• Dynaenergetics Europe GmbH / Dynaenergetics US, Inc. v. Qinetiq LimitedNo claims unpatentable
  PTAB · Apr 11, 2024 · PGR2023-00003 · APJ William A Capp · PGR · Final written decision

  The Board held claims 1–5 not unpatentable; Petitioner failed to prove its asserted §101, §102, §103, and §112 grounds, including indefiniteness and written-description challenges.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “prevail, Petitioner bears the burden to demonstrate that the challenged claims are unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). The standard of proof is preponderance of the evidence. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). We have jurisdiction under 35 U.S.C. § 6.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill Petitioner’s expert, Mr. Serra testifies that he is familiar with the” slip op. at 45

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

    “process of claim 1. The first principal decision is the selection of a known liner design from a library that is made at the beginning of the design process. The second principal decision is made at the conclusion of the design process where a “final liner design” emerges after hole shapes produced by modified liners converge toward the desired hole shape. A person of ordinary skill in the art, having read claim 1 in context, would understand that the term “optimized” in the claim refers to the hole shape of the known liner design that is selected from among the known liner designs in the library during the selection step of the claim. A person of ordinary skill in the art would similarly understand that the design that is chosen in the initial selection process is “optimized” with respect to the population of known liner designs in the library as opposed to being “optimized” relative to liner designs produced during the later varying and modelling steps of the design process.” slip op. at 26

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “Accordingly, Petitioner has not shown that claims 1–5 of the ’039” slip op. at 22

  Patent outcomesUS 11,215,039 not shown unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Bilski · Phillips · Markman · Nautilus
  Patents in suitUS 11,215,039
• Dynaenergetics Europe GmbH / Dynaenergetics US, Inc. v. Qinetiq LimitedInstituted
  PTAB · Apr 13, 2023 · PGR2023-00003 · APJ William A Capp · PGR · Institution

  The Board instituted PGR on claims 1–5 after finding claim 1 more likely than not anticipated by Davison.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Petitioner alleges that Davison discloses each limitation of claim 1. Pet. 54–61. Petitioner recites each individual element of claim 1 in a subheading and then, beneath each such subheading, offers allegations as to how such recited element is satisfied by Davison. Id. Petitioner’s allegations are supported by citations to Davison and to Mr. Serra’s declaration (Ex. 1003). Id. Petitioner’s allegations are further supported by annotated drawings from Davison. Pet. 58. Having reviewed the Petition, the Davison reference, and Mr. Serra’s declaration, and further in light of the fact that QinetiQ has not filed a preliminary response in opposition to the Petition, it appears to us that Petitioner’s allegations have sufficient evidentiary support to warrant exercise of our discretion to institute a trial. Indeed, on this record, the steps of Davison’s iterative process quoted above sufficiently track the steps of the claimed process that no further explanation is required at this stage of the proceeding. IV. CONCLUSION Petitioner has shown that is more likely than not the that claim 1 is anticipated by Davison. Under prevailing law, a determination that any one claim is more likely than not unpatentable permits institution of a trial on all challenged claims. SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1356 (2018). We have not, however, made a final determination with respect to the patentability of any challenged claim or the construction of any claim term.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “Petitioner alleges that Davison discloses each limitation of claim 1. Pet. 54–61. Petitioner recites each individual element of claim 1 in a subheading and then, beneath each such subheading, offers allegations as to how such recited element is satisfied by Davison. Id. Petitioner’s allegations are supported by citations to Davison and to Mr. Serra’s declaration (Ex. 1003). Id. Petitioner’s allegations are further supported by annotated drawings from Davison. Pet. 58. Having reviewed the Petition, the Davison reference, and Mr. Serra’s declaration, and further in light of the fact that QinetiQ has not filed a preliminary response in opposition to the Petition, it appears to us that Petitioner’s allegations have sufficient evidentiary support to warrant exercise of our discretion to institute a trial. Indeed, on this record, the steps of Davison’s iterative process quoted above sufficiently track the steps of the claimed process that no further explanation is required at this stage of the proceeding. IV. CONCLUSION Petitioner has shown that is more likely than not the that claim 1 is anticipated by Davison. Under prevailing law, a determination that any one claim is more likely than not unpatentable permits institution of a trial on all challenged claims. SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1356 (2018). We have not, however, made a final determination with respect to the patentability of any challenged claim or the construction of any claim term.” slip op. at 9

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

    “In view of the foregoing and for purposes of this preliminary stage of the proceeding, we will construe the “optimized” term as relating to a hole shape associated with a known liner design that most closely approximates the desired hole shape in some objectively discernable manner when compared to hole shapes that are associated with other liner designs that are maintained in a library. Converge toward the desired hole shape” slip op. at 7

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other

    “1 QinetiQ has filed a motion to dismiss the Petition. Paper 6. Dynaenergetics opposes the motion. Paper 7. We dispose of the motion to dismiss in a separate order issued substantially contemporaneously herewith.” slip op. at 2

  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 11,215,039
• Universal Remote Control, Inc. v. Universal Electronics, Inc.No claims unpatentable
  PTAB · Dec 10, 2015 · IPR2014-01146 · APJ William A Capp · IPR · Final written decision

  Claims 13–15 were not shown unpatentable because Dubil does not disclose the claimed configuration stored in and accessed by the entertainment device.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “As between the foregoing two possibilities, we think the latter construction is the correct one. The claims indicate that a configuration of the entertainment device is a construct that can be “downloaded” from a computer. Id., claim 13. It is also a construct that can be “access[ed] and use[d]” in association with a controlling device activity key commend value. Id. These attributes are more consistent with a set of executable instructions and data that is stored in memory than a physical state or configuration of the entertainment device after it has been configured. Id. at 6:38 (“finalized and stored”); 6:41 (“stored and associated”). In view of the foregoing we construe configuration of the entertainment device in claims 13 and 14 as referring to information stored in memory in the entertainment device that can be accessed and used to configure the entertainment device.” slip op. at 16

  • ExcludeMotion to exclude, grantedGranted

    “The admissibility of evidence in an IPR proceeding generally is governed by the Federal Rules of Evidence. See 37 C.F.R. § 42.62(a), Office Patent Trial Practice Guide, 77 Fed. Reg. 48758. Under Federal Rule of Evidence 611(c), leading questions should not be used on the direct examination of a witness except as may be necessary to develop the witness’ testimony. “A leading question is one that suggests to the witness the answer desired by the examiner.” McCormick, EVIDENCE § 6 (7th ed. 2013). Questions that begin, “Isn’t it true that” or “Don’t you agree that” typically suggest the answer and are leading. Other types of questions, such as questions that call merely for a yes or no answer or that ask the witness to choose between alternatives posed by the questioner, may or may not be leading, depending on the context in which the question is asked, the tone of voice employed, and the body language or conduct of counsel. See, e.g., United States v. Warf, 529 F.2d 1170, 1174 (5th Cir. 1976) (prosecutor improperly led witness to make identification by pointing at the accused).” slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “We are not persuaded by Petitioner’s argument or evidence. Petitioner’s conclusion does not follow logically and necessarily from Petitioner’s underlying premises. The system configuration described by Petitioner just as easily could be accomplished by sending on/off commands to the various input and output components so that the desired input device is powered on and the non-desired input device is powered off. The same can be said of the output devices. Thus, the entertainment system, as a whole, can be configured by sending power on/off commands to various devices and then passively routing the input and output signals through the VCR. Petitioner cites to no explicit disclosure in Dubil where the VCR actively switches between a plurality of inputs and a plurality outputs. We have reviewed Dubil and find no such explicit disclosure. Neither do we find that Dubil discloses active switching of the VCR inherently. While it may be possible that the VCR could switch between sources and destinations, we are not persuaded that such functionality is necessarily present in Dubil for it to operate. Inherency may not be established by probabilities or possibilities. See Agilent Tech., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009). The mere fact that a certain thing may result from a given set of circumstances is not sufficient. Id. Furthermore, Dubil cannot associate a remote control activity key command value with a configuration of the entertainment device unless Dubil first possesses a configuration of the entertainment device within the meaning of claim 13. We are not persuaded that Dubil discloses a “configuration of the entertainment device” as we have construed the term. Petitioner’s evidence and argument focuses on Dubil’s entertainment system as a whole. However, “configuration of the entertainment device,” as it is used in claim 13, refers to a set of executable instructions and data stored in memory in the entertainment device that is first downloaded from a personal computer and is then accessed and used after the entertainment device receives a signal from the remote control that contains a command value that is associated with such configuration. Petitioner provides no persuasive evidence that Dubil’s VCR has memory that stores executable instructions and data in the form of a “configuration of the entertainment device” that is downloaded from a computer and is accessed and used as claimed.” slip op. at 22

  • BurdenNot shown unpatentable

    “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 Dubil fails to disclose all elements of claim 13, we find that Petitioner has failed to establish, by a preponderance of the evidence, that Dubil anticipates claim 13. slip op. at 26

  Patent outcomesUS 8,243,207 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,243,207
• Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCAll claims unpatentable
  PTAB · Dec 9, 2015 · IPR2014-00921 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 23, 24, 60, and 61 are unpatentable as obvious over Robertson and Ungerboeck; claims 23 and 60 were not shown anticipated by Palicot.

  RulingsFinal written decision

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

    “It is clear from the record evidence before us that, in the context of the ’783 patent, a connection between two components is not one that is considered properly as “direct” if there is an interleaver between those components. We understand that an “interleaver” is a structure that provides extensive reordering of data. For instance, record evidence characterizes a particular interleaver as a “pseudorandom block scrambler” that reads out data “in a specified permuted order.” Ex. 1009, 29. Indeed, the ’783 patent itself characterizes an interleaver as a “pseudo-random block scrambler” that operates to output data “in a specified (fixed) random order.” Ex. 1001, 5:57–61. In that respect, it is further understood from the ’783 patent that there are extensive considerations that go into the design of interleavers and the effect that a given interleaver has on the configuration, order, and characteristics of data. See id. at 9:53–13:54. Thus, the operations of an interleaver appear to constitute complex data reordering schemes where the “pseudorandom” scrambling of data is, at least in some cases, the desired goal. As noted above, in the context of an inter partes review, the Board construes claim terms based on their broadest reasonable construction that is consistent with the underlying specification. Here, with that guidance in mind, we do not discern that Intellectual Ventures’s position that the claim terms in question should be construed narrowly to prohibit any intervening structure that performs any type of operation that may be regarded as manipulating data or changing the order of data in some aspect, regardless of the nature or extent of the data reordering. To that end, while the reordering operations provided by an interleaver are not encompassed by “directly” connecting elements, we are not satisfied that Intellectual Ventures has provided a suitable evidentiary basis for its position that any intervening data reordering, of any kind, is the benchmark for evaluating whether structures are directly connected to one another. It also is clear from the Specification of the ’783 patent, and as we observed in our Decision instituting trial (Inst. Dec. 12–13), that a direct connection does not prohibit some intervening structures, such as the intervening presence of a switch. In considering the totality of the record before us, we do not discern that there is cause to deviate from the construction we initially adopted for “directly coupled”/“signal directly from” as a part of the Decision to institute trial. Accordingly, for purposes of this Final Written Decision, we maintain the understanding that components that are “directly” coupled to one another, or which receive signals “directly” from one another, excludes the presence of an interleaver between those components, but does not prohibit any and all intervening structures, such as a switch.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “Thus, the declarants are largely in agreement as to the level of ordinary skill in the art, but for a slight difference of opinion as to the extent of education. While Mr. Lanning and Dr. Xiong take the view that a person of ordinary skill “would have at least a Bachelors or Masters level college degree in Electrical Engineering, Computer Science, Computer Engineering or equivalent training and experience,” Dr. Cimini opines that only a Bachelor’s degree would be insufficient. Dr. Cimini advanced that opinion on the theory that one with only a Bachelor’s degree would lack an appropriate “mathematical foundation.” On the record before us, it is not apparent that the possession of a Master’s degree as compared with possession of a Bachelor’s degree establishes a dividing line between a person who is of ordinary skill in the art, and a person who is not. Dr. Cimini does not explain persuasively why a person with a Bachelor’s degree in the noted areas, coupled for instance, with the noted “academic or industry experience” would lack the requisite “mathematical foundation.” To that end, we are cognizant of the level of ordinary skill to which all declarants have testified, but do not understand the record as establishing that a Master’s degree, to the exclusion of other equivalent experience, is a strict requirement of a skilled artisan in the pertinent field.” slip op. at 16

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

    “contends that Robertson discloses all the features of claims 23 and 60 (Pet. 49–54) with the exception of those features directed to “multilevel modulation” (id. at 53). In that regard, Ericsson contends that Robertson is directed to “binary modulation” rather than “multilevel modulation,” but points to Ungerboeck as disclosing multilevel modulation. Id. Referencing the declaration testimony of Mr. Mark Lanning (Ex. 1003), Ericsson contends the following: As noted by Mr. Lanning, it would have been obvious to one of ordinary skill in the art to combine Robertson and Ungerboeck to replace the binary modulation in Roberton’s coding system with multilevel modulation taught by Ungerboeck because it would yield the predictable result–that more data bits correspond to a modulated symbol, thereby enhancing bandwidth efficiency. Id. at 53–54. To that end, we understand that Ericsson proposes, and Mr. Lanning testifies (Ex. 1003 ¶ 230), that one of ordinary skill in the art would have had reason to substitute Ungerboeck’s multilevel 8-PSK modulator for Robertson’s binary modulator so as to enhance bandwidth efficiency.” slip op. at 18

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “ordinary skill in the art, but for a slight difference of opinion as to the extent of education. While Mr. Lanning and Dr. Xiong take the view that a person of ordinary skill “would have at least a Bachelors or Masters level college degree in Electrical Engineering, Computer Science, Computer Engineering or equivalent training and experience,” Dr. Cimini opines that only a Bachelor’s degree would be insufficient. Dr. Cimini advanced that opinion on the theory that one with only a Bachelor’s degree would lack an appropriate “mathematical foundation.” On the record before us, it is not apparent that the possession of a Master’s degree as compared with possession of a Bachelor’s degree establishes a dividing line between a person who is of ordinary skill in the art, and a person who is not. Dr. Cimini does not explain persuasively why a person with a Bachelor’s degree in the noted areas, coupled for instance, with the noted “academic or industry experience” would lack the requisite “mathematical foundation.” To that end, we are cognizant of the level of ordinary skill to which all declarants have testified, but do not understand the record as establishing that a Master’s degree, to the exclusion of other equivalent experience, is a strict requirement of a skilled artisan in the pertinent field.” slip op. at 16

  Patent outcomesUS 6,023,783 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,023,783
• 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
• Greene’S Energy Group, LLC v. Oil States Energy Services, LLCNo claims unpatentable
  PTAB · May 1, 2015 · IPR2014-00364 · APJ William A Capp · IPR · Final written decision

  The Board found claims 1–13, 27, and 30–32 not shown unpatentable because the proposed obviousness combinations did not establish the claimed mechanical lockdown mechanism and its required function.

  RulingsFinal written decision

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

    “The parties do not dispute that a “lockdown mechanism” maintains the mandrel in a fixed position during a fracking or well treatment operation. Thus, we will construe “lockdown mechanism” to mean “machinery for maintaining [the mandrel] in a fixed position during a fracking or well treatment operation.” This leaves us to determine what it means for a lockdown mechanism to be “mechanical” and whether the correct construction requires imposing a further definitional limitation regarding a range of adjustment. Oil States points out that the Specification differentiates a mechanical mechanism from hydraulic mechanisms. PO Resp. 12. The Specification distinguishes the instant invention from an earlier invention by the same inventor that discloses a hydraulic unit. Ex. 1001, 2:28–63. The Specification further states that: a mechanical lockdown mechanism for securing the BOP protector mandrel in an operative position is considered more reliable because a source of pressurized hydraulic fluid is not required. Id. at 2:3–6; see also id. at 3:53–56. Greene does not challenge that this language in the Specification effectively differentiates a mechanical lockdown mechanism from a hydraulic mechanism. Thus, we construe “mechanical” lockdown mechanisms as being limited to purely mechanical means such as nuts and bolts and the like. We further clarify that the principal holding force that maintains the mandrel in a fixed position is not a dynamic force such as through hydraulic, pneumatic, or electrical means or the like.” slip op. at 8

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

    “Oil States’s effort to read a “broad range of adjustment” limitation into the definition of mechanical lockdown mechanism in claim 1 renders the dependent limitation in claim 3 superfluous. Claim 2 claims an elongated spiral thread. There is no need to add a further limitation to claim 3 to provide for adjustment to compensate for variations in the distance between a top of the blowout preventer and the top of the casing of different wellheads if a “broad range of adjustment” is already contemplated in the meaning of mechanical lockdown mechanism. 8 It is well-settled that each claim does not necessarily cover every feature disclosed in the specification. See Ventana Med. Sys., Inc. v. Biogenex Labs, Inc., 473 F.3d 1173, 1181 (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. Id. Here, Oil States’s inclusion of adjustment limitations in claims 2 and 3 belie an intention to limit the scope of the term “mechanical lockdown mechanism” in claim 1 to mechanisms that provide a broad range of adjustment.9 Thus, we decline to adopt Oil States’s proposed construction. We construe a “lockdown mechanism” to mean “machinery for maintaining [the mandrel] in a fixed position.” In the context of lockdown mechanisms, we construe the adjective “mechanical” to mean that the lockdown mechanism is limited to purely mechanical means such as nuts and bolts and the like so that the principal holding force that maintains the mandrel in a fixed position 8 In the Summary of the Invention section of the Specification, the topic sentence of the paragraph describing an embodiment with a “significant range of adjustment,” qualifies the description of such embodiment with the word “preferably.” Ex. 1001, 3:8–27. This suggests that this passage of the Specification merely describes one embodiment and not the entire invention. 9 To the extent that claim 1 requires the mechanical lockdown mechanism to have any range of adjustment, such adjustment requirement may be found in the claim limitation directed to the lockdown mechanism being “adapted to ensure that the annular sealing body is securely seated against the top of the casing when the mandrel is in the operative position” and not in definition of “mechanical lockdown mechanism” per se.” slip op. at 11

  • Skill levelSkill level board ownOther

    “Green’s expert, Mr. Shackelford, opines that the person of ordinary skill in the art at the time of the invention of the ’993 patent would have had a Bachelor-level degree in a recognized engineering discipline and practical job exposure of several years with oil and gas well operations. Ex. 1002 ¶ 13. Mr. Shackelford’s testimony is entirely conclusory with no supporting factual analysis. Oil States contends that the level of ordinary skill in the art is “relatively low,” but does not articulate or explain what it means by this characterization. PO Resp. 22. Oil States’s expert, Dr. Wooley, merely adopts Mr. Shackelford’s position and, like Mr. Shackelford, fails to provide any supporting factual analysis. Merely reciting a college degree and a number of years of experience provides little guidance as to the actual capabilities of a person of ordinary skill in the art. Neither party presents a detailed evidentiary showing under the factors recited in Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). 13” slip op. at 22

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “combine references is a question of fact. In re Constr. Equip. Co., 665 F.3d 1254, 1255 (Fed. Cir. 2011). Greene fails to persuade us that a person of ordinary skill in the art would have had reason to combine Herricks and McLeod to achieve the invention claimed in claims 1 and 27 of the ’993 patent. Because the mechanical lockdown mechanism in McLeod is intended to be used with a mandrel that packs off at an indeterminate point in the casing, rather than at a fixed point and, therefore, does not disclose any range of adjustment to accommodate production trees of varying heights as would be necessary to be operable in systems designed for fixed point packoff, the proposed combination does not provide a mechanical lockdown mechanism that is adapted to securely seat a mandrel against the top of the casing as required by claim 1. Similarly, the proposed combination does not provide a method for engaging the mechanical lockdown mechanisms to lock the mandrel in the operative position such that the annular sealing body is in fluid sealing engagement with a top of a casing of the well as required by claim 27.” slip op. at 30

  Patent outcomesUS 6,289,993 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,289,993

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.