• Babybjörn AB v. The Ergo Baby Carrier, Inc.Institution denied
  PTAB · Apr 22, 2025 · IPR2025-00111 · APJ Eric C Jeschke · IPR · Institution

  The Board denied institution of IPR on all challenged claims under § 314(a), finding the reasons offered for a second parallel petition unpersuasive.

  RulingsInstitution decision

  • Parallel petitionsInstitution denied discretionary otherDenied

    “petitioner files two or more petitions challenging the same patent, we consider guidance in the Consolidated Trial Practice Guide, which provides that “one petition should be sufficient to challenge the claims of a patent in most situations” and that “multiple petitions by a petitioner are not necessary in the vast majority of cases.” Trial Practice Guide 59 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“TPG”). In such circumstances, a petitioner should provide: (1) a ranking of the petitions in the order in which it wishes the Board to consider the merits, if the Board uses its discretion to institute any of the petitions, and (2) a succinct explanation of the differences between the petitions, why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a). TPG 59–60. The Trial Practice Guide provides that “the Board recognizes that there may be circumstances in which more than one petition may be necessary” and that “two petitions by a petitioner may be needed, although this should be rare.” Id. at 59.” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “We disagree with Petitioner that the still-open outcome of Lynk Labs in any way impacts the availability of Lundh in either the 110 IPR or this proceeding.10 Critically, in Lynk Labs, the Federal Circuit examined the prior art date of a U.S. patent application publication under pre-AIA § 102(e)(1) because the challenged patent in that case had a priority date in February 2004—well before the 2013 effective date of the AIA’s revisions to §§ 102, 103—such that the pre-AIA versions of § 102 determined the” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner

    “We are not persuaded that this assertion supports the argument for a second petition. As argued by Patent Owner, Petitioner’s alleged need is undermined by the distribution of its arguments across the 110 IPR and this proceeding. As discussed above, for the “at least one thigh support adjusters” in the 110 IPR, Petitioner relies on one prior art structure from the first category and two prior art structures from the second category; and for the “at least one thigh support adjusters” in this proceeding, Petitioner relies on two prior art structures from the first category and one prior art structure from the second category. Id. In other words, as stated by Patent Owner, “Petitioner was able to address both its constructions in both of its Petitions.” Resp. 3–411; see also Medacta USA, Inc. v. RSB Spine, LLC, IPR2020-00275, Paper 22 at 10–11 (PTAB May 22, 2020) (denying institution of a second-ranked parallel petition challenging the same claims of the same patent and stating, “Because Petitioner was able to present an alternative challenge contingent upon [the] alternative claim construction” in the first-ranked petition, “we fail to see how uncertainty regarding claim construction justifies two petitions.”). In contrast, in the SolarEdge decision cited by Petitioner, the first-ranked petition presented one approach as to the prior art and the second-ranked petition was permitted because it presented a different approach, such that the two petitions “do not overlap in any meaningful way.” SolarEdge v. SMA Solar Techs., IPR2019-01224, Paper 10 at 10 (PTAB Jan. 23, 2020), cited at Expl. 4. Turning to the discovery issue, we determine that the alleged failure of Patent Owner to answer adequately an interrogatory in the Texas Litigation seeking information on “all corresponding disclosures and written 11 Petitioner highlights the two categories of prior art structures identified across the six grounds in these two proceedings rather than the two different constructions for “at least one thigh support adjuster” proposed. Looking at the distributions of the constructions presented, however, the same reasoning above applies as Petitioner relied on each construction at least twice to address the “one thigh support adjuster” in each proceeding. See 110 Petition 27 (relying on both constructions for Ground 1), 53–57 (relying on only a § 112(f) construction for Ground 2), 86–90 (relying on both constructions for Ground 3); Pet. 29–34 (relying on only a § 112(f) construction for Ground 4), 61–63 (relying on both constructions for Ground 5), 88–90 (relying on both constructions for Ground 6). description support for the ‘at least one thigh support adjuster’ limitation” (Ex. 1029 at 5) does not warrant a second petition here. The challenged patent was clearly available to Petitioner, and Petitioner was—even with Patent Owner’s non-substantive answer to the interrogatory (id. at 6)—able to propose a construction of “at least one thigh support adjuster” under § 112(f). See Pet. 7–12. For these reasons, the two different constructions presented do not warrant a second petition in this proceeding.” slip op. at 12

  Claim construction§ 102 anticipationDiscretionary denial
  Patents in suitUS 11,786,055
• Babybjörn AB v. The Ergo Baby Carrier, Inc.Institution denied
  PTAB · Apr 22, 2025 · IPR2025-00110 · APJ Eric C Jeschke · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted prior art.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus deny institution of inter partes review. See 37 C.F.R. § 42.108(b) (“At any time prior to a decision on institution of inter partes review, the Board may deny all grounds for unpatentability for all of the challenged claims. Denial of all grounds is a Board decision not to institute inter partes review.”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person having ordinary skill in the art “would have had at least a four-year degree in a design-based field, which may include fashion design, industrial design, mechanical engineering, or another technical field, or equivalent experience, and familiarity working with child products and/or adjustable products.” Pet. 6–7 (citing Smith Decl. ¶¶ 32–38). Patent Owner does not address Petitioner’s proposed definition, which appears consistent with the record in this proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. Furthermore, Patent Owner does not argue that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would understand either the challenged patent or the prior art. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 9

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

    “Based on the current record, we need not construe explicitly the term “at least one thigh support adjuster” because doing so would not change the outcome of the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). More particularly, and as discussed below, Petitioner does not show sufficiently how the prior art teaches the structure identified as corresponding to the alleged claimed function. Further, because we deny on the merits (as discussed below), we do not address Patent Owner’s alternative argument that we should deny institution because “Petitioner fails to construe th[is] limitation and otherwise argues for an advisory opinion from the Board on indefiniteness.” Prelim. Resp. 1; see id. at 1–6 (entire argument). 2. “defined by” Limitations 1j and 11l each recite “a first setting, a second setting, and a third setting defined by the adjustable child carrier.” Ex. 1001, 17:38–39 (emphasis added), 19:43–44 (emphasis added). Limitation 6k recites “a first position, a second position, and a third position defined by the adjustable child carrier.” Id. at 18:36–37 (emphasis added). Patent Owner proposes a construction for “defined by” in these limitations. See Prelim. Resp. 12–15. At this stage of the proceeding and based on the current record, we need not construe explicitly “defined by”” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “Public accessibility “has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ . . . .” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). In Hulu, the Precedential Opinion Panel (“POP”) rejected a petitioner’s argument that a reference necessarily meets “the reasonable likelihood standard for institution where the reference bears conventional markers of publication, such as a copyright date, edition identifiers, publication by a commercial publisher, and the assignment of an ISBN number.” Hulu, Paper 29 at 17. The POP stated: “We do not hold that any particular indicia per se is sufficient at the institution stage. Rather, the indicia on the face of a reference, such as printed dates and stamps, are considered as part of the totality of the evidence.” Id. at 17–18 (citing Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1377 (Fed. Cir. 2018)). Here, Petitioner provides no citation, no discussion, and no support for its assertion that the Synergy Manual was “published” in “2007.” See Pet. 2. Instead, we are left to assume that Petitioner relies on the text “© BabyBjörn AB, Stockholm, 2007” at the bottom of page 6 of the Synergy Manual. More to the point, Petitioner does not discuss in the Petition any evidence supporting the implicit position that the Synergy Manual was publicly accessible prior to the critical date of the claimed invention.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 11,786,055
• Innoscience (Zhuhai) Technology Company, Ltd. / Innoscience America, Inc. v. Efficient Power Conversion CorporationAll claims unpatentable
  PTAB · Mar 25, 2025 · IPR2023-01384 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 1–7 are unpatentable as obvious over Yoshida and Saxler; the Board did not reach the alternative grounds.

  RulingsFinal written decision

  • Skill levelOther

    “In light of the record before us, we determine that we do not need to reach a specific finding regarding the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level 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 13

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

    “In the Institution Decision, we declined to adopt Petitioner’s proposed construction of the “side surfaces” limitation and determined that it was not necessary to further construe this term because “[t]he parties do not dispute that the language ‘side surfaces extending horizontally’ encompasses a gate material with sloped side surfaces as depicted in Figure 5 of the ’335 patent.” Inst. Dec. 11–16 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); 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.”)). We invited the parties to address this limitation further during the course of this trial, but neither party provided additional evidence or argument regarding the “side surfaces” limitation. Inst. Dec. 16; see generally PO Resp.; Reply; Sur-reply. Accordingly, we maintain our determination from the Institution Decision that we do not need to construe the “side surfaces” limitation. Inst. Dec. 15– 16.” slip op. at 14

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

    “This evidence, particularly the language in the ’335 patent itself, undermines Patent Owner’s argument that “[t]he process for forming gate ledges using separate masks instead of the self-aligned process disclosed in the ’335 patent cannot produce ledges that are ‘substantially symmetric.’” PO Resp. 39 (emphasis added); see also PO Resp. 42–43 (arguing that a gate structure with ledges having substantially equal widths is “not achievable” without using a single photo-mask process). We have considered the evidence presented by Patent Owner and Dr. Schubert in support of Patent Owner’s arguments. PO Resp. 38–43; Ex. 2005 ¶¶ 49–51. We, however, are unable to discern sufficient evidence supporting a conclusion that using separate masks cannot produce ledges that are substantially symmetric, particularly when the ’335 patent suggests otherwise. See Ex. 1001, 4:60– 63 (referring only to the “possibility of misalignment”). Even if, as Patent Owner and Dr. Schubert contend, misalignment “naturally” occurs when using a two-mask process, that does not foreclose the possibility that the” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “It is well settled that “[a] reference does not teach away . . . if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Furthermore, “teaching that a composition may be optimal or standard does not criticize, discredit, or otherwise discourage” slip op. at 31

  Patent outcomesUS 10,312,335 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,312,335
• Innoscience (Zhuhai) Technology Company, Ltd. / Innoscience America, Inc. v. Efficient Power Conversion CorporationNo claims unpatentable
  PTAB · Mar 18, 2025 · IPR2023-01383 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claims 1–5 were not shown unpatentable because Petitioner did not sufficiently establish a reason to modify the asserted prior art.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We disagree with Petitioner’s argument because it fails to address Dr. Schubert’s academic and other experience with GaN transistors. Dr. Schubert is currently a tenured full professor in the Department of Electrical Computer, and Systems Engineering at Rensselaer Polytechnic Institute and was previously a tenured full professor in the Department of Electrical and Computer Engineering at Boston University. Ex. 2001, 129. Additionally, Dr. Schubert was the director of Boston University’s Semiconductor Devices Research Laboratory. Ex. 2001, 129. Dr. Schubert persuasively explains that his general expertise is in the field of electrical engineering and applied physics, including semiconductors, processing, and devices and his specific expertise is in the field of semiconductor materials (such as GaN), semiconductor devices, semiconductor integrated circuits, ohmic contacts, Schottky contacts, HEMTs, and optoelectronic devices such as light-emitting diodes (LEDs). Ex. 2001 ¶ 11, App’x A pp.129–137. His experience includes “the design, growth, fabrication, and testing of semiconductor devices as well as the employment of these devices in a variety of applications” and he is “familiar with both the design of such transistors [HEMTs] and the manufacturing processes used for FETs. Ex. 2001 ¶ 11, App’x A, pp. 129–137. He is an author or co-author of numerous text books and articles, and co-inventor of numerous patents, including those dealing with HEMT transistors and GaN devices. Ex. 2001 ¶ 13, App’x A, pp. 129–137. Petitioner fails to present any persuasive argument or evidence that Dr. Schubert’s extensive education and experience regarding GaN transistors is insufficient or lacking such that his testimony should be given little weight. Finally, we disagree with Petitioner’s additional argument that that its expert’s testimony (Dr. Shealy) should be given more weight than Patent Owner’s expert’s testimony (Dr. Schubert) because “[u]nlike Dr. Schubert, Dr. Shealy is one of the pioneer scientists in the field of GaN transistors.” Reply 34 (stating that Dr. Shealy’s research lab built the first GaN HEMT device on silicon in 1999 and citing Ex. 2002, 87:19–238). Obviousness is determined through the lens of a “person of ordinary skill in the art,” not through the lens of a person with extraordinary skill or a pioneer in the field. Given Dr. Schubert’s extensive relevant education and experience, Petitioner does not persuasively explain why Dr. Shealy’s testimony on any specific topic, or his testimony in general, should be given more weight than Dr. Schubert’s.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham, , 383 U.S. at 17–18. Petitioner argued that a person of ordinary skill in the art would have had a “at least a four-year degree in electrical engineering, chemical engineering, physics, or material science or a closely related field and at least two years of experience in semiconductor device design or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies. Additional education could substitute for professional experience and vice versa.” Pet. 11 (citing Ex 1003 ¶ 69). Patent Owner did not dispute this proposed definition prior to institution. See generally Prelim. Resp. In our Decision on Institution, we adopted Petitioner’s proposal. After institution, Patent Owner asserted a slightly different definition of a POSITA, namely someone who “would have possessed at least a four-year degree in electrical engineering, physics, material science, or a closely related field, and three years of professional work experience in the epitaxial growth, design, and fabrication of semiconductor electronic devices, including those of GaN.” Resp. 17. Relevant graduate education could substitute for the professional work experience. Id. Upon review of the full record, we see no reason to modify, and we thus maintain, the definition of a POSITA applied in our Decision on Institution. We also determine that our decision would be the same under either of the parties’ proposed definitions.” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached

    “During the proceeding, the parties also dispute the proper construction of “etching away the doped GaN layer, except a portion of the doped GaN layer beneath the gate contact” as recited in step [1e4] and provided briefing on this issue. Papers 35, 36, 37, 38. Because, as explained below, our determination rests upon Petitioner’s failure to show a sufficient reason to modify the asserted art, which is not dependent upon any particular claim construction, we need not, and do not, address these claim construction issues. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 13

  • ExcludeDenied

    “III. PETITIONER’S MOTION TO EXCLUDE EXHIBIT 2008 Petitioner filed a Motion to Exclude (Paper 25, “Mot.”) Exhibit 2008, which is a hearing transcript from the parallel ITC investigation. Mot. 1. Because we do not rely upon Exhibit 2008 in our Decision, we dismiss Petitioner’s motion as moot.” slip op. at 47

  Patent outcomesUS 8,404,508 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,404,508
• Innoscience (Zhuhai) Technology Company, Ltd / Innoscience America, Inc. v. Efficient Power Conversion CorporationAll claims unpatentable
  PTAB · Mar 18, 2025 · IPR2023-01381 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–3 and 7–9 are unpatentable as obvious over Uemoto and Smith; the motion to amend is granted, and proposed substitute claims 13 and 14 are not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In order to determine whether an invention would have been obvious at the time the application was filed, we consider the level of ordinary skill in the pertinent art. Graham, 383 U.S. at 17. 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) (quotation omitted). Petitioner contends a person of ordinary skill in the art “would have possessed at least a four-year degree in electrical engineering, chemical engineering, physics, or material science, or a closely related field, and at least two years of experience in semiconductor device design or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies.” Pet. 5–6. Petitioner contends “[a]dditional education could substitute for professional experience and vice versa.” Id. at 6. Patent Owner contends that a person of ordinary skill in the art would have had “at least a four-year degree in electrical engineering, physics, material science, or a closely related field, and three years of professional work experience in the epitaxial growth, design, and fabrication of semiconductor electronic devices, including those of GaN.” PO Resp. 7 (citing Ex. 2009 ¶ 82). Upon review of the evidence of record and the parties’ arguments, we adopt Petitioner’s definition of the person of ordinary skill in the art as it is consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). We note, however, that the conclusions reached in this Decision would be the same under either proposed definition of the ordinarily skilled artisan. See Ex. 2009 ¶ 83 (Dr. Schubert testifying that his opinions would be the same under either proposed definition); Ex. 1033 ¶ 9 (Dr. Shealy testifying that the differences in proposed definitions of the ordinarily skilled artisan “would not change the outcome of the invalidity analysis in any material manner”); PO Resp. 7; Pet. Reply 1.” slip op. at 9

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

    “compensated GaN layer above the barrier layer, and a gate contact above the compensated GaN layer.” Ex. 1001, 5:12–18. Petitioner contends the term “compensated” indicates that the step of compensating the GaN layer has already occurred, such that the term “compensated GaN layer” should be construed as a “‘[d]oped GaN layer formed with a step to passivate its impurities’ which is a ‘product-by-process’ limitation.”5 Pet. 12–14. And, because compensation with hydrogen was the “critical step” distinguishing the claims from the prior art, and because hydrogenation in as-grown III-nitride materials had been well known for over a decade by 2009, Petitioner contends “compensated” “cannot be interpreted as mere hydrogen presence in as-grown material, a well-known property of doped GaN.” Id. at 15. Patent Owner contends “compensated GaN material” should be construed as “a semiconductor GaN gate material in which one type of impurity (for example, donor) cancels the electrical effects of the other type of impurity (for example, acceptor).” PO Resp. 11 (citing Ex. 2009 ¶ 92) (emphasis added). Patent Owner contends this construction is consistent with the IEEE dictionary, which defines “compensated semiconductor” as 5 Given that product-by-process steps in a device claim are not entitled to patentable weight, Petitioner contends “the prior art only need show a material with passivated impurities to show unpatentability, not the step to achieve it.” Pet. 15–16. “[a] semiconductor in which one type of impurity or imperfection (for example, donor) partially cancels the electric effects of the other type of impurity or imperfection (for example, acceptor).” PO Resp. 14 (quoting Ex. 2004). Patent Owner contends its construction is also consistent with the written description of the ’294 patent, which explains that a compensated GaN material is part of the gate and includes a p-type impurity that imparts an electrical effect (i.e., conductivity), as well as a second impurity, e.g., hydrogen, that partially cancels the electrical effect of the p-type impurity, rendering the layer semi-insulating. Id. at 14–15 (citing Ex. 1001, 3:10–13, 3:43–45). On this record, we construe “compensated GaN layer” as “a GaN layer in which one type of impurity (for example, donor) partially cancels the electric effects of the other type of impurity (for example, acceptor).” This is consistent with the disclosures of the ’294 patent, the IEEE dictionary definition, and the construction ultimately adopted by the ITC. Ex. 2004, 3; Ex. 1049, 16–17 (ITC construing “compensated GaN layer” to mean “a GaN layer in which one type of impurity partially cancels the electrical effects of another type of impurity”); Ex. 1001, 3:43–45 (explaining that the compensated GaN layer of the ’294 patent is formed through the “passivation of a p-type impurity using hydrogen”). For the reasons set forth below, however, we decline to construe “compensated GaN layer” as a product-by-process claim term (as asserted by Petitioner), or to limit the compensated GaN layer to a gate material (as asserted by Patent Owner).” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “There are two exceptions to the general rule that we apply the ordinary and customary meaning of a claim term: (1) when a patentee sets out a definition and acts as his own lexicographer, or (2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution. See Thorner, 669 F.3d at 1365. The standards for lexicography and disclaimer, however, are “exacting.” Id. at 1366. There is no argument that the patentees acted as their own lexicographer to redefine the term “compensated GaN layer.” With respect to disavowal, a “patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Thorner, 669 F.3d at 1366 (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)). As noted by Patent Owner, the title of the ’294 patent is, in part, “Compensated Gate MISFET” and much of the discussion of the ’294 patent is of a compensated GaN layer that is directly below the gate contact and above a barrier layer and operates in conjunction with the gate contact to control the on/off state of the transistor. PO Resp. 12–14. We are presented with insufficient argument or evidence to conclude, however, that these disclosures rise to the level of a disclaimer. For example, although the title of the ’294 patent is directed to a “Compensated Gate MISFET,” claim 1 is more broadly directed to “[a] column III Nitride transistor.” Ex. 1001, 5:12, code (54). Nor are we directed to an expression or statement of manifest exclusion in the ’294 patent that would serve to disclaim any “compensated GaN layer” that is not directly below the gate and/or that does not function in concert with the gate electrode to control the on/off state of the transistor. See Thorner, 669 F.3d at 1366. With respect to the stated goals of the invention, as noted by Patent Owner, one of the primary purposes of the compensated GaN layer of the ’294 patent is to reduce gate leakage and gate capacitance. Ex. 1001, 2:13– 19, 3:18–21 (“[U]sing a compensated semiconductor layer 38 leads to low gate leakage during device operation.”). We cannot use the goals of the invention, however, to rewrite the claims or insert terms that are not present. See Thorner, 669 F.3d at 1366. Moreover, the prior art of record indicates that a compensated GaN layer that is below the gate contact and above a barrier layer, but not part of the active gate structure, may also “decrease the leakage current between the gate and the drain.” Ex. 1006 ¶¶ 44 (“Even when a positive bias of 5 V or higher is applied to the gate electrode, no significant gate-leakage current is observed.”), 61. As such, evidence of record suggests that a person of ordinary skill in the art would have understood that one of the primary goals disclosed in the ’294 patent is achieved regardless of whether the compensated GaN layer is part of the gate, or simply in close vicinity to the gate. In view of the foregoing, we are not persuaded that the written description of the ’294 patent indicates that the “compensated GaN layer” must be part of the gate structure.” slip op. at 17

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “To be probative, Patent Owner must prove there is a nexus between the presented evidence and the merits of the claimed invention. See Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). A rebuttable presumption of nexus applies when the “patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco, 851 F.2d at 1392). “That is, presuming nexus is appropriate ‘when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.’” Id. (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). If the praise is not limited to the features of the claimed invention, the patent owner may still prove nexus “by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. at 1373–74 (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). Patent Owner contends that the compensated gate of the ’294 patent “was a breakthrough invention and resulted in the first commercially viable enhancement-mode GaN transistor.” PO Resp. 60 (citing Ex. 2009 ¶¶ 192– 193, 197; Ex. 2021). Patent Owner further contends that this achievement required the counter-intuitive use of a compensated gate material in the gate structure, and represented “a technological leap that laid the foundation for viable enhancement-mode GaN transistors.” Id. at 61–62. For this achievement, Patent Owner contends the inventor, Dr. Alex Lidow, received the 2015 SEMI Award. Id. at 60 (citing Ex. 2021). Upon review of Patent Owner’s evidence and the parties’ arguments, we find that Patent Owner’s objective indicia evidence is entitled to little, if any, weight. The evidence of praise relied upon by Patent Owner is not clearly linked to the claimed invention or any particular product having each of the claimed features of the ’294 patent. Ex. 2021. For example, the 2015 SEMI award was provided to Dr. Lidow “for commercialization of GaN power devices.” Id. An article explaining the award indicates that “high cost” previously “limited [the] commercial success” of GaN technologies, but Dr. Lidow was able to overcome these issues, “from resolving packaging limitations to establishing a low-cost supply chain,” “through persistence.” Id. This praise is not demonstrably linked to the claimed invention or any particular device, and does not mention the use of a compensated gate, or any other relevant feature recited in the claims. In view of the foregoing, we determine that Patent Owner’s objective evidence of non-obviousness is entitled to little, if any, weight.” slip op. at 20

  Patent outcomesUS 8,350,294 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 8,350,294
• Hesai Technology Co., Ltd. v. Ouster, Inc.All claims unpatentable
  PTAB · Mar 17, 2025 · IPR2023-01456 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1–3, 5–8, and 10–17 are unpatentable as obvious over Imai and Higashi, with Grzesik or Pacala for dependent claims; remaining grounds were not reached.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner asserts that a person of ordinary skill in the art would have had an undergraduate degree in mechanical or electrical engineering or physics, plus 2–3 years of experience in LiDAR design. Pet. 3 (citing Ex. 1003 ¶¶ 72–77). Patent Owner argues that a POSITA would have had an undergraduate degree in mechanical or electrical engineering and two to three years of work experience with electro-optical and electro-mechanical devices or systems, with, at a minimum, at least one year of work experience was with LIDAR designs, where less work experience may be compensated by a higher level of education or vice versa. PO Resp. 4 (citing Ex. 2009 ¶ 60). We agree with and will apply Patent Owner’s statement of the level of ordinary skill in the art. This level of ordinary skill is reflective of the education and experience that would have been required to understand the problems and solutions identified in the ’381 patent and the prior art. Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001).” slip op. at 11

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

    “The term “coincident with” as used in the ’381 patent does not require perfect coincidence. To explain why, we provide an annotated version of Figure 2 of the ’381 patent below. In Figure 2 above, the rays of electromagnetic radiation indicated in red originate from illumination source 111, but they are not coincident with the corresponding aperture’s field of view, and instead they are absorbed or blocked by the aperture layer’s stop region. Ex. 1001, 3:61–4:5. As Figure 2 shows, out of five ray lines emitted by illumination source 111, only three are within its corresponding aperture’s field of view. This conveys an understanding that “coincident with” does not require perfect matching of the discrete spot of radiation from the illumination source and the aperture’s field of view.” slip op. at 14

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

    “We begin with the language of the claims. The claims merely require that the “plurality of pixels are arranged in a second arrangement, proportional to the first arrangement.” Ex. 1001, 17:30–31. There are no other specific requirements about “first arrangement” or the “second arrangement” and no specific requirement about what kind of “proportional[ity]” is required. Thus, the language of the claims does not provide a basis for Patent Owner’s narrow reading, nor does it necessarily preclude it.” slip op. at 19

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

    “Petitioner identifies multiple reasons to make this combination. First, with respect to Higashi’s bandpass filter, Petitioner argues that “a POSITA would have been prompted to implement Imai’s system to include a bandpass filter for the received light (as suggested by Higashi) so as to advantageously pass through only light of the operational wavelength of the corresponding laser emitter and ‘eliminate the effect of background light.’” Id. at 60 (citing Ex. 1011 ¶ 86; Ex. 1003 ¶ 256). Petitioner contends that “the resulting combination would advantageously filter out interfering light sources along the optical path of each of the detector pixels, thereby improving accuracy, improving the signal-to-noise ratio, and reducing the likelihood of false detections at the detector pixel.” Id. at 61. Second, Petitioner argues that “a POSITA would have been motivated to arrange multiple SPADs in each of Imai’s detector pixels (e.g., pixels 1- 16 in Imai’s FIG. 11) so that “erroneous detection of pixels[] can be reduced” and improved accuracy is achieved.” Id. (citing Ex. 1011 ¶ 71–72; Ex. 1003 ¶ 257; Ex. 1009 ¶ 48). Third, Petitioner contends that using Higashi’s multi-SPADs in Imai’s detector pixels would have led to uninterrupted performance when an individual diode is quenched, and would have furthered Imai’s objective of “inhibiting the increase of detection obtaining time” because multi-SPADs facilitate high speed data processing as they can take turns to receive the incoming photons. Id. (Ex. 1009 ¶¶ 6–7; Ex. 1011 ¶¶ 71, 72; Ex. 1027 ¶¶ 3– 4; Ex. 1003 ¶ 258). Fourth, Petitioner asserts that the combination “was simply the” slip op. at 45

  Patent outcomesUS 11,178,381 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,178,381
• Hesai Technology Co., Ltd. v. Ouster, Inc.All claims unpatentable
  PTAB · Mar 13, 2025 · IPR2023-01421 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 21 and 23–34 are unpatentable as obvious over Pacala and Droz, or Pacala, Droz, and Villenueve; the Board did not reach the Hall-based grounds.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
  • Skill levelSkill level patent owner adoptedDecided for patent owner
  • Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for patent owner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

  Patent outcomesUS 11,175,405 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,175,405
• Hesai Technology Co., Ltd. v. Ouster, Inc.All claims unpatentable
  PTAB · Mar 13, 2025 · IPR2023-01457 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 44–48 and 50 are unpatentable as obvious over Imai, Higashi, and Grzesik; the Board did not reach the other grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art The person of ordinary skill in the art is a hypothetical person who is presumed to know the relevant prior art. 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 (Fed. Cir. 1986)). In determining the skill level, the Board may consider various factors including the “type of problems encountered in the prior 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.” Id. “In a given case, every factor may not be present, and one or more factors may predominate.” Id.” slip op. at 8

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

    “In relation to Grounds 1A to 1D, Petitioner and Patent Owner dispute whether the claimed “stop region” can encompass a partially transparent material as disclosed by Retterath. PO Resp. 21; Pet. Reply 7–8; PO Sur-Reply 10. Because we do not reach Grounds 1A to 1D in this decision (see § III.D, infra), we need not and do not decide whether a “stop region” may include a partially transparent material. See Realtime, 912 F.3d at 1375, supra.” slip op. at 10

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

    “The term “coincident with” as used in the ’750 patent does not require perfect coincidence. To explain why, we provide an annotated version of Figure 2 of the ’750 patent below. In Figure 2 above, the rays of electromagnetic radiation indicated in red originate from illumination source 111, but they are not coincident with the corresponding aperture’s field of view, and instead they are absorbed or blocked by the aperture layer’s stop region. Ex. 1001, 3:51–63. As Figure 2 shows, out of five ray lines emitted by illumination source 111, only three are within its corresponding aperture’s field of view. This conveys an understanding that “coincident with” does not require perfect matching of the discrete spot of radiation from the illumination source and the aperture’s field of view.” slip op. at 13

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

    “Petitioner contends that multiple reasons would have prompted a POSITA to combine Grzesik’s cross talk absorption layer (corresponding to the claimed “aperture layer”) in the Imai-Higashi combination. Pet. 51–53. First, Petitioner contends that implementing Grzesik’s absorption layer in the Imai-Higashi combination would reduce cross talk consistent with Imai’s objective of improving resolution by allowing for more pixels to be used in a specified detection area. Id. at 51–52 (citing Ex. 1012, 4:65–5:6, 5:11–32; Ex. 1009 ¶¶ 6–7; Ex. 1003 ¶¶ 212–213). Second, Petitioner asserts that the combination would have been prompted as “the application of known techniques (Grzesik’s suggested improvement for a cross talk absorption layer to reduce secondary detection) to a known system (the primary Imai LiDAR system) ready for improvement to yield predictable results (benefits articulated above).” Id. at 52 (citing KSR, 550 U.S. at 417). Petitioner asserts that “a POSITA would have had a reasonable expectation of success at adapting Grzesik’s cross talk absorption layer to the scanning laser radar of the Imai-Higashi combination.” Pet. 52 (citing Ex. 1003 ¶ 214). Specifically, Petitioner contends that “Grzesik demonstrates the known benefits of implementing a cross talk absorption layer disposed on the detector array, with apertures of the cross talk absorption layer aligned with individual detectors, and describes using its cross talk absorption layer on Geiger-mode APDs (e.g., SPADs) as used by the Imai-Higashi combination.” Id. at 52–53 (citing Ex. 1003 ¶ 214). Patent Owner does not dispute Petitioner’s contentions concerning the motivation to combine Imai, Higashi, and Grzesik, or the reasonable expectation of success a POSITA would have had in making the combination. Petitioner shows by a preponderance of the evidence that a POSITA would have been motivated to combine Imai, Higashi, and Grzesik with a reasonable expectation of success.” slip op. at 39

  Patent outcomesUS 11,190,750 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,190,750
• Hesai Technology Co., Ltd. v. Ouster, Inc.No claims unpatentable
  PTAB · Mar 13, 2025 · IPR2023-01422 · APJ Jon M Jurgovan · IPR · Final written decision

  The Board held claims 1–2, 4–9, 11–14, 16–17, and 19–25 not shown unpatentable over the asserted obviousness grounds, principally because the combinations lacked claimed limitations.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Considering the applicable factors in light of the parties’ contentions, we adopt the following level of ordinary skill in the art, which we apply in this Decision: A person of ordinary skill in the art would have had an undergraduate degree in mechanical or electrical engineering and two to three years of work experience with electro-optical and electro-mechanical devices or systems, relevant to light ranging systems. Less work experience would have been compensated by a higher level of education or vice versa. The work experience would have included at least one year relevant to light ranging systems including LIDAR with a rotor-stator structure. We determine that this level of skill is consistent with the problems and solutions identified in the ’515 patent and the prior art. See, e.g., Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001); Ex. 1001, 1:30–3:48; Ex. 1004 ¶¶ 3–10; Ex. 1005, 1:1–2:31; Ex. 1006, 1:1–2:60; Ex. 1007, 1. We also determine that the proposed level of skill is reflective of the education and experience a person of ordinary skill would have had. Ex. 1003 ¶¶ 39–41; Ex. 2004 ¶¶ 67–68.” slip op. at 19

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

    “We determine that the claimed “stator circuit board” and “stator assembly” are separate and distinct elements in claims 1 and 14 because they are set forth as separate elements in these claims. See Ex. 1001, 48:27–29, 48:37–42, 50:8–10. Similarly, claim 22 recites “a stator circuit board assembly” that includes as subcomponents “a first circuit board,” “a second circuit board,” and a “stator assembly” which are separate and distinct subelements. Id. at 51:49–59. “Where a claim lists elements separately, ‘the clear implication of the claim language is that those elements are ‘distinct component[s]’ of the invention.” Becton, Dickinson and Co. v. Tyco Healthcare Gr., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (citing Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404–05 (Fed. Cir. 1996)). This construction is confirmed by the ’515 patent’s specification. For example, the specification states that stator assembly 644 is affixed to circuit board 622, and, consistent with this statement, Figures 6A and 6D show them as separate elements joined together. Ex. 1001, 28:28–31, 30:16–24. Contrary to Petitioner’s contention, the specification’s stating that the stator elements are “built onto” or “integrated on” circuit boards (or assemblies containing them) does not mean that the stator assembly and circuit board are the same thing. Pet. Reply 1 (citing Ex. 1001, 4:19–22, 4:28–31). Rather, the specification describes the stator elements as part of the stator assembly which is coupled to a circuit board, as follows: VII. Integrated Electric Motor According to certain embodiments, an electric rotary motor can be integrated directly onto the circuit boards. The motor can have a "pancake" or "axial" design having a planar rotor assembly on a rotor board that opposes a planar stator assembly on an opposing stator board. The stator and rotor assemblies of the electric motor can be integrated onto the boards of the rotary actuator 608, i.e., the elements of the electric motor are one of many components on the surface of the printed circuit boards and thus a separate motor module is not required for LIDAR system 600. For example, referring back to FIG. 6D, stator assembly 644 can include an annular arrangement of multiple stator elements 644(i), e.g., vertically oriented solenoids (having their longitudinal axes perpendicular to the surface of the board) that are affixed (e.g., using an adhesive) to a board of the lower circuit board assembly 620 (e.g., board 622) or to a soft magnetic core that is then affixed to the lower circuit board assembly 620. Ex. 1001, 30:16–22. Thus, the ’515 patent’s specification expressly states that the stator elements of the stator assembly can be affixed to a printed circuit board, and thus the stator assembly is not the same thing as the board. Other parts of the specification are consistent with this view. See, e.g., id. at 4:54–57, 5:14–18, 6:50–53, 16:22–25.” slip op. at 23

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We have construed claim 1’s limitation 1(g) to require “stator circuit board” and “stator assembly” that are separate and distinct elements. See § III.C.1, supra. Johnson discloses coil windings that are formed by patterning interleaved structures in a multi-layered printed circuit board (PCB) forming the stator platform 330, and interconnecting them in groups with vias filled with conductive material. Ex. 1005, 11:66–13:57. Figs. 3C–3D; Ex. 2004 ¶¶ 138–139. We agree with Patent Owner that a POSITA would have considered the coil windings to be subcomponents of Johnson’s stator platform 330, which do not define a separate and distinct “stator assembly . . . coupled to a stator circuit board.” Ex. 2004 ¶ 139. In other words, the “printed” conductive tracks and traces would have been considered part of the PCB, not something separate. Id. Although Petitioner contends that Johnson discloses other embodiments in which a stator assembly is comprised of wires wound around a magnetic core (Pet. Reply 14–15 (citing Ex. 1005, 3:30–39, 4:56– 5:7; Ex. 1050 ¶ 30)), Petitioner does not show that Johnson discloses that those embodiments are coupled to a stator circuit board as recited in claim 1’s limitation 1(g). Petitioner did not rely on Pacala, Pardhan, nor Zhang to cover the deficiencies of Johnson. Accordingly, for the above reasons, we determine that Petitioner has” slip op. at 41

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

    “Patent Owner’s arguments are persuasive. Johnson, Pardhan, and Zhang all disclose transformer coils positioned inside of the rotor/stator elements of the motor. Specifically, Johnson’s Figure 3B shows a transformer coil 310b positioned inside rotor elements (magnets 320, 322, 324, 326), and Figure 3C shows the corresponding transformer coil (unnumbered) inside of the stator coils defined by conductive structures. Ex. 1005, 11:51–60, 13:26–40. Similarly, Pardhan shows in Figure 7B a transformer 740a, 740b positioned inside of rotor/stator elements 738a, 738b, and suggests that a smaller rotary transformer is desirable. Ex. 1006, 20:64–21:13. Likewise, Zhang’s Figures 2 and 3 show an electrical power transmission unit including first coupling coil (5) and second coupling coil (unnumbered) positioned inside of motor coil (2). Ex. 1007, 4–5. Against the teachings of Johnson, Pardhan, and Zhang, Petitioner argues that putting the transformer coils outside of the stator coils would have been an obvious design choice. Pet. 50–51, 54–55. However, as Patent Owner noted, “merely stating that a particular placement of an element is a design choice does not make it obvious.” PO Resp. 50 (citing Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1067–70, 1069 n.4 (Fed. Cir. 2018); Ex. 2004 ¶ 186). That Johnson, Pardhan, and Zhang all disclose the transformer coils inside of the rotor/stator elements of the motor suggests that there were good reasons for doing this in their configurations. Zhang expressly teaches that one such reason is to avoid interference with power transmission.15 Ex. 1007, 3. Thus, according to Zhang, moving transformer coils outside of the rotor/stator elements in Petitioner’s combination would undesirably interfere with power transmission such that a POSITA would not have pursued the combination. Accordingly, we find that claim 22’s limitation 22(h) is missing from the combination of Pacala, Johnson, Pardhan, and Zhang.” slip op. at 53

  Patent outcomesUS 11,287,515 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,287,515
• Savant Technologies LLC D/B/A GE Lighting / Ledvance LLC v. Feit Electric Company, Inc.Instituted
  PTAB · Mar 5, 2025 · IPR2024-01357 · APJ Daniel Kazhdan · IPR · Institution

  The Board instituted IPR on claims 1–3, 6, 7, 9, 10, 16–21, 25, 26, and 29 on all four obviousness grounds, finding a reasonable likelihood of success on at least one ground.

  RulingsInstitution decision

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

    “We find that this factor marginally favors Petitioners. Fintiv explains that the fact that a “district court has denied a motion for stay without prejudice” and has indicated on the record “that it will consider a renewed motion or reconsider a motion to stay if a PTAB trial is instituted” “has usually weighed against exercising authority to deny institution.” Fintiv, Paper 11 at 6–7. That is what happened here. When the district court denied Petitioner Savant’s motion for a stay in the Ohio litigation, it stated that, “[i]f the Patent Trial and Appeal Board accepts the petition for inter partes review, the parties may rebrief this issue.” See No. 1:24-cv-473 (N.D. Ohio) December 12, 2024, Order. Ex. 1025. Thus, this factor weighs marginally against exercising discretion to deny institution.” slip op. at 9

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

    “prevail in showing that it would have been obvious to use blue light with a wavelength that is greater than 440 nm. Basin-2007 does not specify a specific wavelength for the blue light, but, as Patent Owner acknowledges, “blue light is generally emitted in the range of 380 to 500 nm.” Prelim. Resp. 55; see Ex. 1002 ¶ 121. Thus, the question is whether a skilled artisan, when looking for which wavelength to use, would have found it obvious to use anything in the half of the blue-light range that is greater than or equal to 440 nm. On its own, this overlap in ranges would be strong evidence of obviousness. See Galderma Lab’ys, L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). Petitioners show even more. Basin-2005 discloses that there is an “assum[ption]” that blue-light LEDs emit “in the range of 420-490 nm.” Ex. 1006 ¶ 30 (cited in Pet. 25). Basin-2005 additionally teaches that its “blue, UV, or near UV LED[s]” are “relatively easy to implement and consistently produce[] the desired white light temperature.” Id. ¶ 6 (cited in Pet. 25). Furthermore, Shimizu and Stokes indicate that people were using higher wavelength blue-light in their LEDs. See Pet. 8, 24–25 (citing sources). Because a skilled artisan would have needed to select some wavelength for the blue light disclosed in Basin-2007, at this stage, we conclude that the skilled artisan would have found it obvious to include wavelengths from the higher end of the range—as disclosed in so many references. Basin-2007 discloses using a “conventional white light LED.” See Ex. 1005 ¶ 21. As evidenced by Shimizu and Stokes, the conventional white light LED sources used blue light with wavelengths greater than or equal to 440 nm. See Ex. 1002 ¶ 121 (citing sources). Patent Owner argues that “quantum efficiency” considerations would lead to using lower wavelengths, but Patent Owner does not explain why these same considerations did not convince Basin-2005, Shimizu, or Stokes to use lower wavelengths. Based on our review of the current record, we find that Petitioner has demonstrated a reasonable likelihood of proving that the combined teachings of Basin-2005 and Basin-2007 render claim 1 unpatentable as obvious.” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill in the Art According to Petitioners, [A person of ordinary skill in the art] would have had an undergraduate degree (i.e., B.S., B.S.E. or the equivalent) in electrical engineering, materials science, physics, or a similar discipline. A [person of ordinary skill in the art] would also have one to two years of experience in the field of LED packaging design. More education could substitute for experience, and vice versa. Pet. 6. For purposes of institution, “Patent Owner takes no position with respect to Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 36–37. At this stage, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioners and applied by Patent Owner as consistent with the prior art before us in this proceeding.” slip op. at 16

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

    “We determine that the plain and ordinary meaning of “light diffusing layer” is exactly what it says: “a layer that diffuses light.” The claims separately recite one function for this layer: it must “improve[] an off-state white appearance of the wavelength conversion component.” Ex. 1001 at 26:15–17; see id. at 27:25–27. That is all.” slip op. at 19

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,604,678

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.