• PLR Worldwide Sales Ltd. v. Flip Phone Games, Inc.Some claims unpatentable
  PTAB · Apr 24, 2025 · IPR2024-00209 · APJ Scott B Howard · IPR · Final written decision

  Claims 1–11 and 13–19 are unpatentable as obvious over Ho and Aoki; claims 12 and 20 were not shown unpatentable over Jiau and Aoki or Jiau and Kim.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner argues for a slightly different level of ordinary skill in the art: “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with one to two years of experience developing or programming video games or video game systems, or similar types of computer systems.” PO Resp. 2 (citing Ex. 2006 ¶ 29). Patent Owner further argues that the person having ordinary skill in the art “may have additional education that might substitute for some of the experience, and additional experience might substitute for some of the educational background.” Id. (citing Ex. 2006 ¶ 29). According to Patent Owner, Petitioner’s proposal does not require experience in programming video games. Id. at 3. However, Patent Owner states, “[t]his difference does not materially affect the analysis presented below.” Id. We see very little difference between the parties’ respective proposals. We adopt Patent Owner’s marginally more specific proposal. Additionally, because we would reach the same conclusions under Petitioner’s proposal, we agree with Patent Owner that this does not affect our analysis.” slip op. at 9

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

    “Patent Owner argues that the plain and ordinary meaning of “downloading” excludes “real-time fetching of data by a client from a server system.” PO Resp. 34; see also PO Sur-reply 16–17; Tr. 32:22–34:7. Because we need not expressly construe any claim terms, we do not construe any terms of the ’662 patent. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner

    “date of the ’662 patent, Ho is not a “printed publication” within the meaning of 35 U.S.C. § 311(b). PO Resp. 30–33; PO Sur-reply 15–16. The Federal Circuit has rejected this argument, holding that: a published patent application is, by its literal terms, a “printed publication.” So, when § 311(b) permits IPR challenges based upon “prior art . . . printed publications,” it includes within its literal scope challenges based upon a published patent application. And, by virtue of § 102(e)(1), a published patent application—this specific type of “printed publication”—is deemed prior art as of its filing date. Therefore, the plain language of §§ 311(b) and 102(e)(1) permits IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. Lynk Labs, Inc. v. Samsung Elecs. Co., 125 F.4th 1120, 1127 (Fed. Cir. 2025). Thus, Petitioner asserts permissible grounds of unpatentability under 35 U.S.C. § 311(b) by arguing that claims 1–20 are unpatentable under 35 U.S.C. § 103(a) on the basis of Ho, which is a prior art printed publication, and either Aoki or Kim.” slip op. at 11

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

    “A person having ordinary skill in the art would have combined Aoki’s teaching of using user-identification information as part of the request for an advertisement with Ho’s system, which also teaches a client device sending information to a server to request hot spot information, such as advertisements. See Ex. 1003 ¶¶ 103–107, 111, 114, 117. Because both Ho and Aoki are directed to improvements in game design and monetization from using advertisements (id. ¶ 106; Ex. 1004, 1:26–28; Ex. 1005 ¶¶ 6–8), a person having ordinary skill in the art would have looked at both Ho and Aoki and combined the relevant features with a reasonable expectation of success (Ex. 1003 ¶¶ 103, 106, 117). A person having ordinary skill in the art would have appreciated that using Aoki’s teaching of sending user-identification information with Ho, which includes sending information with a request for information relating to interactive information elements (hot spots), allows for targeted advertisements, which was a known advantage in advertising. Id. ¶ 117; Ex. 10089 ¶¶ 54–55 (describing advantages of targeted advertising).” slip op. at 26

  Patent outcomesUS 9,427,662 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,427,662
• Meta Platforms, Inc. / Instagram, Inc. et al. v. VL Collective IP LLCSome claims unpatentable
  PTAB · Dec 5, 2024 · IPR2023-00924 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1–3, 5–7, 9–11, and 13–15 are unpatentable as obvious over Zhao; claims 4, 8, 12, and 16 are not shown unpatentable.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “Decision is a final written decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the patentability of claims 1–16 of the ’980 patent. We determine Petitioner has shown by a preponderance of the evidence that claims 1–3, 5–7, 9–11, and 13–15 are unpatentable, and Petitioner has not shown by a preponderance of evidence that claims 4, 8, 12, and 16 are unpatentable.” slip op. at 2

  • Expert testimonyOther

    “being present in another image or comparing that probability to a detection threshold.”). Dr. Saber was consistent with this testimony on cross-examination. Ex. 1051, 167–251. When I weigh the evidence, I find it to be one-sided, with all of the expert testimony weighing against Petitioner or avoiding the issue altogether. Thus, I would not find that Petitioner has met its burden to prove, by a preponderance of the evidence, that Zhao teaches claim limitation 1e. Moreover, even if the Majority is correct about how Zhao’s RCR algorithm works, all that shows is that the detection of object presence in a previous image can be used to disambiguate segments (e.g., limbs) of an already detected object (e.g., a person), not that it can be used to detect the object in the image in the first place, as required by the claim language. For this additional reason, I would not find that Petitioner has met its burden.” slip op. at 84

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

    “2. Reasons for Obviousness Based on Zhao On a limitation-by-limitation basis, Petitioner’s contentions of” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable

    “2. Reasons for Obviousness Based on Zhao On a limitation-by-limitation basis, Petitioner’s contentions of “obviousness” are primarily assertions of how a POSITA would have understood Zhao’s disclosures. For example, with regard to claim 1, Petitioner repeatedly asserts how “a POSITA would have understood Zhao” (Pet. 13, 18, 21, 27) and for each limitation contends that Zhao “disclosed or at least rendered obvious” (or a variation thereof) the limitation (id. at 13– 15, 17–18, 21, 23, 25–27). We will, accordingly, address these “obviousness” contentions when addressing the respective limitations.” slip op. at 25

  Patent outcomesUS 7,436,980 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,436,980
• Ebates Performance Marketing, Inc. Dba Rakuten Rewards / Zillow Group, Inc. et al. v. International Business Machines Corp.Some claims unpatentable
  PTAB · Oct 11, 2023 · IPR2022-00646 · APJ David C Mckone · IPR · Final written decision

  Claims 1–4, 12–16, 18, and 19 are unpatentable; claims 5–11, 17, and 20 are not unpatentable, based on the Sunada grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “certain arguments based on the Kayak FWD. Reply 1–5. Yet, the Federal Circuit vacated the Kayak FWD and remanded to the Board for further consideration. Ex. 1006, 2 (“We vacate the Sunada IPR decision because it rests on an incorrect claim construction of the ‘federated computing environment’ limitation of all claims at issue, and we remand for further consideration under the correct construction.”), 8 (“The Board’s decision in IPR2016-00608 is vacated because it rests on an incorrect claim construction, and the matter is remanded for further proceedings consistent with this opinion.”).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “shown that Sunada discloses “protected resources” under our claim construction of the term and, accordingly, Petitioner has not shown, by a preponderance of the evidence, that Sunada anticipates claims 1, 3, 12, 14, 15, and 18.” slip op. at 17

  • Skill levelOther

    “1. Level of Skill in the Art Petitioner, relying on the testimony of Dr. Crovella, contends that a” slip op. at 17

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

    “shown that Sunada discloses “protected resources” under our claim construction of the term and, accordingly, Petitioner has not shown, by a preponderance of the evidence, that Sunada anticipates claims 1, 3, 12, 14, 15, and 18.” slip op. at 17

  Patent outcomesUS 7,631,346 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,631,346
• Koninklijke Philips N.V. / Philips North America LLC v. Fitbit, IncSome claims unpatentable
  PTAB · Aug 15, 2022 · IPR2021-00505 · APJ Stacey G White · IPR · Final written decision

  Claims 1, 2, 9–11, 16, 25, and 28 are unpatentable under § 102 as anticipated; claims 3–8, 12–15, 26, and 29 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Institution Decision, we adopted Petitioner’s assessment of the level of skill in the art, with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound. Dec. 7. Neither party provides substantive argument as to why its proposed level of skill is correct. Pet. 9; PO Resp. 2–3. We, however, are not persuaded that there is a material difference between the parties’ proposals. Based on this record, we apply the level of skill laid out in our Institution Decision (omitting the open-ended phrases “at least”) because it is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we find for the purpose of this Decision and based on the record before us, that a person of ordinary skill in the art at the relevant time would have a Bachelor’s Degree in an academic area emphasizing electrical engineering, computer science, or a similar discipline, and two years of experience in personal monitoring systems. We note, however, that our determinations on patentability would not change if we accepted Patent Owner’s proposed level of skill.” slip op. at 7

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

    “In our Institution Decision, we discerned a need to construe the term “activity points.” Dec. 8–11. There, we determined for the purposes of that Decision that “activity points” is broad enough to “include[] measures such as steps taken by the user, number of minutes the user has been active, or measures of energy expenditure such as a number of calories burned.” Id. at 11 (alteration in original). Patent Owner asserts that “the Board need not expressly construe this term to confirm the patentability of the challenged claims.” PO Resp. 4. Patent Owner, however, does not point out any error in our construction and based upon our review of the record, we are persuaded that our prior construction is correct and maintain our prior findings regarding the proper construction of activity points. Dec. 8–11. No other terms require express construction at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”).” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We find Petitioner’s arguments to be persuasive. The ’377 states that its device may “include one or more motion sensors.” Ex. 1001, 2:52–53. The subject patent further notes that “exemplary motion sensors which include, for example, one or more accelerometers.” Id. at 3:6–8. Indeed, Patent Owner points out that its “PO’s Response explained how the specification of the ’377 patent makes clear that a single claimed ‘sensor’ may include one or more sensing instruments.” Sur-Reply 2 (citing PO Resp. 7–12) (emphasis added). We find that the ’377 patent claims are not limited to a configuration in which multiple accelerometers would compose a single motion sensor. The ’377 patent specification explains that motion sensors may have one accelerometer and that the claimed device may have more than one motion sensor. See Ex. 1001, 2:38–46, 3:6–9. In addition, we are not persuaded that claim 1 requires “multiple different types of sensors.” See PO Resp. 8. While it is true that dependent claims 3–7 require specific types of sensors this does not limit the scope of the independent claims. Claims 1 and 25 recite that the plurality of sensors “generate sensor data which is representative of activity of the user.” Ex. 1001, 43:33–34, 46:3–4. Claim 10 recites that the plurality of sensors “generate sensor data which is representative of ambulatory activities of the user.” Id. at 44:10– 12. As such, we are persuaded that the claim language allows the use of any set of sensors that generates the requisite data (and includes the requisite “at least” one tri-axial accelerometer or three accelerometers as will be discussed below).” slip op. at 14

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

    “As such, Petitioner fails to establish why one of ordinary skill would have believed such a substitution to be desirable or in what way such a substitution would have been an improvement over Damen. Our inquiry into whether a sufficient motivation has been articulated by Petitioner is a flexible, but factual inquiry where we must determine whether sufficient evidence and argument have been presented to establish that one of ordinary skill in the art would have made such a modification. See Fleming v. Cirrus Design Corp., 28 F.4th 1214, 1223 (Fed. Cir. 2022). The Federal Circuit “has recognized that an obviousness showing ‘does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.’” Novartis Pharms. Corp. v. West-Ward Pharms. Int'l Ltd., 923 F.3d 1051, 1059 (Fed. Cir. 2019) (quoting In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)). Petitioner, however, still has a burden to establish a reason why a person of ordinary skill in the art would combine the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016). It is not sufficient to merely show that a person of ordinary skill “could have made but [rather, Petitioner must establish that a person of ordinary skill in the art] would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). That is the missing element in Petitioner’s contentions. Petitioner has not articulated sufficiently a rationale for modifying Damen to replace its three accelerometers with a tri-axial accelerometer. Claims 11 and 16 depend from claim 10 and the arguments and evidence presented for these claims do not address the shortcoming as to motivation to combine we note in reference to claim 10. Thus, Petitioner has not proven by a preponderance of the evidence that claims 10, 11, and 16 would have been obvious over Kroll and Damen.” slip op. at 37

  Patent outcomesUS 8,868,377 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,868,377
• Western Digital Corporation / Western Digital Technologies, Inc. et al. v. Martin KusterSome claims unpatentable
  PTAB · Feb 10, 2022 · IPR2020-01391 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 11, 12, and 14–19 are unpatentable: claims 11 and 12 are anticipated by Hsiao, and claims 11 and 14–19 are obvious over He and Cheng or He, Cheng, and Hiller.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposed level of ordinary skill does not differ materially from that presented by Mr. Welch. Both require a bachelor’s degree in many of the same fields and roughly one to two years of experience with USB protocols or USB product development. The arguments presented by Petitioner and Patent Owner do not indicate that the outcome of this case would change depending on the level of ordinary skill in the art. We, therefore, adopt Petitioner’s description, which we determine to be consistent with the level of skill reflected in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that we would reach the same conclusions under either proposed level of ordinary skill.” slip op. at 8

  • BurdenDecided for patent owner

    “Proof of conception must be by “corroborating evidence which shows that the inventor disclosed to others his ‘completed thought expressed in such clear terms as to enable those skilled in the art’ to make the invention.” Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985) (citing Field v. Knowles, 183 F.2d 593, 601 (CCPA 1950)); see also Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996) (corroboration requirement “arose out of a concern that inventors testifying in patent infringement cases would be tempted to remember facts favorable to their case by the lure of protecting their patent or defeating another’s patent”). Similarly, an inventor’s testimony alone is insufficient to establish an earlier reduction to practice. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169–71 (Fed. Cir. 2006). Instead, a party seeking to prove an actual reduction to practice must proffer evidence corroborating that testimony. Id. at 1170. The sufficiency of corroboration is determined according to a “rule of reason.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993). This, however, does not dispense with the requirement that some independent evidence provide corroboration. Coleman, 754 F.2d at 360. The requirement of “independent” corroboration requires evidence other than the inventor’s testimony. In re NTP, Inc., 654 F.3d 1279, 1291–92 (Fed. Cir. 2011). 3. Discussion We find that Patent Owner has not met its burden of establishing that Mr. Kuster conceived and reduced to practice his invention prior to the filing dates of Hsiao or He. By itself, Mr. Kuster’s testimony is insufficient to establish that he reduced his invention to practice prior to the November 23, 2010, filing date or Hsiao or the June 2, 2010, filing date of He. “Throughout the history of the determination of patent rights, oral testimony by an alleged inventor asserting priority over a patentee’s rights is regarded with skepticism, and as a result, such inventor testimony must be supported by some type of corroborating evidence.” Woodland Tr. v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998) (quoting Price, 988 F.2d at 1194). Patent Owner has failed to provide sufficient independent evidence corroborating Mr. Kuster’s testimony.” slip op. at 20

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

    “We do not agree with this argument. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Moreover, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” so the fact that it would take some creativity to carry out the combination does not defeat a finding of obviousness. KSR, 550 U.S. at 421; see also ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016) (“The rationale of KSR does not support [the] theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B.”). We find there is support for making this combination of He and Cheng in the testimony of Dr. Baker that addition of a controller is “conventional” in USB flash drives. Baker Decl. ¶ 167. We find that for the reasons given by Dr. Baker, a person of ordinary skill would have added a controller to He. We determine that the combination of He and Cheng teaches each limitation of claim 11. We address Patent Owner’s argument that there are objective indicia of obviousness, infra. We conclude that Petitioner has demonstrated that claim 11 would have been obvious over He and Cheng.” slip op. at 37

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for patent owner

    “attorney argument, not evidence.” Pet. Reply 26. We agree. Patent Owner does not back up its argument with testimony or other credible evidence. To demonstrate long-felt need, a patentee must point to an “articulated identified problem and evidence of efforts to solve that problem” which were, before the invention, unsuccessful. Tex. Instruments v. Int’l Trade Comm’n, 988 F.2d 1165, 1178 (Fed. Cir. 1993). All Patent Owner proves, if anything, is that after the USB 3.0 specification issued, a number of companies rushed in to provide contacts that met the new standard. Patent Owner does not demonstrate that they failed where Mr. Kuster succeeded. In fact, there is no evidence that Mr. Kuster ever commercialized his invention.8 8 Victorinox never paid for the work Mr. Kuster did on the USB 3.0 memory device, and to Mr. Kuster’s knowledge, never marketed the product. Kuster Dep. 22:21–24:13. Patent Owner contends “Mr. Kuster’s invention filled the existing need for a durable yet slim USB flash drive compatible with USB 3.0 that was easy to manufacture.” PO Resp. 77. But instead of presenting independent evidence of failure of the others to solve known technical or manufacturing problems, Patent Owner relies on generalized statements concerning the need for USB 3.0 connectors and solutions by others that Patent Owner contends have not been successful. PO Resp. 74–77. We are not persuaded by Patent Owner’s argument that Mr. Kuster’s alleged invention filled a long-felt need where others failed.” slip op. at 29

  Patent outcomesUS 8,693,206 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,693,206
• Shenzhen Carku Technology Co., Ltd. v. The Noco CompanySome claims unpatentable
  PTAB · Nov 3, 2021 · IPR2020-00944 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–10 and 12–23 are unpatentable over the listed grounds; claim 11 was not shown unpatentable because the evidence did not establish the claimed connection sequence.

  RulingsFinal written decision

  • Expert testimonyOther

    “Q. So Richardson contemplates a flow of control where the shunt calibration flag was not set, correct? A. That is reasonable. He shows an option -- an option of a “no” result from Step 406. Ex. 1047, 110:14–18. Dr. Wood also agrees that when the shunt calibration flag is not set and the procedure advances to Step 420, the contact relay in Richardson is still open: Q. Now, if the shunt calibration flag is not set and we go to Step 420, the starter contact relay in Richardson is still open, correct? A. That is my understanding. Id. at 77:10–13. Dr. Wood further agrees that when the shunt calibration flag is not set and the procedure advances to Step 214, where reverse polarity connection is tested, the starter contact relay is still open: Q. Okay. Then if we continue to Step 214 in this example, where the shunt calibration flag was not set, when we’re testing for the condition reverse jumper cable voltage, the starter contact relay is still open, right? A. That appears to be the case.” slip op. at 65

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Referring to FIG. 3, Klang states: “[t[he reverse polarity sensor 48, connected in a like manner across the battery terminals 20, 22, senses negative voltage indicating that the battery leads are connected backwards.” Ex. 1007, 6:20–23. Klang’s reverse polarity sensor provides an output signal (sensed negative voltage) indicating whether the battery has a proper polarity connection. Klang states: “[i]f the start button has not been pressed, at step 144, the OCV [battery open circuit voltage] is compared to a low negative voltage to determine whether the conducting cables 18 are properly connected to the battery 16. If the OCV is less than -0.5V, the method proceeds at step 146 to notify the operator that the leads are reversed.” Ex. 1007, 8:55– 60.” slip op. at 26

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “references. Accordingly, consideration and discussion of the objective evidence of nonobviousness is unnecessary.” slip op. at 92

  • ExcludeMotion to exclude, deniedDenied

    “discussed below, the Motion is denied.” slip op. at 94

  Patent outcomesUS 9,007,015 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,007,015
• Intel Corporation v. VLSI Technology LLCSome claims unpatentable
  PTAB · Jan 12, 2021 · IPR2019-01195 · APJ Minn Chung · IPR · Final written decision

  Claims 13 and 14 are unpatentable as anticipated by Kim; claims 17, 18, and 20 were not shown unpatentable over Kim and Lee because the proposed combination was inadequately explained.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “’026 patent would have had a Master’s degree in Electrical Engineering or Computer Engineering, plus at least two years of experience in integrated circuit design, or alternatively a Bachelor’s degree in one of those fields plus at least four years of experience in integrated circuit design. Pet. 16 (citing Ex. 1102 ¶ 49). In our Institution Decision, we found Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, preliminarily adopted Petitioner’s unopposed position as to the level of ordinary skill in the art. Inst. Dec. 15. Neither Patent Owner, in its Response, nor Dr. Annavaram, in his declaration, proposes a level of ordinary skill in the art. Instead, Patent Owner states that “Patent Owner applies Petitioner’s stated skill level for this response” (PO Resp. 26), and Dr. Annavaram similarly states that “[f]or the purpose of this declaration, I adopt Dr. Harris’ definition of a [person of ordinary skill in the art]” (Ex. 2009 ¶ 24). Nothing in the full record persuades us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Based on the complete record, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had a Master’s degree in Electrical Engineering or Computer Engineering, plus at least two years of experience in integrated circuit design, or alternatively a Bachelor’s degree in one of those fields plus at least four years of experience in integrated circuit design. Inst. Dec. 15; see Pet. 16 (citing Ex. 1102 ¶ 49).” slip op. at 10

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

    “To the extent Patent Owner argues that these particularized selection clauses recited in different claims must have the same or similar meaning because they all use the word “selecting” (see PO Resp. 28–29), we disagree with Patent Owner. See IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109, 1117 (Fed. Cir. 2011) (“We caution that claim language must be construed in the context of the claim in which it appears. Extracting a single word from a claim divorced from the surrounding limitations can lead construction astray. Claim language must be construed in the claim in which it appears.” (emphasis added)). The selection clauses recited in these claims are plainly different on the face of the claims when considering the material differences in the claim language set forth above. According the same meaning to the limitations that recite “select . . . based on” indicators, “select . . . when” certain conditions are met, and “select . . . out of a group” of values would be improper because it would blur the material differences in the claim language recited expressly in the claims. Instead, we interpret the selection clauses recited in the challenged claims “in the context of the particular claim in which the disputed term appears” and “in the context of the entire patent, including the specification.” Phillips, 415 F.3d at 1313. In other words, we do not construe the single word “selecting” in isolation, but, rather, interpret the full selection clauses recited in the challenged claims in the context of the entire patent. Claim 13 recites “selecting, by the control circuit, a value of a control signal based on the mode indicator and on the leakage indicator.” In our view, the plain meaning of this limitation is clear on the face of the claim—a value of a control signal is selected based on two indicators, the mode indicator and the leakage indicator.” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Tr. 47:7–23. Because the output of Kim’s NAND gates will be different depending on the value of Kim’s memory cells C1–CN allowed to “pass through,” we agree with Petitioner that the value of Kim’s memory cells C1– CN (the claimed “leakage indicator”) “plays a role” in deciding what the output of Kim’s NAND gates (the claimed “value of the control signal”) will be. Moreover, Patent Owner acknowledged that the output of Kim’s NAND gate is determined based on the inputs to the NAND gates (i.e., the sleep signal input and the memory cell signal input). JUDGE CHUNG: But, knowing a little bit about how a NAND gate works, isn’t it the case that the input to the NAND gates, G1 through GN, with the input of the sleep signal and the C1 through CN signal, isn’t it the case that input to the NAND gate determines what the output is? MS. ZHONG: Okay. So any logic gate, the output will depend on the input. That’s for sure. Tr. 44:18–25; but see id. at 45:3–10 (stating that even if the “output is in control of the input, . . . that does not mean the selection is based on that input”). Thus, we find that Kim’s NAND gate (the claimed “control circuit”) operates to determine its output (the claimed “value of the control signal”) based on its input of the sleep signal (the claimed “mode indicator”) and the memory cell value input (the claimed “leakage indicator”). As discussed in Section III.B, the Specification indicates that “select[ing] the value of the control signal based on the mode indicator and on the leakage indicator” recited in claim 13 is synonymous to determining the value based on the recited indicators. See Ex. 1101, 4:4–11. Thus, the evidence of record shows that Kim teaches “selecting, by the control circuit, a value of a control signal based on the mode indicator and on the leakage indicator,” as recited in claim 13.” slip op. at 44

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

    “We are not persuaded by Petitioner’s argument and evidence. First, although Petitioner proposes “[s]ubstituting Lee’s inputs of leakage current and temperature for generating a power gate control signal” (i.e., Lee’s “control signal (BIAS)”) for “Kim’s inputs of leakage current and other ‘stimuli’ for generating a power gate control signal” (Pet. 64 (citing Ex. 1102 ¶ 115)), neither Petitioner nor Dr. Harris explains adequately how they are proposing to “substitute” Kim’s control signal with Lee’s “control signal (BIAS).” For example, Figure A reproduced above does not show how Petitioner or Dr. Harris proposes to use Lee’s “control signal (BIAS)” in the proposed combination. Petitioner asserts that “[a]lthough Lee’s control signal is analog and Kim’s control signal is digital, it was well known to apply teachings in an analog domain to a digital domain, and conversions between analog and digital domains were easy to implement.” Pet. 66 (emphases added) (citing Ex. 1102 ¶ 121; Ex. 1115). Dr. Harris similarly states that Figures A and B show examples of obvious ways to use in Kim’s system Lee’s teaching of setting conductance of the array based on temperature. A POSA would have found both of these ways obvious. That Lee uses an analog control signal and Kim uses a digital control signal would have presented no obstacle to a POSA. . . . That is, converting analog circuit elements and signals to digital was well known long before the ’026 patent. Ex. 1102 ¶ 121 (emphases added) (citing (Ex. 1115) (“Analog-to-digital converters (ADC’s) are ubiquitous, critical components of software radio and other signal processing systems.”)). But Dr. Harris does not explain adequately how “to use in Kim’s system” the digitized BIAS signal of Lee. See id. The only additional input signal shown in Figure A compared to Figure 4 of Kim is the temperature line that has the value of 0 when the temperature is cold and the value of 1 when the temperature is hot. See Ex. 1102 ¶ 116 (Fig. A). There is no explanation of how the modified teaching of the BIAS signal of Lee (i.e., modified or converted to a digital signal) would have worked in the proposed combination of Figure A.” slip op. at 69

  Patent outcomesUS 8,081,026 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,081,026
• Intel Corporation v. VLSI Technology LLCSome claims unpatentable
  PTAB · Feb 6, 2020 · IPR2018-01033 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 17 is anticipated by Bednar, and claims 1 and 17 are obvious over Bednar and Gunther; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

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

    “requesting institution of inter partes review of claims 1, 4–6, and 17–19 of U.S. Patent No. 8,004,922 B2 (Ex. 1001, “the ’922 patent”). VLSI Technology LLC (“Patent Owner”) filed a Preliminary Response (Paper 12). Applying the standard set forth in 35 U.S.C. § 314(a), we instituted an inter partes review of all challenged claims. Paper 17 (“Inst. Dec.”).” slip op. at 2

  • Skill levelSkill level board ownDecided for petitioner

    “to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “at least (1) an undergraduate degree in electrical engineering (or an equivalent subject), together with three years of post-graduate experience designing power management circuits; or (2) a master’s degree in electrical engineering (or equivalent subject) together with two years of post-graduate experience designing power management circuits.” Inst. Dec. 8–9; see Pet. 36 (citing Ex. 1002 ¶¶ 26–27).” slip op. at 9

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

    “construction of “memory device,” specifically whether it encompasses a latch. Neither party argues that “memory device” is expressly defined in the ’922 patent. Accordingly, the plain and ordinary meaning of the term controls. And, the standard under which we construe the term is the broadest reasonable construction in light of the specification.” slip op. at 45

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

    “preponderance of the evidence, that (1) claim 17 is anticipated by Bednar, and (2) claims 1 and 17 would have been obvious over the combination of Bednar and Gunther. For the reasons discussed above, Petitioner has not demonstrated, by a preponderance of the evidence, that (1) claim 1 is anticipated by Bednar or (2) claims 4–6, 18, and 19 would have been obvious over the combination of Bednar, Gunther, and Willingham. The chart below summarizes our conclusions.” slip op. at 91

  Patent outcomesUS 8,004,922 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,004,922
• Intel Corporation v. VLSI Technology LLCSome claims unpatentable
  PTAB · Feb 6, 2020 · IPR2018-01144 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 2, 7, and 8 are unpatentable as obvious over Bednar and Gunther; claim 3 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “at least (1) an undergraduate degree in electrical engineering (or an equivalent subject), together with three years of post-graduate experience designing power management circuits; or (2) a master’s degree in electrical engineering (or equivalent subject) together with two years of post-graduate experience designing power management circuits.” Inst. Dec. 8; see Pet. 29 (citing Ex. 1102 ¶¶ 26–27).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “construction is erroneous. Accordingly, because the ’922 patent defines “power island,” we maintain and reaffirm that “power island” means a “group of components with similar power requirements.”” slip op. at 12

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

    “not to expressly construe “conversion controller” was erroneous or that an express construction is required to resolve any dispute between the parties. Accordingly, we maintain and reaffirm that because the construction of “conversion controller” does not resolve a controversy in the matter before us, we decline to construe it expressly.” slip op. at 13

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

    “construction of “memory device,” specifically whether it encompasses a latch. Neither party argues that “memory device” is expressly defined in the ’922 patent. Accordingly, the plain and ordinary meaning of the term controls. And, the standard under which we construe the term is the broadest reasonable construction in light of the specification.” slip op. at 86

  Patent outcomesUS 8,004,922 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,004,922
• Wabco Holdings Inc. / Laydon Composites Ltd. v. Transtex Composites Inc.Some claims unpatentable
  PTAB · Jan 10, 2020 · IPR2018-01319 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1, 5–11, and 15–19 are unpatentable as obvious over Layfield and Rinard; claims 2–4, 12–14, and 20 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Micklow does not explain how or why he proposes a different level of ordinary skill in the art as compared to the level proposed by Petitioner and preliminarily adopted in our Decision on Institution. See generally id. ¶¶ 28–31. Additionally, neither Patent Owner nor Dr. Micklow argues that the difference in the proposed level of ordinary skill in the art affects the outcome of this proceeding; Dr. Micklow, in fact, states the contrary—that his opinions are the same under either level of skill. See Ex. 2001 ¶ 31.7 Nothing in the full record is sufficient to persuade us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm our preliminary finding that the level of ordinary skill in the art at the time of the invention would have been “a bachelor’s degree in mechanics, aeronautics, materials, or a related field of study, or equivalent experience, and at least two years of experience in the development of components of vehicles, or an equivalent amount of relevant work or research experience.” Inst. Dec. 10–11; see Pet. 10.” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Turning to Petitioner’s video (Ex. 1018), Petitioner asserts testing of commercial versions of the Layfield fairing illustrates what one skilled in the art would have understood from Layfield itself, namely that the Layfield strut is adapted to sustain an elastic deformation when a load is applied to the resilient strut when the skirt panel moves away from the configuration reducing air drag about the trailer and to self-recover the resilient strut original shape when the load is removed. Pet. 29 (citing Ex. 1010 ¶¶ 102–103).16 We afford this evidence little weight for several reasons. First, the video does not show the strut or the bending of a strut. See Ex. 1018. In fact, the only feature shown is a skirt panel attached to a trailer. that because thermoplastic material is more resilient than aluminum, we should adopt Petitioner’s argument. Pet. Reply 15–16 (citing Ex. 1058, 1– 12; Ex. 1010 ¶¶ 77–82). We must base our decision in this case on the arguments and evidence presented. As explained above, the record before us has contradictory evidence in the form of Dr. Micklow’s testimony that was not before the examiner. 16 Petitioner does not cite Exhibit 1018 in the Petition, but instead cites to Mr. Tres’s testimony regarding the exhibit. Id. Thus, from the video, it is unknown whether the skirt panel is attached to the trailer by one strut, multiple struts, or additional features. Second, Petitioner does not identify clearly how the tested system precisely corresponds to the teachings of Layfield. For example, Patent Owner raises a number of issues with the struts and panels in the video to which Petitioner provides either no response or an unconvincing response. For example, Patent Owner argues that each embodiment of Layfield uses trusses 36 to “interconnect each skirt panel and reinforce the panel assembly,” while it is asserted that the skirt panels in the video do not have trusses and are not interconnected. PO Resp. 26. Petitioner argues that the skirt panels in the video were made according to the teachings of Layfield and did include “integral vertical lateral side edges as the connecting mechanism for adjacent panels.” Pet. Reply 19 (citing Exs. 1018, 2003, 2005; Ex. 1004, 18:36–39; Ex. 1010 ¶¶ 63–64; Ex. 1055 ¶¶ 37–38). Other than stating that the skirt panels have connecting mechanisms, Petitioner does not address the fact that the panels are not interconnected according to the teachings of Layfield, as Patent Owner correctly pointed out. See generally id. at 19–21.” slip op. at 28

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

    “components (see, e.g., id. at 17:1–10), Layfield does not contain any express disclosure concerning the flexibility of the struts. Nor does Layfield include any discussion about the desirability of strut flexibility. The closest Layfield comes to discussing flexibility of the struts is by frequently referring to the struts as “support struts” (see, e.g., id. at 18:40) and discussing the use of a “bracket means,” which is on the struts, to “rigidly secure” the skirt panels to the trailer (id. at 6:48–49). Further, Layfield’s detailed discussion of the embodiment of support strut 58 shown in Figure 10, reproduced below, highlights the bracing and reinforcement features. Figure 10, above, shows the construction detail of a support strut 58. Ex. 1004, 15:45. Specifically, Layfield discloses that strut 58 includes “a pair of spaced-apart vertical members 160, which are braced by horizontal cross-members 162” and “reinforcing rectangular lattice 170.” Id. at 15:46– 54. Thus, we agree with Patent Owner’s argument that “Layfield does not expressly teach that the ‘support struts 58’ are ‘resilient.’” PO Resp. 42 (citing Ex. 2001 ¶¶ 148–149). We reiterate that Petitioner’s first challenge is based on anticipation. Thus, Petitioner must show that resilient struts are “either expressly or inherently described, in” Layfield. Verdegaal Bros. Inc., 814 F.2d at 631; see also PO Resp. 42. In its Reply Brief and at the oral hearing, Petitioner contends that its challenge is based on express disclosure, not inherency. See Pet. Reply 17–18; Tr. 9:21–11:4 (arguing that “this is not a case of inherency”). Petitioner contends one of ordinary skill in the art “would have understood, based upon Layfield’s express disclosures concerning the material, structure, and connection of the strut, that the Layfield strut is resilient and can sustain significant and substantial elastic deformation.” Pet. Reply 18 (citing REG Synthetic Fuels, LLC v. Neste Oil Oyj, 841 F.3d 954, 960–61 (Fed. Cir. 2016)). Whether we analyze Petitioner’s argument based on express disclosure or inherency, we reach the same result. To begin, although we agree with Petitioner that a prior art reference “need not satisfy an ipsissimis verbis test” (Pet. Reply 17 (quoting In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009))), there is no express statement that Layfield’s strut is resilient or otherwise exhibits a characteristic synonymous with resiliency. Additionally, we do not agree that Petitioner’s reliance on the thermoplastic materials, disclosed by Layfield for construction of the strut, establishes whether the strut is resilient and capable of elastic deformation. The evidence submitted by the parties is contradictory as to whether one of ordinary skill in the art would have understood Layfield’s struts to be resilient based on the material alone.15 Compare Ex. 1010 ¶¶ 74–82 15 Petitioner also points to a finding by the examiner, during prosecution of the ’017 patent application, that an aluminum strut was resilient, and argues (Mr. Tres opining as to the materials disclosed by Layfield), with Ex. 2001 ¶¶ 160–164 (Dr. Micklow contradicting Mr. Tres’s testimony regarding the materials disclosed by Layfield). Further, the evidence is contradictory as to whether one of ordinary skill in the art would have understood from the design of Layfield’s strut, specifically the taper design and mechanism by which the strut connects to the trailer I-beam, that the strut is resilient. Compare Ex. 1010 ¶¶ 83–90 (Mr. Tres’s testimony regarding the design and connection mechanism), with Ex. 2001 ¶¶ 165–175 (Dr. Micklow’s contradictory testimony). Turning to Petitioner’s video (Ex. 1018), Petitioner asserts testing of commercial versions of the Layfield fairing illustrates what one skilled in the art would have understood from Layfield itself, namely that the Layfield strut is adapted to sustain an elastic deformation when a load is applied to the resilient strut when the skirt panel moves away from the configuration reducing air drag about the trailer and to self-recover the resilient strut original shape when the load is removed. Pet. 29 (citing Ex. 1010 ¶¶ 102–103).16 We afford this evidence little weight for several reasons. First, the video does not show the strut or the bending of a strut. See Ex. 1018. In fact, the only feature shown is a skirt panel attached to a trailer.” slip op. at 26

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

    “Additionally, Patent Owner similarly contends that the modifications proposed are redundant of Layfield’s “flexible lower panel 20,” which already “allow[s] flexing when impacting a road object.” PO Resp. 59 (citing Ex. 1004, 14:13–18); see PO Sur-reply 26–27. We disagree. Again, the proposed modifications here are to Layfield’s struts. In the context of Petitioner’s anticipation challenge, we agreed with Patent Owner and found that Petitioner had not established sufficiently on the record that Layfield’s struts were resilient. See supra, § II.D.a.i., ii. Therefore, the proposed modification addressed here, to make Layfield’s struts resilient, does not duplicate the objective of Layfield’s flexible lower panel 20 at least because (a) Layfield’s struts are a different structure than lower panel 20 and (b) modification of Layfield’s struts would provide greater impact protection to other panels aside from just lower panel 20. See Pet. Reply 26–27 (One of ordinary skill in the art “would have been motivated to do so because Rinard and Layfield both seek to provide fairing panels with ‘sufficient flexibility’ to bend when encountering objects.” (citing Ex. 1004, 12:67– 13:4; Ex. 1006, 10:43–50; Ex. 1055 ¶ 47)). We determine that Petitioner has shown that one of ordinary skill in the art would have had a reason with rational underpinning to look to other similar types of trailer components that are flexible to make further improvements to Layfield’s design. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Third, Patent Owner contends one of ordinary skill in the art “would not have a reasonable expectation of success at achieving the claimed technology by looking to the vertical supports of Rinard’s air scoops to modify the Layfield skirt panels 10 and support struts 58.” PO Resp. 61 (citing Ex. 2001 ¶¶ 237–240). Patent Owner asserts that because Layfield’s upper skirt panels are rigid and non-moving one of ordinary skill in the art “would not reasonably expect the hypothetical modified panels (with their reinforcing trusses 36) to move.” Id. Patent Owner also argues that Rinard teaches “an upper skirt panel that is rigid and non-moving” and so it is not reasonable to expect modifying Layfield as proposed would somehow cause Layfield’s fixed skirt panels to be able to move as claimed. PO Sur-reply 27–28 (citations omitted). We disagree for the same reasons discussed above—namely, we find Layfield’s upper skirt panels to be resilient. Therefore, one of ordinary skill in the art would have a reasonable expectation of success in achieving a resilient strut adapted as claimed by modifying Layfield’s strut in light of Rinard, for the reasons proposed by Petitioner. See Pet. Reply 27 (“Applying this solution to the Layfield skirt panel and struts would yield the predictable result of allowing the Layfield skirt panel 10 and struts 58 to absorb greater impacts without having to be repaired or replaced.” (citing Ex. 1021, 7–8, 11–12)).” slip op. at 42

  Patent outcomesUS 8,449,017 mixed
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,449,017

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.