- PTAB · Jul 15, 2024 · IPR2024-00230 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claim 1 under both asserted § 103 grounds, finding a reasonable likelihood that Chang and Chang II, alone or with Chutorash, render the claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.108 (2023). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of the challenged claim of the ’072 patent.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ dispute regarding the level of ordinary skill in the art does not substantively impact our analysis for purposes of institution. Rather, we ordinary skill in the art that Petitioner shows that there is a reasonable likelihood that it would prevail in proving the unpatentability of the challenged claim. At this stage of the proceeding, however, we adopt Patent Owner’s proposed definition for one of ordinary skill in the art. Prelim. Resp. 13. This proposed definition is consistent with the ’072 patent and the asserted prior art, and we apply it in our analysis below. During trial, and in accordance with our Rules, the parties should address what substantive effect, if any, different proposed definitions for the level of ordinary skill in the art have on analyzing what the prior art teaches or in otherwise evaluating unpatentability of the challenged claim.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningDecided for patent owner
“III. CLAIM CONSTRUCTION Because the Petition was filed after November 13, 2018, we apply the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b); 83 Fed. Reg. 51,340, 51,340–41, 51,343 (Oct. 11, 2018). In applying such standard, claim terms generally are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). physically embedded in a vehicle.” See Pet. 27–28. Patent Owner does not disagree with this proposed construction, but argues that we do not need to construe this term, or any other, for purposes of institution. Prelim. Resp. 19. We agree with Patent Owner. Thus, for purposes of our Decision on Institution, we do provide an express construction of any term. See, e.g., 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)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”). And we afford the claim terms their plain and ordinary meaning. A final determination as to claim construction will be made at the close of the proceeding, based on all the arguments and evidence of record.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“dual-role port and a Mux to route the port to the appropriate transmission path. At this stage, we agree with Petitioner and find that it would have been obvious to substitute Chang II’s dual-role port for Chang’s port 50, as well as to include Chang II’s switching. Pet. 42–44, 64–65; Ex. 1013 ¶¶ 184– 185. In particular, we find persuasive Mr. Welch’s testimony that one of ordinary skill in the art would have been motivated to employ dual-role mode ports instead because employing dedicated ports requires having “‘multiple connectors, multiple [application-specific integrated circuit (ASIC)] pins and the like,’ which adds ‘overhead’ and ‘increase[s] the cost[s].’” Ex. 1013 ¶ 177 (quoting Ex. 1025,19 1:36–43) (second and third alterations in original). 19 US 8,683,085 B1, issued Mar. 25, 2014 (Ex. 1025, “Castleberry”). Chang II’s dual-role port for Chang’s port 50 “avoids the inconvenience, hassle, and confusion of consumers having to keep track of (1) what mode their phone is operating in and (2) what mode(s) are supported by individual hub ports.” Id. ¶ 179; Pet. 44. As Mr. Welch testifies, “[w]ith a dual-role port, the user would not have to know what mode the smartphone was operating in, and then switch the smartphone between the appropriate dedicated host or device port.” Ex. 1013 ¶ 179. At this stage, we find that this rationale also provides sufficient motivation for one of ordinary skill in the art to employ a dual-role port in lieu of host port 50. In addition, at this stage, we agree with Petitioner that “in view of a dual-role mode USB port, it would have been obvious to include ‘USB multiplexing switches connected to the USB port, the USB hub, and the USB bridge’ to route the downstream USB product to the appropriate path.” Pet. 62 (emphases omitted). This is consistent with Chang II’s teachings, which require such switching. E.g., 1015 ¶¶ 11, 21. In other words, to realize the benefits of the rationales for using dual-role ports in Chang, one of ordinary skill in the art would have included a switch to route the downstream port to the appropriate path. See Ex. 1013 ¶¶ 184–185. In addition, we agree with Petitioner and find that one of ordinary skill in the art would have had an expectation of success in modifying Chang to include dual-role ports and switching. Pet. 44. As we discuss above, dual-role ports, host/device detection, and multiplexing switches were already well-known.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,176,072 - PTAB · Jul 15, 2024 · IPR2024-00228 · APJ Terrence W Mcmillin · IPR · Institution
Instituted IPR of claims 1–12 and 15–17 because Petitioner showed a reasonable likelihood of prevailing on obviousness over Chang and Chang II.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition, the Preliminary Response, the Reply, and the Sur-reply “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–12 and 15–17 of the ’420 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“degree in electrical engineering or computer science and professional experience related to USB. Compare Pet. 22–23 with Prelim. Resp. 13. And, the parties also agree that a relevant advanced degree or additional education may take the place of at least some work experience may take the place of some formal education. Id. Petitioner contends that a POSITA would have more familiarity with USB related documents and system than contended by Patent Owner. We need not, and do not, resolve this dispute between the parties at this preliminary stage in this proceeding. We invite the parties to further address this issue, if they deem it necessary and appropriate. For purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. It appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, at this point, we consider the arguments and the evidence from the standpoint of such a skilled artisan. If a POSITA was considered to have the additional work experience with USB systems and familiarity with USB standards as proposed by Petitioner and the level of skill was enhanced, our Decision to institute trial would be further supported. However, our Decision to go forward with trial is supported by either of the definitions offered by the parties.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner states in the Petition that no terms need construction for this proceeding. Pet. 23–24. Patent Owner states that, at this time, Patent Owner sees no need to construe any claim language. Prelim. Resp. 18. For purposes of this Decision, we determine that no claim terms require express construction. See, e.g., 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 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Ex. 1003, 2:56–62. We determine that this contention seems reasonable in view of the market demands acknowledged in the Specification. KSR, 550 U.S. at 418 (“Often it will be necessary for a court to look to . . . the effects of demands known to the design community or present in the marketplace . . . to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.”).” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,619,420 - PTAB · Jul 15, 2024 · PGR2024-00011 · APJ Jean R Homere · PGR · Institution
The Board instituted PGR on claims 1–15 and all asserted grounds, finding a reasonable likelihood that at least claim 1 is obvious over Chang, Chang II, and POSITA knowledge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324(a) (2018); 37 C.F.R. § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon considering the evidence and arguments in the Petition (including its supporting testimonial evidence) and the evidence and arguments in the Preliminary Response (including its supporting testimonial evidence), we determine that the information presented shows that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute post-grant review on all” slip op. at 2
- Other 314aDenied
“Petitioner hereby stipulates that, if the PTAB institutes this post-grant review, Petitioner will not pursue invalidity of the Challenged Claims in a parallel district court proceeding on the same grounds or any grounds that could have reasonably been raised before the PTAB in this Petition. Pet. 106. Petitioner cites the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”)3 in support of its contentions. Pet. 106.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“§ 325(d), the Board uses the following two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In applying the two-part framework, we consider several non-exclusive factors, including: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which petitioner relies on the prior art or patent owner distinguishes the prior art; (e) whether petitioner has pointed out sufficiently how the examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph) (“Becton, Dickinson”). Becton, Dickinson factors (a), (b), and (d) relate to whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. Factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a material error by the Office” in its prior consideration of that art or arguments. Id. Only if the same or substantially the same art or arguments were previously presented to the Office do we consider whether the petitioner has demonstrated a material error by the Office. Id. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“At the time of the invention, a POSITA would have had a bachelor’s degree in computer science, electrical engineering, or an equivalent, and two years of professional experience working with computer network protocols such as USB. Lack of work experience can be remedied by additional education, and vice versa. Id. (citations omitted). At this stage, we find Patent Owner’s proposed level of a POSITA to be consistent with the problems and solutions disclosed in the ’643 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (approving the determination of the level of ordinary skill in the art by appeal to the references of record). We nonetheless invite the parties to further address this issue, if they deem it necessary and appropriate. The parties should also specifically explain how different definitions for one of ordinary skill in the art relate to specific arguments and issues of unpatentability or claim construction, to the extent that a dispute remains as to who constitutes a POSITA.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · Graham · NautilusPatents in suitUS 11,681,643 - Apple Inc. v. Immervision, Inc.All claims unpatentablePTAB · Jul 10, 2024 · IPR2023-00471 · APJ John D Hamann · IPR · Final written decision
Claims 2, 4, 27, and 29 are unpatentable as obvious over Baker and Shiota; claims 29 and 30 are unpatentable as obvious over Baker, Shiota, and Fisher.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Decision on Institution, we adopted the definition Petitioner proposes for one having ordinary skill in the art at the time of the invention of the ’990 patent, with the exception of the open-ended phrase “at least.” Dec. on Inst. 10. Namely, we found that one of ordinary skill in the art “would have had . . . a Bachelor’s degree in Physics, Optical Engineering, and/or Electrical Engineering and . . . five years’ experience in developing and designing optical imaging systems and have familiarity with image processing algorithms and optical design software” and that “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Id. (quoting Pet. 15 (citing Ex. 1003 ¶ 24)). Patent Owner does not identify a level of skill in the art that one would have had at the time of the invention of the ’990 patent or identify any shortcoming in Petitioner’s formulation. See PO Resp. 12–13. Because Petitioner’s definition of the level of skill in the art is consistent with the ’990 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“We determine that no claim terms require specific construction to resolve the disputes between the parties. Thus, we afford the language of the challenged claims its plain and ordinary meaning. See, e.g., 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)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“would have been motivated to implement Shiota’s specific image transformation teachings, which include using a correction coefficient computed based on a non-linear image distribution to perform the image transformation, within Baker’s system, which already contemplates transformation of a distorted image captured using Baker’s objective lens.” Pet. 47 (citing Ex. 1003 ¶¶ 116–121, 128–138, 197). Petitioner adds that “[g]iven that (1) Baker and Shiota disclose compensating for or correcting the distortion in an image captured by a fisheye lens . . . , and (2) Shiota provides a well-known technique to implement such a compensation, e.g., by using the non-linear image distribution function of the lens . . . , implementing Baker’s image transformation functionality using Shiota’s described technique of using the non-linear distribution function to perform the image transformation/compensation, would have amounted to the use of a known technique to improve similar devices in the same way, and combining prior art elements according to known methods to yield predictable results—display an image that ‘compensates for distortion or difference in magnification between the central and peripheral areas of the scene caused by the lens.’” Id. at 24–25 (citing Ex. 1003 ¶¶ 133–134; Ex. 1006, 6:5–24, 16:5–9). After reviewing Petitioner’s arguments and evidence, which are not addressed by Patent Owner (see generally PO Resp.), we determine that Petitioner demonstrates by a preponderance of the evidence that the combination of Baker and Shiota teaches this limitation. Moreover, we find that Petitioner has provided sufficient articulated reasoning that one of ordinary skill in the art would have been motivated to combine Baker and Shiota’s teaching in the manner Petitioner does. slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“initial image is “performed by retrieving image points on the obtained image in a coordinate system of center O’ using at least the non-linear distribution function and a size L of the obtained image.” Ex. 1001, Reexam. Cert. 1:66–2:3. We agree with Petitioner and find that the combination of Baker and Shiota teaches this limitation. Pet. 48–55; Pet. Reply 3–6. More specifically, we agree with Petitioner and find that Shiota teaches “image correction by applying a correction coefficient (k2)—which is determined based on a non-linear image distribution function—to the captured image to obtain transformed image points that compensate for the distortion in the captured image.” Pet. 49 (citing Ex. 1012 ¶¶ 22–24, 37–42; Ex. 1003 ¶¶ 116–121). In particular, Shiota teaches that the equation for determining the correction coefficient is k2 = h/r, where h represents the lens image distribution function and r is the distance from the origin of an X, Y, Z coordinate system to the projected point on the image plane. Ex. 1012 ¶¶ 37–42.” slip op. at 24
Patent outcomesUS 6,844,990 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 6,844,990 - Canon U.S.A., Inc. / Canon Inc. v. Slingshot Printing LLCAll claims unpatentablePTAB · May 20, 2024 · IPR2022-01541 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–7, 9, 10, 20–22, and 24 are unpatentable as obvious over Hamafuku, Whitman, and Imanaka, with Cleland added for claim 5.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Upon review of the prior art of record, we determine that no claim terms require 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 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Upon review of the prior art of record, we adopt Petitioner’s definition of a person of ordinary skill in the art as it is consistent with the prior art of record, but note that neither party contends the outcome of this case depends on whether a person of ordinary skill could include an individual with a degree in Materials Science.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“In this case, there was a known desire to increase nozzle pitch in inkjet printheads, Imanaka’s heater and nozzle configuration had been used in the art to achieve this goal, and there is no suggestion that combining the teachings of Hamafuku, Whitman, and Imanaka was beyond the skill of an ordinarily skilled artisan. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1381 (Fed. Cir. 2023). Thus, we credit the testimony of Mr. Curley that one of ordinary skill in the art would have sought to use Imanaka’s heater and nozzle pitch in Hamafuku in order to provide a more compact and higher density printhead. Ex. 1002 ¶¶ 404–05. A conclusion of obviousness requires a reasonable expectation of success. Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1365 (Fed. Cir. 2016). This inquiry asks whether one of ordinary skill in the art would have had a reasonable expectation of combining the references to achieve what is claimed in the patent-at-issue. Id. at 1367. The inquiry does not look to whether unclaimed elements or functions would or would not also be achieved, or whether “one would reasonably expect the prior art reference to operate as those references intended once combined.” Id.” slip op. at 42
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“As noted by Patent Owner, the components of Imanaka are made of silicon-based materials, manufactured using thin film technology. PO Resp. 53–54 (citing Ex. 1008, 6:50–61). We are not persuaded, however, that Imanaka’s preference for silicon-based materials would teach away from, or otherwise discourage, one of ordinary skill in the art from combining Hamafuku, Whitman, and Imanaka. Imanaka does not suggest that failure to use silicon-based materials would result in an inoperable device. Rather, Imanaka states that use of silicon-based materials may “improve the mechanical characteristics” and “reliability” of “the liquid discharge head.” Ex. 1008, 6:50–61. Given the considerable increase in printhead nozzle pitch and print resolution provided by Imanaka’s heater and nozzle pitch configuration, we are not persuaded that a failure to capture the same improvement in mechanical characteristics and reliability from the use of silicon-based materials would prevent one of ordinary skill in the art from implementing Imanaka’s nozzle pitch in Hamafuku and Whitman or counsel against this modification.” slip op. at 41
Patent outcomesUS 7,152,951 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,152,951 - NXP USA, Inc. v. Bell Semiconductor, LLCInstitution deniedPTAB · May 15, 2024 · IPR2024-00142 · APJ John D Hamann · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–16 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 314 (2018) and 37 C.F.R. § 42.4(a). An inter partes review may be instituted if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the papers, we determine that the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that at least one challenged claim is unpatentable. Accordingly, we deny the Petition and do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art at the time of the invention of the ’330 patent “would have had at least the equivalent of a bachelor’s degree in electrical engineering and one to two years of experience in the field of circuit design, particularly the design of circuits operating at high frequencies.” Pet. 4 (citing Ex. 1002 ¶ 29). Patent Owner does not identify a level of skill in the art that one would have had at the time of the invention of the ’330 patent or identify any specific shortcoming in Petitioner’s definition. See Prelim. Resp. 7. For purposes of this Decision on Institution, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 4. This definition is consistent with the ’330 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther
“Petitioner argues that “no express constructions of the claims are necessary to assess whether the prior art reads on the challenged claims.” Pet. 8. However, Petitioner also cites to a Special Master Report and Recommendation on Claim Construction where “node” was construed to mean “a point of connection or intersection in an electrical circuit.” Id. at 9 (quoting Ex. 1015, 29). Patent Owner adopts this construction for purposes of this Decision on Institution. Prelim. Resp. 8. We find that this construction is consistent with the plain and ordinary meaning of the term “node.” We thus apply the construction as such to our analysis below, and we determine that we need not provide an express construction of any other claim term for purposes of this institution decision.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“[claim] limitation is found either expressly or inherently in a single prior art reference.” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 1273 (Fed. Cir. 2017). “A claim limitation is inherent in the prior art if it is necessarily present in the prior art, not merely probably or possibly present.” Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003) (citing Rosco, Inc. v. Mirror Lite, Co., 304 F.3d 1373, 1380 (Fed. Cir. 2002)). Moreover, “[t]o anticipate, the reference must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.” Sanofi-Synthelabo v. Apotex, Inc., 550 F. 3d 1075, 1083 (Fed. Cir. 2008) (internal quotation marks omitted). In other words, it is not enough to be able to find all of the pieces of the claimed invention somewhere in a prior art reference; rather, those elements must be set out in the prior art reference in the same way they are in the claimed invention. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (“Because the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,535,330 - NXP USA, Inc. v. Bell Semiconductor, LLCInstitution deniedPTAB · May 13, 2024 · IPR2024-00167 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood that any challenged claim was unpatentable over the asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Upon consideration of the Petition, the Preliminary Response, and the evidence presented, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of any challenged claim based on any ground asserted in the Petition. IV. ORDER For the reasons given, it is: ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is denied, and no inter partes review is instituted.” slip op. at 22
- BurdenDecided for patent owner
“For all of the foregoing reasons, Petitioner has failed to demonstrate sufficiently that Okabe discloses a semiconductor integrated circuit package with a first layer that includes “a first ground plane enabling electrical connection with low speed electronic circuitry” and a “second ground plane enabling electrical connection with high speed electronic circuitry.” Ex. 1001, 9:25–36.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had a “bachelor’s degree in a field relating to the integrated circuit package manufacturing process like materials science, physics, electrical engineering, or other related subjects, and at least two to three years of experience with fabrication and packaging of integrated circuits.” Pet. 4 (citing Ex. 1002 Preliminary Response. Prelim. Resp. 7. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art.” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner’s arguments are not persuasive. As Patent Owner and Dr. Bernstein point out, Petitioner does not specify the frequencies at which duplexer 45 and VCO 70 operate in Okabe. Prelim. Resp. 20; Ex. 2001 ¶ 79. Nor does Petitioner direct us to any criteria for classifying circuitry as “high speed” or “low speed.” Prelim. Resp. 20; Ex. 2001 ¶ 79. As a result, we are left with only the assertion of what a person of ordinary skill in the art would have understood about duplexer 45 and VCO 70. To support this assertion, Petitioner directs us to statements in Dr. Baker’s declaration that mirror the Petition. Pet. 26–27 (citing Ex. 1002 ¶¶ 71–73). Dr. Baker, however, does not cite to any supporting evidence or provide any technical reasoning to support his statements. Ex. 1002 ¶¶ 71–73. “Thus, 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.” Xerox Corp. v. Bytemark Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential); see also 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.”). Accordingly, Petitioner has failed to demonstrate sufficiently that Okabe discloses a second layer that includes a “third ground plane configured for electrical connection with low speed electronic circuitry” and a “fourth ground plane configured for electrical connection with high speed electronic circuitry.” Ex. 1001, 9:37– 43.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,646,091 - NXP USA, Inc. v. Bell Semiconductor, LLCInstitutedPTAB · May 8, 2024 · IPR2024-00168 · APJ Brian D Range · IPR · Institution
Instituted inter partes review of claims 1–6 and 8 on all petition grounds addressing those claims, based on a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–6 and 8 of the ’245 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in a field relating to the semiconductor manufacturing process, such as materials science, physics, electrical engineering, and/or other related subjects, and at least two to three years of experience with fabrication of integrated circuits.” Pet. 4 (citing Ex. 1002 ¶ 20). Petitioner also contends “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 4–5. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’245 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Claim 1 affirmatively recites, for example, “a plurality of layers under the top layer.” Ex. 1001, 4:13. Claim 1 also affirmatively recites that the “plurality of layers compris[es] a bottom routing layer having signal traces thereon.” Id. at 4:14–15. So, claim 1 requires a bottom routing layer having signal traces. Claim 1 then recites “where[] none of the signal traces of the bottom routing layer are located over ball pads of the ball pad layer which are disposed in an area within two ball pad pitches of the corner of the die.” Id. at 4:17–20. This recitation serves to describe the “signal traces of the bottom routing layer.” The recitation does not affirmatively recite a required location of any ball pads. Likewise, the claim as a whole also does not state that the ball pad layer comprises ball pads disposed within two ball pad pitches of the corner of the die. Rather, the claim recites “said ball pad layer having a plurality of ball pads” without affirmatively indicating where those ball pads must be located within the ball pad layer. Thus, on the present record, we interpret claim 1’s recitation of “none of the signal traces . . . within two ball pad pitches of the corner of the die” as requiring that no signal traces of the bottom routing layer be located over ball pads of the ball pad layer disposed within two ball pad pitches of the corner of the die if any such ball pads exist in this location. We do not interpret claim 1 as affirmatively requiring ball pads disposed within two ball pad pitches of the corner of the die. To the extent Patent Owner maintains arguments regarding this recitation in a Patent Owner Response, we invite the parties to further address this claim construction issue at trial to the extent permitted by our rules.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We have reviewed Petitioner’s contentions for all of the elements of independent claim 1, as well as the supporting evidence. Pet. 45–55. Based on the record before us, we are persuaded that Petitioner’s discussion of the particular structures and methods in Chung and Celeron establishes a reasonable likelihood of prevailing at trial on the issue of whether the combined teachings of Chung and Celeron teach or suggest all of the limitations of independent claim 1. Id. Also, based on the present record, we are persuaded that Petitioner adequately establishes that a person having ordinary skill in the art would have had reason to combine the teachings of Chung and Celeron.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,345,245 - PTAB · Apr 25, 2024 · IPR2023-01411 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds, finding a reasonable likelihood that Johnson renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.108 (2023). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’705 patent.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityOther
“The parties identify themselves as real parties-in-interest. Pet. 1; Paper 4, 2. In addition, Petitioner states that it “is a subsidiary of Hisense Group,” and that “[o]ther privies or real parties in interest include companies within the Hisense Group, including Hisense International (Hong Kong) America Investment Co., Ltd.; Hisense Group Holdings Co., Ltd.; Hisense Visual Technology Co., Ltd.; Hisense International (HK) Co., Ltd.; Hisense International Co., Ltd.; [and] TVS REGZA Corporation.” Pet. 1.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ dispute regarding the level of ordinary skill in the art does not substantively impact our analysis for purposes of institution. Rather, we find in applying either parties’ definition for what comprises the level of ordinary skill in the art that Petitioner shows that there is a reasonable likelihood that it would prevail in proving the unpatentability of the challenged claims. At this stage of the proceeding, however, we adopt Petitioner’s proposed definition of the level of skill for one of ordinary skill in the art. Pet. 8–9. This definition for the level of ordinary skill is consistent with the ’705 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b); 83 Fed. Reg. 51,340, 51,340–41, 51,343 (Oct. 11, 2018). In applying such standard, claim terms generally are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Here, the parties agree that no claim terms require construction. Pet. 9; Prelim. Resp. 4–5. Thus, for purposes of our Decision on Institution, we need not provide an express construction of any claim term. See, e.g., 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)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,872,705 - PTAB · Apr 25, 2024 · IPR2023-01412 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1, 2, 5, 11–13, 16, 17, 47, and 48 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.108 (2023). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’710 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ dispute regarding the level of ordinary skill in the art does not substantively impact our analysis for purposes of institution. Rather, we find in applying either parties’ definition for what comprises the level of ordinary skill in the art that Petitioner shows that there is a reasonable likelihood that it would prevail in proving the unpatentability of the challenged claims. At this stage of the proceeding, however, we adopt Petitioner’s proposed definition of the level of skill for one of ordinary skill in the art. Pet. 10. This definition for the level of ordinary skill is consistent with the ’710 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Here, the parties do not submit any claim terms for construction. Pet. 10; see generally Prelim. Resp. Thus, for purposes of our Decision on Institution, we see no need to provide an express construction of any term. See, e.g., 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)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,330,710
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.