- Shenzhen Xinzexing E-Commerce Co., Ltd. v. Shenzhen Carku Technology Co., Ltd.All claims unpatentablePTAB · Jul 24, 2025 · IPR2024-00222 · APJ Garth D Baer · IPR · Final written decision
Claims 1–3, 6–23, and 25–33 are unpatentable, including as anticipated by Chen and as obvious over the Chen and Inskeep combinations.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“have at least a Bachelor’s Degree in Electrical Engineering and at least two years of experience in the field of electrical engineering and specifically power supply management such as battery charging system design.” PO Resp. 31. Petitioner presents a similar formulation. Pet. 10. Although we do not discern any meaningful distinction between the parties’ formulations, we adopt Patent Owner’s description of a person of ordinary skill as it is consistent with the prior art and challenged patent’s specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“a first current through one or more output ports of the at least one output port in a first operating mode,” and “is configured to output a second current capable of starting a vehicle engine through the pair of output terminals in a second operating mode.” Ex. 1001, 8:25–34. Claim 21 has similar first and second operating-mode limitations. Id. at 9:40–46. Patent Owner proposes that “[t]he proper construction for ‘first operating mode’ is ‘an operating mode of the portable backup charger wherein the battery pack is configured to output a first current through one or more output ports of the at least one output port, and outputting a second current capable of starting a vehicle engine through the pair of output terminals is inhibited.’” PO Resp. 25. Similarly, Patent Owner argues “[t]he proper construction for ‘second operating mode’ is ‘an operating mode of the portable backup charger wherein the battery pack is configured to output a second current capable of starting a vehicle engine through the pair of output terminals, and outputting a first current through one or more output ports of the at least one output port is inhibited.’” Id. at 27. Patent Owner asserts that claim differentiation supports its construction because dependent claim 3 recites “a third operating mode for outputting the first current and the second current simultaneously,” and “if the battery pack could output the first current and the second current simultaneously in the first operating mode, then there would be no difference between the claimed first operating mode and the claimed third operating mode.” Id. at 26. We disagree with Patent Owner’s constructions because, as Petitioner explains, they wrongly import current-inhibiting limitations beyond the plain language in the claim. Pet. Reply 1. Nothing in the at-issue language addresses inhibiting current. In addition, the claimed first and third operating modes are still distinct without importing additional limitations because outputting just the first current is sufficient for the first operating mode, but not for the third. In other words, whereas the third operating mode requires simultaneity, the first and second merely permit it. Thus, claim differentiation does not support Patent Owner’s construction. Last, although Patent Owner asserts that its construction “is consistent with the specification,” nothing in the cited passages describes inhibiting current. Prelim. Resp. 26 (citing Ex. 1001, 4:30–33, 5:30–33, 5:58–62). Instead, the specification characterizes the modes solely by what the portable charger “can output,” not what is inhibited. Ex. 1001, 4:30–33, 5:30–33, 5:58–62. Thus, we decline to read the first and second operating modes to require the current-inhibiting features that Patent Owner asserts.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner argues the two current paths are not different because Chen’s Figure 1 shows they overlap between the lithium battery and the output control circuit and “only diverge when making the connection to the output control circuit.” PO Resp. 32. We disagree. First, Patent Owner’s argument is based on a claim construction for “different” current paths that we do not adopt for the reasons above. In addition, we agree with Petitioner that Chen shows the claimed different current paths even under Patent Owner’s construction. Pet. Reply 8–12. Specifically, as Petitioner explains, a skilled artisan would recognize that Chen’s physical circuits are depicted in Figures 4–7, rather than in Chen’s Figure 1, which is merely a “block diagram of the principle of present invention.” Id. at 9; Ex. 1006 ¶ 15. Unlike Figure 1, Chen’s Figures 5, 6, and 7 show current paths between the battery and USB outputs, and between the battery and DC multi-gear output, that do not overlap with the high current path shown in Chen’s Figure 4. Pet. 9–12. Based on Petitioner’s analysis and for the reasons above, we agree with Petitioner that Chen teaches the claimed “pair of output terminals coupled to the battery pack and having a current path to the battery pack different from that of the at least one output port to the battery pack.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Patent Owner asserts one skilled in the art would not have added White’s fuse to Chen because doing so was “unnecessary” given Chen’s built-in relay K1 that already provides protection. PO Resp. 42–43. We disagree because, as Petitioner notes, “the Petition cited ample evidence that both layers of over current prevention provide improved safety and protection to the battery.” Pet. Reply 17 (citing Pet. 31–33); see also, e.g., Pet. 31 (describing “advantageously reduc[ing] the likelihood of damage”), id. at 32 (describing “the additional benefit of a safety fuse along a jumper cable to promptly cut off current in the event of a short circuit” and “more simplified maintenance and repair”). Given Petitioner’s unrebutted rationale, Petitioner has articulated sufficient reasoning with rational underpinning to support the legal conclusion that adding White’s fuse and polarity-protection connector to Chen’s power-supply system would have been obvious to one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Other than the arguments addressed above, Patent Owner does not additionally challenge Petitioner’s obviousness showing based on Chen and White. We have reviewed Petitioner’s arguments and evidence and, based on that analysis, we find Petitioner has shown by a preponderance of the evidence that claims 1, 2, 6–9, 11–14, 16–22, 25–28, and 30–33 would have been obvious over Chen and White.” slip op. at 15
Patent outcomesUS 9,643,506 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,643,506 - Western Digital Technologies, Inc. v. Longitude Licensing Ltd.All claims unpatentablePTAB · Feb 19, 2025 · IPR2023-01286 · APJ David C Mckone · IPR · Final written decision
Claim 4 is unpatentable as obvious over Itoh and over Itoh in combination with Muljono.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have a bachelor’s or the equivalent degree in electrical or computer engineering or a related field, and 2–3 years of professional experience relating to integrated circuit design.” Pet. 3 (citing Ex. 1003 ¶ 13). Petitioner further contends that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for [a person of ordinary skill in the art].” Id. Petitioner states that it “does not imply that a person having an extraordinary level of skill should be regarded as [a person of ordinary skill in the art].” Id. at 3–4.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“depends, recites “[a]n output buffer circuit for outputting data in the form of an input pulse train at a predetermined output impedance and slew rate.” Because Patent Owner contends that the asserted prior art fails to teach outputting data “at a predetermined output impedance” as recited in the preamble (PO Resp. 16), we first determine whether the term “at a predetermined output impedance” is limiting. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citation omitted). “Further, when reciting additional structure or steps underscored as important by the specification, the preamble may operate as a claim limitation.” Id. “Conversely, a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” Id. (citation omitted).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’”)). “Predetermine” simply means “to determine beforehand.” Predetermine, MERRIAM-WEBSTER DICTIONARY, available at https://www.merriam-webster.com/dictionary/predetermine. As Petitioner observes, we typically understand “a” to mean “one or more.” See KCJ, 223 F.3d at 1356. Thus, the ordinary meaning of “a predetermined output impedance” is one or more output impedances determined in advance. Patent Owner does not point to any claim language to support its argument that a predetermined output impedance is limited to a single output impedance. As explained in more detail below, the specification does not redefine “a predetermined output impedance” to mean a single output impedance or exclude or disavow multiple output impedances from among those that can be determined in advance.” slip op. at 18
- Prior constructionPrior construction adoptedDecided for petitioner
“second n-channel MOS transistor have a smaller device size with a smaller gate width than said first p-channel MOS transistor and said first n-channel MOS transistor.” In the Institution Decision, we preliminarily construed “smaller device size” and “smaller gate width” to be synonymous, rather than two separate requirements. Dec. 11–13. Patent Owner acknowledges the understanding set forth in the Board’s Institution Decision, and accepts that the proper comparison is between the combined device size of the P2, N2 pair with the device size of the combined device size of the P1, N1 pair. In other words, if the device size of P2 is less than the device size of P1, and the device size of N2 is less than the device size of N1, then the size requirements of claim 4 are satisfied. PO Resp. 16. Thus, it appears that Patent Owner does not contest our construction or propose an alternative. On the complete record, and for the reasons set forth in our Institution Decision, we maintain our construction of “smaller device size” and “smaller gate width” as synonymous.” slip op. at 22
Patent outcomesUS RE43,539 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · Graham - Western Digital Technologies, Inc. v. Longitude Licensing Ltd.No claims unpatentablePTAB · Jan 21, 2025 · IPR2023-01230 · APJ Richard M Lebovitz · IPR · Final written decision
The Board held claims 1–18 not unpatentable over Zhang and Javanifard or Javanifard alone, and claims 9 and 18 not unpatentable over either combination with Kang.
RulingsFinal written decision- BurdenDecided for patent owner
“III. BURDEN In an inter partes review, a petitioner bears the burden of persuasion to prove “unpatentability by a preponderance of the evidence.” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (quoting 35 U.S.C. § 316(e)); see 37 C.F.R. § 42.1(d) (2024). This burden never shifts to Patent Owner. Dynamic Drinkware, 800 F.3d at 1378 (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–1327 (Fed. Cir. 2008) (discussing the burden of proof in inter partes review). Petitioner must explain with particularity how the prior art would have rendered the Challenged Claims unpatentable. 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). IV. PATENTABILITY ANALYSIS A. Legal Standards A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said (2007). The obviousness inquiry requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 8
- Strike new argumentNew argument disregardedDecided for patent owner
“(Nov. 2019), 73 available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“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.”). Newly cited Exhibits 1026 and 1030 are not identified by Petitioner as responsive to Patent Owner’s Response. Rather, the new evidence cited by Petitioner is improperly being used to supply evidentiary support for an argument made in the Petition that lacked such support. A reply cannot be used to introduce new evidence to fill gaps in the Petition or bolster arguments that were inadequately supported in the Petition. The introduction of such evidence constitutes an improper attempt to remedy deficiencies in the Petition, which should have initially contained necessary evidence and arguments to support Ground 1. Accordingly, we find that the introduction of Exhibits 1026 and 1030 as evidence for Ground 1 is impermissible.” slip op. at 51
- Skill levelOther
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art at the time of” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“4. Reasons to combine The principal dispute in this inter partes review is whether Petitioner established a reason to combine Zhang and Javanifard. Primarily, the Petition pointed to disadvantages in the “prior art” identified by Javanifard, motivation to apply Javanifard to Zhang’s fixed stage circuit. Pet. 19–20 (citing Ex. 1003 ¶¶ 90–96). Specifically, the Petition identifies the following reasons as motivation to combine Zhang and Javanifard (citing Ex. 1006, 1:48–53; 1:66–2.2): 1. “‘accommodate different output levels for a given charge pump power supply input level.’” 2. “‘accommodate a given output level for different charge pump power supply input levels.’” 3. “provide flexibility for design needs (e.g., power saving mode, and” slip op. at 34
Patent outcomesUS 9,207,701 not shown unpatentable§ 103 obviousnesscites KSRPatents in suitUS 9,207,701 - Western Digital Technologies, Inc. v. Longitude Licensing Ltd.All claims unpatentablePTAB · Jan 15, 2025 · IPR2023-01200 · APJ Kevin C Trock · IPR · Final written decision
Claims 1, 2, 6, 7, 10, 11, 14–19, and 25–27 are unpatentable as obvious over Lee alone or Lee and JEDEC.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the pertinent art would have had a working knowledge of the memory system art that is pertinent to the ’369 patent, including memory systems and memory controllers. A [person of ordinary skill in the art] would have had a bachelor’s degree in electrical engineering, or an equivalent, and approximately two years of professional experience relating to field of memory systems. Lack of professional experience can be remedied by additional education, and vice versa. Pet. 15 (citing Ex. 1003 ¶¶ 18–20). Patent Owner does not challenge Petitioner’s description of someone of ordinary skill. PO Resp. 12; see also Ex. 2003 ¶ 21. The parties agree on a description of a person of ordinary skill in the art, and this description appears consistent with the subject matter of the ’369 patent and the asserted prior art. We, therefore, continue to use the same description that we adopted in our Institution Decision, as it is consistent with the challenged patent and the asserted art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill). C. Claim Construction” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“Petitioner contends that no claim terms require express construction. Pet. 15 (citing Ex. 1003). Patent Owner agrees that no express construction of any claim term is necessary. PO Resp. 12. We agree with the parties that no claim terms require express construction. See 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) (only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy). We therefore use the ordinary and customary meaning of the claim terms as would be understood by a person of ordinary skill in the art at the time of the claimed invention. D. Prior Art References” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Here, Petitioner expressly identifies in the Petition a specific reason to combine the Lee and JEDEC references: higher bandwidth capabilities. Pet. 60–61. Petitioner explains that “[s]ynchronous memory—using a clock signal for sampling information—provides the benefit of higher bandwidth capabilities.” Pet. 60–61. Petitioner cites to page 5 of the Prince reference (Ex. 1006) to support this assertion. Id. at 61. Prince is a textbook entitled “High Performance Memories—New architecture DRAMs and SRAMs evolution and function.” Ex. 1006, cover. Page 5 of Prince is in Section 1.2 titled “New Memory Architectures to Improve Bandwidth.” Id. at 5. Page 5 of Prince states: New interface architectures are also being used to improve the bandwidth of the RAMs. The most common is the synchronous interface. Making a memory synchronous puts it under the control of the system clock. “Wait states”, during which the processor must wait for the output data from the RAM, can be reduced or eliminated. With a synchronous RAM the input addresses can be latched into the memory, freeing the processor to perform other tasks until the data is available after a known number of cycles. While the intrinsic speed of the RAM does not increase by the addition of a synchronous interface, the effective speed in the system increases since the processor no longer waits for the RAM to operate. Id. (emphasis added).” slip op. at 60
Patent outcomesUS 7,697,369 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,697,369 - Netflix, Inc. v. Gotv Streaming, LLCSome claims unpatentablePTAB · Nov 5, 2024 · IPR2023-00758 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–3, 5–10, 12–14, and 16–21 are unpatentable as obvious over Hariki and Harris; claims 4, 11, 15, and 22–33 were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMixed
“in the browser,” e.g., content resulting from HTML files received from the web server. Ex. 2029, 68:15–18. Accordingly, an ordinarily skilled artisan “would have understood that customizing” the “application program environment or display and sound aspects of the device” using a UI content package “would mean that the converted resources (i.e., ‘custom configuration’) of the UI content package were applicable to all HTML files received from the web server and displayed” by the web browser program. Ex. 1002 ¶ 159; see Ex. 1005 ¶¶ 19, 24, 42.” slip op. at 105
- ExcludeMotion to exclude, deniedDenied
“FURTHER ORDERED that Petitioner’s motion to exclude evidence (Paper 30) is dismissed as moot; and” slip op. at 134
Patent outcomesUS 8,478,245 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,478,245 - Netflix, Inc. v. Gotv Streaming, LLCSome claims unpatentablePTAB · Nov 5, 2024 · IPR2023-00757 · APJ Steven M Amundson · IPR · Final written decision
Claims 1, 2, 4–10, and 12–16 are unpatentable as obvious over Hariki and Harris; claims 3, 11, and 17–20 were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for patent owner
“Alleged Objective Indicia of Nonobviousness (i) General Principles Before reaching a conclusion about obviousness, we consider evidence concerning objective indicia of nonobviousness. See Apple, 839 F.3d at 1048. For such evidence to have substantial weight, the patentee “must establish a nexus between the evidence and the merits of the claimed invention.” ClassCo, 838 F.3d at 1220. “[T]here is no nexus unless the evidence presented is ‘reasonably commensurate with the scope of the claims.’” Id. (quoting Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)). The patentee “bears the burden of showing that a nexus exists.” WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). A rebuttable presumption of nexus arises “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.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). Whether a rebuttable presumption of nexus arises “turns on the nature of the claims and the specific facts.” Teva Pharms. Int’l GmbH v. Eli Lilly & Co., 8 F.4th 1349, 1362 (Fed. Cir. 2021). The presumption analysis should consider the unclaimed features in the product tied to the objective evidence to assess their significance and impact on the correspondence between the patented invention and the product. Quanergy Sys., Inc. v. Velodyne Lidar USA, Inc., 24 F.4th 1406, 1418 (Fed. Cir. 2022). When, “for example, the patented invention is only a small component of the product tied to the objective evidence,” and thus the product is not coextensive with the patented invention, “there is no presumption of nexus.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1333 (Fed. Cir. 2019). Absent a presumption of nexus, the patentee may prove nexus by showing that the objective evidence resulted directly from “the unique characteristics of the claimed invention.” Fox Factory, 944 F.3d at 1373–74; see In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). For example, “[a] prima facie case of nexus is generally made out when the patentee shows both that there is commercial success, and that the thing (product or method) that is commercially successful is the invention disclosed and claimed in the patent.” Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Circ. 1988).” slip op. at 113
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMixed
“Conclusion About Obviousness/Nonobviousness For the reasons discussed above, the combined disclosures in Hariki” slip op. at 119
- ExcludeMotion to exclude, deniedNot reached
“In our analyses above, we do not rely on any of Exhibits 2023 to 2027. See, e.g., supra §§ III.C.2–III.C.4. Hence, we dismiss Petitioner’s motion to exclude evidence as moot. See, e.g., Volkswagen Grp. of Am., Inc. v. Spero, IPR2023-00335, Paper 40 at 24 (PTAB July 15, 2024) (dismissing motion to exclude evidence as moot).” slip op. at 135
Patent outcomesUS 8,989,715 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,989,715 - Netflix, Inc. v. Gotv Streaming, LLCNo claims unpatentablePTAB · Oct 29, 2024 · IPR2023-00759 · APJ Richard M Lebovitz · IPR · Final written decision
Claims 1–20, 31, and 34 were not proven unpatentable under either obviousness ground based on Hariki, Harris, and Dees.
RulingsFinal written decision- BurdenNot shown unpatentable
“obviousness”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“1. Independent Claim 1 The first ground of unpatentability is based on Hariki and Harris. We” slip op. at 27
- ExcludeMotion to exclude, grantedGranted in part
“customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips, 415 F.3d at 1312–13. Patent Owner did not provide evidence that Exs. 2007, 2008, 2009, 2011, and 2012 were available before the invention was made (i.e., Aug. 1, 2007). As shown in the table above, these exhibits have dates identifying information that suggests publication after the effective filing date. Thus, we agree with Petitioner that Exhibits 2007, 2008, 2009, 2011, and 2012 should be excluded as not credible evidence of how one of ordinary skill would have understand the terms recited in the issued claims of the ’865 patent because Petitioner did not establish these definitions were available at the time the invention was made. Consequently, Patent Owner’s Motion to Exclude Exhibits 2007, 2008, 2009, 2011, and 2012 is granted.” slip op. at 77
Patent outcomesUS 8,103,865 not shown unpatentable§ 103 obviousnesscites Phillips · Markman · KSR · GrahamPatents in suitUS 8,103,865 - Cisco Systems, Inc. v. Netsocket, Inc.All claims unpatentablePTAB · Sep 13, 2024 · IPR2023-00607 · APJ Richard M Lebovitz · IPR · Final written decision
Claims 1–8 are unpatentable: claims 1–5, 7, and 8 as obvious over Xiao, Schelen-1, and Gibson; claims 4–8 as obvious over those references and Schelen-2.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner utilizes Petitioner’s proposed level of skill in the art. PO Resp. 4–5. For purpose of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art, which is also consistent with the level of skill reflected in the Specification of the ’698 patent and in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner states that “the Board would benefit from expressly construing the preamble of Claim 1 as limiting to make clear Claim 1’s bounds in the context of Petitioner’s arguments.” PO Resp. 5. Patent Owner’s main point, as we understand it, is that the preamble’s recitation of “wherein the bandwidth broker (BB) is associated to each network domain” is limiting because subsequent limitations in the claim, and dependent claims 2 and 3, “refer[] to the preamble’s statement that there is a bandwidth broker associated with each of the network domains involved in the path from source to destination networks.” Id. at 6–7. Petitioner responds that “[r]egardless of whether the preamble is limiting, the prior art renders obvious the preamble.” Pet. Reply 7. We agree with Patent Owner that the preamble to the claim is limiting, and treat it as such in this Decision.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“Patent Owner’s arguments are not supported by persuasive evidence. While Xiao indicates that a bandwidth broker “may not be needed in MPLS-based ISP networks,” Xiao does not disparage or discredit its presence in such a network. “[T]he fact that there may be reasons a skilled artisan would prefer one over the other does not amount to a teaching away from the lesser preferred but still workable option.” Bayer Pharma AG v. Watson Labs, Inc., 874 F.3d 1316, 1327 (Fed. Cir. 2017); see also Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (“A reference that ‘merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into’ the claimed invention does not teach away.” (quoting Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)). Here, Patent Owner has not provided evidence that Xiao “criticize[s], discredit[s], or otherwise discourage[s]” the use of a bandwidth broker in an MPLS network. Patent Owner has also not established that a bandwidth broker would be inoperable when used in an MPLS-based network. “[A] reference may teach away from a use when that use would render the result inoperable.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1381 (Fed. Cir. 2007). To the contrary, the evidence of record points to the opposite. First, Xiao’s statement that bandwidth brokers might not be needed in an MPLS network, is also an indication that, on the other hand, they may be included in an MPLS network and therefore would be expected to be operable when combined. Indeed, the ’698 patent discloses that RATES in the MPLS domain performs admission control for a flat link state-domain, a characteristic of a bandwidth broker. Ex. 1001, 4:11–21.” slip op. at 26
- Strike new argumentNew argument consideredDecided for petitioner
“We do not agree that this is a new argument. In the Decision, we preliminarily adopted Petitioner’s proposal that Gibson’s admission manager is a bandwidth broker. Institution Dec. 39 (citing Pet. 54 (citing Ex. 1006, 6:14–16; Ex. 1003 ¶¶ 254–255)). The Decision also preliminarily adopted Petitioner’s proposal that Gibson’s administrative server and connection manager correspond to the claimed intra-domain broker. Institution Dec. 39 (citing Pet. 57–58). The Decision to Institute, summarizing Petitioner’s argument, explained that the admission manager (bandwidth broker) requests label paths from the administrative server (intra-domain broker), and that the administrative server works with the connection manager to register paths. Decision to Institute 40–41. See Ex. 1003 ¶¶ 274 (“Gibson discloses that the admission manager (‘bandwidth broker’) passes various resource requests to the administrative server and the connection manager (‘at least one intra-domain (1DB)’), which renders obvious ‘passing resource requests from the Bandwidth Broker (BB).’”); 277 (“As shown below at Gibson’s Figure 2, a ‘Request’ for a new LSP is passed from the admission manager (‘bandwidth broker’) to both the administrative server and also to the connection manager (collectively ‘at least one intra-domain (1DB)’).”). The statement by Dr. Houh in his second declaration “that Gibson’s coordination among the admission manager [BB] and the administrative server [IDB] is consistent with the claimed approach to LSP setup” reflects the original argument in the Petition that the admission manager (bandwidth broker) requests label paths from the administrative server (intra-domain broker). Institution Dec. 40–41. The argument has not changed and, in light of the complete record, we come to the same determination that we made in the Decision to Institute. The admission manager was described by Dr. Houh as requesting paths from the administrative server and the server working with the connection manager. Ex. 1003 ¶¶ 274–277. Thus, there is “coordination” between the admission manager, and administrative server” slip op. at 66
Patent outcomesUS 7,190,698 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,190,698 - PTAB · Jul 31, 2024 · IPR2024-00222 · APJ Garth D Baer · IPR · Institution
The Board instituted inter partes review of claims 1–3, 6–23, and 25–33 on all petition grounds because Chen showed a reasonable likelihood of anticipating claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“21 (quoting Ex. 1006 ¶ 26)). We have reviewed Petitioner’s arguments and the underlying evidence cited in support and are persuaded that, at this stage, Petitioner sufficiently demonstrates a reasonable likelihood of succeeding in its anticipation challenge to claim 1 based on Chen.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Specifically, Petitioner asserts Chen’s lithium battery teaches the claimed battery pack, Chen’s USB outputs 8, 9, and 10 teach claim 1’s first-current output port, and Chen’s high-current, car-battery output unit 11 teaches claim 1’s pair of output terminals capable of starting a vehicle. Id. at 13–20. Further, Petitioner corresponds Chen’s “electronics of ‘U3B and D12’” that “form ‘an output power limit control’” to the claimed first protection circuit (Id. at 20 (quoting Ex. 1006 ¶ 26)) and Chen’s relay K1 that “is automatically turned off to prevent long-term high-current output” to the claimed second protection circuit configured to prevent overcurrent (Id. at 21 (quoting Ex. 1006 ¶ 26)). We have reviewed Petitioner’s arguments and the underlying evidence cited in support and are persuaded that, at this stage, Petitioner sufficiently demonstrates a reasonable likelihood of succeeding in its anticipation challenge to claim 1 based on Chen.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“B. CLAIM CONSTRUCTION Petitioner asserts “that no claim elements need a formal construction.” Pet. 10. We agree that we need not construe any claim limitations to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. LEVEL OF SKILL IN THE ART Petitioner contends a person of ordinary skill in the art “would have had at least a Bachelor’s of Science in electrical engineering or physics and at least two years of experience in circuit design for portable electronics.” Pet. 10 (citing Ex. 1003 ¶ 17). For the purpose of our decision, we adopt Petitioner’s description.” slip op. at 5
Claim construction§ 102 anticipationPatents in suitUS 9,643,506 - PTAB · May 21, 2024 · IPR2024-00222 · APJ Garth D Baer · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–3, 6–23, and 25–33 based on abandonment of the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Petition (Paper 2), requesting an inter partes review of claims 1–3, 6–23, and 25–33 of U.S. Patent No. 9,643,506 (Ex. 1001, “the ’506 patent”). Shenzhen Carku Technology Co. (“Patent Owner”) did not file mandatory notices despite its obligation to do so under our rules. See 37 C.F.R. § 42.8(b). In addition, the Board emailed the attorney of record listed on the ’506 patent as well as the attorney listed in the Petition’s certificate of service, but has not received any response. See Ex. 1003. Pursuant to our rules, “[a]ctions construed to be a request for adverse judgment include . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). Patent Owner’s failure to file mandatory notices and its failure to respond to the Board’s email is consistent with abandonment of the contest. Accordingly, it is ORDERED that adverse judgment is entered against Patent Owner as to claims 1–3, 6–23, and 25–33 of the ’506 patent; and” slip op. at 2
NonePatents in suitUS 9,643,506
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.