• Apple Inc. v. Smith Interface Technologies, LLCNo claims unpatentable
  PTAB · Feb 24, 2026 · IPR2024-01256 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–6, 10–14, 16, and 17 were not shown unpatentable because Ahn and Chaudhri did not teach or suggest the claimed movement of an object during the gesture.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “interface objects and, more specifically, the display of user interfaces on applications, in accordance with contacts on the touch-sensitive surface of a display. Ex. 1001, (54), Abstr. Consistent with the scope of the ’727 patent, we find that the level of skill in the art is reflected in a person having a bachelor’s degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces, human-computer interfaces, or equivalents.” slip op. at 6

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

    “Because there is no dispute as to the scope and meaning of these terms, and for consistency with the Decision on Institution, we apply the meaning of the terms “blur” and “distance magnitude” as stated above where applicable. However, we note that our determination does not hinge on the meaning of these terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

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

    “it was “known to utilize ‘cues’ to help the user know what gesture to utilize and whether they are correctly performing the gesture (e.g., graphics such as movable images that help the user visualize the correct gesture and how to complete it successfully).” Pet. 40 (citing Ex. 1005, Abstract, ¶¶ 54, 62, 73). This sentence does not cure the deficiency noted above regarding Petitioner’s reliance on Ahn’s graphic shadow moving with a gesture. Chaudhri is relied on for the proposition that, Ahn’s graphic shadow is “[i]ndeed” a movable image known to give a user a visual cue. Id. But no such “cue” is provided in Ahn by the graphical shadow alone, because there is no movement of that object. The Petition does not present argument that a Chaudhri object is the movable object or how any of Chaudhri’s teachings of movable objects would have suggested to modify Ahn “to thereby move” the graphical shadow.” slip op. at 18

  • Strike new argumentNew argument disregardedDecided for patent owner

    “the theory that Ahn’s graphic shadow moves. Reply 3−4. Petitioner interprets the sentences in Ahn we have analyzed above in conjunction with testimony of Dr. Terveen to argue that temporal descriptions in Ahn make it obvious for a person of ordinary skill in the art to drag in the right direction while continuing to press the graphic 1800. Id. (citing Exs. 1004 ¶¶ 117−119, Ex. 1023 ¶ 10). The Petition, however, relies on an Ahn disclosing a moving graphic shadow according to the embodiment of Figure 18(a), as described in paragraph 118. Petitioner now changes its theory of how Ahn’s graphic shadow would move according to paragraph 119, i.e., that although the graphic shadow is merely pressed (in the embodiment shown in Figure 18(b)) it would also be dragged while pressed. Reply 3. Not only is this a shift from the theory Petitioner presents in the Petition, it is not persuasive. As Patent Owner argues, and we agree, there is no cogent explanation for modifying the graphic shadow embodiment of Figure 18(b), especially in light of Ahn’s disclosure that the graphic shadow disappears when pressed and the menu list is displayed as emerging. Sur-reply 2−3. In other words, Petitioner’s new argument does not account for Ahn’s teaching that the objective of the graphic shadow is merely to notify the user of the start of the gesture, and once that start of the gesture is detected (the press on the graphic shadow), paragraph 119 informs us that there is no longer a need for the graphic shadow—it disappears from the display. Ex. 1004 ¶ 119. The Petition does not offer any argument for a theory in which the gesture of paragraph 119 (the press, not a touch and drag operation) results in graphic 1800 disappearing, while also moving during the disappearance. We are mindful that “[i]t is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one skilled in the art.” Bausch & Lomb, Inc. v. Barnes-Hind / Hydrocurve, Inc., 796 F.2d 443, 448 (Fed. Cir. 1986)). Consequently, we determine that Petitioner’s argument in Reply belatedly relying on the different embodiment of paragraph 119 is improper new argument, and that even if considered it is not persuasive.” slip op. at 20

  Patent outcomesUS 11,740,727 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,740,727
• Apple Inc. v. Smith Interface Technologies, LLCNo claims unpatentable
  PTAB · Dec 31, 2025 · IPR2024-01085 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–4, 6–10, 17, 19, 22–26, 28–30, 32, 33, 36, 41, 48, 58–62, 64, 65, 67, 69, 70, 73, 77, 82, and 83 were not shown unpatentable under either § 103 ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “The difference between the parties’ positions is solely that Petitioner includes “human-computer interaction” as a relevant degree and “human computer interfaces” as relevant working experience. We need not resolve that difference, because no matter which stated level of ordinary skill is applied, all of our findings and conclusions would be the same and because neither party asserts the other party’s expert is not qualified as an expert. In the Decision on Institution, we adopted Petitioner’s stated level of ordinary skill in the art. Inst. Dec. 9. We continue to adopt Petitioner’s stated level of ordinary skill in the art.5 C.” slip op. at 8

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

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. 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))). Petitioner asserts that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 2. Patent Owner agrees that “no formal constructions of any claim terms are necessary.” PO Resp. 4. We agree with the parties that no express construction of any claim term is necessary. D.” slip op. at 10

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We agree with Patent Owner (PO Resp. 13) that when Ording refers to user interfaces that are “intuitive and transparent,” “transparent” in that context does not mean optically transparent but something readily understandable, like the preceding word “intuitive.” That makes more sense in context. Patent Owner’s expert, Dr. Mahon, explains that Ording’s paragraph 28, where the phrase “intuitive and transparent” is found, is not concerned with optical transparency, but with increasing user satisfaction with portable devices by offering multifunctional operations on user interfaces based on finger input. Ex. 2012 ¶ 54. Neither Petitioner nor Dr. Cockburn explains why “transparent” in that context should mean optically transparent. We credit the testimony of Dr. Mahon, and reproduce paragraph 28 of Ording below: The various applications that may be executed on the device may use at least one common physical user interface device, such as the touch screen. One or more functions of the touch screen as well as corresponding information displayed on the device may be adjusted and/or varied from one application to the next and/or within a respective application. In this way, a common physical architecture (such as the touch screen) of the device may support the variety of applications with user interfaces that are intuitive and transparent. Ex. 1006 ¶ 28. We credit Dr. Mahon’s testimony that “Ording is addressing [in paragraph 28] user interfaces that are user-friendly and intuitive to navigate and operate.” Ex. 2012 ¶ 55.” slip op. at 33

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

    “The Zlider widget already is the least intrusive in the form as disclosed in the Ramos Paper/Ramos Video, placed off to the side of image content, not above and overlapping with image content. Petitioner’s semitransparency solution is for a self-created problem that otherwise does not exist, i.e., blocking the image by placing the Zlider widget directly over image content in Ording’s device. This is not reasoning with rational underpinning for making the Zlider widget partially semitransparent. Even assuming that the Zlider widget is properly placed directly over a camera image, making the Zlider widget semitransparent does not solve the intrusion problem, because the image and the Zlider widget may obscure each other, as shown in these illustrations provided by Patent Owner: [The illustrations show interference between a semitransparent Zlider widget and an underlying image] In its Reply, Petitioner asserts that it would have been well within the skill level of one of ordinary skill in the art to make adjustments to address a problem caused by such obscuring, such as by making the Zlider widget more visible as shown below: [The illustration shows one way Petitioner asserts one of ordinary skill in the art may apply to solve the obscuring issue (Reply 5–6)] Petitioner’s argument is misplaced. Although there may be graphic display techniques one of ordinary skill in the art may adopt to reduce the visibility problem if the Zlider widget were moved to directly above the image content as Petitioner proposes, that does not cure the problem of lacking a reasonable motivation to place the Zlider widget of the Ramos Paper/Ramos Video directly over image content. Still, there is the least obscuring and the least intrusion with the Zlider widget remaining where it is shown to be in the Ramos Paper/Ramos Video, side-by-side relative to the image content. It is irrational to make a modification that creates a problem, solely on the basis that a solution may be available to reduce the severity of the problem. Indeed, such a strained rationale shows that hindsight has played a part on Petitioner’s contention that a person of ordinary skill in the art would have put the Zlider widget over content as required by the claims.” slip op. at 30

  Patent outcomesUS 10,649,580 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,649,580
• Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentable
  PTAB · Oct 16, 2024 · IPR2023-00697 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1, 3, 4, and 8 were not proven unpatentable: Rauhala does not disclose the required simultaneous signal-strength determinations, and Masaaki does not cure the deficiency for claim 4.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Following institution, Patent Owner maintained the same level of ordinary skill proposed in its preliminary response and did not address our discussion of the level of ordinary skill in the art in the Institution Decision. PO Resp. 24–25; see also Prelim. Resp. 24. For the reasons discussed in the Institution Decision, we adopt and apply for this Decision the level of ordinary skill articulated by Petitioner and used previously in our Institution Decision. See Dec. 8–10. In light of our review of the complete record, we find that this formulation is consistent with the ’825 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Ex. 1002 ¶¶ 27– 31. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12

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

    “We agree with Patent Owner that the desired signal and interferer signal must be received at the same time. The plain language of the claim requires the wireless transceiver to “receiv[e] a wireless signal having a desired signal and an interferer signal,” the determining of a signal strength of the interferer signal and the determining of a signal strength of the desired signal must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. The specification supports this understanding. “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:20–22; see also id. at 5:31–33 (“FIGS. 2A and 2B illustrate examples of desired signals, interferers, and noise that may be received by one of the various circuits in a” slip op. at 21

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

    “We agree with Patent Owner that Rauhala does not state that the signal strengths are measured simultaneously or at the same time. Indeed, as discussed above, Rauhala indicates unequivocally in the same paragraph the opposite—that detector DET provides to control unit 42 “an indication about either the receive channel signal strength RSS or the strength of any signal on the reception band.” Ex. 1004 ¶ 17. Rauhala describes that “control unit 42 provides two one-bit control signals cA and cM” based on indications received from detector DET. Id. Importantly, Rauhala indicates that “at the same time as” describes how the control unit 42 uses the received inputs RSS and RSSn shown in Figure 4, which are described earlier in paragraph 17 as indications of either RSS or RSSn from detector DET. Id. (“Signal cA is 0 when signal RSS is greater than S4 and signal RSSn is at the 11 Dr. Baker’s reply declaration correctly quotes Rauhala paragraph 17 but cites to paragraph 18. We deem this harmless error. same time smaller than Sn. . . . Signal cM is 1 when signal RSS is not greater than S4 and signal RSSn is at the same time at least Sn. Otherwise, signal cM is 0.”). The burden remains on Petitioner to demonstrate by a preponderance of the evidence that Rauhala discloses the disputed limitations as arranged or combined in the claim. Petitioner does not persuasively reconcile these “either/or” statements regarding the functioning of detector DET with the “at the same time as” statements regarding control signals output by control unit 42 in paragraph 17. We do not find persuasive Petitioner counsel’s position expressed at the hearing that Rauhala’s “either/or” statements are “simply an imprecise description” (Tr. 16:22–24). We do not see a lack of precision in Rauhala’s “either/or” statements.” slip op. at 30

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “When asked at his deposition to explain Rauhala’s use of the word “or” regarding the functioning of detector DET, Dr. Baker asserted that “[detectors] can be designed to determine RSS or RSSn.” Ex. 2016, 85:5– 12. We find Dr. Baker’s testimony that “it’s reasonable that if you can design . . . the detector to detect one or the other, you can also design it to detect both” to be without factual support. Id. at 85:13–16. He points to no textbook or other independent evidence to support that would have led one of ordinary skill to design such a detector or to support that one of ordinary skill would have understood Rauhala’s detector to be so designed. Furthermore, Dr. Baker recognizes that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. We give little weight to Dr. Baker’s unsupported testimony that one could design a detector to detect both RSS and RSSn from the same wireless signal. See 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., No. IPR2022-00624, 2022 WL 3648989, at *6 (PTAB 2022) (precedential) (Director affirming because “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight”).” slip op. at 31

  Patent outcomesUS 10,129,825 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,129,825
• Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentable
  PTAB · Oct 16, 2024 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 7–11, 13, and 19–21 were not shown unpatentable because Rauhala does not disclose simultaneous desired and interferer signal-strength determinations, defeating anticipation and the obviousness combination.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we were persuaded, on the preliminary record, that both Petitioner’s and Patent Owner’s proposals were consistent with the problems and solutions in the ’202 patent and the prior art of record, on balance, we determined that Petitioner’s proposal was a better reflection of the level of skill in the prior art, and we therefore adopted it for our Institution Decision. See Institution Dec. 12–13. For this Decision, we adopt the description of the person of ordinary skill articulated by Petitioner and used previously in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’202 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Baker I Decl. ¶¶ 28–32. Our Decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “85:13–16. He admits that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. He points to no textbook or other independent evidence that would have led a person of ordinary skill to design such a detector. Our Trial Practice Guide cautions against crediting such unsupported testimony: The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Patent Trial and Appeal Board Consolidated Trial Practice Guide 35 (Nov. 2019).7 We therefore give Dr, Baker’s unsupported testimony on this issue little weight.” slip op. at 24

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

    “We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe these terms to resolve a dispute.” slip op. at 9

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

    “requirement.” Pet. Reply 5. We do not agree with Petitioner. We find that the language of the claims supports Patent Owner’s argument that the desired signal and the interferer signal are received together. As discussed infra, claim limitations 7.7 and 7.8 recite determining a signal strength of the interferer signal and determining a signal strength of the desired signal. These determinations must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. See Larson II Decl. ¶ 70; Baker II Decl. ¶¶ 48–49 (explaining that consideration of signal strengths detected at the same time would be “essential”). The specification of the ’202 patent further supports this finding: “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:22–24; see also Figs. 2A, 2B (showing interferer signals and desired signals together).” slip op. at 17

  Patent outcomesUS 10,524,202 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 10,524,202
• Dr. Reddy’S Laboratories, Inc. v. Genentech, Inc., Hoffman-La Roche AG, And Abbvie Inc.No claims unpatentable
  PTAB · Apr 16, 2024 · IPR2023-00052 · APJ Jeffrey N Fredman · IPR · Final written decision

  The Board held claims 1–4, 8–14, and 18–26 not shown unpatentable because they were entitled to priority before the November 2018 Venclexta Label, which therefore was not prior art.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “We do not discern a substantive difference between the parties’ respective definitions for the level of ordinary skill in the art. Although Petitioner did not expressly recite hematological malignancies, Petitioner did refer to expertise in clinical oncology, which would encompass the blood cancers recited in the claims. Neither party identifies a difference in the analysis or conclusions that would be based on differences in the ordinary skill in the art analysis. Accordingly, we find the parties’ respective definitions to be equivalent and consistent with the level of ordinary skill in the art as reflected by the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level 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 7

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

    “The parties do not identify any issue relating to the preamble that would impact our analysis. We recognize that Patent Owner is suggesting that Petitioner’s expert, at least, is reading the word “clinical” into the treatment language of claim 1. However, the plain language of the claim 1 preamble states “treating lymphoma or leukemia in a human patient” and is supported by a straightforward definition in the Specification of the ’087 patent, expressly limiting the invention to treatment of human patients. See Ex. 1001, 16:25–38. We therefore find that the preamble terms do not need claim construction because there is no actual dispute suggesting that, for example, claim 1 implicitly recites the term “clinical.” See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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 5

  • Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)EnabledEntitled to earlier dateDecided for patent owner

    “d. Analysis Considering the Wands factors as a whole, we find that the limited breadth of the claims, presence of several working examples, significant amount of direction and guidance provided by the ’087 patent, predictability in treating blood cancers with Bcl-2 inhibitors like GDC-0199, and high level of skill in the art are balanced against a large quantity of experimentation. Based on our consideration of the entirety of the evidence, we find that a preponderance of the evidence supports the conclusion that undue experimentation would not have been required to make and use the invention commensurate in scope with the claims of the ’087 patent. One underlying theme of Petitioner’s contentions and Petitioner’s expert testimony is the repeated contention that clinical trials were not completed by Patent Owner. See, e.g., Pet. 48 (“venetoclax (GDC-0199) was not FDA-approved”); Ex. 1020 ¶ 193. We find these arguments unpersuasive as we agree with Patent Owner that “[i]t is well established that a patent may be secured, and typically is secured, before the conclusion of clinical trials.” In re Montgomery, 67 F.3d 1375, 1382 (Fed. Cir. 2012). Particularly as to the dependent claims, a preponderance of the evidence of record does not support a finding that undue experimentation would have been required to administer three different doses of GDC-0199 starting with 100 mg, to use multiple daily dosing cycles of one day, to continue until disease progression occurs, or to combine with other treatment compounds. We find that a preponderance of the evidence does not support Petitioner’s position that any of the dependent claims fail to comply with the enablement requirement.” slip op. at 23

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “Applying Rai and Wertheim to the instant facts, we agree with Patent Owner that, factually and legally, in the ’087 patent “the claimed dosages of 100 mg, 200 mg, and/or 400 mg of GDC-0199 are adequately supported.” PO Second Suppl. Brief 2 (citing PO Resp. 11, 27–29; PO Sur-reply 19, 21– 22; Ex. 1001, 24:20–29.) In particular, the ’087 patent describes all three specific dosage values 100 mg, 200 mg, and 400 mg in the context of an escalating drug dosage series and Petitioner points to no persuasive statements in the specification that dispute either the effectiveness or the operability of GDC-0199 at any of these dosages.” slip op. at 32

  Patent outcomesUS 11,110,087 not shown unpatentable
  Claim construction§ 102 anticipation§ 112 disclosure
  Patents in suitUS 11,110,087
• Restem, LLC. v. Jadi Cell, LLCNo claims unpatentable
  PTAB · Apr 18, 2023 · IPR2021-01535 · APJ Devon Zastrow Newman · IPR · Final written decision

  Claims 1–15 were not proven unpatentable: Majore did not anticipate claims 1–13 and 15, and the asserted obviousness combinations did not establish the claimed limitations.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Ex. 1007 ¶¶ 132, 133. Importantly, however, Dr. Olson does not cite anything to support his opinion that the ordinary artisan would have known that MSCs could be cultured to be renewable from subepithelial UC tissue. Nor does Dr. Olson explain why the artisan would have had this understanding aside from simply stating it. Majore uses the word “subepithelial” only once to explain that primitive stem cells are “distributed in subepithelial and intervascular regions,” but this does not teach what Dr. Olson asserts. Accordingly, Dr. Olson’s testimony is entitled to little weight. Xerox Corp., IPR2022-00624, Paper 9 at 15–16 (finding that an expert’s conclusory assertions that repeat the proposition for which they are offered without “any additional supporting evidence or provide any technical reasoning” in support are “conclusory and unsupported, add[] little to the conclusory assertion[s] for which [they are] offered to support, and is” slip op. at 52

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

    “21 The parties do not dispute that the preamble’s recitation of “isolated cell” serves as a limitation to claim 1 as it provides antecedent basis for its recitation later in the body of the claim. Accordingly, we treat the preamble as limiting. “When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).” slip op. at 31

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

    “[JUDGE NEWMAN:] So if -- if the comparison is possible, why did you not present evidence of that comparison? MR. FITZPATRICK: We --we’ve had the -- we had this discussion with our -- with our expert, and our conclusion was that it’s just not -- it wasn’t necessary. The conclusion was that the -- the evidence that’s in the -- in the prior art references, including the fact that it clearly practices the exact same steps as the claims, that was sufficient to -- and would anticipate or render obvious the claims. That’s the only reason we didn’t present evidence -- our own evidence.” slip op. at 38

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

    “Ex. 1007 ¶ 168 (alteration in original). We agree that an ordinary artisan would be motivated to look to the teachings of analogous references for information, but to establish obviousness, a party must show that “there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner has not provided sufficient rationale to explain why the ordinary artisan would have been motivated to make the isolated cell with the specific marker profile or why the artisan would have looked to the cited references themselves out of the wide range of references available in the art.” slip op. at 64

  Patent outcomesUS 9,803,176 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,803,176
• Fantasia Trading LLC D/B/A Ankerdirect v. Cognipower, LLCNo claims unpatentable
  PTAB · May 11, 2022 · IPR2021-00067 · APJ Jeffrey S Smith · IPR · Final written decision

  The Board held claims 1, 2, 8, 10, 18, 25, 27, 30–33, 37, 38, 40, 43–46, 49, 52–55, and 58–61 not shown unpatentable over either asserted obviousness combination.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Mr. Bohannon testifies that an ordinarily skilled artisan would have “B.S. degree, or its equivalent, in electrical engineering or physics and approximately two years of practical experience working with switching regulators and analog/mixed signal circuit design, or an equivalent 1 US 2011/0096573 A1, published Apr. 28, 2011 (Ex. 1005). 2 US 6,466,461 B2, issued Oct. 15, 2002 (Ex. 1006). 3 US 5,498,995, issued Mar. 12, 1996 (Ex. 1007). combination of academic study and work experience.” Ex. 1003 ¶ 41. Mr. Sandler uses the same definition for his analysis. Ex. 2001 ¶ 19. We are persuaded that Messrs. Bohannon’s and Sandler’s description of the level of ordinary skill in the art is appropriate for the subject matter of the ’031 patent, and, for this Decision, we adopt that description.” slip op. at 7

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

    “B. Claim Construction We determine that we do not need to construe any claim term expressly for this Decision. 4 Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). III. ANALYSIS OF ASSERTED GROUNDS “In an inter partes review . . ., the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). “[T]he burden of proof is on the petitioner to prove unpatentable those issued claims that were actually challenged in the petition for review and for which the Board instituted review.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016). To satisfy its burden of proving obviousness, a petitioner must articulate a reason why a person of ordinary skill in the art would have combined or modified prior art references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any 4 We authorized the parties to file additional briefs regarding the meaning of the term “frequency” and appreciate the parties’ briefing of that issue. Papers 50–54. We have nevertheless determined that we do no need to construe that term for this Decision.” slip op. at 8

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “identify Zhu’s purported bias circuit. Inst. Dec. 30. Although we did not decline institution on that basis, we do agree with Patent Owner that, in the Petition, Petitioner should have identified the purported bias circuit in Zhu that an ordinarily skilled artisan would have been motivated to improve. Further, in our Institution Decision, we instructed Petitioner to identify Zhu’s purported bias circuit during the trial. Id. As set forth below, during trial, Mr. Bohannon, upon whose testimony Petitioner relies to prove a motivation to combine, gave inconsistent testimony regarding that bias circuit. That inconsistent testimony, coupled with Mr. Bohannon’s initial failure to identify Zhu’s bias circuit, diminishes the weight we accord to Mr. Bohannon’s testimony regarding motivations to combine. As mentioned, the Petition does not identify the bias circuit in Zhu that it claims an ordinarily skilled artisan would be motivated to improve. Pet. 12–13. In his original declaration, Mr. Bohannon also does not identify that bias circuit. Ex. 1003 ¶¶ 56–58. Zhu itself does not show or discuss any bias circuit. Ex. 2015 ¶ 118. Thus, Mr. Bohannon’s original testimony regarding motivations to combine lacks specificity: all four rationales set forth by Mr. Bohannon are directed to improving a bias circuit in Zhu, which Mr. Bohannon did not identify. Ex. 1003 ¶¶ 56–58; Pet. 12–13. As discussed, in our Institution Decision, we instructed Petitioner to identify the bias circuit in Zhu that an ordinarily skilled artisan would have been motivated to improve. Inst. Dec. 30. During subsequent cross-examination, Mr. Bohannon was asked to identify that bias circuit and identified the wire in Figure 3 of Zhu from Vout up to VCC at controller 320 as Zhu’s bias circuit. Ex. 2016, 186:4–6 (“The bias circuit was just a wire from Vout or trace out of circuit, probably a trace out of PCB going from Vout to 320.”). After Mr. Sandler testified that there was no evidence that a wire would have the problems that Mr. Bohannon identified Zhu’s bias circuit as having (Ex. 2015 ¶ 125), Mr. Bohannon changed his identification of Zhu’s bias circuit (Ex. 1025 ¶ 27), now identifying the elements highlighted in red in the annotated portion of Figure 3 of Zhu, reproduced below: Ex. 1025 ¶ 27. The above annotated figure additionally identifies diode 313, capacitor 314, and the wire extending from Vcc to Vout as Zhu’s bias circuit. Id. This latter identification is not only inconsistent with Mr. Bohannon’s cross examination testimony, it is also inconsistent with his original declaration testimony. In his original declaration, Mr. Bohannon illustrated the combination of Zhu and Mao as follows: Ex. 1003 ¶ 57. Mr. Bohannon described this combined structure as showing “the bias circuitry of FIG. 9 of Mao has been attached in place of the bias circuitry in Zhu, which merely powered the secondary controller using the output voltage.” Id. ¶ 58 (emphasis added). As can be seen from the above figure, diode 313 and capacitor 314 from Zhu Figure 2 were not replaced in this combined structure. Thus, Mr. Bohannon’s reply testimony that diode 313 and capacitor 314 are part of what he originally referred to as Zhu’s bias circuit is inconsistent with his original declaration testimony. This inconsistent testimony, coupled with the initial failure by Mr.” slip op. at 19

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Bohannon to identify Zhu’s bias circuit, diminishes the weight we accord to Mr. Bohannon’s testimony regarding motivations to combine. The proper identification of Zhu’s bias circuit is not a minor issue: all four rationales for Petitioner’s motivation to combine are directed to improving Zhu’s bias circuit. Pet. 12. Further, although, over Patent Owner’s objections, we gave Petitioner the opportunity to identify the bias circuit in Zhu to be improved during trial, we do not permit Petitioner and Mr. Bohannon to identify that bias circuit during cross examination and then completely change that identification after Patent Owner argued the initial identification was flawed. 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.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated Trial Practice Guide”), 73;5 see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (holding that the Board did not err in refusing the reply brief as improper under 37 C.F.R. § 42.23(b) because petitioner relied on an entirely new rationale to explain why one of skill in the art would have combined the references at issue); 37 C.F.R. § 42.23(b); Apple Inc. v. e- Watch, Inc., IPR2015-00412, Paper 50, 44 (PTAB May 6, 2016) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean embark in a new direction with a new approach as compared to the position originally taken in the Petition. Accepting such belatedly presented new arguments would be unjust to the Patent Owner and we decline to do so.”). To be clear, we do not hold the issues concerning Petitioner’s and Mr. Bohannon’s identification of the bias circuit in Zhu to be dispositive, but those issues do diminish the weight we accord Mr. Bohannon’s testimony regarding motivations to combine, which undermines Petitioner’s showing regarding those motivations.” slip op. at 21

  Patent outcomesUS RE47,031 not shown unpatentable
  Claim construction§ 103 obviousness
• Fantasia Trading LLC D/B/A Ankerdirect v. Cognipower, LLCNo claims unpatentable
  PTAB · May 11, 2022 · IPR2021-00071 · APJ John R Kenny · IPR · Final written decision

  Claims 18–23, 25, 30–31, 34–36, 41–43, 45, and 48–51 were not shown unpatentable because the petitioner did not prove motivation to combine for any asserted obviousness ground.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “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) (quotation omitted). Mr. Bohannon testifies that an ordinarily skilled artisan would have had a “B.S. degree, or its equivalent, in electrical engineering or physics and approximately two years of practical experience working with switching regulators and analog/mixed signal circuit design, or an equivalent combination of academic study and work experience.” Ex. 1003 ¶ 43. Mr. Sandler uses the same definition for his analysis. Ex. 2015 ¶ 19. We are persuaded that Messrs. Bohannon’s and Sandler’s description of the level of ordinary skill in the art is appropriate for the subject matter of the ’713 patent, and we adopt that description.” slip op. at 8

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

    “B. Claim Construction Patent Owner requests that we construe the term “regulate” in claims 18 and 48. PO Resp. 13. We determine that we do not need to expressly construe any claim term for this Decision. 6 Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). III. ANALYSIS OF ASSERTED GROUNDS “In an inter partes review . . ., the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). “[T]he burden of proof is on the petitioner to prove unpatentable those issued claims that were actually challenged in the petition for review and for which the Board instituted review.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016). To satisfy its burden of proving obviousness, a petitioner must articulate a reason why a person of ordinary skill in the art would have combined or modified prior art references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of 6 We authorized the parties to file additional briefs regarding the meaning of the term “frequency” and appreciate the parties’ briefing of that issue. Papers 50–54. We have nevertheless determined that we do no need to construe that term for this Decision.” slip op. at 9

  • BurdenFwd all claims patentableNot shown unpatentable

    “III. ANALYSIS OF ASSERTED GROUNDS “In an inter partes review . . ., the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). “[T]he burden of proof is on the petitioner to prove unpatentable those issued claims that were actually challenged in the petition for review and for which the Board instituted review.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016). To satisfy its burden of proving obviousness, a petitioner must articulate a reason why a person of ordinary skill in the art would have combined or modified prior art references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of 6 We authorized the parties to file additional briefs regarding the meaning of the term “frequency” and appreciate the parties’ briefing of that issue. Papers 50–54. We have nevertheless determined that we do no need to construe that term for this Decision. prior art to arrive at the claimed invention.”) (citing InTouch Techs., Inc. v. VGO Commc'ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Further, it is Petitioner’s “burden to burden to demonstrate both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quoting Intelligent Bio–Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1367- 68 (Fed. Cir. 2016)). As set forth below, we determine that Petitioner has not proven that an ordinarily skilled artisan would have been motivated to make any of the combinations set forth in its asserted grounds. Thus, Petitioner has not proven that any challenged claim would be unpatentable. Magnum Oil, 829 F.3d at 1381.” slip op. at 9

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

    “First, Mr. Bohannon’s testimony, upon which Petitioner’s analysis for this rationale to combine relies, is unspecific and conclusory, and thus is entitled to little weight. Ex. 1003 ¶¶ 58–60. Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1022 (Fed. Cir. 2017) (the Board is “not required to credit [a party’s] expert evidence simply because [the party] offered it”); TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“This court’s opinions have repeatedly recognized that conclusory expert testimony is inadequate to support an obviousness determination on substantial evidence review.”); MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1172 (Fed. Cir. 2015); Regents of Univ. of Min v. AGA Med. Corp., 717 F.3d 929, 941 (Fed. Cir. 2013); Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1152 (Fed. Cir. 2004); 37 C.F.R. § 42.22(a)(2) (“Each petition . . . must include . . . [a] full statement of the reasons for the relief requested including material facts.”). As discussed in Section III.A.4.b. above, Mr. Bohannon’s testimony regarding Zhu’s bias circuit was initially unspecific and subsequently contradictory. Further, as set forth below, Mr. Bohannon’s additional testimony for this rationale is conclusory and thus entitled to little weight. In his original declaration, Mr. Bohannon testifies that a passage in Mao (Ex. 1006, 1:50–55) teaches that a secondary bias circuit such as the one disclosed in Zhu can be disadvantageously vulnerable to output voltage fluctuations. Ex. 1003 ¶¶ 58–60. The cited passage reads “Although changing the polarity of the bias winding Tb may somewhat reduce the variation range of the voltage bias Vbias in some cases, the reduction is usually not significant, considering that both input voltage and output voltage can change in a typical dc-dc converter.” Ex. 1006, 1:50–55. This passage does not, on its face, teach that a secondary bias circuit, such as the one disclosed in Zhu, can be disadvantageously vulnerable to output voltage fluctuations. Id. And Mr. Bohannon does not explain why that passage teaches that the circuit disclosed in Zhu is vulnerable to such fluctuations. Ex. 1003 ¶¶ 58–60; Ex. 1025 ¶¶ 39–45. Second, the record indicates Zhu’s circuit would not be vulnerable to” slip op. at 24

  Patent outcomesUS RE47,713 not shown unpatentable
  Claim construction§ 103 obviousness
• Incyte Corporation v. Concert Pharmaceuticals, Inc.No claims unpatentable
  PTAB · May 11, 2022 · PGR2021-00006 · APJ Devon Zastrow Newman · PGR · Final written decision

  The Board held claims 1–7 and 9–21 not shown unpatentable over either obviousness ground because Petitioner did not establish motivation to select Compound (I) from Silverman’s genus.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “It is not necessary for an expert’s experience or expertise to precisely match the art at issue. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). However, one offering expert testimony must at least have ordinary skill in the art to provide relevant and reliable testimony that is helpful to the factfinder. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). “The Board has broad discretion to assign weight to be accorded expert testimony.” Consolidated Trial Practice Guide 35 (available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf?MURL=). Dr. Patterson has a Ph.D. in Chemistry and over 30 years of experience in drug design, drug administration, evaluation of drug effectiveness, and participated in drug design for over 20 years. Ex. 1007 ¶¶ 4–10; Ex. 1008, 1–2. He is author or co-author on over eight peer-reviewed journal articles involving medicinal chemistry. Ex. 1007 ¶ 5. We find this level of skill to meet the qualifications for the level of skill in the art under the training and experience portion of the definition we have adopted for purposes of this opinion (see § II.B.), reproduced below: a Ph.D. in chemistry, pharmaceutical sciences, molecular biology, or a similar field, or an M.D. with similar background. A POSA would also have had at least several years of experience with drug design, drug development, clinical trials, or access to other individuals with that knowledge and experience. Likewise, a POSA would have had knowledge and experience in treating hair loss disorders, or access to a person with that knowledge and experience. We note that Dr. Patterson himself also proposes this definition. Id. ¶ 102. However, Dr. Patterson does not have “knowledge and experience in treating hair loss disorders” and did not opine that, in regards to his testimony, he had access to a person with that knowledge and experience, as is proposed in the definition. See generally, Ex. 1007. Accordingly, we find Dr. Patterson qualified to opine on the level of ordinary skill with regard to issues of drug design, evaluation of effectiveness, and drug administration, but we find he is not adequately qualified to opine on the level of ordinary skill with regard to issues of treating hair loss disorders.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner proposes the same definition as Petitioner, but adds that the skilled artisan “would also have had experience in JAK inhibition, deuteration, and AA [alopecia areata] formulations, or access to a person with that knowledge and experience.” Resp. 15 (citing Ex. 2059 ¶ 14). Patent Owner’s expert Dr. Ko critiques Petitioner’s proposed definition as “incomplete, because it lacks any requirement for experience, or access to individuals with experience, in JAK inhibition, deuteration, and AA formulations.” Ex. 2059 ¶ 16. However, neither Dr. Ko nor Patent Owner explains what difference this additional direct experience would have provided to an artisan with the skill level proposed by Petitioner, particularly when Petitioner’s definition includes “experience in treating hair loss disorders,” and for which the record contains evidence that existing JAK inhibitors such as ruxolitinib had been identified as causing reversal of hair loss caused by AA. Ex. 1003, 1043. Accordingly, we adopt Petitioner’s proposed definition as consistent with the level of skill apparent in the cited prior art. In any event, as Patent Owner does not explain why its alternative definition would have any bearing on the outcome of the present case, and as we discern no appreciable difference in the parties’ definitions, we note our findings and conclusions would be the same regardless of which definition were adopted. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level 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 11

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

    “C. Claim Construction We construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100. Therefore, we construe the challenged claims under the framework set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc). Under this framework, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art (“POSA”), at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id. Only those terms that are in controversy need be construed and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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)). We have considered Petitioner’s claim construction proposals (see Pet. 21–23), which are uncontested (see generally Resp., not addressing construction), and find that it is not necessary to expressly construe any claim term for purposes of rendering this Decision.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artReference not prior artDecided for patent owner

    “Section 102(b)(1) provides two exceptions to § 102(a)(1) for disclosures made within one year of the effective filing date. Specifically, 35 U.S.C. § 102(b)(1) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art under 35 U.S.C. § 102(a)(1) with respect to the claimed invention if: (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 35 U.S.C. § 102(b)(1).” slip op. at 16

  Patent outcomesUS 10,561,659 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,561,659
• Xilinx, Inc. / Xilinx Asia Pacific Pte. Ltd. v. Analog Devices, Inc.No claims unpatentable
  PTAB · Mar 11, 2022 · IPR2020-01559 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–25 were not shown unpatentable because the evidence did not establish sufficient motivation to combine the references or teach applying dither at the claimed sampling or conversion stages.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, supported by the testimony of Dr. Holberg, argues that a person of ordinary skill in the art (“POSITA”) “would [have] at least a Master’s degree in Electrical Engineering or equivalent field, including studies in the area of analog circuitry; or at least a Bachelor’s degree in Electrical Engineering and at least two years of experience working on analog circuitry design.” Pet. 23 (citing Ex. 1003 ¶¶ 54–56). Neither Patent Owner nor its declarant, Dr. Moon, dispute or offer an alternative level or skill in the art at this time. See generally PO Resp., see also Ex. 2001 ¶ 13 (Dr. Moon stating that Petitioner’s asserted level of ordinary skill in the art is “reasonable”). On the full record now before us, the parties do not dispute the proposed level of ordinary skill in the art. Petitioner’s proposed level of ordinary skill is consistent with our review and understanding of the technology and descriptions in the ’075 patent and the prior art references that disclose electronic circuits including analog-to-digital converters using modulation feedback signals and charge injection in MOS transistor circuits to account for differential non-linearity. For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 8

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

    “The term “perturbation” is, however, inextricably linked to “dither” in the context of the ’075 patent. It is clear from multiple descriptions in the ’075 patent that perturbation of the sampled voltage introduces dither into the analog to digital converter. See Ex. 1001, 7:62–8:4 (The ’075 patent states that “selective switching of capacitors within the sub capacitor array can be used to perturb the voltage that was sampled onto the main capacitor array during the sampling phase and hence introduce a positive or negative dither into the analog to digital converter.”); see also id. at 2:7–11 (The ’075 patent describing dithering where “[m]ultiple conversions of substantially the same input value can result in the input value being assigned different ‘bins’ within the conversion process as a result of different perturbations being applied at each individual sampling point.”).”) On the full record now before us, we agree with both parties to an extent. Considering Petitioner’s position, we find that dither has a broader meaning than perturbation in the context of the ’075 patent and, based on Dr. Holberg’s testimony, that a person of ordinary skill in the art would have understood perturbation as “a small change in movement, quality, or behavior of something, especially an unusual change.” Reply 5; Ex. 1003 ¶ 81. With respect to Patent Owner’s arguments and evidence, we do not agree that perturbation is simply random noise, but we find persuasive Patent Owner’s declarant, Dr. Moon, and his testimony that the ’075 patent uses this term “to describe the disturbance or agitation of the charge stored on the capacitor array, in a manner that introduces dither” into the analog to digital converter. PO Resp. 19–20. In sum, perturbation means “a small change in movement, quality, or behavior of something, especially an unusual change, and describes the disturbance or agitation of the charge stored on the capacitor array that introduces dither into the analog to digital converter.”” slip op. at 13

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

    “Ex. 1003 ¶ 83. This explanation potentially explains how one of skill in art could apply a perturbation, but does not explain why a person of ordinary skill in the art would do so after sampling or why such a person would find the result of applying perturbation after sampling predictable. At best, Dr. Holberg’s testimony describes that a person of ordinary skill in the art could change the offset capacitance code B0, B1 during the course of sampling the input voltage onto the capacitor array and after sampling. And, that this would achieve the claimed perturbation “after . . . sampling.” Id. This explanation, however, describes a result of manipulating Confalonieri’s CATT capacitance circuit and does not articulate sufficient reasoning as to why a person of ordinary skill in the art would have done so. Petitioner’s arguments and Dr. Holberg’s testimony are mostly conclusory and unsupported on this point. First, Petitioner points out what Confalonieri does not expressly disclose, namely “whether the offset perturbation is provided before or after sampling.” Pet. 28 (citing Ex. 1012, 6:28–46; 6:51–55). Second, Dr. Holberg testifies that a perturbation could be effected by “establish[ing] a first code to the capacitance CATT (i.e., switched capacitor digital to analog converter) during sampling, and then apply a different code to the capacitance CATT after the sampling phase has been completed.” Ex. 1003 ¶ 83. However, beyond this statement Dr. Holberg provides no persuasive supporting or evidentiary basis for reaching this conclusion, and no citation to Confalonieri for any disclosure of providing a first offset capacitance code during sampling, then another different capacitance code after sampling. On this point, Petitioner argues that Confalonieri states that “[t]he additional shunt capacitance in the lower array can be used as a component for further functions, such as an offset compensation.” Pet. 26 (citing Ex. 1012, 5:58–60) (emphasis added). In pointing out this language, Petitioner is insinuating that “further functions” includes perturbation. See id. at 28 (Petitioner states that “[t]he provision of offset in Confalonieri discloses the perturbation as claimed.”). We are not persuaded that this is an appropriate reading of Confalonieri. Prior to the language referenced by Petitioner, Confalonieri discusses that “the shunt capacitance operates as a voltage attenuator, so that it is easy to limit the dynamics at the node NSL by a proper selection of this capacitance.” Ex. 1002, 5:46–48. The following paragraph then explains that “[t]he additional shunt capacitance in the lower array can be used as a component for further functions, such as an offset compensation.” Id. at 5:56–58. A plain reading of Confalonieri, in context, is more reasonably understood as indicating that (1) the shunt capacitance CATT “provides a strong improvement of the converter linearity, while the operation speed is as high as the operation speed of the prior art basic design,” (2) “power consumption is also as low as in that prior art design,” and (3) the shunt capacitance can be used for “further functions, such as an offset compensation.” Id. at 5:53–57. Nowhere does Confalonieri indicate that shunt capacitance CATT is considered for perturbation or dithering, or to provide offset during or after the input voltage sample is sampled onto the upper and lower array. Indeed, this interpretation of Confalonieri by Petitioner never references any testimonial support from Dr. Holberg, nor do we find related support in Dr. Holberg’s testimony related to such an interpretation of Confalonieri and claim element 16[c]. See, e.g., Ex. 1003 ¶¶ 79–84. In this way, Petitioner and Dr. Holberg essentially rely on the absence” slip op. at 24

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

    “Petitioner’s reasoning “that dither as provided in Hiller could be provided in the system of Confalonieri instead of, or in addition to, offset in order to provide the known desirable and well known performance benefits of dither” arguably asserts a desired result, e.g., a more accurate circuit, but does not explain why a person of ordinary skill in the art would have replaced or supplemented offset compensation of an input voltage with dither. Id. This is particularly true where we have persuasive evidence that offset is a different technique and is applied for a different reason and result compared to dither. See Ex. 2017 ¶ 91 (Patent Owner’s declarant, Dr. Moon testifying that “Confalonieri discloses the provision of offset but does not disclose the provision of dither.”); Ex. 2001 ¶ 26 (Dr. Moon testifying that “instead of reducing errors, dither redistributes or smears out the errors.”); Ex. 2018, 74:9–10 (Petitioner’s declarant, Dr. Holberg testifying that Confalonieri “does not mention dither in—in his patent.”). Indeed Dr. Moon provides an explanation of how Confalonieri designed its circuit for improved linearity, as was the state of the art in 2005, not with dither, but by “a circuit design that allows all the capacitors (especially the coupling capacitor) to be sized in integer multiples of a unit capacitance, which improves capacitor matching.” Ex. 2001 ¶ 23 (citing Ex. 1012, 4:36–5:8). Confalonieri expressly discloses any problems of accuracy and linearity related with the dimensioning of the coupling capacitor Cs is solved simply by the addition of a shunt capacitor CATT in the lower array. Since all the capacitors of the converter can be designed as integer numbers of a unit capacitance, all the layout tools normally used for obtaining optimum matching of integrated components can be used. Ex. 1012, 4:65–5:4. Dr. Moon explains further that using capacitance matching for “addressing root causes of DNL directly reduces the DNL errors, dither as described in ’075 patent randomizes the errors. That is[], instead of reducing errors, dither redistributes or smears out the errors. Thus, how dither improves DNL is different than how improving capacitor matching improves DNL.” Ex. 2001 ¶ 26. It is not explained sufficiently by Petitioner, where linearity was already addressed by Confalonieri’s circuit design itself, even if one of ordinary skill in the art could have potentially added dither in an ADC using shunt capacitance CATT instead of, or in addition to compensating for offset, why a skilled artisan would have looked to Hiller’s teaching of dither. Considering the complete record now before us, we are not persuaded” slip op. at 31

  Patent outcomesUS 7,286,075 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,286,075

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.