• Lululemon USA Inc. v. Nike, Inc.Some claims unpatentable
  PTAB · May 21, 2025 · IPR2024-00159 · APJ Carl M Defranco · IPR · Final written decision

  Claims 8, 9, 14, 15, and 19 are unpatentable over Minami; claims 1–3, 7, 16–18, and 20 were not shown unpatentable over Good or Munsing.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “lululemon contends, and Nike does not dispute, that a person skilled in the art in the relevant time frame would have had “at least a bachelor’s degree in mechanical engineering, textile engineering, or similar technical degree and at least 3 years of experience working with knitted textiles for use in fabric-based articles, including apparel such as footwear” and such person’s “additional experience compensates for any differences in that person’s education as stated above.” Pet. 13–14 (citing Ex.1003 ¶¶ 33–35); see also PO Resp. 14 (“For purposes of this proceeding, Nike applies lululemon’s proposed level of skill in the art.”). We find that lululemon’s proposed definition is consistent with the problems and solutions described in the ’046 patent and the prior art of record. Thus, we adopt the parties’ agreed-upon definition of the level of skill in the art.” slip op. at 6

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

    “We are not persuaded by lululemon’s attempt to equate the term “channel” in that passage with an open-periphery configuration. Nowhere does that passage indicate that the “channel” has an open-periphery. Instead, lululemon merely presumes, without support, that channels are open-periphery structures. More accurately, the terms “tunnel” and “channel” in the passage cited by lululemon are used synonymously. That is made clear by the overall context of the ’046 patent at issue, which is directed to how tubular rib structures 126 are formed by “first” and “second” curved portions 416 and 418 that are “knitted together” to define “hollow tube 112.” See Ex. 1001, 10:16–11:14, Figs. 4, 5 (emphasis added). In particular, the sentence cited by lululemon describes hollow tube 112 as being “disposed between” first and second curved portions 416 and 418, which Figures 4 and 5 of the ’046 patent clearly depict in a closed-periphery configuration. See id. at 10:66–11:3, Figs. 4, 5. Moreover, the very next sentence expressly describes that hollow tube 112 has “a generally cylindrical or elliptical shape” wherein “[t]he diameter of one hollow tube and the diameter of other hollow tubes may differ in some embodiments.” Id. at 11:3–14 (emphases added). We are not aware of any open-periphery channels being described as having a cylindrical or elliptical shape, nor are we aware of such a channel being described as having a diameter. Thus, lululemon’s proposed claim construction ignores the context surrounding the ’046 patent’s description of the tubular rib structures when it describes them as having the configuration of a tunnel or channel.” slip op. at 10

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

    “We agree with Nike, given our construction of the claimed “tubular structures.” As shown in annotated Figures 1, 3, and 4 of Good (reproduced below), Good discloses a sock 12 having rib portions 22 (red) and webbed areas 24 (green). See PO Resp. 19. lululemon contends that Good’s rib portions 22 meet the claimed “tubular structures” because each rib portion 22 “roll[s] substantially together in the relaxed condition” and “has the shape of a tube, namely an elongate hollow structure.” Pet. 29–30. In support, lululemon points to Good’s Figure 3 (reproduced below center) as allegedly showing the tubular shape of Good’s rib portions 22. Id. at 30. Annotated Figure 3 is a vertical cross-section of rib portions 22 (red) shown in Good’s Figure 1. But, as Nike correctly notes, Good’s rib portions 22 are “C-shaped knitted portions,” which when stretched, go from an essentially C-shaped configuration (Figure 3) to a relatively flat, linear configuration (Figure 4). PO Resp. 19–20 (citing Ex. 2006 ¶¶ 48–49). Nowhere does Good disclose that the ends of C-shaped rib portions 22 ever meet and remain in a closed periphery configuration to form a hollow tube per our construction of “tubular structures” (as discussed above in Section II.B). In at least this way, Good’s C-shaped rib portions 22 differ from the claimed “tubular structures.”7 Thus, we find that Good does not disclose or otherwise suggest the claimed “tubular structures,” as properly construed, meaning that lululemon fails to demonstrate, by a preponderance of the evidence, that Good either anticipates claims 1–3, 7, 16–18, and 20, or, alternatively, renders obvious claim 3.” slip op. at 16

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “In our Institution Decision, we said that Munsing lacks the claimed “tubular structures” because “nowhere does Munsing indicate that the rows of stitches or loops form a rib that is tubular-like, let alone one with a closed periphery.” Inst. Dec. 10–12. During the trial phase, lululemon’s expert likewise agreed, conceding (on cross-examination) that Munsing only discloses non-tubular structures. See Ex. 2007, 40:9–41:11 (“Q [by Patent Owner’s counsel]: So you agree that . . . Munsing only discloses a nontubular rib? A [by lululemon’s expert]: That’s what I said.”). Nowhere does lululemon rebut that admission by its own expert, despite Nike noting it explicitly as a reason for rejecting Ground 2. Compare PO Resp. 25–26 (noting the admission of lululemon’s expert), with Pet. Reply 1–26 (addressing only Grounds 1 and 3, while omitting any mention of Ground 2, which is based on Munsing). Nor does lululemon ever dispute the preliminary findings in our Institution Decision as to why Munsing is not an anticipatory reference. Compare Inst. Dec. 10–12, with Pet. Reply 1–22. Thus, lululemon fails to demonstrate, by a preponderance of the evidence, that Munsing anticipates challenged claims 1–3, 7, 17, 18, and 20.” slip op. at 18

  Patent outcomesUS 9,375,046 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 9,375,046
• Billerud Aktiebolag (Publ) v. Westrock MWV, LLCSome claims unpatentable
  PTAB · Mar 12, 2025 · IPR2023-01206 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1, 2, and 4–22 are unpatentable as obvious; claim 23 was not shown unpatentable. Substitute claims 25–26 are allowed, while 24 and 27 are denied for lack of written-description support.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “Exhibits 1013 and 1014 are also not admissible as expert testimony because Mr. Wirén is not “qualified as an expert by knowledge, skill, experience, training, or education.” Fed. R. Evid. 703. “To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art. Without that skill, the witness’ opinions are neither relevant nor reliable.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). Mr. Wirén does not meet our definition of a person of ordinary skill in the art. See Section II.B, supra. That definition is based on the undisputed testimony of Messrs. Zotterman and Klass. Ex. 1003 ¶ 24; Ex. 2003 ¶ 26. Although Mr. Wirén has a Master’s of Science in chemical engineering, he lacks any experience or specialization in paperboard manufacturing. Ex. 2011, 12:1–10, 19:6–25, 20:2–7. We therefore agree with Patent Owner that Exhibits 1013 and 1014 are the testimony of Mr. Wirén and should be excluded from evidence because Mr. Wirén is not a person of ordinary skill in the relevant art. PO MTE 5–6, 9; Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362 (Fed. Cir. 2008) (“Unless a patent lawyer is also a qualified technical” slip op. at 61

  • Skill levelSkill level board ownOther

    “Level of Ordinary Skill in the Art Based on the testimony of the parties’ witnesses, we determine that a person of ordinary skill in the art would have had a bachelor’s degree in paper science and engineering, chemical engineering, process engineering, mechanical engineering, or a related degree, with three to five years of experience in paperboard manufacturing, or a master’s degree in paper science and engineering, chemical engineering, process engineering, or mechanical engineering, or a similar field with a specialization in paperboard manufacturing. Ex. 1003 ¶ 24; Ex. 2003 ¶ 26. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’142 Patent Specification and the asserted prior art references.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “A claim construction that excludes a particular element is viewed as a “negative limitation.” Ethicon LLC v. Intuitive Surgical, Inc., 847 Fed. App’x 901, 907 (Fed. Cir. Mar. 15, 2021). “[S]uch exclusions must find support either in ‘the words of the claim’ or through an ‘express disclaimer or independent lexicography in the written description that would justify adding that negative limitation.’” Id. (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366–67 (Fed. Cir. 2002)). “The standards for finding lexicography and disavowal are exacting.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term,’ and ‘clearly express an intent to define the term.’” Id. (citing Thorner, 669 F.3d at 1365). Similarly, disclaimer or disavowal requires that the specification or prosecution history demonstrate that the invention does not include a particular feature. Id. Here, we find no claim language, lexicography, or disclaimer in the ’142 Patent or its file history that would support defining a “hot-hard calender” as requiring that only one of the two rollers be heated to an elevated temperature.” slip op. at 12

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

    “a contact surface of said thermo-roller is heated to an elevated temperature of at least 250°F.” Petitioner shows persuasively that the temperature limitation is taught by the combination of Fugitt and Papermaking. Pet. 32–34. Fugitt discloses that “[t]he rolls of the calender may be steam heated.” Ex. 1004 ¶ 26. In a section titled “Heated Rolls,” Papermaking discloses that “Steam can be used up to 170°C [338°F] surface temperature.” Ex. 1010, 95, 98. Petitioner is thus correct that, “[w]hile Fugitt teaches that a hot calender may be steam heated, Papermaking clarifies that one of ordinary skill in the art would understand that steam heated thermo-rollers may reach up to 338°F.” Pet. 36. Based on these disclosures, we are persuaded by Mr. Zotterman’s testimony that it would have been “obvious to heat the thermo-roller of Fugitt to at least 250°F.” Ex. 1003 ¶ 159. combine Fugitt and Papermaking because of Papermaking’s status as a “trusted handbook[],” because both references disclose a method of manufacturing a paperboard structure with hot calendering,” and “because of the known advantages of heated rollers.” Pet. 36–37; Ex. 1003 ¶¶ 157, 159, 162. Petitioner’s contention is supported by Papermaking’s disclosures that, for cartonboard, “[p]recalendering is used before the coater to reduce roughness and porosity” and “[h]igh thermo roll temperatures (in some cases over 200°C) result in bulk savings because of the temperature gradient.” Ex. 1005, 80–82; see also Pet. 38; Ex. 1003 ¶ 164 (citing these disclosures). Papermaking’s disclosed range of “up to 170°C [338°F]” for steam- heated rolls (Ex. 1010, 98), overlaps the claimed range of “at least 250°F.” Patent Owner agrees. Tr. 27:11–13. “If the relevant comparison between a disputed claim limitation and the prior art pertains to a range of overlapping values, ‘. . . even a slight overlap in range establishes a prima facie case of obviousness.’” Genentech, Inc. v. Hospira, Inc., 946 F.3d 1333, 1341 (Fed. Cir. 2020) (citing In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). “[S]uch an overlap creates a presumption of obviousness, and . . . the burden of production falls upon the patentee to come forward with pertinent evidence that the overlapping range would not have been obvious in light of the prior art.” Id. (citing E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1006, 1008 (Fed. Cir. 2018)). slip op. at 21

  Patent outcomesUS 11,293,142 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,293,142
• Simpson Strong-Tie Company Inc. v. Columbia Insurance CompanySome claims unpatentable
  PTAB · Feb 28, 2025 · PGR2023-00048 · APJ Stephen E Belisle · PGR · Final written decision

  Claims 1–37, 39–90, and 92–105 are unpatentable as obvious; claims 38 and 91 were not shown unpatentable because the cited references do not teach flanges physically contacting along a juncture.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, at the time of the effective filing date of the ’626 patent, “would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Mechanical Engineering, Structural Engineering or a related/equivalent field and at least four years of work experience in construction connector design/development.” Pet. 11 (citing Ex. 1003 ¶¶ 12–15). Patent Owner does not dispute this assessment. PO Resp. 17–18. In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of these cases would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’626 patent, the background technical field, the prior art, and Petitioner’s proposed and undisputed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Mr. Fennell (Ex. 1003 ¶¶ 12–15).” slip op. at 20

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

    “shaped portion configured to receive the structural component,” “a connection portion,” and “an extension portion,” and that “the extension portion spac[es] the channel-shaped portion from the [connection portion]” and “the channel-shaped portion, the extension portion and the connection portion are rigidly fixed with respect to one another.” Ex. 1001, 12:14–36 (emphases added). Claim 1’s repeated use of “portion[s]” to delineate between the three main elements of the hanger, i.e., channel-shaped portion, connection portion, and extension portion, shows or at least strongly suggests substantial flexibility as to the specific location where one “portion” transitions to another “portion” in the fire wall hanger. Similarly, although claim 1 recites that the “channel-shaped portion” is “configured to receive the structural component,” claim 1 recites no limitation precluding other “portions” of the hanger from also “receiv[ing]” or otherwise contacting the structural component. Patent Owner argues that “channel-shaped portion” should be construed to mean “[the] portion of the hanger that forms a channel configured to receive the structural component.” PO Resp. 19. Petitioner and its expert, Mr. Fennell, agree with this meaning (Pet. Reply 4; Ex. 1046 ¶¶ 16–20), and so do we. Indeed, claim 1 plainly recites this as discussed above. But Patent Owner then urges us to narrow the meaning of “portion” itself such that “channel-shaped portion” requires “all portions of the hanger which directly bound the channel that receives the structural component.” PO Resp. 19 (emphases added). Patent Owner argues the Specification makes this “clear.” Id. (citing Ex. 1001, 2:28–31). Contrary to Patent Owner’s arguments (PO Resp. 19), we find no support in claim 1 to further narrow the interpretation of “portion” in “channel-shaped portion” to mean every portion of the hanger which directly bounds the channel that receives the structural component. See Ex. 1001, 12:14–36 (claim 1). We, like Petitioner, similarly find no support in the Specification or limited prosecution history (see Pet. 5–6), and Patent Owner does not direct us to any, showing that the inventor acted as its own lexicographer or disavowed any claim scope to allot this narrowed interpretation to the subject limitation. See Pet. Reply 3 (“Nowhere does the ’626 patent specification describe that all portions of the hanger directly bounding channel 52 constitute the channel-shaped portion.” (citing Ex. 1046 ¶¶ 16–18; Ex. 1001, 4:39–47)); PO Resp. 19.” slip op. at 33

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Petitioner argues, inter alia, that Yamaguchi teaches a joist hanger with an extension portion defining a space between its back flange and channel-shaped portion, and Bundy teaches to size a space created by an extension portion of its joist hanger to receive two layers of ⅝-inch-thick drywall between its back flange plane and channel-shaped portion. Pet. 16–18 (citing 1003 ¶¶ 75–78; Ex. 1007, 5:16–18, Fig. 1; Ex. 1041 (“Perspective View”; “Usage View”)); see id. at 17–18 (discussing “advantages” of two layers of 5/8" drywall as “fire resistance in a fire separation wall”). Petitioner argues the skilled artisan “would have been motivated to receive drywall between Yamaguchi’s back flange and channel-shaped portion to provide a shielded fire resistant wooden frame wall.” Pet. 18 (citing Ex. 1003 ¶¶ 78–79; Ex. 1007, 2:10–24); see id. ([“The skilled artisan] would have optimized the size of the spacing between Yamaguchi’s back flange and channel-shaped portion to accommodate two layers of 5/8”-thick-drywall according to the size preference described by Bundy for optimal fire protection and wall integrity.” (citing Ex. 1003 ¶ 80; Ex. 1007, 5:10–22)). Petitioner concludes: This modification to Yamaguchi would have been nothing more than applying a known technique (Bundy’s spacing a hanger seat from a wall frame by distance sufficient to accommodate two 5/8”-thick-drywall sheets for fire resistance) to a similar device (Yamaguchi’s hanger having a spacing of indeterminate length) to obtain the predictable result of a firewall hanger having a space between its channel-shaped portion and a wall frame large enough for receiving drywall therebetween, thereby “protect[ing] the structural members of a building.” Pet. 18 (citing Ex. 1007, 5:18–20; Ex. 1003 ¶ 80). Petitioner argues the skilled artisan would have had a reasonable expectation of success in modifying Yamaguchi as discussed above, “because doing so would still allow Yamaguchi’s hanger to perform its intended function of securing a joist to a wall.” Pet. 18 (citing Ex. 1041, 1; Ex. 1003 ¶ 81). Petitioner argues, “[r]ecognizing that Yamaguchi’s and Bundy’s hangers are constructed from sheet metal,” the skilled artisan “would have understood how to modify the size of Yamaguchi’s extension portions to accommodate two layers of 5/8”-thick-drywall while still allowing Yamaguchi’s hanger to secure a joist’s end to a frame wall.” Pet. 18–19 (citing Ex. 1003 ¶¶ 81–83; Ex. 1007, 4:47–51); see id. at 19–20 (discussing that although “Yamaguchi’s described setting is a sill plate,” the skilled artisan “would have been motivated to use Yamaguchi’s hanger on a wood frame wall in particular so that sheathing could be installed in the space behind the joist as taught by Bundy” (citing Ex. 1003 ¶¶ 81–82)). Based on the foregoing and the complete record before us, we find Petitioner’s cited evidence provides sufficient rational reasons to combine Yamaguchi and Bundy to arrive at the invention of claim 1 with a reasonable expectation of success in doing so.” slip op. at 46

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

    “Analysis Patent Owner argues, “[w]hile the asserted prior art does teach flanges or sidewalls that are in opposed relation to each other, none of Adams, Cullen, or Yamaguchi teach that these flanges or sidewalls engage each other along a juncture.” PO Resp. 42–43; see PO Sur-reply 6 (Patent Owner arguing, “Adams’s, Cullen’s, and Yamaguchi’s extension flanges are spaced well apart.”). Petitioner’s arguments to the contrary depend wholly on its proposed interpretation of the term “engaging” (Pet. 58–60; Pet. Reply 30–31), which we reject, as discussed above. Although Yamaguchi (and Cullen and Adams) may teach extension flanges in opposed, face-to-face relation, Petitioner does not explain, let alone with particularity or persuasively, how Yamaguchi’s (or Cullen’s or Adams’) flanges, which would wind up located on opposing sides of a joist (where a joist is mounted in the hanger), also teach such extension flanges engaging each other along a juncture—indeed, what juncture? See PO Sur-reply 7 (“Beyond asserting that the word ‘engaging’—standing alone—does not require ‘touching contact,’ [Petitioner] still does not address how the extension flanges of Yamaguchi, Cullen, and Adams can be said to ‘engage’ each other.”). Based on the foregoing and the complete record before us, we find Petitioner does not sufficiently establish that the combination of Yamaguchi and Bundy teaches or even fairly suggests a fire wall hanger wherein “the first and second extension flanges engag[e] each other along a juncture, the juncture arranged to be positioned within the two layers of ⅝-inch-thick drywall,” as recited in dependent claims 38 and 91.” slip op. at 70

  Patent outcomesUS 11,649,626 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,649,626
• Simpson Strong-Tie Company Inc. v. Columbia Insurance CompanySome claims unpatentable
  PTAB · Feb 28, 2025 · PGR2023-00049 · APJ Stephen E Belisle · PGR · Final written decision

  Claims 1–37, 39–90, and 92–105 are unpatentable as obvious; claims 38 and 91 were not shown unpatentable because the asserted references did not teach flanges physically touching along a juncture.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, at the time of the effective filing date of the ’626 patent, “would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Mechanical Engineering, Structural Engineering or a related/equivalent field and at least four years of work experience in construction connector design/development.” Pet. 11 (citing Ex. 1003 ¶¶ 12–15). Patent Owner does not dispute this assessment. PO Resp. 17–18.” slip op. at 20

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “artisan would have interpreted or understood the teachings of Yamaguchi and Bundy, as well as of the combination of those references, are unsupported attorney-arguments. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Patent Owner cites no evidence of how the skilled artisan would have understood the combined teachings of Yamaguchi and Bundy, or how such an understanding would support Patent Owner’s attorney arguments. Indeed, Patent Owner did not file any expert testimony in any of the three subject cases, despite that we must resolve the legal question of obviousness on the basis of underlying factual determinations, particularly the scope and content of the prior art and any differences between the claimed subject matter and the prior art from the vantage point of the skilled artisan. Graham, 383 U.S. at 17–18; see Pet. Reply 2 (“As a threshold matter, the Board’s findings in its Institution Decision should be carried forward to its final written decision because Patent Owner did not submit an expert declaration in support of its arguments.”); but see PO Sur-reply 1–4 (“[T]here is no requirement that a party rely exclusively on expert testimony in Post Grant Review proceedings or that attorney argument must be disregarded.”). To the contrary, Petitioner’s expert, Mr. Fennell, persuasively testifies in detail how and why the skilled artisan would have combined the teachings and suggestions of Yamaguchi and Bundy to achieve the invention of claim 1, including the features of limitation 1.3.B. See, e.g., Ex. 1003 ¶¶ 73–83, 96; Ex. 1046 ¶¶ 30–40. We find Mr. Fennell’s testimony credible (and uncontroverted).” slip op. at 40

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

    “Judge Rich’s guidance from over thirty years ago: in all aspects of claim construction, “the name of the game is the claim.” In re Hiniker, 150 F.3d at 1369. Claims 38 and 91 recite, in relevant part, a fire wall hanger wherein “the first and second extension flanges engag[e] each other along a juncture, the juncture arranged to be positioned within the two layers of ⅝-inch-thick drywall.” Ex. 1001, 15:28–33, 21:41–46 (emphasis added). On its face, this limitation requires not only that the first and second extension flanges “engage” each other, but also do so “along a juncture.” This recitation of the flanges “engaging” each other along a “juncture” (i.e., a place where things join) strongly supports interpreting the subject limitation to require physical contact (i.e., touching) at least along some portion of the flanges (such as shown in Figure 2, reproduced above). To the contrary, nothing in claims 38 or 91, or their underlying independent claims, suggests that two flanges “engaging each other along a juncture” means or even includes within its scope two flanges “symmetrical to each other across a juncture,” as urged by Petitioner (Pet. 59).” slip op. at 67

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Petitioner persuasively argues, and we agree: There is certainly no requirement that the hanger contain a component “that prevents the back face of the drywall (or any portion thereof) being secured directly to the face of the wall framing” or that the back flange plane “define” or “bound” the space that receives drywall as alleged by Patent Owner. POR [PO Resp.], 25-26. As explained in the Petition and supported by Mr. Fennell’s testimony, Yamaguchi-Bundy’s modified hanger has an extension portion that is long enough to permit two layers of 5/8-inch-thick drywall (i.e., an extending flange having a length over 1 and 1/4 inches) to be received between the channel-shaped portion and the back flange plane. Pet., 28-30, 37; EX1003, ¶96. That is all that is required. EX1046, ¶32. Pet. Reply 12.” slip op. at 38

  Patent outcomesUS 11,649,626 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,649,626
• Simpson Strong-Tie Company Inc. v. Columbia Insurance CompanySome claims unpatentable
  PTAB · Feb 28, 2025 · PGR2023-00047 · APJ Stephen E Belisle · PGR · Final written decision

  Claims 1–37, 39–90, and 92–105 are unpatentable as obvious; claims 38 and 91 were not shown unpatentable because the cited art did not teach flanges physically touching along a juncture.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of these cases would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’626 patent, the background technical field, the prior art, and Petitioner’s proposed and undisputed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Mr. Fennell (Ex. 1003 ¶¶ 12–15).” slip op. at 20

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

    “But Patent Owner then urges us to narrow the meaning of “portion” itself such that “channel-shaped portion” requires “all portions of the hanger which directly bound the channel that receives the structural component.” PO Resp. 19 (emphases added). Patent Owner argues the Specification makes this “clear.” Id. (citing Ex. 1001, 2:28–31). Contrary to Patent Owner’s arguments (PO Resp. 19), we find no support in claim 1 to further narrow the interpretation of “portion” in “channel-shaped portion” to mean every portion of the hanger which directly bounds the channel that receives the structural component. See Ex. 1001, 12:14–36 (claim 1). We, like Petitioner, similarly find no support in the Specification or limited prosecution history (see Pet. 5–6), and Patent Owner does not direct us to any, showing that the inventor acted as its own lexicographer or disavowed any claim scope to allot this narrowed interpretation to the subject limitation. See Pet. Reply 3 (“Nowhere does the ’626 patent specification describe that all portions of the hanger directly bounding channel 52 constitute the channel-shaped portion.” (citing Ex. 1046 ¶¶ 16–18; Ex. 1001, 4:39–47)); PO Resp. 19. Further, as argued by Petitioner (Pet. Reply 4–5), Patent Owner’s proposed construction limiting “portion” to “all portions” of the hanger that “directly bound the channel that receives the structural component” could cause the “channel-shaped portion” on the same physical hanger to change depending on which type of structural component an installer were to choose to use in construction: Patent Owner’s claim construction improperly focuses on the wall assembly intended to be used with the recited hanger. The claims, however, are directed to a hanger, not a wall assembly. When assessing what part of a hanger constitutes a “channel-shaped portion” and an “extension portion,” [the skilled artisan] would consider the physical features of the hanger itself and the natural divisions between those features. [The skilled artisan] would not assess the claim language and its application to the prior art by speculating how an installer might later install the hanger with a joist or an entire wall assembly, which may differ from installation to installation. Pet. Reply 4 (citing Ex. 1046 ¶ 19). We find this defect further supports a broader interpretation of “channel-shaped portion” as discussed above. Accordingly, based on the complete record before us, we determine” slip op. at 34

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Petitioner argues, inter alia, that Yamaguchi teaches a joist hanger with an extension portion defining a space between its back flange and channel-shaped portion, and Bundy teaches to size a space created by an extension portion of its joist hanger to receive two layers of ⅝-inch-thick drywall between its back flange plane and channel-shaped portion. Pet. 16–18 (citing 1003 ¶¶ 75–78; Ex. 1007, 5:16–18, Fig. 1; Ex. 1041 (“Perspective View”; “Usage View”)); see id. at 17–18 (discussing “advantages” of two layers of 5/8" drywall as “fire resistance in a fire separation wall”). Petitioner argues the skilled artisan “would have been motivated to receive drywall between Yamaguchi’s back flange and channel-shaped portion to provide a shielded fire resistant wooden frame wall.” Pet. 18 (citing Ex. 1003 ¶¶ 78–79; Ex. 1007, 2:10–24); see id. ([“The skilled artisan] would have optimized the size of the spacing between Yamaguchi’s back flange and channel-shaped portion to accommodate two layers of 5/8”-thick-drywall according to the size preference described by Bundy for optimal fire protection and wall integrity.” (citing Ex. 1003 ¶ 80; Ex. 1007, 5:10–22)). Petitioner concludes: This modification to Yamaguchi would have been nothing more than applying a known technique (Bundy’s spacing a hanger seat from a wall frame by distance sufficient to accommodate two 5/8”-thick-drywall sheets for fire resistance) to a similar device (Yamaguchi’s hanger having a spacing of indeterminate length) to obtain the predictable result of a firewall hanger having a space between its channel-shaped portion and a wall frame large enough for receiving drywall therebetween, thereby “protect[ing] the structural members of a building.” Pet. 18 (citing Ex. 1007, 5:18–20; Ex. 1003 ¶ 80). Petitioner argues the skilled artisan would have had a reasonable expectation of success in modifying Yamaguchi as discussed above, “because doing so would still allow Yamaguchi’s hanger to perform its intended function of securing a joist to a wall.” Pet. 18 (citing Ex. 1041, 1; Ex. 1003 ¶ 81). Petitioner argues, “[r]ecognizing that Yamaguchi’s and Bundy’s hangers are constructed from sheet metal,” the skilled artisan “would have understood how to modify the size of Yamaguchi’s extension portions to accommodate two layers of 5/8”-thick-drywall while still allowing Yamaguchi’s hanger to secure a joist’s end to a frame wall.” Pet. 18–19 (citing Ex. 1003 ¶¶ 81–83; Ex. 1007, 4:47–51); see id. at 19–20 (discussing that although “Yamaguchi’s described setting is a sill plate,” the skilled artisan “would have been motivated to use Yamaguchi’s hanger on a wood frame wall in particular so that sheathing could be installed in the space behind the joist as taught by Bundy” (citing Ex. 1003 ¶¶ 81–82)). Based on the foregoing and the complete record before us, we find” slip op. at 46

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “artisan would have interpreted or understood the teachings of Yamaguchi and Bundy, as well as of the combination of those references, are unsupported attorney-arguments. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Patent Owner cites no evidence of how the skilled artisan would have understood the combined teachings of Yamaguchi and Bundy, or how such an understanding would support Patent Owner’s attorney arguments. Indeed, Patent Owner did not file any expert testimony in any of the three subject cases, despite that we must resolve the legal question of obviousness on the basis of underlying factual determinations, particularly the scope and content of the prior art and any differences between the claimed subject matter and the prior art from the vantage point of the skilled artisan. Graham, 383 U.S. at 17–18; see Pet. Reply 2 (“As a threshold matter, the Board’s findings in its Institution Decision should be carried forward to its final written decision because Patent Owner did not submit an expert declaration in support of its arguments.”); but see PO Sur-reply 1–4 (“[T]here is no requirement that a party rely exclusively on expert testimony in Post Grant Review proceedings or that attorney argument must be disregarded.”). To the contrary, Petitioner’s expert, Mr. Fennell, persuasively testifies in detail how and why the skilled artisan would have combined the teachings and suggestions of Yamaguchi and Bundy to achieve the invention of claim 1, including the features of limitation 1.3.B. See, e.g., Ex. 1003 ¶¶ 73–83, 96; Ex. 1046 ¶¶ 30–40. We find Mr. Fennell’s testimony credible (and uncontroverted).” slip op. at 40

  Patent outcomesUS 11,649,626 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,649,626
• Apple Inc. v. RJ Technology LLCSome claims unpatentable
  PTAB · Feb 18, 2025 · IPR2023-01350 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 5–10 are unpatentable as obvious; claims 11–14 were not shown unpatentable because the evidence did not establish the claimed capacity retention after 400 cycles.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art “would have held a Bachelor’s degree in chemistry or chemical engineering, with at least 4 years of experience in cell design, electrochemical techniques, and battery materials development.” Pet. 4. Petitioner further contends that a “Master’s Degree can substitute[] for some of the relevant experience,” and “[e]quivalent training with battery specific experience can accommodate other degreed fields.” Id. 9 The parties here do not address objective evidence of nonobviousness. Patent Owner does not dispute Petitioner’s definition of the ordinarily skilled artisan. PO Resp. 20. We adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the ’641 patent, the prior art of record, and the parties’ arguments.” slip op. at 6

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

    “The parties agree that the term “charge cut-off voltage” is “the maximum voltage to which the battery is configured to be charged.” PO Resp 21–22; Pet. Reply 1. The parties dispute, however, whether the “charge cut-off voltage” is a “battery property” or “the voltage applied to the battery during charging.” PO Resp. 21–24; Pet. Reply 1–6. We need not resolve the precise meaning of “charge cut-off voltage” because there is no dispute that Yamaki discloses this limitation under either party’s interpretation of the claim term. Upon review of the prior art and the parties’ arguments, we determine that no terms of the ’641 patent require express construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))); Pet. Reply 1 (asserting that the challenged claims are unpatentable under either parties’ construction of “charge cut-off voltage”).” slip op. at 7

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

    “Patent Owner’s arguments do not persuasively undermine Petitioner’s position. Sakamoto expressly discloses setting the ratio of negative to positive electrode active material in the range of 1.05 to 1.30. Ex. 1005 ¶ 8. Sakamoto also explains why this range is preferable, i.e., if the ratio is roughly equal “the charge-discharge cycle performance is insufficient due to significant deterioration from charging and discharging,” and if the ratio is 10 Citations to the prosecution history of Yamaki are to the page numbers added to the lower right corner of the document. too high “too much of the compound does not participate in charging and discharging.” Id. ¶¶ 6, 8. These disclosures are sufficient to explain why one of ordinary skill in the art would have found it obvious to select the ratios disclosed in Sakamoto in Yamaki. Id. ¶ 8 (providing a secondary battery with a capacity ratio between 1.05 and 1.30 and noting that by setting the ratio within this range the resulting secondary lithium battery is “safe due to low risk of heat being generated and an explosion occurring”). We also disagree that Sakamoto teaches away from elevated voltages or from increasing the amount of lithium in circulation. See PO Resp. 29. Contrary to Patent Owner’s arguments, Sakamoto provides no general teaching against using a charge cut-off voltage above 4.2 V, or against increasing the level of lithium in circulation. Nor does Sakamoto “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather, Sakamoto warns against setting the reversible capacities of the positive and negative electrode substantially equal as this may result in excess lithium plating on the surface of the electrode. Ex. 1005 ¶¶ 6, 8. We agree with Petitioner that this disclosure would lead one of ordinary skill in the art to design a battery with a higher capacity in the negative electrode active material than the positive electrode active material. Pet. 11–12.” slip op. at 14

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

    “We also disagree that Sakamoto teaches away from elevated voltages or from increasing the amount of lithium in circulation. See PO Resp. 29. Contrary to Patent Owner’s arguments, Sakamoto provides no general teaching against using a charge cut-off voltage above 4.2 V, or against increasing the level of lithium in circulation. Nor does Sakamoto “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather, Sakamoto warns against setting the reversible capacities of the positive and negative electrode substantially equal as this may result in excess lithium plating on the surface of the electrode. Ex. 1005 ¶¶ 6, 8. We agree with Petitioner that this disclosure would lead one of ordinary skill in the art to design a battery with a higher capacity in the negative electrode active material than the positive electrode active material. Pet. 11–12.” slip op. at 15

  Patent outcomesUS 7,749,641 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,749,641
• Samsung Electronics Co., Ltd. / Apple Inc. v. RJ Technology LLCSome claims unpatentable
  PTAB · Jan 17, 2025 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 2–4 and 6–18 are unpatentable as obvious over Abe and Guyomard, with claims 9–10 also obvious over Iwaizono; claims 1 and 5 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years of experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. (citing Ex. 1002 ¶¶ 50–51). Patent Owner “does not dispute Petitioner’s level of ordinary skill.” PO Resp. 17. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the disclosures of the ’641 patent and the prior art of record.” slip op. at 9

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

    “We also agree with Patent Owner that the charge cut-off voltage is not necessarily the applied voltage during charging. PO Resp. 20. Rather, depending on the charging protocol used and when in the charging cycle the voltage is applied, the applied voltage could be higher than the battery voltage. Ex. 2013; Ex. 2006 ¶ 91. For example, as discussed in more detail below with respect to the Uemura grounds, when fast charging using constant current is used and the charging rate is not slow, the applied voltage will be higher than the battery voltage when the constant current charging phase is stopped. Ex. 2006 ¶ 91; Ex. 2013. Likewise, during constant current/constant voltage charging, the applied voltage approximates the battery voltage only when the battery is nearly completely charged. Ex. 2013; Ex. 2006 ¶ 91. Thus, the applied voltage may be, but is not necessarily, the charge cut-off voltage. In view of the foregoing, we construe “charge cut-off voltage” in claims 1 and 5 as “the maximum value to which the battery is configured to be charged.” PO Resp. 18; Ex. 2008, 217:6–11; Pet. Reply 5. Contrary to Patent Owner’s arguments, however, we do not understand the phrase “configured to be charged” to necessarily represent a single voltage for the battery that is determined based on the structure and chemistry of the battery. Pet. Reply 4–5. Rather, the charge cut-off voltage is a selected potential, or voltage, of the battery or cell at the end of charging that is controlled by a circuit or device, such as a charger or control circuit within the battery. Ex. 1001, 9:50–55; Ex. 1048, 2, 7–8; Ex. 1008, 3:9–13. And, for the reasons discussed herein, the charge cut-off voltage may be, but is not necessarily, the same as the applied voltage during charging. PO Resp. 20.” slip op. at 15

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

    “charge cut-off voltage “greater than 4.2 V but less than 5.8 V” and calculating a specific or theoretic capacity “with a charge cut-off voltage limited to 4.2” (claim 1) or “with a charge cut-off voltage set at 4.2 V” (claim 5). Ex. 1001, 16:56–61, 17:6–11. Although the parties dispute the precise scope of these claim terms, the parties agree that the first use of “charge cut-off voltage” in claims 1 and 5 refers to the potential of the battery as a whole (between the cathode and the anode), and not a half-cell voltage using lithium metal as a counter electrode.10 Tr. 17:1–3 (agreeing 10 With respect to the phrase “as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V,” the parties in fact appear to be in that the first use of “charge cut-off voltage” in claim 5 refers to a full-cell voltage); Sur-reply 5; PO Resp. 22. We need not further construe the claims to resolve the disputes between the parties. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 16

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Given Mr. Juzkow’s unambiguous testimony that Uemura uses constant current charging that would stop when the applied voltage reached 11 The chart is reproduced from SAFT, Charging your lithium-ion batteries: 5 expert tips for a longer lifespan, (https://www.saft.com/energizing-iot/charging-your-lithium-ion-batteries-5-expert-tips-longerlifespan#:~: text=When%20the%20battery%20provides%20current,This%20restore s%20the%20battery's%20capacity). 4.3 V, as well as Dr. Yao’s persuasive testimony that Uemura’s constant charging rate is not slow, we credit the testimony of Dr. Yao that one of ordinary skill in the art would have understood that the internal voltage to which the battery of Uemura was charged is less than 4.3 V. Ex. 2006 ¶ 119. In particular, Dr. Yao persuasively testifies that one of ordinary skill in the art would have believed that the charge cut-off voltage was no more than 4.2 V, and most likely equal to “about 4 V.” Id. ¶¶ 119–122.” slip op. at 21

  Patent outcomesUS 7,749,641 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,749,641
• Samsung Electronics Co., Ltd. / Apple Inc. v. RJ Technology LLCSome claims unpatentable
  PTAB · Jan 17, 2025 · IPR2023-01183 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 2–4 and 6–18 are unpatentable as obvious over Abe and Guyomard, with claims 9 and 10 also obvious over Iwaizono; claims 1 and 5 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years of experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. (citing Ex. 1002 ¶¶ 50–51). Patent Owner “does not dispute Petitioner’s level of ordinary skill.” PO Resp. 17. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the disclosures of the ’641 patent and the prior art of record.” slip op. at 9

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

    “constructions. First, we agree with Petitioner that the ’641 patent indicates that the charge cut-off voltage selected for a particular battery need not be a fixed property of the battery or something that is set by the design and chemistry of the battery. Consistent with this conclusion, the ’641 patent discloses that a “charging device controls the charge cut-off voltage of the single lithium-ion cell within a range from 4.3 V to 5.8 V.” Ex. 1001, 9:50– 55. This strongly suggests that the charge cut-off voltage is controlled by the charger and is not necessarily an inherent property of the battery. Patent Owner contends that this is merely an unclaimed embodiment, but the relevant disclosure states that the charging device for the “present invention” may be any type of device “with the proviso that said charging device controls the charge cut-off voltage.” Id. at 9:50–53.” slip op. at 12

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

    “charge cut-off voltage “greater than 4.2 V but less than 5.8 V” and calculating a specific or theoretic capacity “with a charge cut-off voltage limited to 4.2” (claim 1) or “with a charge cut-off voltage set at 4.2 V” (claim 5). Ex. 1001, 16:56–61, 17:6–11. Although the parties dispute the precise scope of these claim terms, the parties agree that the first use of “charge cut-off voltage” in claims 1 and 5 refers to the potential of the battery as a whole (between the cathode and the anode), and not a half-cell voltage using lithium metal as a counter electrode.10 Tr. 17:1–3 (agreeing 10 With respect to the phrase “as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V,” the parties in fact appear to be in that the first use of “charge cut-off voltage” in claim 5 refers to a full-cell voltage); Sur-reply 5; PO Resp. 22. We need not further construe the claims to resolve the disputes between the parties. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 16

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Given Mr. Juzkow’s unambiguous testimony that Uemura uses constant current charging that would stop when the applied voltage reached 11 The chart is reproduced from SAFT, Charging your lithium-ion batteries: 5 expert tips for a longer lifespan, (https://www.saft.com/energizing-iot/charging-your-lithium-ion-batteries-5-expert-tips-longerlifespan#:~: text=When%20the%20battery%20provides%20current,This%20restore s%20the%20battery's%20capacity). 4.3 V, as well as Dr. Yao’s persuasive testimony that Uemura’s constant charging rate is not slow, we credit the testimony of Dr. Yao that one of ordinary skill in the art would have understood that the internal voltage to which the battery of Uemura was charged is less than 4.3 V. Ex. 2006 ¶ 119. In particular, Dr. Yao persuasively testifies that one of ordinary skill in the art would have believed that the charge cut-off voltage was no more than 4.2 V, and most likely equal to “about 4 V.” Id. ¶¶ 119–122. Petitioner argues that because the battery of Uemura is charged “to” a maximum voltage of 4.3 V, Uemura discloses the claimed charge cut-off voltage under either Petitioner’s or Patent Owner’s construction of the term. Pet. Reply 11–12 (citing Ex. 1009 ¶ 81; Ex. 1044 ¶¶ 56–59). This argument is not persuasive because Mr. Juzkow unambiguously testified that charging in Uemura stopped when the applied voltage reached 4.3 V, and Uemura discloses that the battery was charged “at” a voltage ranging from 4.3 V to 2.0 V, not “to” such a voltage. Ex. 1009 ¶ 81; Ex. 2008, 113:2–13; Ex. 2006 ¶ 119 n.64; Sur-reply 9. In view of the foregoing, we determine that Petitioner has not demonstrated by a preponderance of the evidence that Uemura anticipates independent claims 1 and 5 of the ’641 patent.” slip op. at 21

  Patent outcomesUS 7,749,641 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,749,641
• Lululemon Athletica Canada Inc. / Lululemon USA Inc. v. Nike, Inc.Some claims unpatentable
  PTAB · May 13, 2024 · IPR2023-00189 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1–4, 7, 8, and 11–16 are unpatentable over Arrasvuori; claims 5, 6, 9, 10, and 17–20 are not unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’256 patent, the background technical field, the prior art, and Petitioner’s unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Dr. Lynch (Ex. 1003 ¶¶ 43, 44).” slip op. at 13

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

    “simultaneously communicate in real-time to the first user at the first location and the second user at the second location, an interface indicating whether the challenge has been met.” Ex. 1001, 40:64–67 (emphasis added). The claim language itself suggests that “continuously generat[ing]” an interface in “real-time” allows the interface to indicate whether a challenge “has been met,” and doing so “in real-time” suggests that updates to the interface are generated as developments occur that may affect whether the challenge “has been met.” Notably, the subject claim limitation explicitly recites “continuously” generating the interface “in real-time”; it does not recite— but easily could have if intended—“periodically” generating the interface (i.e., at predetermined time intervals independent of the occurrence of developments that may affect whether the challenge has been met).3” slip op. at 29

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artDecided for petitioner

    “Petitioner contends Arrasvuori qualifies as prior art under 35 U.S.C. §§ 102(a) and 102(e) based on its filing and publication dates. Pet. 24. Patent Owner does not contest the prior art status of Arrasvuori. Also, on this record, we have no evidence of an invention date other than the earliest possible effective filing date of the challenged claims. Thus, for purposes of this Decision, we determine that Arrasvuori qualifies as prior art under 35 U.S.C. § 102(a) because Arrasvuori’s publication date of October 11, 2007, is before the earliest possible effective filing date of the challenged claims, which is March 3, 2008, and under § 102(e) because Arrasvuori’s filing date of March 29, 2006, is before the earliest possible effective filing date of the challenged claims (March 3, 2008). Ex. 1001, codes (22), (60), (63); Ex. 1005, code (22), (43).” slip op. at 18

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

    “Arrasvuori discloses (a) “[m]onitoring” of “users performing real- world fitness tasks” (Ex. 1005 ¶ 38), using (b) “monitoring equipment . . . integrated into . . . wireless nodes and/or other computers of users, and/or [] attached to bodies of users” (id. at ¶ 39 (emphasis added)), where (c) “[u]sers might . . . wear their wireless nodes and/or other computers” (id. (emphasis added)), and where (d) “[t]he phrase[] ‘computer’ . . . refer[s] but [is] not limited to . . . a computerized watch” (id. at ¶ 90 (emphasis added); see id. at ¶ 40 (disclosing that “employed monitoring equipment might include one or more sensors”)). We find that these descriptions in Arrasvuori provide an anticipatory disclosure, particularly to the skilled artisan, of the limitation “wirelessly-connected sensor worn on an appendage of a first user.” See Ex. 1017 ¶ 45; Ex. 2006, 84:10-85:22. Although Arrasvuori does not recite in a single sentence the substance of disclosures (a) through (d) above, such as explicitly stating that its “wireless node is a computerized watch,” this is not necessary for the skilled artisan to understand that Arrasvuori discloses such a feature. See In re Bond, 910 F.2d at 832–33 (anticipation “is not an ‘ipsissimis verbis’ test”). Moreover, as argued by Petitioner, Arrasvuori’s disclosure of sensors “attached to bodies of users” and of users “wear[ing]” sensors itself discloses the subject limitation as broadly recited, even without considering the additional disclosure of a computerized watch. See Pet. Reply 17 (“Arrasvuori teaches wrist-worn sensors by stating that its users can ‘wear their wireless nodes and/or other computers.’” (citing Ex. 1005 ¶39)).” slip op. at 21

  Patent outcomesUS 9,278,256 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,278,256
• Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting v. Cao Lighting, Inc.Some claims unpatentable
  PTAB · Sep 28, 2023 · IPR2022-00848 · APJ Brian D Range · IPR · Final written decision

  Claims 21, 22, 25, 26, 28–30, 32–36, 40, 42–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 are unpatentable under § 103; claim 41 is not shown …

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 18 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52, EPRC 1:32. One requirement of this apparatus is that it comprise “a semiconductor chip” (id. at 9:66) where “said semiconductor chip is a light emitting diode (LED) chip EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction (Resp. 14) of “said semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as referring to “a semiconductor LED chip capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor LED chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 53 (quoting Ex. 1008, 10). Notably, claim 18 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 9

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’770 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 16. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’770 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 15

  • Prior constructionPrior construction adoptedTerm construed patent owner constructionDecided for patent owner

    “Delaware held, with respect to related U.S. Patent 6,465,961, construed “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” Resp. 14 (citing Ex. 1024, 15–18). Petitioner responds that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1. We note that the language of claim 18 does not precisely match the language the District Court considered, it is substantively the same. The record supports a construction very similar to the construction the District Court adopts, and we reference the District Court’s reasoning. Ex. 1024, 15– 18. We, thus, construe claim 18’s recitation that “said semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as referring to “a semiconductor LED chip that is capable of emitting light greater than about 40 milliwatts.” It is unnecessary to construe any other claim terms in this Decision because none of the parties’ disputes turn on the meaning of other terms. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 17

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner

    “The facts above are evidence of the Krames reference’s publication as of June 29, 2000, because the facts tend to make the Krames reference’s publication as of June 29, 2000, more probable than it would be without the evidence. See Fed. R. Evid. 401(a) (defining evidence as relevant “if it has any tendency to make a fact more or less probable than it would be without the evidence”). The evidence is sufficient to support publication. Meanwhile, no evidence of record suggests that Krames was not a printed publication as of June 29, 2000. Thus, a preponderance of the evidence supports Krames’s prior art status. Patent Owner argues that Ms. Watters “never establishes a firm date when Krames was purportedly available to the relevant public.” Resp. 21. Patent Owner bases this argument by taking a tortured reading of Ms. Watters’s statement that “[m]embers of the interested public could locate a copy of [the Proceedings] on or after June 29, 2000, the date it was catalogued.” Id. (quoting Ex. 1020, 3); see also Sur-Reply 12–13. The best understanding of Ms. Watters’s statement, in view of the context of Ms. Watters explaining the library’s cataloguing process, is that a member of the interested public had two options: the person could choose to locate the Proceedings on June 29, 2000, or the person could choose to locate the Proceedings after June 29, 2000. Thus, the statement supports public availability as of June 29, 2000.” slip op. at 21

  Patent outcomesUS 6,634,770 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,634,770

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.