• Nokia Of America Corporation v. TQ Delta, LLCInstitution denied
  PTAB · Sep 7, 2022 · IPR2022-00640 · APJ Jennifer Meyer Chagnon · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that claims 17 or 18 were unpatentable under 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, which provides that an inter partes review may be instituted only upon a showing 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). Applying this standard, and upon consideration of the information presented in the parties’ briefing, as well as the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

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

    “Based on these disclosures, we agree with Patent Owner that the Specification of the ’881 patent clearly distinguishes between methods of compensating for differences in latency and methods of reducing differences in latency. We also agree that the claim is directed to the reducing differences embodiment. See Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010) (“It is not necessary that each claim read on every embodiment.”); see also SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., 983 F.3d 1367, 1379 (Fed. Cir. 2021) (“We have noted that ‘[i]t is often the case that different claims are directed to and cover different disclosed embodiments. The patentee chooses the language and accordingly the scope of his claims.’ Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1383 (Fed. Cir. 2008); see also Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1381 (Fed. Cir. 2018) (same); PSN [Illinois, LLC v. Ivoclar Vivadent, Inc.], 525 F.3d [1159,] 1166” slip op. at 15

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

    “Gray teaches changing the rate at which packets are provided to the links based on the quality of the link. See Ex. 1007, code (57); see also id. at 6:53–59 (“A delay factor associated with each of the plurality of links is determined and communication packets are distributed among the plurality of links based upon the delay factor associated with each of the plurality of links. The communication packets may be distributed to the links by providing communication packets to a link of the plurality of links with the least delay.”). Rather than reducing the difference in latency between the links, Gray teaches compensating for the differences by sending more packets to higher quality links, and less packets to lower quality links. Section II.C.), we agree with Patent Owner that Petitioner has not shown sufficiently that Gray discloses “reducing a difference in latency between the bonded transceivers” as recited in claim 17. For this reason, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 17, or claim 18 which depends therefrom, is anticipated by Gray.” slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable

    “Petitioner’s combination with Cooper, however, does not remedy the deficiencies discussed above with respect to the asserted ground based on Keller-Tuberg alone. See Section II.F. As noted above, Petitioner relies on Cooper’s teaching of a specific delay-reducing algorithm, but continues to rely on Keller-Tuberg for its alleged teaching of “equalizing the difference in latency between the bonded transceivers.” Pet. 53. As Patent Owner argues “dynamically balancing the receive queue lengths to compensate for difference in latency,” as in Petitioner’s combination of Keller-Tuberg and Cooper, “compensates for a difference in configuration latency without doing anything to the actual difference in latency much less ‘utilizing a transmission parameter to reduce a difference in latency.’” Prelim. Resp. 8 compensates for the differences in latency” (emphasis added)). Based on our construction of the “utilizing” term, discussed above (see Section II.C.), we agree with Patent Owner that Petitioner has not shown sufficiently that the combination of Keller-Tuberg and Cooper teaches “reducing a difference in latency between the bonded transceivers” as recited in claim 17. For these reasons, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 17, or claim 18 which depends therefrom, would have been obvious in view of Keller- Tuberg and Cooper.” slip op. at 30

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,453,881
• Commscope, Inc. v. TQ Delta, LLCInstitution denied
  PTAB · Aug 19, 2022 · IPR2022-00352 · APJ Joni Y Chang · IPR · Institution

  The Board denied institution on all challenged claims because time-barred 2Wire was an RPI and was in privity with CommScope under § 315(b).

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied

    “It is undisputed that 2Wire is time-barred under § 315(b) because 2Wire was served with a complaint alleging infringement of the ’835 patent 12 on February 7, 2014, more than one year before December 31, 2021, the filing date of the Petition. Pet. 65; Ex. 1034; Prelim. Resp. 12. CommScope identifies ARRIS Solutions as an RPI to this IPR proceeding and confirms that “2Wire, Inc. was merged into ARRIS Solutions, Inc.” Paper 7, 2. Indeed, 2Wire’s Amended Corporate Disclosure Statement filed in the Delaware case indicates that “the undersigned counsel of record for 2Wire, Inc. certifies that 2Wire, Inc. has been merged to form ARRIS Solutions, Inc.” and that “[t]his name change is the result of a merger . . . that became effective January 1, 2017.” Ex. 2009, 1. Moreover, CommScope acknowledges that 2Wire is “CommScope’s predecessor-in-interest in the District of Delaware,” and that “[o]n April 4, 2019, CommScope Holding Company, Inc.[, an RPI identified by Petitioner,] acquired the successor-ininterest of 2 Wire.” Ex. 2035, 5; Pet. 64. In sum, CommScope identifies ARRIS Solutions as an RPI in this IPR proceeding and 2Wire merged with ARRIS Solutions. As a result, we are persuaded that 2Wire is an RPI in this IPR proceeding. Accordingly, the Petition is time-barred under § 315(b). See Power Integrations, Inc., 926 F.3d at 1310, 1318 (holding that the IPR Petition was time-barred under § 315(b) because time-barred entity Fairchild, which had merged with the petitioner, was an RPI at the time of institution).” slip op. at 12

  • PTAB / AIA Trials › Real party in interest / privityDecided for patent owner

    “on February 7, 2014, more than one year before December 31, 2021, the filing date of the Petition. Pet. 65; Ex. 1034; Prelim. Resp. 12. CommScope identifies ARRIS Solutions as an RPI to this IPR proceeding and confirms that “2Wire, Inc. was merged into ARRIS Solutions, Inc.” Paper 7, 2. Indeed, 2Wire’s Amended Corporate Disclosure Statement filed in the Delaware case indicates that “the undersigned counsel of record for 2Wire, Inc. certifies that 2Wire, Inc. has been merged to form ARRIS Solutions, Inc.” and that “[t]his name change is the result of a merger . . . that became effective January 1, 2017.” Ex. 2009, 1. Moreover, CommScope acknowledges that 2Wire is “CommScope’s predecessor-in-interest in the District of Delaware,” and that “[o]n April 4, 2019, CommScope Holding Company, Inc.[, an RPI identified by Petitioner,] acquired the successor-ininterest of 2 Wire.” Ex. 2035, 5; Pet. 64. In sum, CommScope identifies ARRIS Solutions as an RPI in this IPR proceeding and 2Wire merged with ARRIS Solutions. As a result, we are persuaded that 2Wire is an RPI in this IPR proceeding. Accordingly, the Petition is time-barred under § 315(b). See Power Integrations, Inc., 926 F.3d at 1310, 1318 (holding that the IPR Petition was time-barred under § 315(b) because time-barred entity Fairchild, which had merged with the petitioner, was an RPI at the time of institution).” slip op. at 13

  Discretionary denial
  Patents in suitUS 8,462,835
• Nokia Of America Corporation v. TQ Delta, LLCInstituted
  PTAB · Aug 18, 2022 · IPR2022-00471 · APJ Joni Y Chang · IPR · Institution

  The Board instituted IPR on claims 8–10, 15, 24–26, and 31 over four asserted grounds: anticipation by G.992.1 and obviousness over SC-060, G.992.1 with SC-060, and G.992.1 with Wunsch.

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(b) time barNot time barredRpi dispute resolved for petitionerDecided for petitioner

    “Petitioner “bears the ultimate burden of persuasion to show that its petitions are not time-barred under § 315(b) based on a complaint served on an alleged real party in interest more than a year earlier.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). 3. RPI Analysis” slip op. at 12

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “Office (“USPTO”) issued a Memorandum8 titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation” (“the Memorandum” or “Memo”), which states, among other things, that “to benefit the patent system and the public good, the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memo, 2. The Memorandum explains that “compelling, meritorious challenges will be allowed to proceed at the PTAB even where district court litigation is proceeding in parallel.” Id. at 4. “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. “[W]here the PTAB determines that the information presented at the institution stage 8 Available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf 19 presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Id. at 4−5. “This clarification strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Id. at 5. In addition, “[t]he compelling evidence test affirms the PTAB’s current approach of declining to deny institution under Fintiv where the evidence of record so far in the case would plainly lead to a conclusion that one or more claims are unpatentable.” Id. at 5 n.6 (citing, e.g., Illumina Inc. v. Trs. Of Columbia Univ., IPR2020-00988, Paper 20 (PTAB Dec. 8, 2020) (declining to deny under Fintiv in light of strong evidence on the merits even though four factors weighed in favor of denial and remining factor was neutral)).” slip op. at 19

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

    “agreed[] that a flag signal does not include information indicating when the FIP settings are going to be used.” Prelim. Resp. 8. In its Claim Construction Memorandum Opinion, the District Court in the Delaware case, after considering both parties’ arguments and evidence, rejected Patent Owner’s proposed construction and adopted Defendants’ compromise construction, which does not import the negative limitation advanced by Patent Owner into the claims. Ex. 2027, 7−8; see also Ex. 1024, 2. The District Court in the Delaware case noted that “the patent does not provide lexicography for ‘flag signal,’” and “[Patent Owner] does not argue that a disclaimer supports it[s] construction.” Ex. 2027, 7−8. The ’835 patent discloses that “synchronization can be based on, for example, a synchronization using FEC codeword counters or a flag signal.” Ex. 1001, 11:7−9. The “flag signal” embodiment does not limit a flag signal to “an inverted sync symbol, or sync FLAG, as used in the ADSL2 G.992.3 OLR protocol,” as Patent Owner alleges. The portions of the Specification relied upon by Patent Owner and Dr. Madisetti use permissive language in explaining that “[f]or example, the flag signal could be an inverted sync symbol, or sync FLAG, as used in the ADSL2 G.992.3 OLR protocol.” Ex. 1001, 12:29−31. Moreover, Patent Owner conceded at the Markman hearing in the Delaware case that a flag signal may contain information that indicates when updated FIP settings are to be used, as long as the” slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’835 patent, prior art of record, and supported by the testimony of Dr. Jacobsen, except that we do not accept the qualifier “at least,” which would expand the required amount of experience indefinitely.” slip op. at 28

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,462,835
• TCT Mobile (US) Inc / TCL China Star Optoelectronics Technology Co., Ltd et al. v. Semiconductor Energy Laboratory Co., Ltd.Institution denied
  PTAB · Aug 3, 2022 · IPR2022-00440 · APJ Kevin F Turner · IPR · Institution

  Institution was denied for claims 1–48 because neither Dawson alone nor Dawson with Hayashi showed a reasonable likelihood of obviousness.

  RulingsInstitution decision

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

    “As such, we are persuaded that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to its challenge of independent claim 1 as obvious over Dawson.” slip op. at 16

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

    “Additionally, while Petitioner is correct that Figure 3 of Dawson illustrates a “direct connection” between CS (355) and +VDD (390) (Pet. 40– 41), that aspect of the Figure 3 embodiment was not included in Petitioner’s combined embodiment. Petitioner does not rely on the Figure 3 embodiment to teach or suggest all of the elements of independent claim 1, and Petitioner cannot rely on such a connection, only found in the Figure 3 embodiment, unless Petitioner explains how it would be incorporated in the combined embodiment and why one of ordinary skill in the art would have provided for such a connection. Although the Petition provides a rationale for the creation of the combined embodiment, the Petition does not assert that one of ordinary skill in the art would have been motivated to incorporate the “direct connection” aspect of Figure 3 into the combined embodiment. Similarly, Petitioner also argues that “Figure 6 also shows the second electrode of a capacitor is directly connected to the first line because a POSITA would design the VDD line to be extended to run parallel to data line 220.” Pet. 41 (citing Ex. 1002 ¶ 206). This is unavailing because we have no proffered rationale why such line would be extended, with only a conclusory statement provided in the Petition and Dr. Kanicki’s testimony adding nothing additional. The annotated Figure 6 (Pet. 42), provided by Petitioner in the Petition, provides no support for Petitioner’s assertions as it appears that the red line on that figure would tie the source and drain of TFT P3 (610) together, shorting the TFT and rendering it inoperable. We find it difficult to discern Petitioner’s intent or position from the section of the Petition discussing claim element [1.18], but we nonetheless can determine that it does not appear to be supported by any recognizable evidence.” slip op. at 15

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,208,717
• TCT Mobile (US) Inc. / TCL China Star Optoelectronics Technology Co., Ltd. et al. v. Semiconductor Energy Laboratory Co., Ltd.Institution denied
  PTAB · Jul 21, 2022 · IPR2022-00441 · APJ Jennifer Meyer Chagnon · IPR · Institution

  The Board denied institution on claims 1–3 because Petitioner did not show a reasonable likelihood of proving obviousness over Umezaki and Lo or anticipation of claim 2 by Umezaki.

  RulingsInstitution decision

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

    “onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech. Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner proposes the following definition for the person of ordinary skill in the art: a graduate degree in electrical engineering or computer engineering or a similar discipline, with at least three years of relevant industry or research experience, including experience designing or implementing OLEDs in combination with pixel or/and driving circuits. Pet. 19–20 (citing Ex. 1002 ¶ 26). Patent Owner has not provided an assessment of the level of ordinary skill in the art and does not contest Petitioner’s proposal. See generally Prelim. Resp. For purposes of this Decision, we apply Petitioner’s proposed level of ordinary skill in the art, which is consistent with the ’290 patent and the asserted prior art.” slip op. at 13

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

    “Petitioner proposes constructions for two claim terms: “electrically connected” and “transistor.” See Pet. 15–19. Patent Owner does not propose any claim constructions at this stage of the proceeding. See generally Prelim. Resp. Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We determine that express construction of the terms identified by Petitioner is not necessary for purposes of this Decision.” slip op. at 14

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

    “We recognize that Petitioner cites to Umezaki’s disclosure that “[t]he first to eleventh wirings 121 to 131 can be freely connected as long as a flip-flop operates similarly to FIGS. 1A to 1C.” Ex. 1003 ¶ 204 (cited at, e.g., Pet. 25). We agree with Patent Owner, however, that “[t]his disclosure does not stand for the proposition that any input can be arbitrarily applied to any wiring without regard to their impact on the proper and intended operation of the circuit.” Prelim. Resp. 28; see also Ex. 1003 ¶ 204 (providing as an example that power supply lines 124, 128, 129, 131, and 131 of Fig. 1A are combined to a single power supply line 506 in Fig. 5A). As Patent Owner notes, Umezaki stresses that the flip-flop must operate similarly to that of Figures 1A to 1C. Prelim. Resp. 28 (citing Ex. 1003 ¶ 204). Petitioner does not explain sufficiently how Umezaki’s fourth wiring 504 is a power supply line or why a person of ordinary skill in the art would have been motivated to input a potential to fourth wiring 504 rather than inputting the disclosed clock signal. See Pet. 32 (simply stating that 504 is a power supply line without further explanation). Petitioner also does not demonstrate that the resulting flip-flop would operate similarly to the circuits in Figures 1A to 1C if such a change was made.” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,777,290
• TCT Mobile (US) Inc / TCL China Star Optoelectronics Technology Co., Ltd et al. v. Semiconductor Energy Laboratory Co., Ltd.Institution denied
  PTAB · Jul 19, 2022 · IPR2022-00151 · APJ Nathan A Engels · IPR · Institution

  The Board denied institution because claims 1–6 were supported by the earlier priority application, making Kwon unavailable as prior art, and the petition lacked adequate reasons to combine Kwon and Yamazaki.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “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). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the parties’ arguments and the evidence of record, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute inter partes review.” slip op. at 2

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “[A] patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995). The earlier filed application provides support for the claims of the later application if the earlier application “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Petitioner contends the ’671 application does not include support for the following limitation of claims 1 and 4: “wherein a capacitance is formed in a region overlapping with the channel formation region by arranging the gate electrode, the second insulating film, and the power supply line in this order” (the “capacitance limitations”). Pet. 6. According to Petitioner, support for the capacitance limitations was added for the first time in the ’766 application. Pet. 6. slip op. at 6

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

    “Petitioner has not presented an adequate rationale to combine Kwon and Yamazaki to arrive at the claimed invention. Among other things, Petitioner argues “[a] person of ordinary skill would have been motivated to replace the channel formation region of [Kwon] with the channel formation region of [Yamazaki] to solve the TFT threshold voltage variation issue identified in [Kwon].” Pet. 38 (citing Ex. 1002 ¶ 114). Further, Petitioner asserts that OLED current can be reduced by increasing the channel length of the TFT such that a person of ordinary skill would have been motivated to use a TFT with a larger channel length as taught by Yamazaki. Pet. 36–37. But we agree with Patent Owner that the ’049 patent itself suggests that relationship, not Kwon or Yamazaki, and that Petitioner’s suggested motivation to combine Kwon and Yamazaki is guided by improper hindsight. See Prelim. Resp. 52–53. Petitioner’s reliance on the Kanicki Declaration is misplaced, as Dr. Kanicki’s testimony is conclusory and does not state the basis for that testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We also agree with Patent Owner that Petitioner failed to establish that a person of ordinary skill would have had a reasonable expectation of success in combining the references. Prelim. Resp. 54–59 (citing Samsung Elecs. Co. v. Elm 3DS Innovations, LLC, 925 F.3d 1373 (Fed. Cir. 2019) among other cases). We agree with Patent Owner that the semiconductor technology at issue in this proceeding is complex and that a skilled artisan’s expectation of success should have been explained and supported by evidence. Prelim. Resp. 55; see also Samsung, 925 F.3d at 1382–83 (affirming the Board, which “repeatedly stated that integrated-circuit technology is complex and, as such, looked for specific evidence that a person of ordinary skill in the art would have reasonably expected success in combining [prior art fabrication process and dielectric material]”). Petitioner and Dr. Kanicki are silent as to whether a skilled artisan would have had a reasonable expectation of success and we do not see evidence presented by Petitioner from which we would infer that a skilled artisan would have had that expectation. Accordingly, we determine Petitioner has not presented adequate reasons for combining Kwon and Yamasaki.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightTeaching away not foundDecided for patent owner

    “Petitioner has not presented an adequate rationale to combine Kwon and Yamazaki to arrive at the claimed invention. Among other things, Petitioner argues “[a] person of ordinary skill would have been motivated to replace the channel formation region of [Kwon] with the channel formation region of [Yamazaki] to solve the TFT threshold voltage variation issue identified in [Kwon].” Pet. 38 (citing Ex. 1002 ¶ 114). Further, Petitioner asserts that OLED current can be reduced by increasing the channel length of the TFT such that a person of ordinary skill would have been motivated to use a TFT with a larger channel length as taught by Yamazaki. Pet. 36–37. But we agree with Patent Owner that the ’049 patent itself suggests that relationship, not Kwon or Yamazaki, and that Petitioner’s suggested motivation to combine Kwon and Yamazaki is guided by improper hindsight. See Prelim. Resp. 52–53. Petitioner’s reliance on the Kanicki Declaration is misplaced, as Dr. Kanicki’s testimony is conclusory and does not state the basis for that testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 10

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 10,680,049
• Samsung Electronics Co., Ltd. v. Lynk Labs, Inc.Instituted
  PTAB · Jul 5, 2022 · IPR2022-00149 · APJ Arthur M Peslak · IPR · Institution

  The Board instituted IPR on claims 7–20 and all petitioned grounds, finding a reasonable likelihood that Samsung would show at least one challenged claim unpatentable.

  RulingsInstitution decision

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

    “under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a). A claim is unpatentable under § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective indicia of non-obviousness (i.e., secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 8

  • Parallel petitionsDecided for petitioner

    “D. Parallel Petitions Concurrent with the filing of this Petition, Petitioner also filed a second Petition challenging claims 1–6 and 21–26 of the ’400 patent. IPR2022-00150, Paper 1, 1–2. In both cases, Petitioner filed a Notice Regarding Multiple Petitions. See Paper 3; IPR2022-0150, Paper 3. Petitioner ranks the petitions and requests that we institute both Petitions. Id. at 1–2, 5. Patent Owner filed a Response to Petitioner’s Notice of Multiple Petitions. Paper 13. Patent Owner disputes that we should institute both Petitions. Id. Petitioner ranks this Petition first. Paper 3, 1. We, therefore, have no reason to exercise our discretion under § 314(a) to deny the instant Petition on parallel proceeding grounds. We proceed to analyze the merits of the Petition.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a skilled artisan “would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and two or more years of experience with LED devices and/or related circuit design, or a related field.” Pet. 7 (citing Ex. 1002 ¶¶ 20–21). Petitioner further contends that “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner does not dispute Petitioner’s proposed level of skill. Prelim. Resp. 11. For the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art because it comports with the level of skill reflected in the ’400 patent and the prior art of record.” slip op. at 8

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

    “Petitioner contends that “no special constructions are necessary.” Pet. 8. “Patent Owner interprets all claim terms in accordance with their ordinary and customary meaning.” Prelim. Resp. 10. Upon review of the present record, we determine that no claim terms require express construction for purposes of this Decision. 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 9

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,687,400
• Samsung Electronics Co., Ltd. v. Lynk Labs, Inc.Institution denied
  PTAB · Jul 5, 2022 · IPR2022-00150 · APJ Arthur M Peslak · IPR · Institution

  The Board denied institution under § 314(a), finding that instituting both parallel petitions would impose a substantial and unnecessary burden given the numerous grounds and few litigated claims.

  RulingsInstitution decision

  • Parallel petitionsInstitution denied discretionary otherDenied

    “The Guide indicates that in most cases, “one petition should be sufficient to challenge the claims of a patent” and it “should be rare” for two petitions to be instituted. Guide, 59. But, the Guide also “recognizes that there may be circumstances in which more than one petition may be necessary.” Id. The circumstances identified in the Guide include “when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” Id.” slip op. at 9

  Discretionary denial
  Patents in suitUS 10,687,400
• Samsung Electronics Co., Ltd. v. Lynk Labs, Inc.Instituted
  PTAB · Jun 9, 2022 · IPR2022-00100 · APJ Scott Raevsky · IPR · Institution

  The Board instituted IPR on claims 8–10 and 15–18 on all asserted grounds, finding a reasonable likelihood that the challenged claims would have been obvious.

  RulingsInstitution decision

  • Parallel petitionsDecided for petitioner

    “Typically, “one petition should be sufficient to challenge the claims of a patent,” but “there may be circumstances in which more than one petition may be necessary.” CTPG 59. We agree that the claims challenged by these two petitions differ significantly. For example, as Petitioner notes:” slip op. at 6

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

    “Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a). A claim is unpatentable as obvious if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). We resolve the question of obviousness based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the prior art and the claims; (3) the level of skill in the art; and (4) when in evidence, objective indicia of nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that [a] person of ordinary skill in the art [“POSITA”] . . . would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and two or more years of experience with LED devices and/or related circuit design, or a related field. . . . More education can supplement practical experience and vice versa. Pet. 5–6 (citing Ex. 1002 ¶¶ 20–21). Patent Owner does not dispute Petitioner’s proposed level of skill in the art at this stage. Prelim. Resp. 12. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’583 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 8

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

    “In inter partes review, we construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b) (2021). The parties do not propose any constructions. Pet. 7; Prelim. Resp. 12. Based on our review of the preliminary record, we determine that no terms require construction at this stage. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms that are in controversy, and only to the extent necessary to resolve the controversy.”) (internal quotation omitted).” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,750,583
• Sony Interactive Entertainment LLC v. Intellectual Pixels LimitedNo claims unpatentable
  PTAB · Jun 8, 2022 · IPR2021-00237 · APJ Iftikhar Ahmed · IPR · Final written decision

  Claims 1–12 were not shown unpatentable because the cited combinations did not establish the claimed generation of an updated image; Patent Owner’s motion to exclude was granted in part.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art “would have had at least (1) an undergraduate degree in computer science, electrical engineering, or an equivalent subject, together with two years of post-graduate experience in computer graphics; or equivalent subject, together with one year of postgraduate experience in computer graphics.” Pet. 14 (citing Ex. 1002 ¶ 23). Patent Owner agrees. See PO Resp. 10 (citing Ex. 2009 ¶¶ 24–25). We determine that the parties’ agreed level of ordinary skill is consistent with the ’109 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We adopt that level of ordinary skill in determining the patentability of the Challenged Claims.” slip op. at 9

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Ex. 1033 ¶ 41 (citing Ex. 1002 ¶¶ 71–79) (emphasis added). We do not find Dr. Fuchs’s testimony persuasive because Wiltshire’s disclosure does not support that “updating” or “modifying” the image displayed on the client necessarily requires generating an updated image in response to the updated game state instead of simply selecting a pre-existing image to display, as argued by Patent Owner. See PO Resp. 24–25 (arguing that the claimed steps reflect the invention described in the specification in which the server generates a modified image) (citing Ex. 1001, 8:4–6, Figs. 2B, 2D; Ex. 2009 ¶¶ 40–43); Ex. 2009 ¶ 40 (“The second ‘generating’ step generates an updated image in response to these user input signals (specifically to reflect the new state of the interactive software application updated according to the user input signals).”). As discussed above, the cited portion of Wiltshire merely discloses “possibly modifying the image displayed on screen,”” slip op. at 24

  • ExcludeMotion to exclude, grantedGranted in part

    “Exhibit 1024 is an exhibit to the deposition of Dr. Hart, and Petitioner does not refer to that exhibit in its briefing. Paper 32, 10. Petitioner has no objection to excluding Exhibit 1024 from the record. Id. Accordingly, Patent Owner’s motion to exclude as to Exhibit 1024 is granted. Petitioner relies on Exhibits 1029 and 1030 as well as paragraph 79 of Dr. Fuchs’s declaration in Petitioner’s Reply for demonstrating that a person Wiltshire and Saha. See Pet. Reply 25–27. Under the particular circumstances in this case, we need not assess the merits of Patent Owner’s Motion to Exclude as to these exhibits As discussed above, because we determine that Petitioner has not demonstrated by a preponderance of the evidence that the combination of Wiltshire and Saha teaches the “generating” limitation of independent claims 1 and 8 of the ’109 patent, we do not address Petitioner’s contentions based on the combination of Wiltshire, Saha, and Chen as to dependent claim 2 of the ’109 patent. Accordingly, Patent Owner’s motion to exclude as to Exhibits 1029 and 1030 as well as paragraph 79 of Exhibit 1033 is dismissed as moot.” slip op. at 33

  • BurdenNot shown unpatentable

    “We agree with Patent Owner that Petitioner has failed to show by a preponderance of the evidence that the combination of Wiltshire and Saha teaches “generating at least one updated image at the server in response to updating the state of the interactive software application,” as recited in claim 1. We also agree with Patent Owner that Petitioner has failed to show by a preponderance of the evidence that the combination of Wiltshire and Saha teaches a server configured for “generating at least one updated image at the server in response to updating the state of the interactive software application,” as recited in claim 8. Petitioner relies on Wiltshire’s Figure 2 and Wiltshire’s description of that figure as teaching the “generating” limitation. See Pet. 24–27; Pet. Reply 12–18. Specifically, Petitioner argues that the “determination of whether an image is to be displayed at stage 220 includes deciding whether to ‘update’ the image,” and “stage 220 will ‘display/update [the] image’ in response to updates to the game state.” Pet. 26 (citing Ex. 1004, 8:61–63, Fig. 2) (alteration in original). According to Petitioner, a person of ordinary skill in the art would have understood that “the game program at the server will determine whether to generate an updated image in response to the updated game state.” Id. (citing Ex. 1002 ¶ 76) (emphasis added). For the reasons discussed below, we find that Wiltshire fails to include express disclosure of generating an updated image at the server, as claimed. The parties disagree as to how a person of ordinary skill in the art would have understood Wiltshire’s gaming system to operate, based on the limited disclosure in Wiltshire on this point. We are not persuaded, by a preponderance of the evidence, that an ordinarily skilled artisan would have understood Wiltshire’s system to necessarily operate as Petitioner proposes,” slip op. at 19

  Patent outcomesUS 10,681,109 not shown unpatentable
  Nonecites Phillips · KSR · Graham
  Patents in suitUS 10,681,109

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.