• DISH Network L.L.C. / DISH Technologies L.L.C. v. Digital Broadcasting Solutions, LLCAll claims unpatentable
  PTAB · Dec 9, 2024 · IPR2023-00977 · APJ St John Courtenay III · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Casagrande, Russ, and Miller; the Board did not reach the Dow grounds.

  RulingsFinal written decision

  • Skill levelOther

    “B. Level of Ordinary Skill We consider the asserted grounds of unpatentability in view of the” slip op. at 8

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

    “25), and the doctrine of claim differentiation, support Petitioner’s arguments (Reply 3–4) regarding the “first period of time.” Accordingly, we do not adopt Patent Owner’s proposed construction. We use the plain and ordinary meaning of the term here.” slip op. at 15

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

    “agree, Russ discloses that trick play functionality is restricted for only a specified period of time. See Ex. 1008 ¶¶ 34–35. Accordingly, we find support for Dr. Jeffay’s testimony that, in the view of one of ordinary skill in the art, Casagrande in combination with Russ teaches that after the expiry of the first period of time there is a second period of time in which commercials may be skipped. Ex. 1002 ¶¶ 148–151; see also Pet. 32. Additionally, we agree that Petitioner has demonstrated a rationale to combine Casagrande and Russ with a reasonable expectation of success of the combination, as discussed above in the discussion of limitation 1[a][i].” slip op. at 63

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

  Patent outcomesUS 9,538,122 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,538,122
• Iriusrisk, Inc. v. Threatmodeler Software Inc.All claims unpatentable
  PTAB · Nov 14, 2024 · IPR2023-00821 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1 and 3 are unpatentable as anticipated by Jones; claims 2 and 4–20 are unpatentable as obvious over Jones, Zheng, and Keenan.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, at the time” slip op. at 14

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “9 In arguing that Jones does not disclose a “predefined interrelated group” of threat model components, Patent Owner, in a footnote, alleges that the testimony of Petitioner’s expert, Mr. Hurlbut, is “tainted by bias” arising from his “personal and professional connections” to Petitioner. PO Resp. 27 n.4; see PO Sur-reply 21–22. Patent Owner cites no authority to show that such connections necessarily render expert testimony biased, and identifies no actual testimony of Mr. Hurlbut that it alleges to be driven only by bias. On the other hand, Petitioner submits that Mr. Hurlbut also has personal and professional connections to Patent Owner—it’s a small world. See Pet. Reply 24 (“Mr. Hurlbut personally knows Mr. Agarwal, [Patent Owner’s] CEO and inventor of the ’008 patent.”). In this case, we assess the credibility of both parties’ experts based on the plausibility of and support for their testimony, and weigh such testimony accordingly. See Consolidated Trial Practice Guide (“CTPG”) at 32 (“[T]he credibility of experts often turns less on demeanor and more on the plausibility of their theories.”), 35 (“The Board has broad discretion to assign weight to be accorded expert testimony.”); see also 84 Fed. Reg. 64,280 (Nov. 21, 2019).” slip op. at 37

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

  Patent outcomesUS 10,699,008 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,699,008
• Texas Instruments Incorporated v. Bell Semiconductor, LLCInstituted
  PTAB · Nov 1, 2024 · IPR2024-01010 · APJ Brian D Range · IPR · Institution

  The Board instituted inter partes review of claims 1–6 and 8 on all petition grounds and granted Texas Instruments’ motion to join the NXP IPR as an understudy petitioner.

  RulingsInstitution decision

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

    “Thus, for the same reasons set forth in our institution decision in the NXP IPR, we determine that the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in showing that claims 1–6 and 8 are unpatentable. See NXP Dec. Accordingly, we institute an inter partes review of the same claims on the same grounds as the ones on which we instituted review in the NXP IPR. 35 U.S.C. § 314(a).” slip op. at 5

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “Petitioner agrees that, if joinder is granted, it will have an “understudy role.” Id. at 2–3, 6–8. Petitioner agrees to various restrictions as an understudy. Id. Along these lines, Petitioner will abide by the following conditions so long as NXP is actively participating in this proceeding: (a) TI shall not make any substantive filing and shall be bound by the filings of Petitioner NXP, unless a filing concerns termination and settlement, or issues solely involving TI; (b) TI shall not present any argument or make any presentation at oral argument unless an issue solely involves TI, or when addressing Board-approved motions that do not affect Petitioner NXP or its respective position; (c) TI shall not seek to cross-examine or defend the cross-examination of any witness, unless the topic of cross-examination concerns issues solely involving TI; (d) TI shall not seek discovery from Patent Owner on issues not solely involving TI; (e) TI will not rely on expert testimony beyond that submitted by Petitioner NXP unless Petitioner NXP is terminated from the case. If Petitioner NXP is not terminated from the case, TI agrees to rely entirely on, and be bound by, the expert declarations and depositions in the NXP IPR. Mot. 6–7. In sum, TI “will not assume an active role unless Petitioner NXP ceases to participate in the proceeding.” Mot. 2.13 The conditions above mean that joinder will have no impact on the NXP IPR trial schedule and will not complicate the NXP IPR briefing or discovery. These understudy provisions are consistent with the provisions imposed by, for example, Ecobee Techs. ULC v. EcoFactor, Inc., IPR 2022-01460, IPR2022-00473, Paper 7 (PTAB Jan. 24, 2023) and Apple Inc. v. INVT SPE LLC, IPR2019-00959, Paper 8 (PTAB May 30, 2019).” slip op. at 6

  None
  Patents in suitUS 7,345,245
• Motorola Mobility LLC v. Largan Precision Co., Ltd.Institution denied
  PTAB · Oct 28, 2024 · IPR2024-00688 · APJ Jon M Jurgovan · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 would have been obvious over the asserted grounds.

  RulingsInstitution decision

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

    “We determine, on the record before us, that Petitioner does not have a likelihood of success of showing that the “prolonged” etching process that Petitioner proposes to arrive at the structure of limitation 1.6 to be “unusually simple” nor is “the technology particularly straightforward.” CN182’s etching process uses an alkali (sodium bicarbonate) solution with a concentration from 5% to 35% at a temperature of 35 to 55°C stirred for a period of 3 to 5 hours in an ultrasonic generator with power of 300 to 500 watts. Ex. 1004 ¶¶ 7–12. This is done in CN182 to create a matte structure on the inner surface of the body composed of plastic material (polyethylene terephthalate (PET)) between two antistatic coatings comprised of carbon powder layers. See, e.g., Ex. 1004 ¶¶ 5–6. Petitioner does not indicate how much time beyond CN182’s stated range of 3 to 5 hours would be required for the “prolonged” etching process it proposes to achieve a minimum depth of 2.0 μm relative to the outer carbon powder layer, nor whether a POSITA would have considered the prolonged time to be practically viable. Petitioner also does not explain what the reaction is, what its etch rate is, whether its effect would be diminished or exhausted as reactants are consumed or affected by other substances present, or whether other variables, such as the alkali concentration, temperature, or power and frequency of the ultrasonic generator, would need to be changed and how much over the course of the “prolonged” etching process.” slip op. at 30

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner states as follows: The person of ordinary skill in the art in November 2016 (“POSITA” or “POSA”) would have held a bachelor’s degree in physics, optical sciences, or a closely related field, and approximately three years’ experience in optical system design, including stray light suppression. More education would compensate for less work experience and vice versa. POSITAs understood the fundamentals of stray light suppression. Pet. 35–36 (citing Ex. 1008, 587:18–20, 167, 595:32–33, xiii:24–26; Ex. 1003 ¶¶ 31–37). Petitioner further asserts that various texts in the record reflect the knowledge of a POSITA. Id. at 36 (citing Exs. 1007–1010). Petitioner alleges that a POSITA could be part of a team that includes a lens designer and a stray light specialist. Id. (citing Ex. 1007, 120; Ex. 1003 ¶¶ 33, 36, 38–41). Patent Owner states that Patent Owner “does not dispute Motorola’s articulation of the level of skill in the art in November 2016.” Prelim. Resp. 12–13 (citing Pet. 35–36). For this Decision, we adopt Petitioner’s undisputed proposal for the level of ordinary skill in the art as consistent with the evidence of record, including the ’660 patent and the prior art references on which Petitioner relies. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 9

  • Expert testimonyPetitioner expert discountedOther

    “Patent Owner correctly argues that the evidence does not show that Petitioner’s declarant, Dr. Milster, has expertise in etching of plastic materials such as PET which CN182 discloses for use as the inner substrate layer. Prelim. Resp. 15 (citing Ex. 1003 ¶¶ 31–37). Dr. Milster states that he has “education, knowledge, skills, and experience in the fields of optics and lens design.” Ex. 1003 ¶ 29. This statement does not provide any evidence of expertise in etching plastic materials. Nor does he indicate that he has any expertise in this field in his curriculum vitae. Ex. 1003, Appendix A. Consequently, on this record, Dr. Milster’s testimony on the subject of etching plastic materials is entitled to little or no weight.” slip op. at 33

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

    “Petitioner proposes that the plain and ordinary meaning of the claim terms applies, and does not propose any specific construction for any claim term. Pet. 36. Patent Owner agrees with Petitioner’s statement regarding claim construction, i.e., that the plain and ordinary meaning applies and no express construction is required. Prelim. Resp. 12 (citing Pet. 36–37; Ex. 1003 ¶¶ 82–87). As Petitioner and Patent Owner do not dispute the meaning of any claim term, we decline to expressly construe any claim term, and instead apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b). See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 10

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,997,660
• Iriusrisk, Inc. v. Threatmodeler Software Inc.No claims unpatentable
  PTAB · Oct 2, 2024 · IPR2023-00656 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because Keenan did not disclose the claimed stored threats, and the obviousness combinations did not establish the mapping limitations or a reason to combine.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “construction of “threat,” which we find in the context of the ’366 patent does not encompass “risk.” See supra § III.D.3.a.1 (discussing “‘Threats’ versus ‘Risks’”). We agree with Patent Owner that Petitioner’s premise that “risk” includes “threats” or knowing risk allows for determination of threats is false, and belied by the parties’ experts who do not disagree on this distinction, namely that “risk” is not a “threat,” but rather represents the likelihood of a threat occurring compounded by the impact of such a threat on a given system (discussed above). See Ex. 2002, 24:3–25:5, 31:5–33:2 (Petitioner’s expert, Mr. Hurlbut, agreeing that “Risk = Likelihood x Impact”); Ex. 2009 ¶ 80; PO Sur-reply 9–10. Thus, we find unavailing Petitioner’s attempt to walk backwards from Keenan’s explicit disclosure of “risk” modeling into an anticipatory (explicit) disclosure of stored “threats” that may give rise to such risk. Viewing Keenan in the light agreed upon by the parties’ experts, where “risk” is a product of the “likelihood” of a threat occurring and the “impact” of such a threat on a given system, persuades us that although Keenan discloses “risk,” “types of risk,” and “risk ranking” (see, e.g., Ex. 1004, 16:21–63), Keenan uses such “risk” as a given value without explicitly disclosing any underlying stored threats or use thereof. See Ex. 2009 ¶ 112 (“Keenan does not disclose a system for measuring risk. The risk for objects is determined before the objects are imported into the [Integrated Object Environment]. Keenan does not make that measurement.”). Indeed, in order to “store” “threats” in “one or more databases” as recited in claim 1, such “threats” must be identified (i.e., known) at some level of specificity to the system. Petitioner does not direct us to any persuasive evidence that Keenan explicitly discloses using “threats” or “storing” an identified “threat,” let alone storing such “threat” in a database along with its association with a particular threat model component, and even more so with a threat model component that itself is correlated with a third-party diagram component as recited in claim 1.” slip op. at 32

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’366 patent, the background technical field, the prior art, and Petitioner’s unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Mr. Hurlbut (Ex. 1003 ¶ 33).” slip op. at 10

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

    “43:21–61. Contrary to Petitioner’s arguments (Pet. Reply 3–5), this “subset” feature shows that the “threats” stored in databases in claim 1 represent “potential events” that may or may not occur depending on the composition of a given system undergoing threat modeling—a system may implicate all stored threats, some of them, or even just one of them, leaving the remaining stored threats for use in preparing threat models for other systems. See PO Sur-reply 2–3 (discussing Figure 2 and arguing that “not every threat is necessarily included in the threat model”). We find the claim language itself supports interpreting “threats” as “potential events that, if they occur, can cause adverse effects to a target system.”” slip op. at 19

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

    “Claim 1 recites, in part, “the one or more mapping files correlating the threat model components with [“third party diagram components”].” Ex. 1001, 43:30–35. Generally, from the standpoint of what claim 1 requires, the parties’ views of “mapping file” are in alignment. Claim 1 plainly recites that a “mapping file” (where a “file” in the context of computer systems is data itself) correlates data A with data B, and when construed in the context of the subject claim language, correlates threat model components (i.e., data A) with third party diagram components (i.e., data B). We find that this interpretation of “mapping files” is sufficient to resolve the controversy between the parties. See Nidec Motor, 868 F.3d at 1017.” slip op. at 39

  Patent outcomesUS 10,713,366 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,713,366
• Canon U.S.A., Inc. / Canon Inc. v. Slingshot Printing LLCAll claims unpatentable
  PTAB · Aug 6, 2024 · IPR2023-00312 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 1–17 are unpatentable as obvious: claims 1–3, 5–13, and 15–17 over Benjamin and Giere673; claims 4 and 14 over Benjamin, Giere673, and Parish.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“PHOSITA”) “would have been a person holding a Bachelor’s or Master’s level college degree in Mechanical Engineering, Materials Science, Physics, Electrical Engineering, or a related field, and two years of training or experience in the design of inkjet printheads or semiconductor circuit layout.” Pet. 6 (citing Ex. 1002 ¶¶ 108–110). Although Patent Owner “disagrees that a degree in Materials Science is sufficient,” it “does not dispute [Petitioner’s] characterization of the level of ordinary skill in the art for the purpose of [the] Response.” PO Resp. 34. Patent Owner does not explain its basis for this disagreement, or how the disagreement relates to Petitioner’s proposal, which requires, inter alia, “two years of training or experience in the design of inkjet printheads or semiconductor circuit layout.” Pet. 6; PO Resp. 34. In the Institution Decision, we adopted the assessment offered by Petitioner. Dec. 8. Because Petitioner’s definition of the level of skill in the art is consistent with the ’823 patent and the asserted prior art, we maintain it” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Patent Owner disagrees, and contends “that ‘adjacent’ carries its plain and ordinary meaning throughout the claims.” PO Resp. 34. Patent Owner argues that “Petitioners’ proposed construction of ‘adjacent’ to mean ‘next to and can include’ is not necessary to a proper understanding of the scope and meaning of” the claims, “does not reflect the ordinary meaning of ‘adjacent,’ and is not supported by a proper reading of the claims or specification of the ’823 patent.” Id. at 36. for adjacent (i.e., “next to and can include”) does not reflect the plain and ordinary meaning of adjacent. Rather, we conclude that the term “adjacent” should be afforded its plain and ordinary meaning (e.g., next to) in light of the claim language and intrinsic evidence. As we discuss below, Petitioner’s showing for claims 1 and 11 is consistent with the plain and ordinary meaning of “adjacent.” See Section II.D.3, infra. Based on our review of the complete trial record and the claim construction arguments raised by the parties, we determine that it is not necessary to expressly construe any other claim terms to resolve the parties’ dispute. Realtime Data, 912 F.3d at 1375.” slip op. at 10

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

    “We agree with Petitioner that a PHOSITA would have been motivated to combine the teachings of Benjamin and Giere673 to maintain the substrate at an optimum temperature for producing ink droplets in order to increase the quality of the ink drops, use less energy to fire the heater arrays, and more easily maintain the printhead assembly due to less residue being deposited on the die. Pet. 26; see also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1358 (Fed. Cir. 2006) may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient” are universal motivators to combine/modify prior art.). We also agree with Petitioner that Benjamin and Giere673 address the similar problem of “reduced print quality caused by the printhead operating outside its optimal temperature,” and provide the similar solution of disposing a temperature sense resistor “on the printhead for determining the mean temperature of the printhead and using a controller to maintain the printhead at its optimal temperature by, for example, lengthening and shortening the firing pulses sent to the heater arrays.” Pet. 56 (citing Ex. 1002 ¶ 243). In addition, we agree that Benjamin and Giere673 optimize print quality based upon a temperature value provided by a TSR. Id. at 55–58; Ex. 1002 ¶¶ 242–257. Accordingly, we find that a PHOSITA would have been motivated to make the proffered combination. Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1379 (Fed. Cir. 2023) (“[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”) (citations omitted); KSR, 550 at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 20

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “dispute Petitioner’s evidence that the combination of Benjamin and Giere673 teaches the limitation of claims 1 and 11. See PO Resp. We also reviewed Petitioner’s explanations and supporting evidence as to how Benjamin and Giere673 teaches the other limitations of claims 1 and 11, and we agree with, and adopt as our own, Petitioner’s analysis. Pet. 7–19, 36– 44; Ex. 1002 ¶¶ 112–137, 170–189, 226–227. We also determine that Giere673. Accordingly, we determine that Petitioner establishes by a preponderance of the evidence that independent claims 1 and 11 of the ’823 patent would have been obvious over the combined teachings of Benjamin and Giere673. 4. Analysis of Claims 2, 3, 5–10, 12, 13, and 15–17 Petitioner contends that the combination of Benjamin and Giere673 teaches all of the limitations of claims 2, 3, and 5–10 that depend from claim 1, and claims 12, 13, and 15–17 that depend from claim 11. Pet. 44– 54; Ex. 1002 ¶¶ 190–225, 228–238. Patent Owner does not dispute that the combination of Benjamin and Giere673 teaches the limitations of these claims. See PO Resp. Having reviewed the parties’ arguments and evidence, we are persuaded that Petitioner’s discussion of the particular structures in Benjamin and Giere673, and the explanations in the Petition and the Pond Declaration, shows that the combination of Benjamin and Giere673 teaches all of the limitations of dependent claims 2, 3, 5–10, 12, 13, and 15–17. Accordingly, we determine that Petitioner establishes by a preponderance of the evidence that claims 2, 3, 5–10, 12, 13, and 15–17 of the ’823 patent would have been obvious over the combined teachings of Benjamin and Giere673.” slip op. at 35

  Patent outcomesUS 7,484,823 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,484,823
• Canon U.S.A., Inc. / Canon Inc. v. Slingshot Printing LLCAll claims unpatentable
  PTAB · Jul 31, 2024 · IPR2023-00309 · APJ John D Hamann · IPR · Final written decision

  Claims 1–6 and 8–20 are unpatentable: claims 1–3, 5–6, 8–10, and 13–15 as obvious over Benjamin144 and Benjamin703; claims 4, 11–12, and 16–20 as obvious with Childers.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962–63 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id. In our Decision on Institution, we adopted the definition Petitioner” slip op. at 7

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

    “Turning to the claim language, we agree with Petitioner that “proximity is measured along the trace relative to the bondpad,” and “[n]othing in the claims requires a comparison to other structures, like the heater arrays.” Pet. Reply 6. For example, claim 3 recites “wherein the 8 Deposition Transcript of Steven Dietl (Dec. 19, 2023). bondpad supplies power to the first heater array and the second heater array portions by power traces physically separated proximal to the bondpad.” Ex. 1001, 6:43–46 (emphasis added). In this context, “proximal” relates to the power traces, and where they are separated, relative to the bondpad. Id. In other words, the traces are separated nearer to the bondpad (which is the traces’ proximal end relative to the bondpad) then the end of the traces (which is the traces’ distal end relative to the bondpad). Id. This conclusion is consistent with the definitions for proximal and distal from the dictionary that Patent Owner identifies. In particular, “proximal” is defined as “situated nearer to . . . the point of attachment,” and “distal” is defined as “situated away . . . from the point of attachment.” Ex. 2001, 3; Ex. 1016, 3. Here, the point of attachment is the bondpad. Of note, the dictionary also states that proximal is “[t]he opposite of distal,” which reinforces that the distance comparison for the separation is relative to the ends of the power traces. Ex. 2001, 3. Obviously, there are two ends to the traces with one being proximal to the bondpad and the other distal thereto. And we find that consulting the dictionary definition is appropriate here under our circumstances. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. Cir. 2008) (“[O]ur decisions, including Phillips, do not preclude the use of general dictionary definitions as an aid to claim construction.”) (citation omitted).” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Lastly, we have reviewed the experts’ testimony for this term. And we are persuaded by Dr. Pond’s testimony as we find it consistent with the claim language and the cited dictionary definitions. Ex. 2005,9 16:20–19:23. In contrast, we find Mr. Dietl’s testimony for this term contradicts the claim language and the cited dictionary definitions. See Ex. 2004 ¶¶ 55–57.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Thus, we view the combination of Benjamin144 and Benjamin703 as comprising a single disclosure in view of the incorporation by reference. See, e.g., Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). Or at a minimum, the incorporation by reference provides an explicit motivation for one of ordinary skill in the art to combine the references’ teachings. See Kahn, 441 F.3d at 988; see also Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (“Combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.”). In addition, however, Petitioner argues that “utilizing a bondpad to supply FIRE energy signals to the fire lines 214 like in Benjamin[]703 would have been an obvious combination of prior art elements to yield predictable results.” Pet. 45–46; Ex. 1002 ¶¶ 207–208. We agree with Petitioner’s argument and find that one of ordinary skill in the art would have found it obvious to combine Benjamin144 and Benjamin703 in the manner Petitioner does. In sum, we find that Petitioner shows that the combination of Benjamin144 and Benjamin703 teaches the bondpad limitation and provides sufficiently articulated reasoning with rational underpinning to support combining Benjamin144 and Benjamin703’s teachings.” slip op. at 31

  Patent outcomesUS 7,290,864 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,290,864
• Canon U.S.A., Inc. / Canon Inc. v. Slingshot Printing LLCAll claims unpatentable
  PTAB · Jul 30, 2024 · IPR2023-00313 · APJ John D Hamann · IPR · Final written decision

  Claims 1–15 are unpatentable: claims 1–3, 5–12, 14, and 15 as obvious over Benjamin and Giere673; claims 4 and 13 as obvious over Benjamin, Giere673, and Parish.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner “does not dispute this characterization of the level of ordinary skill in the art . . . , except that [Patent Owner] disagrees that a degree in Materials Science is sufficient.” PO Resp. 31–32 (citing Ex. 2003 ¶¶ 32–34). Patent Owner does not explain its basis for this disagreement, or how the disagreement relates to Petitioner’s proposal, which requires, inter alia, “two years of training or experience.” Id.; Pet. 6. Because Petitioner’s definition of the level of skill in the art is consistent with the ’708 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 › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “We agree with Patent Owner. In particular, we agree that claim 1, for example, recites a region disposed adjacent a pair of heater arrays which is part of a broader region disposed between two adjacent ink vias, and it is the broader region that includes the two heater arrays. Ex. 1001, 8:31–35. We also agree that Petitioner’s proposed construction for adjacent (i.e., “next to and can include”) does not reflect the plain and ordinary meaning of adjacent. Rather, we conclude that the term “adjacent” should be afforded its plain and ordinary meaning (e.g., next to) in light of the claim language and intrinsic evidence. As we discuss below, Petitioner’s showing for claim 1 is consistent with the plain and ordinary meaning of “adjacent.” See infra Section V.C. We determine that no further constructions are needed for us to render our Final Written Decision. 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

  • Expert testimonyPetitioner expert creditedOther

    “We find persuasive Petitioner’s arguments that one of ordinary skill in the art would have been motivated to apply Giere673’s teachings to Benjamin by disposing Giere673’s TSR in a region of Benjamin’s printhead die (e.g., Region 2). Pet. 22; Ex. 1002 ¶ 159. As we discuss above, Benjamin teaches that a TSR is used to sense printhead die temperature. Ex. 1004, 79:60–67; Fig. 25B. And Giere673 teaches locating a single TSR on a substrate in a region (e.g., between heater arrays) to measure the substrate’s mean temperature. See Ex. 1005, Fig. 5 (locating TSR 510 in a region between two columns of resistor heater elements); id. at 4:55–56 (“One or multiple TSRs 510 can be used to provide an approximation of the mean temperature of the substrate.”) (emphasis added). We agree with Petitioner that one of ordinary skill in the art would have been motivated to combine the teachings to optimize the print quality using the temperature value measured by the TSR located on the substrate as taught by Giere673. Pet. 31 (citing Ex. 1002 ¶¶ 181–195 (testifying to functional benefits motivating the combination)). “‘[U]niversal’ motivations known in a particular field to improve technology provide ‘a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023). Optimizing print quality is such a universal motivation. Ex. 1002 ¶¶ 181–182. We also agree with Petitioner and find that Benjamin and Giere673 address a similar problem (i.e., reduced print quality caused by the printhead operating outside its optimal temperature). Pet. 31 (citing Ex. 1002 ¶ 181). In addition, we agree that Benjamin and Giere673 optimize print quality based upon a temperature value provided by a TSR. Id. (citing Ex. 1002 ¶¶ 181–195). Accordingly, we find that one of ordinary skill in the art would have been motivated to make the proffered combination. Intel, 61 F.4th at 1379 ( “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”); KSR, 550 at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 24

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

    “We find persuasive Petitioner’s arguments that one of ordinary skill in the art would have been motivated to apply Giere673’s teachings to Benjamin by disposing Giere673’s TSR in a region of Benjamin’s printhead die (e.g., Region 2). Pet. 22; Ex. 1002 ¶ 159. As we discuss above, Benjamin teaches that a TSR is used to sense printhead die temperature. Ex. 1004, 79:60–67; Fig. 25B. And Giere673 teaches locating a single TSR on a substrate in a region (e.g., between heater arrays) to measure the substrate’s mean temperature. See Ex. 1005, Fig. 5 (locating TSR 510 in a region between two columns of resistor heater elements); id. at 4:55–56 (“One or multiple TSRs 510 can be used to provide an approximation of the mean temperature of the substrate.”) (emphasis added). We agree with Petitioner that one of ordinary skill in the art would have been motivated to combine the teachings to optimize the print quality using the temperature value measured by the TSR located on the substrate as taught by Giere673. Pet. 31 (citing Ex. 1002 ¶¶ 181–195 (testifying to functional benefits motivating the combination)). “‘[U]niversal’ motivations known in a particular field to improve technology provide ‘a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023). Optimizing print quality is such a universal motivation. Ex. 1002 ¶¶ 181–182. We also agree with Petitioner and find that Benjamin and Giere673 address a similar problem (i.e., reduced print quality caused by the printhead operating outside its optimal temperature). Pet. 31 (citing Ex. 1002 ¶ 181). In addition, we agree that Benjamin and Giere673 optimize print quality based upon a temperature value provided by a TSR. Id. (citing Ex. 1002 ¶¶ 181–195). Accordingly, we find that one of ordinary skill in the art would have been motivated to make the proffered combination. Intel, 61 F.4th at 1379 ( “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”); KSR, 550 at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 24

  Patent outcomesUS 7,594,708 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,594,708
• Apple Inc. v. Immervision, Inc.All claims unpatentable
  PTAB · Jul 29, 2024 · IPR2023-00472 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–7 are unpatentable: claims 1 and 3–7 are anticipated by Thibault, and claims 1–7 are obvious over Thibault.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art In our Institution Decision, we adopted Petitioner’s undisputed contention that a POSITA (person of ordinary skill in the art) “would have had at least a Bachelor’s degree in an academic area emphasizing physics, optical engineering, electrical engineering and/or a similar discipline, and at least five years of 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.” Pet. 8 (citing Ex. 1003 ¶ 15). Patent Owner states: “Solely for purposes of this Response, Patent Owner does not object to Petitioner’s definition of a POSA [person of ordinary skill in the art].” PO Resp. 14 (citing Ex. 2001 ¶ 45). Accordingly, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound. The 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) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 12

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

    “To the extent necessary to determine whether the disputed language of limitation 1[e] encompasses both Figure 6 and Figure 7, we agree with Petitioner that the language of limitation 1[e] encompasses both Figure 6 and Figure 7. We determine we need not expressly construe any other claim terms. See Vivid Techs., 200 F.3d at 803.” slip op. at 27

  • Strike new argumentNew argument consideredDecided for petitioner

    “presented a more comprehensive claim construction position in its Petition, we are not persuaded that Petitioner’s “claim construction” positions in this proceeding are improperly responsive or belated. Claim construction can be an evolving issue. We have reviewed Petitioner’s presentation of its arguments at the outset, in the Petition, and we have addressed the Petition’s arguments regarding whether limitation 1[e] is an intended use, above. Regarding the remaining arguments, we note that our rules provide that a “reply may only respond to arguments raised in the corresponding . . . patent owner response.” 37 C.F.R. § 42.23(b). The Board “will permit the petitioner, in its reply brief, to address issues discussed in the institution decision,” but a petitioner “may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability. A party also may submit rebuttal evidence in support of its reply.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 73 (Nov. 2019), available at https://www.uspto.gov/ TrialPracticeGuideConsolidated (citing Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077–78 (Fed. Cir. 2015)). We have reviewed the parties’ post-institution arguments regarding limitation 1[e], and we are not persuaded that the subsequent development of both parties’ positions on the interpretation of this term throughout the course of this proceeding is contrary to our rules. “There is no rule, for example, requiring a petition to describe all possible or reasonable claim constructions and to present invalidity theories under those constructions.” Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374, 1380–81 (Fed. Cir. 2023). The Axonics court further opined that “we have continued to recognize that a petitioner is entitled under the APA to respond to new claim construction arguments made by a patent owner.” Id. at 1382. A recent Federal Circuit case addressing Axonics and a petitioner’s opportunity to respond to a patent owner’s newly presented claim construction argument, which was decided after oral hearing in this case, supports the Axonics approach. Apple v. Omni MedSci, No. 2023-1034, slip op. at 11–12 (Fed. Cir. June 21, 2024). This case summarizes some relevant pre-existing case law in reaching its conclusion that under “both Axonics and earlier precedents, the Board abused its discretion here in refusing to consider [petitioner] Apple’s reply argument.” Id. (citing SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016), rev’d on other grounds sub nom. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018); Hamilton Beach Brands, Inc. v. f’real Foods LLC, 908 F.3d 1328, 1338–39 (Fed. Cir. 2018)).” slip op. at 21

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Thibault but, rather, only that “Thibault renders obvious claim 2.” Pet. 34 (citing Ex. 1003 ¶¶ 127–128). Petitioner argues that Thibault teaches “special optimization” of MTF to “control the image quality in production so that it remains in the specification.” Id. (citing Ex. 1004, 3). Petitioner further argues that “a POSITA would have understood that Thibault’s lens designs were intended to achieve ‘constant image quality across a whole field of view,’” or “that it would have been obvious to achieve such an outcome using known ‘guidelines’ within the industry.” Id. at 35 (citing Ex. 1003 ¶ 128). Petitioner provided no development of an anticipation position with respect to claim 2. Accordingly, although Petitioner’s uncontested position on claim 2 supports a finding of obviousness based on Thibault, because it is reasonable, not persuasively controverted, and supported by testimony, it does not support a finding of anticipation.” slip op. at 50

  Patent outcomesUS 10,795,120 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,795,120
• Microchip Technology Inc. v. Aptiv Technologies AGInstituted
  PTAB · Jul 15, 2024 · IPR2024-00229 · APJ Terrence W Mcmillin · IPR · Institution

  The Board instituted review of claims 1–19 on all asserted grounds, finding a reasonable likelihood that Microchip would prevail on at least one challenged claim.

  RulingsInstitution decision

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

    “II. ANALYSIS We consider the arguments and evidence of the parties to determine whether Petitioner has met the reasonable likelihood standard for institution under 35 U.S.C. § 314(a).” slip op. at 9

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties agree that a POSITA would have a four year or bachelor’s degree in electrical engineering or computer science and professional experience related to USB. Compare Pet. 23–24 with Prelim. Resp. 14. And, the parties also agree that a relevant advanced degree or additional education may take the place of at least some work experience and that 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 systems 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 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” slip op. at 11

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

    “Petitioner states in the Petition that no terms need construction for this proceeding. Pet. 24–25. Patent Owner states that, at this time, Patent Owner sees no need to construe any claim language. Prelim. Resp. 20. 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 foundReasonable expectation foundInstituted

    “Ex. 1005, 2:60–66. 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.”). Petitioner also contends that “modifying Chang to include dual-role ports would further its express goal of ‘easily establishing a connection between a computer and another computer.’” Pet. 35 (citing Ex. 1014 ¶ 3). And, Petitioner relies on the acknowledgement in the ’962 patent that smartphones have become “standalone computing devices.” Id. (citing Ex. 1005, 2:44–50). The Petition states: [A] POSITA would have been motivated to include dual-role port(s) to further Chang’s goal of connecting the upstream computer to the downstream phone acting as a computer. Welch, ¶178. Specifically, dual-role ports would allow consumer products, such as smartphones, that operate as computers (in host mode) to “easily establish[] a connection” (EX1014, [0005]) to the upstream host; the smartphone would plug into the dual-role port and automatically connect to the upstream host (through the bridge) when the smart phone switches to host mode . . . without requiring the user to switch between dedicated host- and device-ports. Welch, ¶¶178-179. Pet. 35–36. According to Petitioner with supporting testimony of its declarant, “[t]his 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. at 36 (citing Ex. 1013 (Welch Decl.) ¶ 179). Here again, we determine that this reasoning provides rational underpinning, supported by evidence, that a skilled artisan would have been motivated to modify the USB hub module of Chang to include dual-role ports as described in Chang II.” slip op. at 32

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,645,962

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.