- Inductev, Inc. v. Witricity CorporationAll claims unpatentablePTAB · Feb 13, 2025 · IPR2023-01182 · APJ Robert J Weinschenk · IPR · Final written decision
Claim 16 was cancelled on Patent Owner’s motion; claim 17 was held unpatentable as obvious over Cook ’554 and over Lee and Cook ’523.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in electrical engineering (or equivalent) and at least two to three years of industry or equivalent research experience in the field of wireless energy transfer.” Pet. 7–8 (citing Ex. 1003 ¶¶ 37–41). Petitioner’s description of the level of ordinary skill in the art is supported 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Based on the effective filing date of the ’719 patent, we apply the pre-AIA version of § 103. by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37– 41. Patent Owner does not dispute Petitioner’s description. PO Resp. 14. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“[i]t will be appreciated that a network of capacitors, as used herein, may in general refer to any circuit topology including one or more capacitors, including without limitation any of the circuits specifically disclosed herein using capacitors, or any other equivalent or different circuit structure(s), unless another meaning is explicitly provided or otherwise clear from the context. Id. at 52:32–38 (emphasis added). Thus, the ’719 patent expressly defines the phrase “a network of capacitors” as any circuit topology including one or more capacitors. Id.” slip op. at 7
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Patent Owner’s argument is unavailing. Even if Patent Owner is correct that elements E and F in Figure 4-12 of the Cook Provisional only represent the delivered power level (not the received power level), other portions of the Cook Provisional disclose tuning the resonant frequency of the resonant circuit based on the received power level. See Pet. Reply 5–6. In particular, the Cook Provisional states that “[t]he control system of the receiver is in charge of . . . antenna tuning control.” Ex. 1006, 31. The Cook Provisional also states that “[t]he receiver[’]s control system may determine the model parameters using specific measurements (e.g. antenna current and voltage, input power, etc.) and calibration routines.” Id. (emphasis added). Thus, the Cook Provisional discloses tuning the resonant frequency based on input power. Id.” slip op. at 10
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“D. Motion to Amend Patent Owner’s non-contingent Motion to Amend requests that we cancel claim 16. Mot. Amend 1. Petitioner does not oppose Patent Owner’s request. Id. We grant Patent Owner’s unopposed request to cancel claim 16, and, as a result, we do not reach the asserted grounds for claim 16.” slip op. at 8
Patent outcomesUS 8,461,719 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,461,719 - HTC Corporation / HTC America, Inc. et al. v. Electronic Scripting Products, Inc.All claims unpatentablePTAB · Sep 12, 2019 · IPR2018-01032 · APJ William M Fink · IPR · Final written decision
Claims 1–21 are unpatentable under § 103: claims 1–6, 11–18, and 21 over Welch-HiBall and SIGGRAPH 2001; claims 7–11 and 19–21 over those references and Romanik.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“On January 18, 2019, we granted Valve Corporation’s Motion for Joinder in Valve Corp. v. Electronic Scripting Products, Case IPR2019-00074 (PTAB filed Oct. 11, 2018). Paper 12, 10. In doing so, we joined Valve Corporation to this proceeding, resulting in HTC Corporation, HTC America, Inc., and Valve Corporation (collectively “Petitioner”) challenging the claims of the ’935 patent. Id.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not provide its own explanation of the level of ordinary skill in the art. Patent Owner also does not oppose Petitioner’s proffered level of ordinary skill in the art. Upon consideration of the record, including the level of skill reflected by the cited references, Welch-HiBall and SIGGRAPH 2001, we agree with and therefore adopt Petitioner’s proposed definition for the level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of institution, we determined it was unnecessary to construe any of these claim terms expressly to address the parties’ arguments. Inst. Dec. 6. Similarly, in view of the complete record, we find that it is unnecessary to provide a separate explicit claim construction to resolve the issues before us. Instead, to the extent the parties’ arguments are based on the scope of the claims, we resolve the disputed claim scope in the context of the parties’ arguments as set forth below.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Petitioner contends SIGGRAPH 2001 is a set of printed, bound course materials distributed to attendees of a course taught by Dr. Welch and colleagues on August 12, 2001, at a widely attended conference (called “SIGGRAPH”), and, therefore, is prior art under 35 U.S.C. § 102(b). Pet. 19–21. Petitioner provides evidence in support of SIGGRAPH 2001’s availability, including Dr. Welch’s testimony regarding the distribution of the course materials at the conference. See id. (citing Exs. 1025–1029, 1036; Welch Decl. ¶¶ 104–108). Patent Owner does not dispute these contentions. In view of the evidence demonstrating the public availability of SIGGRAPH 2001, Petitioner has demonstrated persuasively that SIGGRAPH 2001 is prior art under 35 U.S.C. § 102(b).” slip op. at 9
Patent outcomesUS 8,553,935 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,553,935 - HTC Corporation / ZTE (USA) et al. v. Cellular Communications Equipment LLCNo claims unpatentablePTAB · Jan 4, 2016 · IPR2014-01135 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 1 and 3–9 were not shown unpatentable because neither Sasuta nor Lawrence disclosed the home network preference limitation explicitly or inherently.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Whether a party is a real party in interest is a “highly fact-dependent question” that is evaluated “on a case-by-case basis.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Some of the common considerations for determining whether a party is a real party in interest include whether the party funds, directs, or controls the petition or proceeding. Id. at 48,760. Here, Patent Owner does not identify any evidence indicating that HTC America funds, directs, controls, or otherwise is involved in this petition or proceeding. Patent Owner’s argument that HTC America and HTC Corporation acted jointly in other cases and that HTC America is named as a real party in interest in other cases does not indicate that HTC America is a real party in interest in this case. Similarly, Patent Owner’s argument that HTC America and HTC Corporation share counsel does not indicate that HTC America funds, directs, controls, or otherwise is involved in this case. The only evidence specifically related to this proceeding is that an employee of HTC America is identified on the power of attorney for HTC Corporation. PO Resp. 12–18; see also, Ex. 2022, 24:20–25:6 (Transcript of conference call with the Board: counsel for Patent Owner “So if we want to talk about evidence specific to these cases, it’s this power of attorney in the 1135 case.”). We are not persuaded that this evidence, by itself, is sufficient to indicate that HTC America is a real party in interest in this case. There is no dispute that the actual signature on the power of attorney is from an employee of HTC Corporation. See PO Resp. 14; Paper 33 (“Reply”) 23. And Petitioner represents that the reference to an HTC America employee on the document was a simple oversight. Reply 23. Patent Owner does not provide evidence to the contrary.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“preamble “is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Catalina Marketing Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (internal quotation marks omitted). Id. A preamble, however, “limits the invention if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim.” For example, “dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.” Id. Both parties agree that, although it is part of the preamble, the term “home network” acts as a limitation of claim 1. PO Resp. 25; Paper 42 (“Tr.”), 5–6 (Petitioner’s counsel: “We think that home network is limiting.”), 12–13 (Petitioner’s counsel: “Since the preamble, we agreed, is limiting . . .”). We agree that the preamble limits the scope of the challenged claims. The body of claim 1 refers to “said first network,” which refers to the “first . . . mobile telephone network[]” recited in the preamble. The preamble further defines “said first network is the home network of the mobile communication device.” We are persuaded that this language “indicates a reliance on both the preamble and claim body to define the claimed invention” and is not merely a statement of intended purpose or intended use. Catalina Marketing, 289 F.3d at 808 (citing Bell Comm’s Research, Inc. v. Vitalink Comm’s Corp., 55 F.3d 615, 620 (Fed. Cir. 1995)).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“Patent Owner proposes a broadest reasonable interpretation of “home network”—“the network that the mobile communication device is preconfigured to access first.” PO Resp. 25. According to Patent Owner, several examples described in the ’804 patent, including those illustrated by Figures 3, 4a, and 4b, support this interpretation by showing a mobile station that is “preconfigured to access [the] home network first.” Id. at 25–27 (citing Ex. 1001, Figs. 3, 4a, 4b, 3:22–29, 3:61–65). Petitioner proposes a competing interpretation for the term—“the network to which the mobile stations subscribe.” Reply 3. Petitioner argues that there is “a clear and unambiguous definition” of the term in the specification. Id. (quoting Ex. 1001, 1:41–42 (“the ‘home’ network (i.e. the network to which the mobile stations subscribe”)). We agree with Petitioner that the broadest reasonable interpretation of “home network” is “the network to which a mobile station subscribes,” as explicitly defined in the specification. Ex. 1001, 1:40–47. Nothing in the ’804 patent indicates that the patentee intended to modify this definition. In particular, the word “preconfigure” in Patent Owner’s proposed construction is never recited in the ’804 patent. We, therefore, are not persuaded that limiting the term “home network” in such a way is proper.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Nothing in Sasuta’s description requires that in choosing a service provider from the catalog of service providers, a provider must be chosen in any particular order. In fact, Sasuta is silent on whether any particular network, such as a home network, has priority and should be chosen first. The Petition relies, primarily, on Figures 3 and 4, and the corresponding descriptions, for support of anticipation by Sasuta. Pet. 31–32, 49 (citing Ex. 1010, 3:44–4:8, 6:1–10). These portions of Sasuta, however, do not describe a home network or any other type of network that is selected first among those networks listed in the catalog. To the contrary, the language corresponding with Figure 3 describes communication unit 1001 choosing service provider 103 for its telephone interconnect service, without any explanation, despite the fact that service provider 101 also includes that service. The language corresponding with Figure 4, similarly, does not shed any light on whether there is a home network that is always chosen first from the catalog of service providers. The only language relating to how a network is chosen in this portion of Sasuta states that “the communication unit uses this service characteristic information by comparing them against corresponding threshold values for these characteristics . . . [i]n this manner, the communication unit can determine whether a particular service provider should be considered for providing a particular service.” Ex. 1010, 5:5–14. Thus, Sasuta does not disclose explicitly the home network preference limitation. Petitioner also has not met its burden to show that the home network preference limitation is disclosed inherently by Sasuta. “To serve as anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). Petitioner acknowledges that its inherency argument was not made until, at the earliest, the Reply brief, and that it did not proffer evidence on the issue. Tr. 14:16–18 (“JUDGE WEINSCHENK: What evidence have you provided us that shows us that [the home network preference limitation is] so well-known that we don’t need it in the reference? MR. THILL: In terms of the record, I don’t know that we made an explicit argument, and that was not part of the testimony of our expert.”); see also Reply 3–4 (asserting that “[a]bsent a [home network] cellular telephone is inoperable” and that it “is inherent in the definition of a working cellular telephone” to have a home network, but providing no citations to supporting evidence for these assertions).” slip op. at 15
Patent outcomesUS 6,377,804 not shown unpatentableClaim construction§ 102 anticipationPatents in suitUS 6,377,804
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.