definitions: 1: a range within a band of wavelengths, frequencies, or energies; especially: a range of radio frequencies which is occupied by a modulated carrier wave, which is assigned to a service, or over which a device can operate. 2: the capacity for data transfer of an electronic communications system (graphics consume more bandwidth than text does); especially: the maximum data transfer rate of such a system (a bandwidth of 56 kilobits per second). www.merriam-webster.com/dictionary/bandwidth (last visited October 16, 2015). The parties’ proposed constructions appear to agree that the term “bandwidth,” as used in the claims of the ’079 patent, more closely conforms to definition number 1 above. Such a construction is supported by the prosecution history of the ’353 patent where the claims were amended essentially to substitute “bandwidth” or “bandwidth determined by . . . chip rate” for “chip rate” to distinguish over the Boer reference. In view of the foregoing, we retain the same construction for “bandwidth” that we adopted for purposes of the Decision to Institute. Thus, for purposes of this Final Written Decision, we construe “bandwidth” to mean “a frequency range.” For purposes of clarification, we will provide the following example: a band of frequencies with a lower cut-off frequency of 10 MHz and an upper cut-off frequency of 40 MHz has a “bandwidth” of 30 MHz.” slip op. at 17

  Patent outcomesUS 8,396,079 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,396,079
• Seoul Semiconductor Co., Ltd / North America Seoul Semiconductor Inc. v. Enplas CorporationAll claims unpatentable
  PTAB · Oct 15, 2015 · IPR2014-00878 · APJ Jeremy M Plenzler · IPR · Final written decision

  Claims 1, 2, 5–7, and 10–12 are unpatentable as obvious over the instituted combinations of Tetsuo with Kim or Blieske, with Yamaguchi for claims 10 and 11.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “lexicographical definition for the “light control/emission surface,” and, instead, “merely describes an embodiment of a light control/emission surface.” Pet. Reply 2. Petitioner proposes that we construe this term in the manner stated in our Decision to Institute (Pet. Reply 4 (citing Dec. 7)), where we construed the term “as only requiring a ‘surface that controls a traveling direction of light emitted from the light emitting element’” (Dec. 7). We agree with Petitioner. Patent Owner has failed to persuade us that the cited portions of the Specification of the ’969 patent provide a definition of this term with reasonable clarity, deliberateness, and precision. Although the Specification of the ’969 patent provides the example of light control/emission surface 11 including first, second, and third emission surfaces 11a, 11b, 11c (Ex. 1001, 7:20–42), Patent Owner fails to identify anything in the Specification indicating that these three emission surfaces are required for the claimed “light control/emission surface.” The initial discussion of light controlling emission surface 11 states that “light controlling emission surface 11” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “to arrange optical elements on the back of a light flux controlling member. Id. at 33 (citing Ex. 1003 ¶¶ 32–33). Petitioner contends that one skilled in the art would have needed to select an arrangement for Tetsuo’s refraction parts, and would have considered the grid pattern taught by Kim to be one obvious option. Id. Petitioner reasons, for example, that it would have been obvious to one skilled in the art to use a grid pattern to arrange the refraction parts on the back of Tetsuo’s light flux controlling member because “Kim also identifies specific benefits from providing a grid of horizontal and perpendicular grooves between optical elements on the light incoming side of a lens” including “uniform output brightness from the light flux controlling member,” which would have been beneficial to the arrangement in Tetsuo. Id. at 33–34 (citing Ex. 1005, 2:35–37; Ex. 1004 ¶¶ 6–7).” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Patent Owner responds with general allegations of “teaching away” and “impermissible hindsight,” but does not explain persuasively why one skilled in the art would have been discouraged from the proposed modification or why it was based solely on the disclosure of the ’969 patent. PO Resp. 27–30. For example, Patent Owner alleges, generally, that “Petitioners’ position requires one of skill in the art to ‘disassemble the single lens of Kim’ at the point of novelty of the Claims, to provide a surface taught away from by Tetsuo, which employs a different type of surface.” Id. at 28.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner

    “Patent Owner responds with general allegations of “teaching away” and “impermissible hindsight,” but does not explain persuasively why one skilled in the art would have been discouraged from the proposed modification or why it was based solely on the disclosure of the ’969 patent. PO Resp. 27–30. For example, Patent Owner alleges, generally, that “Petitioners’ position requires one of skill in the art to ‘disassemble the single lens of Kim’ at the point of novelty of the Claims, to provide a surface taught away from by Tetsuo, which employs a different type of surface.” Id. at 28.” slip op. at 15

  Patent outcomesUS 8,227,969 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,227,969
• Edmund Optics, Inc. v. Semrock, Inc.No claims unpatentable
  PTAB · Sep 16, 2015 · IPR2014-00599 · APJ William A Capp · IPR · Final written decision

  Claims 33–36, 39–41, 44, and 45 were not shown unpatentable: MacLeod did not enable claim 33 for anticipation, and Edmund did not establish obviousness over MacLeod.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “After considering claim 33 in view of the specification, as a whole, we are not persuaded that the intrinsic record requires a departure from the plain and ordinary meaning of “multi-layer, thin-film, laser-line filters.” The standard for finding claim scope disavowal is exacting. See GE Lighting Solutions, LLC v. Agilight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). It is not enough that the only embodiments, or all of the embodiments, contain a particular limitation. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). Mere criticism of a particular embodiment encompassed in the plain meaning of a claim term is not sufficient to rise to the level of clear disavowal. See Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009). Furthermore, even where a particular structure makes it “particularly difficult” to obtain certain benefits of the claimed invention, this does not rise to the level of disavowal of the structure. See Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1315 (Fed. Cir. 2010). It is the claims that define the metes and bounds of the patentee’s invention. See Phillips, 415 F.3d at 1313. Thus, the patentee is free to choose a broad term and expect to obtain the full scope of its plain and ordinary meaning unless the patentee explicitly redefines the term or disavows its full scope. See Thorner, 669 F.3d at 1366. Each claim does not need to cover every feature disclosed in a specification. See Ventana Med. Sys., Inc. v. Biogenex Labs, Inc., 473 F.3d 1173, 1182 (Fed. Cir. 2006). When a claim addresses only some of the features disclosed in the specification, it is improper to limit the claim to other, unclaimed features.” slip op. at 14

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached

    “The MacLeod Treatise is a non-patent, printed publication. Edmund relies on In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012), for the proposition that a non-patent, printed publication is presumptively enabled for purposes of an anticipation analysis. Paper 69, 1. Semrock distinguishes Antor Media as being restricted to the context of patent prosecution. Paper 68, 3. The Court, in Antor Media, explained the underlying rationale for permitting a presumption of enablement during patent prosecution. [A]n examiner, who has no access to experts or laboratories, is not in a position to test each piece of prior art for enablement in citing it, and requiring him to do so would be onerous, if not impossible. An examiner, therefore, is not required to anticipate every possible response to a rejection, including showing that a cited reference is enabling. Consistent with the statutory frame-work and our precedent, we therefore hold that, during patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication or patent without conducting an inquiry into whether or not that prior art reference is enabling. As long as an examiner makes a proper prima facie case of anticipation by giving adequate notice under § 132, the burden shifts to the applicant to submit rebuttal evidence of nonenablement. Antor Media, 689 F.3d at 1289. In the case of Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003), the Federal Circuit held that an accused infringer should be entitled to have a district court presume the enablement of unclaimed material in a prior art patent asserted against a patentee. Id. at 1355. In dicta, the Amgen Court stated that its reasoning “might” also apply to prior art printed publications. We note that by logical extension, our reasoning here might also apply to prior art printed publications as well, but as Sugimoto is a patent we need not and do not so decide today. See id. (emphasis added). Thus, the Amgen Court did not reach that issue in its decision. See id. District Courts are split on this issue. We note that at least one district court decision has held that a district court should presume that a prior art printed publication is enabled. See Robocast, Inc. v. Apple Inc., 39 F. Supp. 3d 552, 565 (D. Del. 2014). Other district courts maintain otherwise. See e.g., CA, Inc. v. Simple.com., Inc., 780 F. Supp. 2d 196, 250 (E.D.N.Y. 2009); Matsushita Elec. Indus. Co. v. Samsung Electronics Co., 2006 WL 1794768, *5 (D.N.J. June 26, 2006).” slip op. at 21

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “G. Ultimate Determination of Enablement A patent claim “cannot be anticipated by a prior art reference if the allegedly anticipatory [disclosure] cited as prior art [is] not enabled.” In re NTP, Inc., 654 F.3d 1279, 1301 (Fed. Cir. 2011). Although anticipation is a question of fact, whether a prior art reference is enabling is a question of law with underlying factual inquiries. Id. The standard for what constitutes proper enablement of a prior art reference for purposes of anticipation under section 102 differs from the enablement standard for a patent application under section 112. See Verizon Services Corp., v. Cox Fibernet Virginia, Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010). Anticipation does not require the actual creation or reduction to practice of the prior art subject matter; anticipation requires only an enabling disclosure. See Schering Corp., v. Geneva Pharma, Inc., 339 F.3d 1373, 1380 (Fed. Cir. 2003); citing In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985). Nevertheless, we determine that the MacLeod Treatise does not enable claim 33. Claim 33 is directed to optical performance parameters. There is no dispute that multi-layer, thin-film, laser-line filters comprised of alternating layers of ZnS and Cryolite were known in the prior art. Thus, Semrock distinguishes its invention over prior art soft-coated filters on the basis of optical performance, not on the basis of using the basic structure of alternating layers of refractive materials with Fabry-Perot cavities. Upon consideration of the various Wands factors, including the absence of any working examples that demonstrate that Edmund’s theoretical calculations are capable of realization, we conclude that Semrock has carried its burden of showing that the MacLeod Treatise does not enable claim 33.” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable

    “By waiting and filing its expert declaration after Semrock filed its Patent Owner Response, Edmund effectively precluded Semrock from addressing Professor MacLeod’s Exhibit 1029 declaration in its Response. This also effectively precluded Semrock’s expert, Dr. Rancourt, from responding to Professor MacLeod’s belated testimony in his declaration that was filed in support of Semrock’s Response. We will not countenance such tactics. See Murphy v. Village of Hoffman Estates, 1999 U.S. Dist. LEXIS 3320, at *5–6 (N.D. Ill. 1999) (“[I]t is established beyond peradventure that it is improper to sandbag one’s opponent by raising new matter in reply.”). A Reply that belatedly presents evidence will not be considered. Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767. Edmund’s original Petition asserted a ground of unpatentability over the ZnS/Cryolite of Figure 7.26 of the MacLeod Treatise. If Edmund wanted to present a ground of unpatentability over the ZnS/Cryolite embodiment of Figure 7.26 in combination with a tantala/silica embodiment, Edmund should have presented evidence as to how and why a person of ordinary skill in the art would have combined the two embodiments to achieve the invention of claim 33 contemporaneous with the filing of its original Petition. See KSR, 550 U.S. at 418 (requiring articulated reasoning with rationale underpinning as to how or why a person of ordinary skill in the art would have combined or modified the teachings of the prior art). Presenting such evidence and argument for the first time in a Reply is untimely.” slip op. at 43

  Patent outcomesUS 7,119,960 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,119,960
• Edmund Optics, Inc. v. Semrock, Inc.No claims unpatentable
  PTAB · Sep 9, 2015 · IPR2014-00583 · APJ William A Capp · IPR · Final written decision

  Claim 1 was not shown unpatentable because Starke does not disclose the expected deposition time for an entire layer required by the Board’s construction.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “From this disclosure, we conclude that the ti referred to in line 10 of column 10 is the same ti referred to in connection with layers that are not optically monitored. If, as Edmund contends, ti represents an estimated remaining time until deposition is terminated and is calculated repeatedly and intermittently reset during deposition, the time represented by ti becomes a moving target and the time represented by 95% of ti becomes increasingly smaller until it approaches and becomes essentially equal to the “new deposition time” identified in line 11 as the time difference between a hypothetical continually recalculated ti and a “new deposition time” approaches zero. See Ex. 1001, 10:11. We think the better interpretation is that the ti identified in line 11 is a different and distinct time from the “new deposition duration” identified later in the same line of the specification. In other words, for optically monitored layers, ti is calculated one time at or before commencement of deposition of an optically monitored layer. Another time, represented by 95% of ti is then calculated one time such that it becomes a fixed moment in time for initiation of a calculation of a “new deposition duration.” Thus, based on our review of the specification, the term “expected deposition time ti” has the same meaning for layers that are optically monitored and layers that are not optically monitored. In view of the foregoing, we construe “expected deposition time ti of the layer” to mean a time based upon the designed (“theoretical”) thickness di and deposition rate ri where the designed thickness di represents the thickness of an entire layer, not a portion thereof. 2. “measuring during deposition for a period less than ti, a measured” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Edmund’s position on whether Starke calculates an “expected deposition time ti” is predicated on the Board adopting Edmund’s proposed claim construction. We do not adopt that construction. Starke’s system depends on taking optical monitoring transmission measurements after deposition has commenced. Edmund fails to identify any disclosure in Starke that a data processor calculates an expected deposition time ti based on the design thickness of an entire layer. Thus, Starke does not satisfy the limitation directed to calculating an “expected deposition time ti” as we have construed that limitation. “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). Inasmuch as Starke fails to disclose all elements of claim 1, we find that Edmund has failed to establish, by a preponderance of the evidence, that Starke anticipates claim 1.” slip op. at 16

  • Expert testimonyPetitioner expert discountedPatent owner expert discountedOther

    “At the outset, we have considered the claim construction testimony of both Patent Owner’s Declarant, Dr. Rancourt, and Petitioner’s Declarant, Professor MacLeod. We note, however, that “conclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court.” Phillips, 415 F.3d at 1318.2 In the instant case, the experts’ testimony does little more than repeat, without citation to additional evidence, the conclusory arguments of their respective counsel. Thus, we focus primarily on the intrinsic record to construe the term at issue. Id. (“extrinsic evidence in general is less reliable than the patent and its prosecution history in determining how to read claim terms”).” slip op. at 7

  • ExcludeMotion to exclude, deniedDenied

    “its own expert, Professor MacLeod, in a different, but related, inter partes review. Edmund argues that it is improper to take cross-examination testimony obtained in one case and then use it another case. Edmund also argues that the cross-examination exceeds the scope of direction examination. Paper 45. The testimony in question goes to an issue of claim construction. We have previously explained that our claim construction in this case is based primarily on the intrinsic record and that the parties’ proffered expert testimony is neither needed nor helpful in assisting our claim construction efforts.3 Nevertheless, we DENY Edmund’s motion to exclude Professor MacLeod’s Exhibit 2008 deposition testimony, but afford the testimony little weight.” slip op. at 17

  Patent outcomesUS 7,068,430 not shown unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 7,068,430

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.