• Apple Inc. v. RJ Technology LLCSome claims unpatentable
  PTAB · Feb 18, 2025 · IPR2023-01350 · APJ Jon B Tornquist · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

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

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

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

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

  • Expert testimonyPatent owner expert creditedDecided for patent owner

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

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

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

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

  Patent outcomesUS 7,749,641 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,749,641
• Chongqing Yanmei Technology Co., Ltd. v. Terves, LLCSome claims unpatentable
  PTAB · Aug 27, 2024 · IPR2023-00521 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 19–61, 63–77, and 79 are unpatentable as anticipated by Doud; claims 78, 80, and 81 are not shown unpatentable. The contingent motion to amend is granted in part and denied in part.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have at least a Ph.D. in chemistry, metallurgy, or material science or material engineering” or, in the alternative, “would have a Bachelor of Science or Master of Science degree in one of these disciplines plus experience involving the use and design of dissolvable metal alloys for use in creating tools and other downhole parts for well drilling or completion activities.” Pet. 13–14. Patent Owner does not oppose Petitioner’s contentions regarding the level of ordinary skill in the art. PO Resp. 12 n.4. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the ordinarily skilled artisan as it is consistent with the prior art of record.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “With respect to claim 19, Petitioner proposes constructions for the terms “in situ precipitate” and “a plurality of particles of said in situ precipitate having a size of no more than 50 µm.” Pet. 11–12. With respect to claims 76–81, Petitioner proposes a construction for the term “wherein said additive material includes one or more metal materials selected from the group consisting of 0.1–35 wt. % copper, 0.1–24.5 wt. % nickel and 0.1–20 wt. % cobalt.” Id. at 13. Patent Owner contends no claims require construction for purposes of this Decision. PO Resp. 12 n.4, 17–18; Mot. 16–17. Upon review of the prior art of record, we determine that no claim terms require express construction for purposes of this Final Written Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateWritten description adequateMixed

    “Ex. 2027, 20:25–21:5 (emphasis added). The disclosure that the “magnesium composite” of “[t]he present invention” “includes at least 50 wt% magnesium” is unambiguous and constitutes strong evidence that the inventors were not in possession of a magnesium composite with less than 50 wt. % magnesium, or additive concentrations above 50 wt. %. See SciMed Life Systems, Inc. v. Advanced Cardiovasular Systems, Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) (noting that a description of the “present invention” as having a particular structure “is strong evidence that the claims should not be read to encompass the opposite structure”). Consistent with this conclusion, the original claims of the ’295 application all limited the additive material in the composite to 0.05 wt %–45 wt %. Ex. 2027, 26:1– 13, 29:9–15. Likewise, in each example where copper, nickel, or cobalt additives are used in the range recited in the proposed substitute claims, the magnesium composite is “over 50 wt% magnesium,” and any claims that do not require this range of magnesium are limited to an additive range of “about 0.05 wt%–45 wt% of said mixture.”8 Ex. 2027, 6:13–7:4, 7:16–19, 8 Written description support is considered from the view point of the ordinarily skilled artisan. Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Patent Owner, bearing the burden to show written description support in any priority application for which it seeks the benefit of its filing date, provides no testimony from an ordinarily skilled artisan regarding written description support in the ’295 application, or any evidence to show what such an artisan would conclude from the express disclosures of the ’295 application. Lectrosonics, Paper 15 at 7; In re NTP, 654 F.3d 1268, 1276 (Fed. Cir. 2011) (noting that “a patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority . . . Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120”). Where there is any ambiguity in the disclosures of the ’295 application, the absence of supporting testimony tends to cut against 26:2–31:2; see Ex. 1005 ¶¶ 12, 13, 18, 19, 16–21, 26, 28, claims 16–21, 26– 28. In view of the foregoing, we are not persuaded that Patent Owner has demonstrated that the inventors of the priority applications were in possession of a magnesium cast composite that included less than 50 wt. % magnesium, or greater than 50 wt. % additives. As proposed substitute claim 104 encompasses a magnesium cast composite with up to 90 wt. % additives, and therefore as little as 10 wt. % magnesium, Patent Owner has not demonstrated that the full scope of this claim finds written description support in any application prior to the ’915 application, filed on October 12, 2018.” slip op. at 17

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteIndefiniteMixed

    “The definiteness requirement of § 112(a) is satisfied when “a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable clarity.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014); see 37 C.F.R. § 42.100(b) (changing the claim construction standard used to review a claim proposed in a motion to amend from the broadest reasonable construction to the “same construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b)”). Proposed substitute claim 104 generically requires “in situ precipitate” and also a specific type of in situ precipitate: “in situ galvanically-active intermetallic precipitate.” Mot. Appendix A. Although this claim would have best been clarified by Patent Owner after seeking preliminary guidance on its Motion to Amend, upon review of the written description, claims, and figures of the ’740 patent, as well as Patent Owner’s clarification in its Reply to the Opposition, we agree with Patent Owner that one of ordinary skill in the art would have understood that the “in situ galvanically-active intermetallic precipitate” is merely a more complete description of the “in situ precipitate” mentioned earlier in the sentence. Mot. Reply 4. As such, we do not find that this part of proposed substitute claim renders claim 104 indefinite.” slip op. at 22

  Patent outcomesUS 10,689,740 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham · Nautilus
  Patents in suitUS 10,689,740
• Sierra Wireless, Inc. / Thales Dis Ais Deutschland GmbH v. Sisvel International S.A.Some claims unpatentable
  PTAB · May 28, 2024 · IPR2020-01099 · APJ Monica S Ullagaddi · IPR · Remand

  On remand, claims 5–7 and 10 are unpatentable as obvious over Chen; claim 8 was not shown unpatentable over the asserted grounds.

  RulingsRemand decision

  • RemandOther

    “with the Federal Circuit. Paper 53. Petitioner subsequently filed a Notice of Cross-Appeal. Paper 54. The Federal Circuit rendered its Decision on October 6, 2023 (Paper 58) and entered its mandate on November 29, 2023 (Paper 57). In its Decision, the Federal Circuit vacated our conclusion regarding the “means for detecting” limitation recited in claims 5 and 10. Sisvel, 82 F.4th at 1364, 1370. The Court ordered that, on remand, we “must conduct the analysis appropriate for Noah group two, including whether any of the protocols are clearly linked or associated with ‘the function recited in the claim,’[ ] and whether they are ‘adequate structure for performing this function.’” Id. at 1370 (citing Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302, 1313 (Fed. Cir. 2012)). The Court further held that “the Board should have considered the knowledge of a skilled artisan,” and specifically, Dr. Kakaes’s expert testimony, “to assess whether the protocol name sufficiently discloses an understood algorithm corresponding to the means-plus-function limitation.” Id. at 1369. The Court also held that we “must either (1) determine whether the claim[s] [are] indefinite and then whether such indefiniteness renders it impossible to adjudicate a prior-art challenge on the merits, or (2) resolve the prior art challenge to the patentability of the claims despite the potential indefiniteness of the means-plus-function term.” Id. at 1370. After the Federal Circuit issued its mandate, we ordered the parties to brief these issues including “the supported construction of the ‘means for detecting’ claim term, as well as the attendant patentability issues of indefiniteness and impossibility as relevant to this claim term.” Paper 59, 3. Petitioner filed an Opening Brief on Remand (Paper 63, “Rem. Pet. Br.”). Patent Owner thereafter filed a Response to Petition (Paper 64, “Rem. PO” slip op. at 4

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In its Patent Owner’s Response, Patent Owner states: [A] person having ordinary skill at the time of invention— September 10, 1999—in the relevant art would be one with a bachelor’s degree in electrical engineering or computer sciences and telecommunications networks, along with at least three or more years of practical experience in the field. A combination of more experience in the field and less education or more education and less experience in the field would also suffice. PO Resp. 7 (citing Inst. Dec. 9; Ex. 2001 ¶ 27). In our original Final Written Decision, we determined that: Although there are differences between the contentions of the parties as to the level of ordinary skill in the art, the parties have not informed us of a dispute that needs to be resolved. We do not find it necessary to resolve the differences between the contentions of the parties as to the appropriate level of ordinary skill in the art because the findings and conclusions rendered in this Decision do not turn on either proposed definition. We determine, on this record, that the level of ordinary skill proposed by Patent Owner is consistent with the ’561 patent and the asserted prior art. As such, we adopt Patent Owner’s proposed definition for a person of ordinary skill in the art. Final Dec. 10. Based on our review of the entire record, we are not apprised of nor can we ascertain any reason to deviate from this determination. As such, in this Final Written Decision on remand, we maintain the definition of level of ordinary skill in the art from the original Final Written Decision.” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Claim limitations that include the terms “means” or “means for” are presumed to invoke 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Claims subject to 35 U.S.C. § 112 ¶ 6 are construed in a “two-step process,” whereby we “first identify the claimed function,” and then “determine what structure, if any, disclosed in the specification corresponds to the claimed function.” Id. at 1351. Accordingly, the rules governing this inter partes review require that Petitioner “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). It is well established that “the corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.” Aristocrat Techs. Austl. Pty Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)); see also EON Corp. IP Holdings, LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“A microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm.”). The Federal Circuit has held that “[t]he specification can express the algorithm ‘in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.’” Noah, 675 F.3d at 1312 (citing Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citation omitted)).” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “For example, with respect to the CRC protocol, Dr. Kakaes testifies that “CRCs are often referred to as ‘error detecting codes’ as they are typically used[] to detect whether a received data message is or is not erroneous.” Ex. 1002 ¶ 88. Dr. Kakaes further testifies that [t]o use a CRC, the transmitter runs a polynomial division of the data block (before forward error correcting code has been applied, if any) to calculate a “remainder” consisting of a predetermined number of bits, for example 16, which are also called “parity bits,” or “check bits,” or “checksum bits,” or “CRC bits” that are attached to the block to be encoded and then transmitted, in whichever way it may or may not be encoded, punctured, etc. After reception and channel decoding (recall that means determining the “maximum likelihood” message), the receiver then runs the same polynomial division of the received decoded data block (which includes the parity bits) and, if the result does not match the “remainder,” i.e., the “parity bits” are not consistent with the determined message, the decoded data block “fails” the “check,” i.e., is declared as being erroneous. As it turns out such a determination is never wrong. In other words, the “false negative” rate is 0. Id. (emphasis added). With regard to the ARQ protocol, Dr. Kakaes testifies that “[i]n an ARQ scheme, the receiver automatically requests retransmission of a data packet if it is detected to be erroneous, such as through the use of CRC, as discussed above.” Id. ¶ 91.” slip op. at 20

  Patent outcomesUS 6,529,561 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,529,561
• Samsung Electronics Co., Ltd. v. Lynk Labs, Inc.Some claims unpatentable
  PTAB · May 5, 2023 · IPR2022-00098 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1, 3, and 4 are unpatentable as obvious over the stated combinations; claim 2 was not shown unpatentable because the driver was not shown configured to receive the rectifier’s forward voltages.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that a person of ordinary skill in the art would have had experience in LED devices. For this reason, we apply Patent Owner’s proposed level of ordinary skill in the art because it comports with the level of skill reflected in the ’149 patent and the prior art of record. However, if we were to apply Petitioner’s proposed level of skill, our Decision would not be affected.” slip op. at 9

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

    “Upon review of the entire record, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, 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 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “Dr. Ducharme’s testimony that “the spacing of the chips in Zhang would not likely be so close as to create overheating issues” (Ex. 2002 ¶ 111) is unsupported by any disclosure of the actual spacing of Zhang’s chips. Consequently, his testimony that there would be no overheating concerns in Zhang due to the spacing of the chips is entitled to little, if any, weight. Dr. Ducharme further testifies that the components of Zhang’s driver “could easily increase the temperature of the LED 19 chips on the circuit board, which can cause LEDs to generate less illumination, burn out and otherwise adversely affect their performance.” Ex. 2002 ¶ 126. Dr. Ducharme further testifies that “[i]t is well-known that excessive operational temperatures can reduce the illumination provided by the LEDs, can decrease the operational lifetime of the LEDs, and if the temperature is sufficiently high, it can cause LED junction failure and a burnt-out LED.” Id. We agree with this testimony, which as discussed below, is consistent with Salam. Dr. Ducharme’s testimony concerning overheating issues caused by the driver components contradicts Patent Owner’s ’s contention that there would not be “an overheating issue with Zhang’s LED exit sign circuit in Figure 2.1.” PO Resp. 30. Regardless of whether Zhang’s LEDs in Figure 2.1 have a heat problem or not, Salam teaches the advantages of using a heat sink. Salam teaches that a heat sink will result in a higher efficiency of the LEDs and improved life. Ex. 1006, 16:38–43. The Federal Circuit, in DyStar Textilfarben GmBH & Co v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006), stated that “the desire to enhance commercial opportunities by improving a product or process is universal–and even common-sensical . . . the proper question is whether the ordinary artisan possesses the knowledge and skills rendering him capable of combining the prior art references.” Id. at 1368. Dr. Ducharme testified that a person of ordinary skill in the art “would have an understanding of the generation of heat and using a heat sink to remove unwanted heat from electronics and LED lighting devices.” Ex. 1102, 23:18–24:3. Dr. Ducharme’s testimony is consistent with Petitioner’s contention that the combination of Zhang and Salam “would have been a straightforward combination of known components and technologies, according to known methods, to produce the predictable result of reducing/ mitigating heat effects in a circuit.” Pet. 17 (citing Ex. 1002 ¶ 106). Patent Owner next contends it would be extremely burdensome and costly to modify Zhang to add a heat sink layer because “each of the multiple chips mounted and epoxied to Zhang’s circuit board in the exit sign would have to be modified.” PO Resp. 30 (citing Ex. 2002 ¶ 112). Dr. Ducharme’s testimony repeats the Patent Owner Response verbatim and is entitled to little, if any, weight. Ex. 2002 ¶ 112. Nonetheless, this contention is unavailing because it is based on Patent Owner’s bodily incorporation of Zhang and Salam. Patent Owner next contends that a person of ordinary skill in the art” slip op. at 27

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

    “Regardless of whether Zhang’s LEDs in Figure 2.1 have a heat problem or not, Salam teaches the advantages of using a heat sink. Salam teaches that a heat sink will result in a higher efficiency of the LEDs and improved life. Ex. 1006, 16:38–43. The Federal Circuit, in DyStar Textilfarben GmBH & Co v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006), stated that “the desire to enhance commercial opportunities by improving a product or process is universal–and even common-sensical . . . the proper question is whether the ordinary artisan possesses the knowledge and skills rendering him capable of combining the prior art references.” Id. at 1368. Dr. Ducharme testified that a person of ordinary skill in the art “would have an understanding of the generation of heat and using a heat sink to remove unwanted heat from electronics and LED lighting devices.” Ex. 1102, 23:18–24:3. Dr. Ducharme’s testimony is consistent with Petitioner’s contention that the combination of Zhang and Salam “would have been a straightforward combination of known components and technologies, according to known methods, to produce the predictable result of reducing/ mitigating heat effects in a circuit.” Pet. 17 (citing Ex. 1002 ¶ 106).” slip op. at 27

  Patent outcomesUS 10,517,149 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,517,149
• Home Depot USA, Inc. v. Lynk Labs, Inc.Some claims unpatentable
  PTAB · May 5, 2023 · IPR2022-00023 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1 and 4 are unpatentable over the stated § 103 combinations; Petitioner did not show claim 2 unpatentable because it did not explain how the LED array’s forward voltage is received by the driver.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “degree in electrical engineering, or similar technical field, with two years of experience in the field of design and/or development of light-emitting diodes (LEDs) and circuits in the context of lighting control systems.” Pet. 11–12 (citing Ex. 1002 ¶ 34). Petitioner further contends that “[a]n increase in experience could compensate for less education.” Id. at 12. Patent Owner proposes the same level of skill in the art. See PO Resp. 6. We apply the parties’ undisputed level of ordinary skill in the art because it comports with the level of skill reflected in the ’149 patent and the prior art of record.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We credit Dr. Lebby’s testimony over Dr. Ducharme for the following reasons. First, in Deese, power cable 28 is inserted into an opening in rubber housing 21. Ex. 1008, Fig. 2A. [R]ubber housing 21 forms a water-tight seal around the power cable 28.” Id. at 4:63–65. Dr. Ducharme does not explain why Hochstein’s protruding heat sink shell could not similarly be inserted through rubber housing 21 with a water-tight seal. Further, Dr. Lebby relies on the similarity between the structures of Deese and Hochstein. Hochstein uses gasket 45 and weather seal 48 to seal housing 10 with electrical lead 49 and heat sink shell 38 extending therethrough. Ex. 1010, 5: 39–40, 5:63:65, Fig. 8.” slip op. at 47

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

    “Our analysis starts with the claim language. Claim 1 recites “a driver, wherein the driver includes at least one transistor and at least one capacitor” and “the driver is configured to receive an AC voltage from a mains power source and provide a voltage and current to the at least one LED circuit.” Ex. 1001, 23:16–17, 26:22–24. Dr. Ducharme testifies that power is determined by multiplying voltage and current. Ex. 2008 ¶ 63. The language of claim 1, thus, supports Patent Owner’s construction which is also consistent with the dictionary definition offered by Petitioner which also defines “driver” as [a] program, circuit or device used to power or control other programs, circuits or devices.” Ex. 1007, 4 (emphasis added). The Specification provides “the driver providing an AC voltage and current to one or more LED circuits.” Ex. 1001, 3:65–67. Thus, the Specification also provides support for Patent Owner’s construction. For the foregoing reasons, we apply Patent Owner’s proposed construction of “driver” because it is consistent with the language of claim 1 and the description of driver in the Specification. We note that the adjective “LED” prior to circuits or devices in Patent Owner’s construction is not necessary because that it essentially repeats limitation 1.e.” slip op. at 12

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

    “We begin with the claim language itself which is “the package is a heat sinking reflective material.” Ex. 1001, 23:18–19 (emphasis added). In its analysis, Patent Owner parses “heat sinking reflective material” out of context by omitting the italicized language “the package is” preceding “heat sinking reflective material.” PO Resp. 29. The deposition testimony of Dr. Lebby and Dr. Ducharme’s declaration testimony cited by Patent Owner are also out of context. The Specification of the ’149 patent defines “package” as an integrated unit that “in certain applications may preferably include a heat sink, a reflective material, a lens for directing light, phosphor nano-crystals or light changing or enhancing substances.” Ex. 1001, 5:30–33. Because heat sink and reflective material are listed separately in the Specification, this disclosure suggests that, at least in certain embodiments, a package with a heat sink separate from a reflective material would fall within the scope of limitation 1.c. This is further confirmed by comparing the packages illustrated in Figures 25 and 26 of the ’149 patent which are reproduced above. Figure 25 is described as illustrating “heat sinking material 198 . . . integrated into the package 30.” Id. at 17:34–35. Figure 26 is described as illustrating reflector 202 “integrated into the package 30 for optimized light dispersion.” Id. at 17:47–49. As can be seen from a visual comparison of Figures 25 and 26, reflector 202 is separate from heat sinking material 198. Given the disclosure in the ’149 patent of a package with a heat sink” slip op. at 15

  Patent outcomesUS 10,517,149 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,517,149
• Samsung Electronics Co., Ltd. v. Lynk Labs, Inc.Some claims unpatentable
  PTAB · Apr 19, 2023 · IPR2021-01576 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1–12 are unpatentable as obvious; claims 13–18 are not shown unpatentable because the asserted combinations fail to teach or suggest multiple LED packages connected in series.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “PO Resp. 8 (citing Ex. 2001 ¶¶ 41–42). Patent Owner argues that its definition is superior because Petitioner’s “and/or” qualifier “might be read as considering a person who has ‘related circuit design’ experience but no experience with ‘LED devices’ to be a POSITA.” Id. at 9. Patent Owner further views Petitioner’s “or a related field” phrasing as potentially including a person who has no experience with LED devices. Id. We agree with Patent Owner on both points. We agree with Patent Owner that Patent Owner’s proposal is more consistent with the problems and solutions in the ’979 patent and prior art of record. We adopt Patent Owner’s definition of the level of skill but note that had we adopted Petitioner’s level of skill, we would not have reached a different outcome here.” slip op. at 6

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

    “specification support its construction of “formed or mounted to” as encompassing indirect attachment to the substrate. Neither the plain claim language nor the specification requires the phosphor coating to be directly attached to the substrate. Limitation 1(c) recites, wherein the LED chips comprise a phosphor coating to produce a change in a color or a quality of light emitted from the LED chips, wherein the LED chips, the power connection leads, and the phosphor coating are formed or mounted to a flexible substrate that is sufficiently flexible to be formed into a cylindrical shape[.] Ex. 1001, 22:7–12 (emphasis added). The claim is inartfully written, as it requires the LEDs to comprise a phosphor coating but then separately recites that the LED chips and the phosphor coating are formed or mounted to the substrate. But Petitioner correctly explains that the plain meaning requires that “the LED chips comprise a phosphor coating” and that “the [same] phosphor coating” (included in the LED chips) is “formed or mounted to a flexible substrate.” Reply 2. In other words, the use of the term “the” before “phosphor coating” indicates reliance on the antecedent basis of “LED chips comprise a phosphor coating,” and thus the same coating of the LED chips is formed or mounted to the substrate. Logically, by including a phosphor coating with the LED chips, which are formed or mounted to the substrate, the coating of these chips is also indirectly formed or mounted to the substrate. Conversely, it would be illogical to conclude that the claim recites two phosphor coatings, one attached to the LED chips and another attached directly to the substrate, because the structure of the claim refers to a single phosphor coating of the LED chips. Even Patent Owner concedes that the claim encompasses the phosphor coating indirectly being mounted or attached to the substrate (in addition to being directly attached). PO Resp. 11 (“The ordinary English reading of the claim language does not encompass the phosphor coating only being indirectly attached to the substrate, instead, the language indicates that the coating is directly applied to the substrate.” (emphasis changed)), 13 (“the phosphor coating . . . is not merely attached to the substrate indirectly”).” slip op. at 10

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

    “After considering Patent Owner’s arguments, which we address below, we agree with Petitioner that the combination of Wojnarowski and Martin discloses this limitation and that a person of ordinary skill in the art would have been motivated to combine the references’ teachings in the manner asserted by Petitioner. Briefly, we summarize our findings, and then we address the parties’ arguments in more detail. First, we agree with Petitioner, and Patent Owner does not dispute, that Wojnarowski’s AC input voltage would have been converted to DC voltage in light of the bridge rectifier and capacitor disclosed by Wojnarowski. Pet. 25; Ex. 1002 ¶¶ 119– 20 (citing, e.g., Ex. 1005, 7:59–62, Fig. 24); PO Resp. 35–36 (acknowledging Wojnarowski discloses converting an AC input to a DC voltage). Second, we further agree with Petitioner, and Patent Owner does not dispute, that excessive current due to too few LEDs would have harmed Wojnarowski’s LEDs, and too small a current due to too many LEDs would be insufficient to power Wojnarowski’s LEDs. Pet. 26; Ex. 1002 ¶ 134; PO Resp. 48 (discussing, but not disputing, these assertions).13 Third, we agree that a POSITA would have recognized in view of Martin’s teachings and the knowledge of a skilled artisan that when configuring Wojnarowski’s device, the total forward voltage drop of the series-connected LEDs should approximately match the DC voltage output 13 Petitioner explains the relationship between voltage and current for the LEDs as follows: “the total voltage drop of the circuit would dictate the current drawn by the LED circuitry, which would have been known to be inversely proportional to the voltage.” Pet. 26 (citing Ex. 1002 ¶ 134). of Wojnarowski’s circuit. Pet. 26–27 (citing Ex. 1002 ¶¶ 132–38; Ex. 1008, Abstract (LED voltage “must be matched to the input source voltage”), ¶ 60 (“For AC or any other regularly varying input voltage, there is an additional requirement to direct drive voltage matching”)). For example, Martin teaches that “[t]he number of LEDs in the monolithic array may be selected to achieve a particular voltage drop across each device.” Ex. 1006 ¶ 22. Martin further explains, “[t]he voltage across each of the individual LEDs in the array is the line voltage divided by the number of LEDs in series,” and “[t]he number of LEDs is chosen such that the maximum voltage across each individual LED during the peak in the alternating current cycle is low enough so as not to damage the LEDs.” Id. The forward voltage drop across Martin’s 38 LEDs is about 171 V, which matches Martin’s AC input voltage peak of about 169.71 V. See id. (“At 120 RMS volts, the peak voltage will be about 180V [correction: 169.71 V],” and if the LEDs “can tolerate a maximum forward voltage of 4.5V, at least 38 LEDs connected in series are required.” (38 LEDs x 4.5 V = 171 V)); PO Resp. 41–42 (“While Martin references ‘about 180V,’ both parties agree that the correct value of the peak voltage Vp is 169.71 V.” (citing Ex. 1002 ¶ 127)). Although Martin’s LED forward voltage drop (171 V) differs slightly from the peak input voltage (169.71 V), Patent Owner conceded at the hearing that the claimed “matches” does not require an exact equivalence. Tr. 38:9–11 (“Patent Owner agrees . . . that matching has a meaning that goes beyond exact equivalence.”).14” slip op. at 22

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

    “35 U.S.C. § 311(b). PO Resp. 22–25. This statute provides that “[a] petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” § 311(b) (emphasis added). Patent Owner contends that Martin is not available as prior art under 35 U.S.C. § 311(b) because it is not a patent or printed publication and is only prior art under 35 U.S.C. § 102(e). PO Resp. 22. Patent Owner argues that documents are “printed publications” as of the date they become available to the public, and Martin became public on its publication date of October 21, 2004, after the February 25, 2004 priority date of the ’979 patent. Id. at 23. Patent Owner raises a similar argument for the Soules-II reference in Ground 6. Id. at 25– 26. Petitioner responds that the AIA framework permits the use of § 102(e) prior art in IPR proceedings, unlike formerly available covered business method review (CBM) proceedings, which restricted challenges to § 102(a) prior art. Reply 29. We agree. The statute governing the formerlyavailable CBM proceeding explicitly limits challenges based on “prior art that is described by section 102(a).” AIA § 18(a)(1)(C). In contrast, § 311(b) more broadly permits challenges “on the basis of prior art consisting of patents or printed publications.” The broader language in § 311(b) implies that unlike CBMs, IPRs are not limited to challenges solely under § 102(a) prior art. The parties cite to no Federal Circuit decisions that squarely address this issue. However, the Federal Circuit has applied § 102(e) patent application publication prior art in appeals from IPR proceedings. See, e.g., Purdue Pharma L.P. v. Iancu, 767 Fed. App’x 918, 920–21, 926 (Fed. Cir. 2019) (nonprecedential) (determining that a § 102(e) patent application publication was available as prior art in an IPR). The Board has also long permitted challenges based on patent application publications under § 102(e). See, e.g., Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 14 at 27 (PTAB Jan. 31, 2013) (instituting trial over § 102(e) ground based on a patent application publication). We therefore find Patent Owner’s § 311(b) argument unpersuasive.” slip op. at 34

  Patent outcomesUS 10,652,979 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,652,979
• Netflix, Inc. v. Divx, LLCSome claims unpatentable
  PTAB · Feb 3, 2023 · IPR2020-00052 · APJ Iftikhar Ahmed · IPR · Remand

  On remand, claims 1 and 17–19 are unpatentable as obvious over Vehviläinen; the Board did not reach anticipation.

  RulingsRemand decision

  • RemandOther

    “Federal Circuit. Netflix, 2022 WL 2298983 at *1. The Federal Circuit vacated our Decision as to claims 1 and 17–19 and remanded for further consideration of whether claims 1 and 17–19 are unpatentable in light of the court’s construction of a disputed limitation recited in claim 1. Id. at *7. The Federal Circuit affirmed our Decision as to claims 2 and 4, and thus, those claims are not before us on remand. Id. The parties proposed filing a joint brief, with six pages per side, limited to identifying the issues that remain on remand and identifying relevant portions of the existing record, without submitting any new evidence or arguments, and we authorized the joint brief. Paper 87; Ex. 1028. Accordingly, the parties filed a joint brief. Paper 88 (“Joint Brief”). For the reasons discussed below, we conclude, in view of the Federal Circuit’s claim construction and the complete record before us, that Petitioner has shown, by a preponderance of the evidence, that claims 1 and 17–19 are unpatentable.” slip op. at 3

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

    “[t]he words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Phillips, 415 F.3d at 1313). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996)). Neither of those exceptions apply here, and for the reasons below, we disagree with Patent Owner that the plain and ordinary meaning of “selecting a filter to apply” excludes determining whether or not to apply a given filter. We begin with the claim language at issue. TQ Delta, LLC v. DISH Network LLC, 929 F.3d 1350, 1357 (Fed. Cir. 2019). When considering the language of the claim overall, the usage of “selecting a filter” in the claims does not in any way indicate whether the filter has to be selected from among multiple filters. Claim 1 recites “selecting a filter to apply to determined level of detail.” Ex. 1001, 13:20–22 (emphasis added). Patent Owner argues that “the claim language confirms that ‘selecting a filter’ means choosing from a number of alternative filters, not merely deciding whether or not to apply a filter,” (PO Resp. 34), but we see nothing in the claim language that suggests such a requirement. Patent Owner also points us to claim 19, arguing that selecting is not merely deciding whether to apply a filter, “since that determination is already made in [c]laim 19 by virtue of the initial sub-step of ‘exceed[ing] the threshold.’” Id. Again, we see nothing in claim 19 that suggests the determination of the threshold being exceeded requires a specific manner of filter selection. Instead, similar to claim 1, claim 19 recites: “when the level of detail exceeds the threshold, selecting a filter to apply to predetermined pixels.” Ex. 1001, 16:8–9. Thus, we are not persuaded that the claim language necessarily requires selecting a filter from among multiple filters. slip op. at 14

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

    “because Vehviläinen performs additional analysis before selecting a moderate or high activity filter, it does not teach selecting from among multiple filters. As discussed above, we do not agree with Patent Owner’s claim interpretation, and even if we did, we are persuaded that a person of ordinary skill in the art would have easily modified Vehviläinen’s filter selection to use a single area, e.g., the smooth area of Figure 5A, and a decision branch based on the level of detail for that single area. Vehviläinen discloses that “increasing the amount of selection branches makes the system more adaptive to the nature of the blocking effect but also increases control logic.” Ex. 1004, 8:15–27. Vehviläinen states that “[a] good embodiment,” but of course, “the invention can be utilized with less than three branches.” Id. at 8:18–21. Dr. Bove testifies that a person of ordinary skill in the art “would have been motivated to reduce complexity and the required control logic by using fewer branches, as taught by Vehviläinen, including for example just one branch, particularly for applications running on performance-constrained platforms such as low-end computer processors or mobile platforms, which often had constraints on thermal dissipation, power consumption, and cost.” Ex. 1003 ¶ 120 (citing Ex. 1004, 11:7–22). He further testifies that a person of ordinary skill in the art “would have been motivated to determine the level of detail for just the ‘smooth’ area and then select the smooth filter, if the area is smooth, or the high-activity filter otherwise.” Id. Dr. Bove illustrates that modification with the following pseudocode: if ( IsSmooth (Figure_5A) == TRUE) { Select (SmoothFilter); } else { Select (HighActivityFilter); } Id. He further testifies that such a modification would have been obvious and well within [a person of ordinary skill in the art’s] level of skill, and [such a person] would have had a reasonable expectation of success given that [the] modification involves a simple reordering of elements taught by Vehviläinen, the fact that Vehviläinen expressly teaches the have had with these basic filtering and thresholding techniques. Id. On this aspect, we credit Dr. Bove’s testimony because it is based on the express teachings of Vehviläinen and addresses a straightforward modification in view of those teachings.” slip op. at 33

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

    “a) Patent Owner Has Not Established that It is Entitled to a Presumption of Nexus We determine that Patent Owner has not demonstrated a nexus between the evidence presented and claims 1 and 17–19. Patent Owner’s arguments and evidence are directed broadly to the DivX6 codec’s deblocking scheme and not specifically to the deblocking aspects covered by the challenged claims. We agree with Petitioner that the claimed features constitute only a small part of the commercial product and the two are far from being coextensive. See Pet. Reply 31 (citing Ex. 1017, 133:10–24; Ex. 1018, 34:4–35:1). As Dr. Bajaj explained, the “DivX [codec] included a lot of things” other than deblocking, and the DivX documentation details “only a fraction of the things that were there in the codec.” Ex. 1017, 133:10–24.” slip op. at 48

  Patent outcomesUS 8,139,651 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,139,651
• Cradlepoint, Inc. / Honeywell International, Inc. et al. v. Sisvel S.P.A.Some claims unpatentable
  PTAB · Sep 12, 2022 · IPR2021-00580 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1, 2, 6, 7, and 8 are unpatentable as anticipated by and obvious over Sachs; claims 3–5, 9, and 10 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level Of Ordinary Skill In The Art Petitioner contends that: A POSITA at or about the time of the alleged invention (January 5, 2006) would have had a degree in electrical engineering or a similar discipline, with at least three years of relevant industry or research experience, including experience designing or implementing wireless radio systems for data transmission and retransmission. Pet. 35 (citing Ex. 1002 ¶¶ 40–53). Patent Owner contends that a person having ordinary skill at the time of invention—January 5, 2006—in the relevant art would be one a bachelor’s degree in electrical engineering, computer sciences, or telecommunications, along with three to five or more years of practical experience in the field. A combination of more experience in the field and less education or more education and less experience in the field would also suffice. PO Resp. 9 (citing Ex. 2001 ¶ 27). According to Patent Owner, “[a]lthough Patent Owner’s proposed level of skill in the art is similar to Petitioners’ proposal, Patent Owner includes the qualification that a combination of more experience in the field and less education, or more education and less experience in the field would also suffice.” Id. The parties’ contentions as to the level of ordinary skill in the art are similar, and there does not appear to be a dispute that needs to be resolved. We adopt Petitioner’s definition as it appears to be consistent with the specification of the ’396 patent and the cited references. The findings and conclusions rendered in this Decision would not change had we adopted Patent Owner’s definition.” slip op. at 8

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

    “Petitioner proposes “that all claim terms should be accorded their plain and ordinary meaning, as understood by a POSITA and consistent with the specification and file history of the ’396 patent.” Pet. 34–35. Patent Owner “agrees that the claim[] terms should be given their plain and ordinary meaning” and “reserves the right to provide alternate constructions if any of the terms become material to the Board’s decision.” PO Resp. 10. We need not expressly define any claim term in our Decision in order to resolve the issues before us. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). We note that the parties both implicitly construe claim limitation 1[c], “stopping the timer when the at least one data block is received from the transmitter while the timer is running, in order to prevent a triggering of a status report before the timer expires” similarly. See e.g., infra § III.D.2.” slip op. at 9

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “separate ‘reordering procedure,’ to which the timer is tied.” Id. (emphasis added). We agree that the cited evidence in Sachs more closely supports Petitioner’s position that the “timer is stopped when and because the missing PDUs are received,” and not after the occurrence of some additional step in which PDUs in the RLC buffer are shuffled into sequential order. Petitioner persuasively supports its position with, for example, its annotated version of Figure 5, reproduced above, which depicts that the T_reorder timer is stopped when out-of-order PDUs 3 and 4 are received––Sachs does not depict or describe an additional step of reshuffling occurring before the timer is stopped. Pet. 41. Patent Owner’s argument that Sachs teaches “a reordering procedure is performed before any other actions are taken” is unavailing because it is not supported by the cited evidence. In support of this argument, Patent Owner’s Declarant, Mr. Regis J. Bates, Jr., offers similar testimony that “the expiry of the timer in Sachs does not trigger a status report as in the ’396 patent, instead a reordering procedure is performed before any other actions are taken,” but does not explain why the reordering procedure takes place before “any other actions.” Ex. 2001 ¶ 53 (citing Ex. 1003, Figs. 4, 5, Abstract, 8:25–31, 9:11–15) (emphasis added). In his Second Declaration, Mr. Bates adds no further detail or explanation and cites the same portions of Sachs. Ex. 2006 ¶ 29. None of the cited portions of Sachs sufficiently supports a finding that Sachs teaches or suggests that “a reordering procedure is performed before any other actions are taken,” as Patent Owner contends and as Patent Owner’s Declarant testifies. Id.” slip op. at 18

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

    “We clarify that limitations 1[c] and 1[d] cannot both occur in response to the same set of stimuli. Limitation 1[c] can be triggered in response to one set of stimuli and limitation [d] can be triggered in response to a different set of stimuli as is shown in Sachs’s figures. In order for Petitioner to prevail, it need only show one of these mutually-exclusive claim limitations to satisfy the claim, as it contends. Petitioner persuasively shows that, under a first theory, with a first set of stimuli, the timer is stopped before it expires and limitations 1[a], 1[b], and 1[c] are performed as shown in Figure 5 of Sachs. Ex. 1003, Fig. 5. Under a second theory, with a different, second set of stimuli, the timer is allowed to expire and limitations 1[a], 1[b], and 1[d] are performed as shown in Figure 4 of Sachs. Id. at Fig. 4. In Petitioner’s annotated version of Figure 4, PDUs 3 and 4 are not received within the time period set by the T_reorder timer––as such, the T_reorder timer expires and a status report acknowledging PDUs up to 14 and negatively acknowledging PDUs 3 and 4 (i.e., indicating that PDUs 3 and 4 are missing) is sent. Pet. 41. In Petitioner’s annotated version of Figure 5, the T_reorder timer is stopped when out-of-order PDUs 3 and 4 are received within the time period set by the T_reorder timer and as such, the T_reorder timer is stopped before it can expire. Id.” slip op. at 16

  Patent outcomesUS 7,869,396 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,869,396

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.