- Bluecatbio Ma Inc. v. Yantai Ausbio Laboratories Co., Ltd.No claims unpatentablePTAB · Dec 9, 2021 · PGR2020-00051 · APJ Elizabeth M Roesel · PGR · Final written decision
Petitioner failed to prove claims 1, 3–5, 7, 10–12, and 14–20 unpatentable because the Gyro Washer was not shown to drive all or nearly all expelled liquid to the drain.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We find that Patent Owner’s additions are supported by the ’063 Patent. Patent Owner directs us to portions of the Specification that discuss immunoassays, magnetic bead assays, and cellular assays, as well as the need to avoid cross-contamination for these types of reactions. PO Resp. 14; Ex. 1001, 1:24–28, 3:43–45; 3:63–66, 4:25–32, 13:25–50, 15:52– 16:2, 19:41–59. We find that these disclosures support Patent Owner’s contention that a POSA would have been aware of the operational requirements of reaction vessel unit washing devices, methods used to cross-contamination. For these reasons, we apply Petitioner’s definition of a POSA as modified by Patent Owner’s additions. Pet. 16; PO Resp. 15.4” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that its proposed construction stays true to the claim language. PO Sur-reply 5. As just discussed, “the expelled liquid on the inner surface of the housing” refers back to an earlier part of the claim that recites that rotating the rotor (referred to in claim 12 as inner surface of the housing. Ex. 1001, 24:5–8, 25:5–7. Claims 1 and 12 recite “the expelled liquid” without any modifier, such as “at least some.” In our view, Patent Owner’s proposed construction is consistent with the claim language because the antecedent for “the expelled liquid” is the liquid that is expelled from the reaction vessel onto the inner surface of the housing, not merely some portion of that liquid. Nothing in the claim language suggests that “the expelled liquid on the inner surface of the housing” is divisible, with some of the liquid being driven by the wind to the drain and some of the liquid not being driven by the wind to the drain. For example, we see no support in the claim language for Petitioner’s argument that “the first expelled milliliter qualifies as ‘liquid . . . expelled,’ and the second milliliter also qualifies as ‘liquid . . . expelled,’ and so on.” Pet. 20 (citing Ex. 1006 ¶ 65). Although “all or nearly all” is not expressly recited in the claim, neither is “some.” As between these two constructions, “all or nearly all” more closely aligns with the language and structure of claims 1 and 12, including the antecedent for “the expelled liquid on the inner surface of the housing,” which in our view refers to the undivided whole of the liquid.6” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“5. Weighing the Evidence For all of the foregoing reasons, we determine that Petitioner has not shown persuasively that the Gyro Washer generates a wind that drives to the drain “all or nearly all of the liquid expelled from the reaction vessel onto the inner surface of the housing,” as required by our claim construction. More particularly, we find that the photos and observations of the Gyro Washer and microplates after completion of a wash cycle, as discussed in subsection 2 above, show that a substantial amount of the liquid expelled from a microplate onto the inner surface of the housing is not driven by the wind to the drain of the Gyro Washer. We find that this evidence outweighs the other evidence relied upon by Petitioner to show that the wind limitation is met, including the videos and observations of the Gyro Washer in operation, as discussed in subsection 1 above, Petitioner’s droplet experiments, as discussed in subsection 3 above, and Petitioner’s bucket experiments, as discussed in subsection 4 above.” slip op. at 48
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“dependent claim 10, Petitioner contends that it would have been obvious to use an aspiration pump with the Gyro Washer. Pet. 104–105 (relying on evidence that a Gyro Washer was sold with an aspiration pump). For dependent claims 7 and 17, Petitioner contends that it would have been obvious to modify the Gyro Washer so that the rotor is rotated in a second rotational direction. Pet. 105–108, 114. For method claims 12 and 14–17, Petitioner contends that, even in the absence of Mr. Yagi’s demonstrations of the Gyro Washer at the 2009 and 2010 trade shows, the method of using the Gyro Washer would have been obvious in view of the device itself and that the limitations claims 12 and 14–16 are satisfied by the natural, ordinary, and intended use of the Gyro Washer. Pet. 108–114. Petitioner’s contentions do not remedy the deficiencies in Petitioner’s arguments and evidence addressing the wind limitation, as discussed above. Accordingly, we determine that Petitioner has not met its burden to show that claims 7, 10, 12 and 14–17 would have been obvious in view of the Gyro Washer.” slip op. at 51
Patent outcomesUS 10,338,063 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 10,338,063 - PTAB · Nov 22, 2021 · IPR2021-00103 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on claims 1–13 under all asserted grounds and granted Samsung’s unopposed motion to join IPR2021-00103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition 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). If we determine that a party has filed a petition that warrants institution of an inter partes review, we may join that party to another instituted inter partes review. 35 U.S.C. § 315(c). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’276 patent. Thus, we institute an inter partes review. We also join Petitioner as a party to the Applied IPR. At this preliminary stage of the proceeding, we have not made a final determination as to the patentability of any challenged claim or any factual or legal issue underlying the patentability inquiry. Any final determination will be based on the record developed during trial.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“later than one month after the institution date of any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b). As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). In deciding whether to grant a motion for joinder, the Board has considered (1) Petitioner’s explanation why joinder is appropriate, (2) whether any new grounds of unpatentability are asserted in the second petition, (3) what impact, if any, joinder would have on the cost and schedule for the existing proceeding, and (4) whether granting joinder will add to the complexity of briefing and/or discovery. See Consolidated Trial Practice Guide, 76 (Nov. 2019) (https://www.uspto.gov/ TrialPracticeGuideConsolidated) (citing Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).” slip op. at 8
NonePatents in suitUS 7,544,276 - PTAB · Nov 22, 2021 · IPR2021-01090 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on claims 1–13 under all asserted grounds and granted Samsung’s unopposed motion to join IPR2021-00103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the Petition 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). If we determine that a party has filed a petition that warrants institution of an inter partes review, we may join that party to another instituted inter partes review. 35 U.S.C. § 315(c). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’276 patent. Thus, we institute an inter partes review. We also join Petitioner as a party to the Applied IPR.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“later than one month after the institution date of any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b). As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). In deciding whether to grant a motion for joinder, the Board has considered (1) Petitioner’s explanation why joinder is appropriate, (2) whether any new grounds of unpatentability are asserted in the second petition, (3) what impact, if any, joinder would have on the cost and schedule for the existing proceeding, and (4) whether granting joinder will add to the complexity of briefing and/or discovery. See Consolidated Trial Practice Guide, 76 (Nov. 2019) (https://www.uspto.gov/” slip op. at 8
NonePatents in suitUS 7,544,276 - Satco Products, Inc. v. The Regents Of The University Of CaliforniaInstitution deniedPTAB · Nov 10, 2021 · IPR2021-00794 · APJ Steven M Amundson · IPR · Institution
The Board denied institution of inter partes review of claims 1–6 under § 314(a), finding the Fintiv factors overall favored avoiding duplication with the parallel ITC investigation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“IPR2020-00019, Paper 11 at 12. As discussed above, the record shows substantial overlap in the arguments and evidence here and at the ITC. That dependent claims 2–6 “are not currently asserted” at the ITC does not diminish the substantial overlap in the issues for claim 1. Nonetheless, the Petition presents some substantively different issues for dependent claims 2–6 that the ITC will not consider. Hence, on balance factor (4) weighs slightly in favor of institution. See Google, IPR2020- 00968, Paper 10 at 13–15; see also Roku, IPR2021-00263, Paper 11 at 8, 15–16 (finding sufficient overlap in the issues even though a parallel ITC investigation involved fewer than half of the challenged claims).” slip op. at 25
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Regarding the merits, we have evaluated Petitioner’s challenges to claims 1–6. In our view, some challenges satisfy the “reasonable likelihood” threshold standard for instituting trial, and some do not. We would not characterize any challenge as sufficiently strong to override concerns about duplication of effort by the Board and the ITC.” slip op. at 27
Discretionary denialPatents in suitUS 10,593,854 - Satco Products, Inc. v. The Regents Of The University Of CaliforniaInstitution deniedPTAB · Nov 8, 2021 · IPR2021-00661 · APJ Steven M Amundson · IPR · Institution
The Board denied institution of review for claims 1 and 2 under § 314(a), finding the Fintiv factors weighed against review because of the advanced, overlapping ITC investigation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The Fintiv factors “relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Fintiv, IPR2020-00019, Paper 11 at 6. A stay of parallel litigation pending resolution of a Board proceeding “allays concerns about inefficiency and duplication of efforts.” Id. That the E.D.N.Y. case was stayed “at its earliest stage,” however, does not “allay[] concerns about inefficiency and duplication of efforts” in view of the 1220 investigation. Additionally, the E.D.N.Y. case was stayed “pending completion” of the 1220 investigation, not because of any Board proceeding. Ex. 3002, 1. With dates set in the 1220 investigation for the ALJ’s initial determination and the ITC’s final determination, a stay seems highly unlikely, especially with the initial determination date about a week away. Hence, factor (1) weighs against institution. See Fitbit, Inc. v. Koninklijke Philips N.V., IPR2020-00771, Paper 14 at 16–17 (PTAB Oct. 19, 2020).” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“to institute an inter partes review. We may institute an inter partes review only 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) (2018). But we have discretion to deny a petition even when a petitioner satisfies the “reasonable likelihood” threshold standard for instituting trial. See, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). Based on the current record and for the reasons explained below, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not reached
“essentially the same argument about the ’557 patent’s effective filing date for its challenge based on Nakamura-959 and Nakamura-949 as for its invalidity defense based on insufficient written-description support for claim 1. See Pet. 7, 12–21, 37; Ex. 2004, 29–33; Ex. 2005, 245–48; Ex. 2014, 64–65, 70. As we understand the arguments, resolving the ’557 patent’s effective filing date does not require interpreting any part of § 1.57. See Pet. 12–21; Prelim. Resp. 29–31. Instead, the issue turns on whether the ’154 application supports claim 1 according to § 112’s first paragraph. See Pet. 12–21; Prelim. Resp. 29–31. Also, the challenges based on Tanda present a similar issue whether the ’447 provisional supports claim 1 according to § 112’s first paragraph. See Pet. 12–21, 61; Prelim. Resp. 29–31, 36–37. “[T]he test for sufficiency is whether the disclosure of the application relied upon 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). Under the circumstances here, the ITC can apply the test for sufficiency of disclosure to the ’154 application and the ’447 provisional just as well as the Board.” slip op. at 27
§ 112 disclosureDiscretionary denialPatents in suitUS 10,658,557 - SNF S.A. v. Solenis Technologies, L.P.Rehearing deniedPTAB · Nov 4, 2021 · IPR2020-01730 · APJ David Cotta · IPR · Rehearing
The Board denied rehearing and, despite finding a reasonable likelihood of obviousness for claims 12 and 13, denied institution because most challenged claims did not meet the threshold and review would be inefficient.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be found if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › KSR rationalesNot reached
“Petitioner offers to waive its arguments with respect to invalidity grounds 2 and 3 if we institute inter partes review. Id. This offer makes our exercise of discretion a closer call, but even absent grounds 2 and 3, granting institution would require that we institute on all claims. We have determined that, for a sizeable majority of challenged claims, Petitioner has not demonstrated a reasonable likelihood of prevailing. Under the circumstances presented here, we determine it would not be an efficient use of the Board’s time and resources to institute review. See Chevron, Paper 9 at 10–11; Deeper, Paper 7. Accordingly, we exercise discretion under 35 U.S.C. § 324(a) to decline to institute post-grant review.” slip op. at 11
- Other 314aInstitution denied discretionary otherInstitution denied
“reasons discussed herein and in the Decision, Petitioner has failed to demonstrate a reasonable likelihood that it will prevail with respect to challenged claims 1–11 and 14–21. However, based on the preliminary record, Petitioner has demonstrated a reasonable likelihood that claims 12 and 13 would have been obvious over the cited art. Accordingly, this case presents the question whether we should exercise our discretion to deny institution. Our decision as to whether discretionary denial is warranted is guided by Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 (PTAB Nov. 7, 2018) (informative) and Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (informative). Both of these cases explain that “the Board may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a).” Chevron, Paper 9 at 10–11; Deeper, Paper 7 at 42. In Chevron, the panel ultimately exercised discretion to deny institution where “Petitioner demonstrate[d], at most, a reasonable likelihood of prevailing with respect to two dependent claims out of a total of twenty challenged claims.” Chevron, Paper 9 at 12. Similarly, in Deeper, the panel exercised discretion to deny institution where Petitioner demonstrated a reasonable likelihood of prevailing with respect to only two out of twenty three challenged claims. Deeper, Paper 7 at 43.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Mixed
“art – selecting values within the ranges disclosed in the prior art to calculate a ratio – did not support institution because Petitioner never explained how or why it selected any of the specific values it used to calculate the claimed ratio. Dec. 13. We concluded that Petitioner’s second use of the ranges disclosed in the art – optimizing within the disclosed ranges – did not support institution because the prior art did not disclose that the ratio of WAMW to % DADMAC was a result effective variable (id. at 17) and because Petitioner had not shown that independently optimizing WAMW and % DADMAC would lead to copolymer having the claimed ratio (id. at 17–20).” slip op. at 4
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,644,320 - Intel Corporation v. Demaray LLCInstitutedPTAB · Oct 29, 2021 · IPR2021-00103 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on all challenged claims and grounds and granted Intel’s unopposed motion to join IPR2021-00103 as an understudy petitioner.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition 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). If we determine that a party has filed a petition that warrants institution of an inter partes review, we may join that party to another instituted inter partes review. 35 U.S.C. § 315(c). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’276 patent. Thus, we institute an inter partes review. We also join Petitioner as a party to the Applied IPR. At this preliminary stage of the proceeding, we have not made a final determination as to the patentability of any challenged claim or any factual or legal issue underlying the patentability inquiry. Any final determination will be based on the record developed during trial.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“later than one month after the institution date of any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b). As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). In deciding whether to grant a motion for joinder, the Board has considered (1) Petitioner’s explanation why joinder is appropriate, (2) whether any new grounds of unpatentability are asserted in the second petition, (3) what impact, if any, joinder would have on the cost and schedule for the existing proceeding, and (4) whether granting joinder will add to the complexity of briefing and/or discovery. See Consolidated Trial Practice Guide, 76 (Nov. 2019) (https://www.uspto.gov/” slip op. at 8
NonePatents in suitUS 7,544,276 - Satco Products, Inc. v. The Regents Of The University Of CaliforniaAll claims unpatentablePTAB · Oct 19, 2021 · IPR2020-00813 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 1, 2, 8–12, and 18–20 are unpatentable: Okamoto anticipates some claims, and the asserted Okamoto- and Miyahara-based combinations render the claims obvious.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Both parties appear to be in general agreement regarding the level of skill, and neither party contends that any differences between their proposals would have any effect on our analysis of Petitioner’s challenges. Although we encouraged the parties (Institution Dec. 7–8) to address any material differences between the two proposals in post-institution briefing, neither party addressed the issue. See generally PO Resp.; Reply; Sur-Reply. We, therefore, adopt a level of ordinary skill that encompasses a person with a degree in mechanical or electrical engineering or a related field and the equivalent of several years of experience in designing semiconductor LED packages.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“As detailed below, we determine that Patent Owner has not shown that the term “lead frame,” as recited by the challenged claims, requires that any component lead provide support to the LED chip. Instead, we maintain our construction from the Institution Decision that “lead frame” in this context means a support structure for providing an interface to a semiconductor die, where the lead frame structure, as a whole, provides the support to the semiconductor die.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree that Okamoto shows the claimed lead frame, as a whole, providing support to the LED chip as required by claims 1 and 13. As shown in Okamoto’s Figure 1, reproduced above, “lead frame 8 is attached to the wiring pattern 6 drawn around an end of the glass substrate 2 with a solder material 9.” Ex. 1008 ¶ 29. According to Patent Owner, Okamoto’s transparent plate “supports the lead frame,” (PO Resp. 10) and as agreed upon by the parties, the claimed lead frame includes the transparent plate. Okamoto also discloses that the LED chip is on transparent glass substrate 2. Id. ¶ 27 (stating that LED elements “are disposed in a row on a front face of a light-transmissive glass substrate 2.”). Based on this disclosure, we find Okamoto teaches or suggests a lead frame that includes a transparent plate supporting an LED chip.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“In sum, on the complete record, we find that the combination of Okamoto and Shimizu teaches each limitation of claims 1 and 11, and we find that an ordinarily skilled artisan would have had reasons, with rational underpinning, to combine Okamoto and Shimizu.” slip op. at 30
Patent outcomesUS 9,859,464 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,859,464 - A123 Systems, LLC v. Long Hua Technology Co., Ltd.Institution deniedPTAB · Oct 18, 2021 · IPR2021-00894 · APJ Kristina M Kalan · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any of claims 1–19 under the asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute inter partes review, we must determine that the information presented in the Petition 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). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any claim of the ’484 patent. Thus, we decline to institute inter partes review.” slip op. at 2
- BurdenNot shown unpatentable
“Hisamitsu’s outermost layer collectors 105 as corresponding to the claimed positive and negative electrodes.” Prelim. Resp. 35. However, Petitioner does not specifically indicate that the outermost layer collectors 105 correspond to the claimed positive electrode and negative electrode, particularly in its arguments regarding limitations 1.b., 1.c., 1.d., 1.e., 1.g., or 1.i., and we decline to make and analyze that argument on Petitioner’s behalf. If Petitioner intended to choose a single one of Hisamitsu’s bipolar electrodes or sandwiching separators in stack 101 to furnish the anticipating elements, Petitioner has not sufficiently indicated or explained that, either.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b) (2020). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 4
- Skill levelSkill level board ownOther
“ordinary skill in the art “would be a chemist having at least a Bachelor’s degree with at least 5 years of experience in lithium ion battery chemistry.” Pet. 19 (citing Ex. 1013 ¶¶ 13–15). Patent Owner asserts that one of ordinary skill in the art “would be a chemist or other material scientist having a doctoral degree, or at least a Bachelor’s degree with at least 5 years of experience in lithium ion battery development.” Prelim. Resp. 17. Petitioner’s definition and Patent Owner’s definition overlap significantly, and neither party asserts that adopting one definition or other would change the outcome. Considering the two proposals, we regard a fair hybrid definition of a person of ordinary skill in the art to be “a chemist or other material scientist having at least a Bachelor’s degree with at least 5 years of experience in lithium ion battery chemistry and development.” This level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 5
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 7,803,484 - Satco Products, Inc. v. The Regents Of The University Of CaliforniaAll claims unpatentablePTAB · Oct 12, 2021 · IPR2020-00780 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1, 5–7, 9, 13, 14, 18–20, 22, and 26 are unpatentable based on anticipation by Okamoto or Miyahara and obviousness over the asserted combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“construction requiring at least one lead to provide structural support to the LED chip. First, Patent Owner contends that the plain meaning of the term “lead frame” requires that the leads must form “the structural frame supporting the LED chip.” Sur-Reply 4. According to Patent Owner, “[o]n its face, the meaning is clear” that “‘lead frame’ is a frame formed by leads.” Id. We do not find this conclusory statement helpful in determining whether the leads in a lead frame are required to provide structural support to the LED chip. Patent Owner does not identify any evidence, intrinsic or extrinsic, that the plain meaning of the term “lead frame” requires that any leads provide direct or indirect support to the LED chip. In fact, Patent Owner refers to several dictionary definitions of the term “lead frame,” none of which makes any reference to support. PO Resp. 5 (citing Ex. 1023, 4 (“Lead Frame. The metallic portion of a component package that is used to interconnect with semiconductor die by wire bonding and to provide output terminal leads.”); Ex. 1024, 4 (“lead frame— . . . 2. The metal part of a solid-state device package that achieves electrical connection between the die and other parts of the system of which the IC is a component. . . .); Ex. 1026, 3 (“lead frame the metallic portion of the device package that makes electrical connections from the die to other circuitry.”).” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“The fundamental error in Petitioner’s argument on this point, however, is that the claims at issue in this proceeding do not require “a lead frame including a transparent plate,” but instead “a lead frame having a transparent plate therein.” Petitioner must do more than show that Okamoto discloses that “the transparent plate is part of the lead frame,” as argued in the Petition. And, as we pointed out in our Institution Decision, Petitioner concedes that “Okamoto’s lead frame sits on its transparent plate, rather than the transparent plate being in the lead frame.” Institution Dec. 17 (citing Pet. 39; Ex. 1008 ¶¶ 34, 36). During the trial, Petitioner did not engage with this issue or provide any reason for us to diverge from our prior conclusion that, because “the plain language of the claims requires that the lead frame have a transparent plate ‘therein’ . . . [b]y Petitioner’s own admission . . . Okamoto does not anticipate.” Id. In other words, because Petitioner concedes that Okamoto’s transparent plate is not in its lead frame, it cannot meet the requirement of claims 1 and 14 that the lead frame have a transparent plate therein. For this reason, we maintain our prior determination that Okamoto does not disclose a lead frame having a transparent plate therein, and as a result, Petitioner has not shown by a preponderance of the evidence that claims 1 and 14 are anticipated.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Patent Owner also asserts that “Petitioner fails to explain how its proposed modification of wrapping the wiring pattern 6 around the ends of the substrate results in a lower-profile.” PO Resp. 17. According to Patent Owner, “Okamoto already provides the alleged lower-profile benefits of Shimizu, as seen by comparing figure 2 of each reference.” Id. at 18. But Dr. Dupuis supports Petitioner’s contention by stating that a person of ordinary skill in the art would know to use a “chip-type” package instead of a “lead-type” package in applications where a lower profile is needed. Ex. 1003 ¶¶ 129–134 (citing Ex. 1017, 8:31–67; Ex. 1016, Fig. 1, 33–35; Ex. 1022, Figs. 1–3, 6–8, 13, ¶¶ 2–14). Also, Okamoto states that Figure 2 is “a planar view of the light source device of” Figure 1. Ex. 1008 ¶ 43. And Figure 1 of Okamoto, reproduced above, clearly shows protruding lead frame 8. Id. at Fig. 1, ¶ 29. Figure 2 of Okamoto, however, does not show lead frame 8. See id. at Fig. 2. Thus, we do not agree with Patent Owner that Figure 2 of Okamoto shows a package with a lower profile. Instead, the record supports Petitioner’s position that the modified device created using the disclosures of Okamoto and Shimizu has a lower profile (i.e., leads wrapped around substrate 2 as opposed to protruding as shown by Okamoto Figures 1 and 8). See Pet. 42–43; Ex. 1003 ¶¶ 138–142. Patent Owner argues that “Petitioner ignores Dr. Schubert’s explanation that Shimizu was directed towards general illumination, while Okamoto is directed towards a signaling light source” so a person of ordinary skill would not combine the two references. Sur-Reply 16 (citing Ex. 1044, 93:15–96:13). Because we do not see this argument in Patent Owner’s Response, nor do we see anything in Dr. Schubert’s declaration to support such an argument, we do not agree that Petitioner improperly failed to respond to an argument. See PO Resp. 12–21; Ex. 2008 ¶¶ 112–120. Moreover, we find that both Shimizu and Okamoto disclose methods of creating white light using an LED and, therefore, the evidence supports a finding that both references are relevant to a consideration of obviousness. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) (“In order to rely on a reference as a basis for rejection of the applicant’s invention, the reference must either be in the field of the applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned.”). In sum, on the complete record, we find that the combination of Okamoto and Shimizu teaches each limitation of claims 1 and 14, and we find that a skilled artisan would have had reasons, with rational underpinning, to combine Okamoto and Shimizu.” slip op. at 29
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Upon further review, and in light of the arguments in Petitioner’s Reply (Reply 21–24), we conclude that our preliminary determination in the Institution Decision was in error, to the extent that we agreed with Patent Owner’s arguments that claims 13 and 26 require “all layers” of the LED to be transparent. The claims recite “a plurality of III-nitride layers, including an active region that emits light, wherein all of the layers except for the active region are transparent.” Ex. 1001, 21:46–52. The second half of this phrase, which contains the transparency requirement, recites “the layers,” meaning that it relies on an earlier recitation in the claim for antecedent basis of “layers.” This basis is found in the recitation of “a plurality of III-nitride layers.” In other words, the proper interpretation of “all of the layers” in claims 13 and 26 is that the term refers back to the III-nitride layers, not all of the layers of the LED as a whole (such as, for example, a mirror). And the parties agree that the mirror of a conventional LED is not a III-nitride layer. Tr. 18:15–18; 45:4–13. As a result, our preliminary determination that the non-transparent mirror of the APA LEDs prevented a finding of obviousness was incorrect. We agree with Petitioner that the ’916 patent admits that LEDs having transparent III-nitride layers were conventional in the art, and that these are “all of the layers except for the active region” as required in claims 13 and 26. Notably, during the trial Patent Owner did not attempt to defend against Petitioner’s ground for the same reason it raised in the Preliminary Response; instead, Patent Owner now argues that because of the mirror on conventional LEDs, these devices would not meet the claim limitation that “light is extracted effectively through all the layers.” PO Resp. 21. But this reflects a misunderstanding of Petitioner’s ground of unpatentability, which does not rely on the APA for this limitation. Petitioner’s ground is based on the argument that, while Okamoto discloses an LED without a mirror, it does not “specifically describe the layers of its blue LEDs, other than to say that it is a GaN-based LED.” Pet. 61. Petitioner turns to the APA for this missing information regarding the layers that were conventionally used in LEDs; but notably, the Petition does not rely on the APA’s mirror. Id. All Petitioner concludes from the APA is that a person of skill in the art “would reasonably expect the GaN-based LEDs of Okamoto to include multiple layers, which layers would at least include an active layer sandwiched between a p-side layer and an n-side layer.” Id. (citing Ex. 1003 ¶¶ 203– 205; Ex. 1001, 10:20–31). Patent Owner’s argument that the application of the APA’s layers to Okamoto would have brought along the mirror of the APA LED’s is therefore misguided and unpersuasive. In sum, we agree that a person of ordinary skill in the art would have looked to conventional LEDs, such as those admitted to be prior art in the ’916 patent, when determining the layers of Okamoto’s LED. And according to the ’916 patent, these conventional III-nitride layers would have been understood to be transparent to an emission wavelength. As a result, we conclude that claims 13 and 26 would have been obvious over the combined disclosures of Okamoto and Shimizu in light of the APA.” slip op. at 35
Patent outcomesUS 10,217,916 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,217,916
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.