• Uatp IP LLC v. Slick Slide LLCSome claims unpatentable
  PTAB · Oct 2, 2026 · PGR2024-00054 · APJ Brian D Range · PGR · Final written decision

  Claims 22–26 are unpatentable based on obviousness; claims 1–17, 27, and 28 were not shown unpatentable. Patent Owner’s motion to terminate was denied.

  RulingsFinal written decision

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

    “1. Mesh Layer Petitioner contends “no formal claim construction is necessary in this” slip op. at 13

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

    “5. Analysis On this complete record, we determine that Petitioner’s arguments do” slip op. at 31

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

    “form of nylon and some form of Teflon (and possible combinations thereof) having the specific coefficient of friction range given in limitation [1c] breaks down, because the building blocks of the obviousness argument are not sufficiently identified in Phillips alone, nor in the supporting testimony. Accordingly, we determine that Petitioner’s arguments and evidence fail to show that Phillips renders the challenged claims obvious. 6. Conclusion Based on the foregoing, we determine that Petitioner has not established by a preponderance of the evidence that claims 1–4, 6, and 7 would have been anticipated by or obvious in view of Phillips.” slip op. at 33

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “2. Products and Nexus We first consider the issue of whether certain evidence relied upon by” slip op. at 20

  Patent outcomesUS 11,998,854 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham · Nautilus
  Patents in suitUS 11,998,854
• Apple Inc. v. Immervision, Inc.All claims unpatentable
  PTAB · Jul 29, 2024 · IPR2023-00472 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–7 are unpatentable: claims 1 and 3–7 are anticipated by Thibault, and claims 1–7 are obvious over Thibault.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art In our Institution Decision, we adopted Petitioner’s undisputed contention that a POSITA (person of ordinary skill in the art) “would have had at least a Bachelor’s degree in an academic area emphasizing physics, optical engineering, electrical engineering and/or a similar discipline, and at least five years of experience in developing and designing optical imaging systems and have familiarity with image processing algorithms and optical design software” and that “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Pet. 8 (citing Ex. 1003 ¶ 15). Patent Owner states: “Solely for purposes of this Response, Patent Owner does not object to Petitioner’s definition of a POSA [person of ordinary skill in the art].” PO Resp. 14 (citing Ex. 2001 ¶ 45). Accordingly, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 12

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

    “To the extent necessary to determine whether the disputed language of limitation 1[e] encompasses both Figure 6 and Figure 7, we agree with Petitioner that the language of limitation 1[e] encompasses both Figure 6 and Figure 7. We determine we need not expressly construe any other claim terms. See Vivid Techs., 200 F.3d at 803.” slip op. at 27

  • Strike new argumentNew argument consideredDecided for petitioner

    “presented a more comprehensive claim construction position in its Petition, we are not persuaded that Petitioner’s “claim construction” positions in this proceeding are improperly responsive or belated. Claim construction can be an evolving issue. We have reviewed Petitioner’s presentation of its arguments at the outset, in the Petition, and we have addressed the Petition’s arguments regarding whether limitation 1[e] is an intended use, above. Regarding the remaining arguments, we note that our rules provide that a “reply may only respond to arguments raised in the corresponding . . . patent owner response.” 37 C.F.R. § 42.23(b). The Board “will permit the petitioner, in its reply brief, to address issues discussed in the institution decision,” but a petitioner “may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability. A party also may submit rebuttal evidence in support of its reply.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 73 (Nov. 2019), available at https://www.uspto.gov/ TrialPracticeGuideConsolidated (citing Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077–78 (Fed. Cir. 2015)). We have reviewed the parties’ post-institution arguments regarding limitation 1[e], and we are not persuaded that the subsequent development of both parties’ positions on the interpretation of this term throughout the course of this proceeding is contrary to our rules. “There is no rule, for example, requiring a petition to describe all possible or reasonable claim constructions and to present invalidity theories under those constructions.” Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374, 1380–81 (Fed. Cir. 2023). The Axonics court further opined that “we have continued to recognize that a petitioner is entitled under the APA to respond to new claim construction arguments made by a patent owner.” Id. at 1382. A recent Federal Circuit case addressing Axonics and a petitioner’s opportunity to respond to a patent owner’s newly presented claim construction argument, which was decided after oral hearing in this case, supports the Axonics approach. Apple v. Omni MedSci, No. 2023-1034, slip op. at 11–12 (Fed. Cir. June 21, 2024). This case summarizes some relevant pre-existing case law in reaching its conclusion that under “both Axonics and earlier precedents, the Board abused its discretion here in refusing to consider [petitioner] Apple’s reply argument.” Id. (citing SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016), rev’d on other grounds sub nom. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018); Hamilton Beach Brands, Inc. v. f’real Foods LLC, 908 F.3d 1328, 1338–39 (Fed. Cir. 2018)).” slip op. at 21

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Thibault but, rather, only that “Thibault renders obvious claim 2.” Pet. 34 (citing Ex. 1003 ¶¶ 127–128). Petitioner argues that Thibault teaches “special optimization” of MTF to “control the image quality in production so that it remains in the specification.” Id. (citing Ex. 1004, 3). Petitioner further argues that “a POSITA would have understood that Thibault’s lens designs were intended to achieve ‘constant image quality across a whole field of view,’” or “that it would have been obvious to achieve such an outcome using known ‘guidelines’ within the industry.” Id. at 35 (citing Ex. 1003 ¶ 128). Petitioner provided no development of an anticipation position with respect to claim 2. Accordingly, although Petitioner’s uncontested position on claim 2 supports a finding of obviousness based on Thibault, because it is reasonable, not persuasively controverted, and supported by testimony, it does not support a finding of anticipation.” slip op. at 50

  Patent outcomesUS 10,795,120 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,795,120
• Hope Medical Enterprises, Inc. v. Fennec Pharmaceuticals, Inc.No claims unpatentable
  PTAB · Sep 1, 2023 · IPR2022-00125 · APJ Julia Heaney · IPR · Final written decision

  The Board granted the revised noncontingent motion to amend, canceled claims 18 and 20, and entered substitute claims 28 and 29, which were not proven obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, relying on the testimony of Dr. Rogers, contends that a person of ordinary skill in the art would have [had] a bachelor’s degree or equivalent in any of the pharmaceutical sciences with at least 5 years of experience in solid state chemistry; a master’s degree in any of the pharmaceutical sciences with at least 3 years of experience in solid state chemistry; or a Ph.D. in any of the pharmaceutical sciences with 1 year of experience in solid state chemistry. Pet. 8 (citing Ex. 1008 ¶¶ 24–28). Petitioner further states that such “[a] person could also have qualified as a [person of ordinary skill in the art] with some combination of (1) more formal education and less technical or professional experience or (2) less formal education and more technical or professional experience.” Id. Patent Owner does not dispute Petitioner’s proposed definition of a person of ordinary skill. See generally MTA, RMTA. Having considered the parties’ arguments and evidence, we adopt the level of ordinary skill in the art proposed by Petitioner, because it is consistent with the disclosures of the ’363 patent and the prior art of record. We note, however, that neither party contends that the outcome of this case would differ based on our adoption of any particular definition of a person of ordinary skill in the art.” slip op. at 12

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

    “In our Preliminary Guidance, we construed “for a pharmaceutical composition” to mean “in combination with pharmaceutically acceptable excipients,” based on the ’363 patent’s definition providing that “[t]he terms ‘formulation’ or ‘pharmaceutical composition’ as used herein refers to the drug in combination with pharmaceutically acceptable excipients.” Prelim. Guid. 5–6 (citing Ex. 1001, 12:26–28; Ex. 2010, 17:11–12; Ex. 2011, 26:26– 27). We also encouraged the parties to address whether “for a pharmaceutical composition,” which appears in the preamble of substitute claims 28 and 29, is limiting, as opposed to a statement of intended use or purpose. Id. at 6. Following our Preliminary Guidance, the parties submitted further arguments concerning the term “for a pharmaceutical composition.” Patent Owner argues the term requires that the claimed process provide STS that is sufficiently pure for use in a pediatric patient (see RMTA 8–11) and that the word “drug” in the ’363 patent’s definition of “pharmaceutical composition” requires that the anhydrous STS is of sufficient purity for pharmaceutical use. Reply RMTA 3. Petitioner argues that the construction set forth in our Preliminary Guidance was correct. See Sur-reply RMTA 2–3. Having considered the arguments and evidence, we do not further construe the term “for a pharmaceutical composition” in this Decision because, as discussed in our analysis of obviousness below, it is not necessary to construe the term in order to determine whether Petitioner has met its burden of demonstrating by a preponderance of the evidence that proposed substitute claims 28 and 29 are unpatentable. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 13

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “1. Reasonable Number of Substitute Claims A motion to amend must “propose a reasonable number of substitute claims.” 35 U.S.C. § 316(d)(1)(B); see 37 C.F.R. § 42.121(a)(3) (“A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.”). Patent Owner proposes the same number of substitute claims as the original challenged claims that are cancelled, i.e., a one-to-one substitution for a total of two substitute claims. MTA 2; RMTA. “There is a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one (1) substitute claim.” Lectrosonics, Paper 15 at 4; see 37 C.F.R. § 42.121(a)(3). Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner proposes a reasonable number of substitute claims. 2. Support in the Original Disclosure Patent Owner has identified written description support in the originally filed disclosure of the ’363 patent for the new limitations added for the proposed substitute claims. See RMTA 5–8. We have reviewed Patent Owner’s assertions of support in the original disclosure for the proposed revised substitute claims and determine that sufficient support exists. Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner has met this requirement. 3. Respond to a Ground of Unpatentability “A motion to amend may be denied where . . . [t]he amendment does not respond to a ground of unpatentability involved in the trial.” 37 C.F.R. § 42.121(a)(2)(i). Patent Owner asserts that the proposed revised substitute claims are patentable over the combination of references that forms the basis of the obviousness ground on which we instituted trial. RMTA 12–13. Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner has met this requirement. 4. Scope of the Claims Patent Owner asserts that the proposed revised substitute claims do not enlarge the scope of original claims 18 and 20. RMTA 5. We have reviewed Patent Owner’s assertion that the purity amendments of proposed revised substitute claims 28 and 29 narrow the claims’ scope. Id. Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner has met this requirement.” slip op. at 17

  • BurdenNot shown unpatentable

    “determine the evidence relied on by Petitioner does not support Petitioner’s position that a person of ordinary skill in the art would have been motivated to combine Levenson, Sherman, Edwards, and USP. Petitioner’s contention that it would have been obvious to a person of ordinary skill in the art to combine the teachings of Levenson with Sherman is based on Dr. Rogers’s testimony that “[b]oth references disclose synthesis of sodium thiosulfate pentahydrate.” Ex. 1008 ¶ 151; see Pet. 36, 38. Dr. Rogers further testified it would have been obvious to add Edwards’s dehydrating step to the preparation of STS pentahydrate “which is obtained following the teachings of Levenson and Sherman” because “Edwards itself discloses dehydrating [STS] pentahydrate.” Id. ¶ 154. The Petition included these arguments even though they were inconsistent with Petitioner’s previous statement, during the Sherman prosecution, that Levenson taught STS heptahydrate, and therefore “does not provide any teaching with respect to [STS] pentahydrate.” Ex. 2013, 97. This prior inconsistent statement undercuts Petitioner’s rationale for combining Levenson, Sherman, and Edwards in this proceeding. Moreover, Petitioner’s rationale for combining the references in this proceeding is inconsistent with its statements about Levenson during the Sherman prosecution. Recognizing this inconsistency, Petitioner now takes the position that the Petition and Dr. Rogers’s testimony were incorrect. Paper 32; see Tr. 21:14–22:7, 59:1–2 (reemphasizing that “Petitioner maintains the statements that it made in the Sherman prosecution regarding Levenson”). Petitioner attempts to rationalize the inconsistency between its statements in the Sherman prosecution (including that “Levenson does not provide any teaching with respect to [STS] pentahydrate”) and its position in this proceeding by arguing that Dr. Rogers relies on Levenson as teaching surface activation “regardless of any particular hydrates Levenson discloses.” Tr. 22:8–9. That argument is not persuasive, because Dr. Rogers’s declaration clearly states the primary reason for his opinion that it would have been obvious to a person of ordinary skill in the art to combine the teachings of Levenson with Sherman: “[b]oth references disclose synthesis of sodium thiosulfate pentahydrate.” Ex. 1008 ¶ 151. Contrary to Petitioner’s argument, Dr. Roger’s reliance on the surface activation teachings of Levenson is because he believes that both references pertain to STS pentahydrate; the surface activation teachings are not stated as an independent reason to combine the references. Id. Petitioner provides no further explanation of how a person of ordinary skill in the art would have been motivated to combine Levenson’s teachings regarding manufacture of STS heptahydrate with Sherman’s and Edwards’s teachings regarding STS pentahydrate, or how a person of ordinary skill would have regarded the difference between STS hydrates. Dr. Rogers’s acknowledgement of stability differences among STS hydrates highlights the insufficiency of Petitioner’s showing in this regard. See Ex. 2005, 35, 39. Having changed its position at the close of trial and having effectively withdrawn Dr. Rogers’s testimony as to similarities between Levenson and” slip op. at 24

  Patent outcomesUS 10,792,363 not shown unpatentable
  Claim constructioncites KSR · Graham
  Patents in suitUS 10,792,363
• Samsung Electronics Co., Ltd / Dell Technologies Inc. et al. v. Mypaq Holdings Ltd.All claims unpatentable
  PTAB · May 17, 2023 · IPR2022-00312 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1–20 under Hirst and Chagny grounds, and claims 3, 12, 13, and 19 also under Chagny and Clark.

  RulingsFinal written decision

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

    “20 Pet. 10. Patent Owner filed a Preliminary Response. Paper 7. With our authorization, Samsung and Dell filed a reply to the Preliminary Response (Paper 9) addressing discretionary denial issues, and Patent Owner filed a sur-reply (Paper 10). We instituted trial on the asserted grounds of unpatentability. Paper 11 (“Inst. Dec.”) at 30.” slip op. at 3

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “After institution, Anker filed a motion for joinder and a petition in IPR2022-01131. We joined Anker as a petitioner in this proceeding. Paper 18.” slip op. at 3

  • Skill levelSkill level board ownDecided for patent owner

    “We agree with Patent Owner that some degree of familiarity with power electronics would be necessary for a POSITA given the subject matter at issue, and we understood this to be implicit in part (i) of Petitioner’s definition. To address Patent Owner’s concern, we clarify that a person with a Master of Science in Electrical Engineering or an equivalent field would need experience in power electronics to qualify as a POSITA. We are reluctant to use Patent Owner’s formulation of “some independent expertise in power electronics” (PO Resp. 17–18 (emphasis added)) because it could be read to include an expert level of skill rather than an ordinary level of skill. Thus, we determine that a POSITA would have had either (i) a Master of Science in Electrical Engineering, or an equivalent field, and experience in power electronics or (ii) a Bachelor of Science in Electrical Engineering or an equivalent field as well as two years of experience in the design of power electronics.” slip op. at 7

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

    “We do not agree with Patent Owner’s interpretation of the term “system operational state of said load.” As an initial matter, Patent Owner does not direct us to, and we do not find, a definition of “system operational state” of a load in the ’759 patent. As noted above, Patent Owner’s proposed definition is that “the term ‘system operational state’ as it pertains to engineering systems, refers to the way in which the system as a whole is being employed or utilized.” PO Resp. 18–19 (citing Ex. 2018 ¶ 51). Claims 1, 6, and 16, however, recite “a system operational state of [a/said] load” (emphasis added), not the system as a whole. Patent Owner’s proposed construction, therefore, is not consistent with the claim language. Patent Owner points to examples disclosed in the ’759 patent in an attempt to narrow the meaning of the claim term and, as further discussed below, to distinguish the prior art. See PO Resp. 19–20 (“The ’759 Patent provides examples of signals indicating system operational states including signals . . . .” (citing Ex. 1001, 7:17–28)); see also PO Resp. 46–47 (similar argument citing Ex. 1001, 7:16–28). But the ’759 patent states that these are non-limiting examples. Ex. 1001, 7:16–17 (“Further examples indicating a system operational state include, without limitation . . . .”). One passage cited by Patent Owner states the following: with different operating states. For example, a server configured to process financial data may operate at a higher level of criticality during normal business hours, and revert to a lower processing state at another time of day. The aforementioned system may require a higher level of performance from the power converter during such periods of high criticality, which may compromise operating efficiency, but which may admit higher operating efficiency during substantial periods of time in the lower processing state. Ex. 1001, 3:55–64, quoted in PO Resp. 20–21, 47. Patent Owner argues that this passage “illustrates the difference between operational states and system activity at a particular moment” because, according to Patent Owner, “[i]n this example, the system operational state may be in a critical or non-critical state depending on the given performance constraints at a particular time of day.” PO Resp. 20–21; see also PO Resp. 47 (similar argument). We disagree. The ’759 patent passage above effectively correlates processor activity and criticality by saying that, in a period of “high criticality,” the load requires a higher performance level from the power converter than when the load is in a “lower processing state.” Ex. 1001, 3:55–64. Thus, this example shows that a “lower processing state” of a data processing server is a “system operational state” of that server, notwithstanding Patent Owner’s labeling this as a “non-critical state.” See PO Resp. 21. Patent Owner argues that “two processors in two different systems may have the same activity level at some point in time” but may be in different system operational states because, for example, speed is critical with one processor and energy efficiency is critical with the other. PO Resp. 48–49 (citing Ex. 2018 ¶¶ 97–98). Similarly, Dr. Ferrese posits an analogy in which two vehicles are traveling at the same speed but one is carrying a person to a hospital and the other is carrying a family on a road “in a given instant appear to be operating identically,” they “can actually have significantly different system operational states resulting in different preferences in terms of how they are operated and controlled.” Ex. 2018 ¶ 97. These hypotheticals are not persuasive, as they would introduce subjectivity into the claim construction, requiring inquiry into the purpose or intent of a processor’s operation. Furthermore, these hypotheticals are not helpful in resolving the controversy because Petitioner relies on the different activity levels in the prior art as disclosing different system operational states, as discussed below in sections II.D.2.b and II.G.2.a. Thus, we need not opine on whether one activity level of a processor could result in multiple system operational states.” slip op. at 9

  Patent outcomesUS 7,675,759 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,675,759
• Samsung Electronics Co., Ltd / Dell Technologies Inc. et al. v. Mypaq Holdings Ltd.All claims unpatentable
  PTAB · May 17, 2023 · IPR2022-01134 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–20 are unpatentable: Chagny anticipates claims 1–12, 14–17, 19, and 20, and renders claims 13 and 18 obvious; remaining grounds were not reached.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “After institution, Anker filed a motion for joinder and a petition in IPR2022-01134. We joined Anker as a petitioner in this proceeding. Paper 18.” slip op. at 3

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that some degree of familiarity with power electronics would be necessary for a POSITA given the subject matter at issue, and we understood this to be implicit in part (i) of Petitioner’s definition. To address Patent Owner’s concern, we clarify that a person with a Master of Science in Electrical Engineering or an equivalent field would need experience in power electronics to qualify as a POSITA. We are reluctant to use Patent Owner’s formulation of “some independent expertise in power electronics” (PO Resp. 17 (emphasis added)) because it could be read to include an expert level of skill rather than an ordinary level of skill. Thus, we determine that a POSITA would have had either (i) a Master of Science in Electrical Engineering, or an equivalent field, and experience in power electronics or (ii) a Bachelor of Science in Electrical Engineering or an equivalent field as well as two years of experience in the design of power electronics. We would reach the same determinations on Petitioner’s patentability challenges in §§ II.D–E below even if we adopted Patent Owner’s assessment of a person with a Master of Science degree and “some independent expertise in power electronics (through work or otherwise),” which is a higher level of skill.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “system operational state of said load.” As an initial matter, Patent Owner does not direct us to, and we do not find, a definition of “system operational state” of a load in the ’514 patent. As noted above, Patent Owner’s proposed definition is that “the term ‘system operational state’ as it pertains to engineering systems, refers to the way in which the system as a whole is being employed or utilized.” PO Resp. 18 (citing Ex. 2018 ¶ 52). Claim 1, however, recites “a system operational state of said load” (emphasis added), not the system as a whole. Patent Owner’s proposed construction, therefore, is not consistent with the claim language. Patent Owner points to examples disclosed in the ’514 patent in an attempt to narrow the meaning of the claim term and, as further discussed below, to distinguish the prior art. See PO Resp. 18–20 (“The ’514 Patent provides examples of signals indicating system operational states that include signals . . . .” (citing Ex. 1001, 9:14– 27)). But the ’514 patent states that these are non-limiting examples. Ex. 1001, 9:11–23 (“Further examples indicating a system operational state include, without limitation . . . .”). One passage cited by Patent Owner states the following: It should also be taken into account that there are loads with different operating states. For example, a server configured to process financial data may operate at a higher level of criticality during normal business hours, and revert to a lower processing state at another time of day. The aforementioned system may require a higher level of performance from the power converter during such periods of high criticality, which may compromise operating efficiency, but which may admit higher operating efficiency during substantial periods of time in the lower processing state. Ex. 1001, 5:8–17, quoted in PO Resp. 20. Patent Owner argues that this passage “illustrates the difference between operational states and system this example, the system operational state may be critical or non-critical depending on the performance constraints at particular time of day.” PO Resp. 20 (citing Ex. 2018 ¶ 53). We disagree. The ’514 patent passage above effectively correlates processor activity and criticality by saying that, in a period of “high criticality,” the load requires a higher performance level from the power converter than when the load is in a “lower processing state.” Ex. 1001, 5:8–17. Thus, this example shows that a “lower processing state” of a data processing server is a “system operational state” of that server, notwithstanding Patent Owner’s labeling this as a “non-critical” operational state. See PO Resp. 20. Patent Owner argues that “two processors in two different systems may have the same activity level at some point in time” but may be in different system operational states because, for example, speed is critical with one processor and energy efficiency is critical with the other. PO Resp. 21–22 (citing Ex. 2018 ¶¶ 55–56). Similarly, Dr. Ferrese posits an analogy in which two vehicles are traveling at the same speed but one is carrying a person to a hospital and the other is carrying a family on a road trip. Ex. 2018 ¶ 55. Dr. Ferrese states that, even though these two vehicles “in a given instant appear to be operating identically,” they “can actually have significantly different system operational states resulting in different preferences in terms of how they are operated and controlled.” Ex. 2018 ¶ 55. These hypotheticals are not persuasive, as they would introduce subjectivity into the claim construction, requiring inquiry into the purpose or intent of a processor’s operation. Furthermore, these hypotheticals are not helpful in resolving the controversy because Petitioner relies on Chagny’s different activity levels as disclosing different system operational states, as one activity level of a processor could result in multiple system operational states. slip op. at 9

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

    “other words, the duty cycle is the “ratio of on-time to the total switching period.” Ex. 1002 ¶ 38. We find that Chagny describes a duty cycle because Chagny discloses that charge switch 220 is turned on and off. See, e.g., Ex. 1004, 5:38–40 (“The opening and closing of the charge and discharge switches 220 and 230 is controlled by the charge and discharge control signals 212 and 214 respectively.”). Patent Owner agrees that charge switch 220 is turned on and off. See Tr. 43:23–44:1 (Q: “Is Patent Owner disputing that there is a conduction time in Chagny that the FET is turned on and off?”; A: “The FET is turned on and off, yes, so that’s correct.”); see also Tr. 45:11–12 (Patent Owner’s counsel stating that “it certainly is turning the FET on and off”). Thus, Chagny discloses that power switch 220 has a duty cycle notwithstanding Patent Owner’s argument that “Chagny does not even discuss duty cycles.” See PO Resp. 33. As to Patent Owner’s argument that “activity input 202 sets the switching frequency, not the duty cycle” (PO Resp. 33), we agree with Petitioner that “[t]here is no requirement that said signal indicating system operational state must ‘set’ the duty cycle.” See Pet. Reply 19–20. Petitioner contends that, because the duty cycle of charge switch 220 determines the output voltage and because that output voltage is then used as feedback to regulate the output voltage (Ex. 1004, 4:63–65), a person of ordinary skill in the art would have understood that the duty cycle of charge switch 220 is controlled “as a function of the feedback from the regulated DC voltage output 295 (i.e., as function of said output characteristic).” Pet. 21 (citing Ex. 1002 ¶ 72; Ex. 1009, 17–18). As to Patent Owner’s argument that Petitioner “cannot rely on knowledge of a POSITA to prove anticipation by Chagny” of ordinary skill in the art would have understood from Chagny’s disclosure. This is appropriate and indeed necessary because “[a]nticipation is established when ‘one skilled in the art would reasonably understand or infer from the prior art reference’s teaching that every claim [limitation] was disclosed in that single reference.’” CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1338 (Fed. Cir. 2017) (quoting Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192–93 (Fed. Cir. 2003)). We also credit Dr. Kiaei’s unrebutted testimony that, “for a buck power converter, the output voltage is equal to the input voltage times the duty cycle of the high-side switch (referred to as charge switch [220] in Chagny).” Ex. 1002 ¶ 57. As noted above, Chagny discloses that “controller module 210 receives the regulated DC voltage output 295 as a feedback input for regulating the output of the VRM 200.” Ex. 1004, 4:63– 65, cited in Pet. 21. Thus, we find that Chagny discloses controlling the duty cycle as a function of the output voltage in order to regulate the output voltage as part of the feedback loop.” slip op. at 35

  Patent outcomesUS 8,477,514 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,477,514
• Sunspec Alliance v. Tigo Energy, Inc.Some claims unpatentable
  PTAB · Jan 26, 2023 · IPR2021-01287 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 12–13 are unpatentable; claims 14–16 are not shown unpatentable because the asserted grounds fail to establish the required predetermined number of heartbeat skips or sensor-triggered skips.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “contention that a person of ordinary skill in the art “would have had a bachelor’s degree or similar degree in electrical engineering and one year of experience in the design of solar power systems, power control systems, and/or power safety systems” or “could have also obtained similar knowledge and experience through other means.” Dec. 6. Patent Owner does not appear to dispute this definition. See generally PO Resp; see also id. at 51 (employing Petitioner’s definition of a person of ordinary skill in the art in discussing Mr. Dunton’s testimony). In its Reply, Petitioner argues that “Patent Owner does not challenge but adopts Petitioner’s proposed level of skill for a POSITA for the relevant time period.” Reply 1 (citing Ex. 2003 ¶ 28; Ex. 1030, 119:25–120:14). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Accordingly, we adopt Petitioner’s definition, because it is consistent with the cited prior art. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 9

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

    “We interpret the term “heartbeat signals” as “periodic signals.” The term “heartbeat” appears only once in the in the specification outside of the claims: “the ‘heartbeats’ of the ping are set at a high rate, such as 100 or even 1000 per second.” Ex. 1001, 18:7–13. The disclosure of “the heartbeats” having a “rate” defined in “per second” terms indicates that they are periodic, as is generally recognized for heartbeats, i.e. human heartbeats. The term “heartbeat signals” appears in the challenged claims in conjunction with the detection of an anomaly (claim 12, “wherein the controller detects an anomaly in heartbeat signals from the remote unit”) and in conjunction with “skips” (claim 13, “wherein the anomaly includes skips of heartbeat signals”; claim 14, “when the anomaly includes a predetermined number of skips of the heartbeat signals”; claim 15, “when skips of the heartbeat signals are less than the predetermined number”). Accordingly, the heartbeat signals allow for the detection of an anomaly therein, indicating that they are typically predictable, and for the detection of skips of heartbeat signals, indicating that they are periodic. In view of the specification and the claims, and the parties’ arguments, we find that the plain and ordinary meaning of “heartbeat signals” is “periodic signals.”” slip op. at 12

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

    “Because patentee has acted as its own lexicographer, and because the ’321 patent specification is incorporated by reference into the ’770 patent specification (Ex. 1001, 1:7–37; Tr. 9:10–22), we adopt the construction: “Skips refers to the event of missing a communication or pulse.” Ex. 2005, 9:36–37. Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019) (citing Phillips, 415 F.3d at 1316) (“When the patentee acts as its own lexicographer, that definition governs.”).” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “We agree with Patent Owner that the preamble of claim 12 is limiting. The body of claim 12 recites “photovoltaic panel” and thus refers back to the preamble, and other challenged claims use the term “photovoltaic panel” in the non-preamble portions of the claims. See, e.g., Ex. 1001, 20:51, 20:58, 20:67, 21:5, 21:10. Aside from the preamble issue, the parties do not dispute the meaning of “photovoltaic panel.” Accordingly, we need not expressly construe the term “photovoltaic panel” for the purposes of this Decision.” slip op. at 14

  Patent outcomesUS 10,256,770 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,256,770
• Duke Manufacturing Co. v. Low Temp Industries, Inc.All claims unpatentable
  PTAB · Jul 15, 2022 · IPR2021-00415 · APJ Wesley B Derrick · IPR · Final written decision

  Claims 1–5, 11, 12, and 14–19 are unpatentable as obvious over Finegan and Tipton; the Board did not reach the remaining instituted grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “On this record, we find that the differences in the parties’ contentions as to the level of ordinary skill are not consequential, in part because both Petitioner’s and Patent Owner’s proposed level of skill are grounded on a relevant engineering degree and/or significant experience designing food service equipment, both of which reasonably also indicate some understanding of heat transfer concepts.9 Accordingly, we adopt Patent Owner’s proposed definition, which overlaps that proposed by Petitioner, particularly that of a person with a mechanical engineering degree and/or four years of experience designing food service equipment who also has an understanding of heat transfer concepts. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. Cf. Okajima, 261 F.3d at 1355 (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself 9 We note that neither Patent Owner nor Dr. Mayor provide any particular definition of an understanding of heat transfer concepts, and it is not apparent that more than a rudimentary understanding is required.” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Dr. Mayor’s testimony as to the meaning of “well” (Ex. 2027 ¶¶ 29– 32) is entitled to little weight because it fails to explain how the cited portions of the specification and file history support his position, and it is not otherwise apparent that it does. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); cf. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”). In sum, we determine that the meaning of “well,” as used in the ’253 patent, includes the interior walls and exterior walls (if present).” slip op. at 15

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

    “On this record, we determine that “well” includes at least the well bottom (or floor), the interior well walls, and the exterior well walls (if present). The specification discloses that “[w]ell 18 may comprise generally vertically-extending interior walls 22 connected by bottom or floor 26 . . . [that] [w]ell 18 additionally may comprise four exterior walls 30,” and that “well 18 preferably . . . is formed of stainless steel,” which by the plain meaning of the words indicates that the bottom (or floor), the interior walls, and the exterior walls are part of the well. See Ex. 1201, 4:3–17. Further, the disclosure that “well 18 preferably . . . is formed of stainless steel” indicates that a well includes physical structure(s), such as the walls and the bottom (or floor). Id. at 4:15–17. Also, each independent claim requires” slip op. at 14

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

    “Further, as depicted in the figures, including Figures 1 and 4, the exterior walls are not shown to be in contact, as there is no well structure depicted in the region spanned by D1, despite Figure 5, depicting a cross-sectional view of the same embodiment, showing an exterior wall 30. In sum, the depicted structure in the relied-on figures appears wholly consistent with D1 being the distance between the exterior walls 30 of adjacent wells 18, where wells are defined as including the interior walls 22 and exterior walls 30. Having a space D1 between exterior walls 30 of adjacent wells 18 is also consistent with claim 1 reciting “at least one exterior wall of one well is spaced an insulative distance from an exterior wall of an adjacent well.” Ex. 1201, 5:46–48. inconsistencies identified above between their positions and what is actually disclosed and depicted in the ’253 patent. Having considered the parties’ arguments and evidence, as well as the related District Court proceeding and Federal Circuit proceeding,14 we adopt Petitioner’s construction of “adjacent” as “next to.” We are not directed to anything in the record that requires the wells to be “immediately next to or abutting,” as Patent Owner contends. Rather, as the ’253 patent discloses a distance D1 between wells, the proper meaning is simply “next to.”” slip op. at 18

  Patent outcomesUS 9,795,253 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,795,253
• Favored Tech Corporation v. P2i LtdNo claims unpatentable
  PTAB · Aug 23, 2021 · IPR2020-00478 · APJ Jeffrey W Abraham · IPR · Final written decision

  Favored Tech did not prove claims 1–17 unpatentable: Baalmann did not anticipate the asserted claims, and the obviousness grounds lacked adequate disclosure or motivation with a reasonable expectation of success.

  RulingsFinal written decision

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

    “After considering Petitioner’s arguments regarding claim 9, Patent Owner’s silence regarding claim 9, and the language in the ’070 patent itself (e.g., Ex. 1001, 11:45–52, 12:60–61), we agree with Petitioner that the term “1H, 1H, 2H, 3H-heptadecafluorodecylacylate” in claim 9 should be construed to correctly recite HDFDA (1H, 1H, 2H, 2H-heptadecafluorodecylacrylate). The error Petitioner identifies is conspicuous and undisputed, and the intrinsic record does not suggest a different interpretation. Fitbit, Inc. v. Valencell, Inc., 964 F.3d 1112, 1119–20 (Fed. Cir. 2020); Novo Industries, L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003). Additionally, after reviewing the parties’ remaining claim construction arguments and evidence, we determine that we do not need to expressly construe any other terms for purposes of this Decision because, as addressed in detail below, we find Petitioner’s showings deficient for reasons that do not depend on the construction of any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing 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 6

  • 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 in the field of the ’070 patent would have had “at least a bachelor’s degree in a field such as chemistry, physics, or chemical engineering, as well as at least two years of experience with plasma-polymerization techniques.” Pet. 14 (citing Ex. 1002 ¶¶ 26–31). Patent Owner agrees with this proposed definition “with the understanding that ‘experience with plasma-polymerization techniques’ includes plasma-enhanced chemical vapor deposition (PECVD) techniques.” PO Resp. 9 (citing Ex. 2010 ¶ 20; Ex. 1002 ¶¶ 12, 63). In light of the record before us, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art. As Patent Owner points out, Dr. Gleason states that PECVD is a form of plasma polymerization, and thus the parties agree that experience with plasma-polymerization techniques would include PECVD. PO Resp. 9; Ex. 1002 ¶ 63. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

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

    “We agree with Patent Owner. Petitioner has failed to demonstrate adequately that each and every element in claim 1, arranged as recited in the claim, is found in a single prior art reference. NetMoneyIN, 545 F.3d at 1369; Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Here, Petitioner combines several different teachings from Baalmann to support its anticipation argument. For example, Petitioner relies on the “evacuable chamber with a volume of 1 m3” from Baalmann’s Example 1, but not the power (2kW) expressly disclosed as being used with that reactor of Example 1. Ex. 1004 ¶ 47. With regard to power density, Petitioner relies on Baalmann’s general disclosure that “[t]he electrical power input per chamber volume is set between 0.5 kilowatt/m3 and 5 kilowatt/m3.” Ex. 1004 ¶ 20. As Patent Owner points out, however, that power density range is not tied to any particular reactor volume or plasma zone volume. PO Resp. 19. Baalmann also fails to expressly disclose the plasma zone volume of the reactor in Example 1. See Ex. 1004 ¶¶ 47–48. To attempt to overcome this absence of an express disclosure, Petitioner argues that, for the reactor used in Example 1, the plasma zone volume and reactor volume are the same based on the configuration of the electrodes in the reactor. Pet. 24–25. Baalmann, however, does not expressly disclose the electrode configuration of the reactor in Example 1. See Ex. 1004 ¶¶ 47–48. Instead, Petitioner relies on Baalmann’s general disclosure of an embodiment wherein one electrode is formed by the chamber wall itself. Pet. 24–25; Ex. 1004 ¶¶ 35, 61. In so doing, Petitioner ignores the fact that Baalmann also states that “[t]wo opposite rod-shaped electrodes may also be used.” Ex. 1004 ¶ 35. In view of this, we disagree with Petitioner’s conclusion that a person of ordinary skill in the art “would have understood that chamber to be configured as described throughout the rest of the specification: with the chamber wall serving as one of the electrodes.” Pet. 24. Even if we were persuaded by Petitioner’s argument, the fact remains that Petitioner’s anticipation challenge is based on the combination of different features disclosed in separate portions of Baalmann. “Such picking and choosing . . . has no place in the making of a 102, anticipation rejection.” In re Arkley, 455 F.2d 586, 587–88 (CCPA 1972) (cited with approval in Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008)); see also Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052, 1069 (Fed. Cir. 2017) (stating that anticipation is not proven by multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention).” slip op. at 12

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

    “For all of the foregoing reasons, we are not persuaded by Petitioner’s argument that a person of ordinary skill in the art would have inferred the volume of the plasma zone10 in Coulson is 470 cm3 based on Coulson’s disclosure of a “glow discharge reactor” having a volume of 470 cm3. Pet. 38; Reply 15–16. In view of this, we are likewise not persuaded that Coulson discloses a power density of 85.1 W/m3, because Petitioner’s 9 Dr. Gleason confirmed that she did not perform any experiments to verify her opinions regarding Coulson’s plasma zone. Ex. 2017, 80:10–18. 10 As noted above, Petitioner presented its argument in the context of its proposed construction of plasma zone. Petitioner did not present an alternative argument supported by sufficient evidence addressing the volume of Coulson’s plasma zone based on Patent Owner’s proposed construction of plasma zone. Accordingly, we agree with Patent Owner’s assertion that we do not need to expressly construe the term plasma zone to resolve this issue. Sur-reply 1. argument that Coulson discloses this power density is based on its assertion that Coulson has a plasma zone volume of 470 cm3. Pet. 38. This finding is fatal to Petitioner’s obviousness challenge of claim 1 based on the combined teachings of Baalmann and Coulson because Coulson’s purported disclosure of using a power density of 85.1 W/m3 is an essential component of Petitioner’s obviousness challenge. An obviousness determination requires finding both “that a skilled artisan would have been motivated to combine the teachings of the prior art . . . and that the skilled artisan would have had a reasonable expectation of success in doing so.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367-68 (Fed. Cir. 2016). In attempting to establish a person of ordinary skill in the art would have had reason to combine the teachings of Baalmann and Coulson, and would have had a reasonable expectation of success in doing so, Petitioner repeatedly refers to using Coulson’s optimized reaction conditions, including power density, in Baalmann’s larger reactor. Pet. 48 (stating that a person of ordinary skill in the art “would have been motivated to maintain the same or similar reaction conditions within a larger reaction chamber that were present in Coulson’s chamber during Coulson’s reported plasma polymerization reactions, including power density and pressure, to preserve the same effective results.”), 48–49 (“That would have included motivation to maintain Coulson’s disclosed power density when scaling up to a larger reaction volume to preserve the beneficial results Coulson reported at that optimized power density.”); Reply 23 (referring to the “straightforward, compelling obviousness case set forth in the petition” that a person of ordinary skill in the art “would have expected to succeed performing Coulson’s reactions on a larger scale in view of Baalmann”); 23 (“The petition explained why a POSA would have modified Baalmann to use Coulson’s HDFDA monomer and reaction conditions to produce coatings with a reasonable expectation of success” ), 24 (stating the Petition “explained why a POSA would have expected success using known parameters from Coulson in an established large-scale apparatus”). During the oral hearing, counsel for Petitioner confirmed its obviousness positions depend on using Coulson’s power density. Tr. 20:10–21:16. Accordingly, Petitioner’s failure to demonstrate adequately that Coulson discloses or suggests a power density of 85.1 W/m3 undermines its reason to combine and reasonable expectation of success arguments. Petitioner’s argument that Baalmann discloses the claimed power” slip op. at 26

  Patent outcomesUS 8,389,070 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,389,070
• Tetra Tech Canada Inc. v. Georgetown Rail Equipment CompanyAll claims unpatentable
  PTAB · Aug 25, 2020 · IPR2019-00662 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 21–29 are unpatentable under §103 over Holmes, Bostrom, Kanade, and Davis; Ground 1 over Davis, Kowalski, Bostrom, and Kanade was not further addressed.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer engineering, mechanical engineering, computer science, physics, or a related field, and at least four years of experience (or the academic equivalent) in the field of computer or machine vision.” Pet. 19 (citing Ex. 1004 ¶ 42). Patent Owner states that, for purposes of its Response, “Patent Owner does not contest Petitioner’s asserted level of ordinary skill in the art.” PO Resp. 1. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. In light of the record now before us, we find that a person of ordinary skill in the art would be an individual with at least a bachelor’s degree in electrical engineering, computer engineering, mechanical engineering, computer science, physics, or a related field, and at least four years of experience (or the academic equivalent) in the field of computer or machine vision. Ex. 1004 ¶ 42. The level of ordinary skill in the art is also reflected by the references themselves. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). C. Claim Construction” slip op. at 8

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

    “Petitioner proposes constructions for “misaligned” and “image,” and states that the Board should construe “determining,” “crosstie contour,” and “tie plate contour” according to their plain and ordinary meanings. Pet. 20– 23. Patent Owner proposes constructions for “misaligned,” “tie plate is . . . sunken,” “across,” and “image,” and agrees with Petitioner that the Board should construe “determining,” “crosstie contour,” and “tie plate contour” according to their plain and ordinary meanings. PO Resp. 1–7. On the full record now before us, we determine it is not necessary to construe any claim term expressly to resolve the parties’ dispute. Vivid Techs., Inc., 200 F.3d at 803 (“Only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

  Patent outcomesUS 9,441,956 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,441,956
• Samsung Electronics Co., Ltd. v. Nucurrent, Inc.Rehearing granted
  PTAB · Feb 7, 2020 · IPR2019-00861 · APJ Wesley B Derrick · IPR · Rehearing

  The Board granted Samsung’s rehearing request and instituted review on all challenged claims and all grounds, finding a reasonable likelihood of prevailing on the asserted obviousness grounds.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “in an unusual place in time. As noted, the Petition was filed (March 22, 2019), and the Preliminary Response submitted (June 26, 2019), before promulgation of our 2019 Trial Practice Guide Update (July 16, 2019). At the time of filing, Petitioner could not have known of the guidance set forth in the 2019 Trial Practice Guide Update concerning multiple petitions. Although Petitioner “could, in theory, have filed a single petition including all of its grounds within the page limits,” Petitioner, acting on the guidance available to it at the time of filing, “determined that filing two separate IPR petitions allowed each asserted ground of unpatentability to be presented in a more clear and comprehensive manner.” Req. 4. Thereafter, the 2019 Trial Practice Guide Update issued on the same day as our conference call to discuss the parties’ requests for additional briefing (July 16, 2019), and these concurrent events would not have allowed the parties time to review and apply the guidance in a manner that would have permitted them to tailor their requests for additional briefing or their filing strategy to accommodate the newly-issued guidance. In the subsequent briefing by both parties, the impact of the 2019 Trial Practice Guide Update, although discussed briefly, was not the primary focus. See generally Reply; Sur-Reply. This is understandable, given the breadth of the complex estoppel issues raised in this case as well as the contemporaneous issuance of the guidance in the 2019 Trial Practice Guide Update. Thus, on account of the timing of the Petition filed in this case relative to other events, and based on the reasoning presented by Petitioner in the Request, which we discuss in more detail below, we are persuaded that we should reconsider whether to allow institution of inter partes review based on the arguments presented in the Petition.” slip op. at 11

  • Parallel petitionsInstitutedInstituted

    “review, addresses Lee-based grounds rooted in anticipation (and obviousness over Lee and secondary references). IPR2019-00859, Paper 1. The petition in IPR2019-00861 addresses Partovi-based grounds rooted in obviousness. IPR2019-00861, Paper 1. In the Request, Petitioner argues that there is “almost no overlap” between the Partovi-based Petition in this case and Petitioner’s Lee-based petition in IPR2019-00859 (Req. 3), noting that “all grounds of the instant Petition rely on Partovi as the primary reference while the ’859 proceeding grounds rely on Lee as the primary reference” (id. at 2). In support, Petitioner provides a table depicting the various grounds presented in the two cases, and the differences between the two. Id. at 3. Petitioner also argues that “Partovi’s teachings are not redundant of Lee’s” because the references “disclose the claimed features of the ’046 patent in different ways.” Id. More particularly, Petitioner explains that “Lee is generally focused on an inductor structure” while “Partovi contains a more complete and clear disclosure of methods and circuitry for operating inductors,” which is important because the “dependent claims involve additional circuitry used in an inductor’s operation.” Id. at 4. Although Petitioner acknowledges that it “could, in theory, have filed a single petition including all of its grounds within the page limits,” Petitioner contends that “doing so would have resulted in a reduction in the thoroughness and completeness of the analysis presented due to the large number of challenged claims.” Id. Specifically, Petitioner argues that “NuCurrent chose to assert 98 claims from four patents against Samsung in a parallel district court litigation” and that Petitioner had to file two petitions in order to address “the sheer number of claims at issue.” Id. at 5. On this record, we are persuaded that Petitioner’s arguments concerning the differences between the petitions, and Petitioner’s reasons for presenting its arguments in two petitions, as it did, merit reconsideration of our denial of institution. The differences between the petitions in this instance, as explained by Petitioner, support its position that there is a need for the Partovi reference to distinctly address certain limitations of the dependent claims. The number of claims asserted against Petitioner in corresponding litigation, as well, is a factor enumerated in the 2019 Trial Practice Guide Update as a circumstance in which more than one petition may be necessary. 2019 Trial Practice Guide Update, 26 (“circumstances in which more than one petition may be necessary” include “when the patent owner has asserted a large number of claims in litigation”). We note again that although Patent Owner was authorized to file a ten-page response to Petitioner’s Request (Dec. 5), in which it could have addressed, inter alia, Petitioner’s arguments about the differences between these Petitions or the number of claims at issue, Patent Owner did not file a response to the Request, leaving Petitioner’s contentions regarding rehearing undisputed on the present record.” slip op. at 12

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)InstitutedInstituted

    “Rehearing, on this record, we do not agree that proceeding to trial would be an inefficient use of Board resources. The number of Patent Owner’s patents that are being challenged is not a reason to deny institution. “[R]ecogniz[ing] the potential for abuse of the review process by repeated attacks on patents,” the Board has enumerated factors that guide its discretion as to whether to deny institution under § 314(a), “especially as to ‘follow-on’ petitions challenging the same patent as challenged previously in an IPR . . . proceeding.” Trial Practice Guide Update 9 (August 2018) (quoting General Plastic, slip op. 16–17). Although a multiplicity of grounds relying on a number of principal references addressed in a number of separate petitions may raise concerns regarding fairness in some instances, we find no such concerns here, for largely the same reasons articulated above with respect to our disposition of the Request for Rehearing. In these circumstances, as discussed above, we are not persuaded that defending against both challenges is unfair, abusive, or unduly burdensome for Patent Owner. Accordingly, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314(a). See Comcast Cable Communications, LLC v. Veveo, Inc., IPR2019-00237, Paper 15 at 14–15 (PTAB Jul. 5, 2019) (instituting inter partes review on two petitions addressing the same patent).” slip op. at 29

  • BurdenInstitutedInstituted

    “and 28, we discern no deficiency in Petitioner’s characterization of the cited references and the knowledge in the art, or in Petitioner’s assertions as to the reasonable inferences an ordinary artisan would have made from those references, to the extent the ground relies on AC current and voltage and the inherent characteristics of inductors for the limitation “wherein when an electrical current is propagated within at least the first conductor layer, a magnetic flux is generated within the inductor when a change occurs in at least one of a frequency, a magnitude, or a waveform shape of the propagated electrical current.” Because this showing is sufficient to demonstrate teaching of this claim element was in the prior art as alleged, we need not reach Petitioner’s alternative reasoning grounded on changes in the duty cycle as to frequency and waveform shape meeting this particular claim limitation. Thus, based on the information presented at this stage of the proceeding, Petitioner has shown sufficiently that there is a reasonable likelihood that it would prevail in establishing the unpatentability of independent claims 1 and 28 as obvious over Partovi in view of Chiang.” slip op. at 44

  Claim constructionDiscretionary denialcites Phillips · KSR
  Patents in suitUS 9,300,046

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.