• Shenzhen Buxiang Network Technology Co., Ltd. v. Sun Pleasure Co. LimitedNo claims unpatentable
  PTAB · Apr 11, 2022 · IPR2021-00080 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–9 were not shown unpatentable because Metzger lacked the claimed fluid passage, and Wu was not prior art based on the claims’ earlier reduction to practice.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the testimony of Mr. Kuchel, Petitioner submits that a person of ordinary skill in the art “would have either (i) a bachelor’s degree in mechanical engineering, or an equivalent field, or (ii) would have an associate degree in mechanical engineering, or an equivalent field, and two years of practical experience in inflatable product design.” Pet. 16 (citing Ex. 1002 ¶ 26). In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 9. In its Response, Patent Owner makes arguments that rely on Petitioner’s proposed level of ordinary skill in the art, but does not dispute Petitioner’s definition. See PO Resp. 35, 39–53 (citing Ex. 2014 ¶ 66). Based on our review of the complete record, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution.” slip op. at 10

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

    “Petitioner proposes claim constructions for the terms “substantially below” and “substantially inwardly” recited in claims 1 and 6. Pet. 40–41. In the Decision on Institution, we determined that it was not necessary to construe the terms at that stage of the proceeding. Dec. Inst. 9–10 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Patent Owner contends “the claim terms ‘substantially below’ and ‘substantially inwardly’ are sufficiently clear on their face to preclude any need for claim construction,” but proposes claim constructions that differ somewhat from Petitioner’s proposed constructions in the event the Board determines that these terms require claim construction. PO Resp. 13, 15–16. Patent Owner also proposes a claim construction for the term “upper tubular periphery” recited in claims 1 and 6 that Petitioner opposes. Id. at 17–19; Pet. Reply 7–10. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec, 868 F.3d at 1017. Because the outcome of our decision does not depend on either parties’ construction of the terms “substantially below,” “substantially inwardly,” or “upper tubular periphery,” we need not construe these terms to resolve the issues in dispute in this proceeding.” slip op. at 11

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

    “We agree with Patent Owner that Metzger’s gaps define fluid passages located between adjacent side support beams 25 (i.e., “internal walls”) and are not formed in any of the side support beams. We are not directed to any written description in Metzger indicating that the gaps are formed in a side support beam.7 Instead, Figures 5 and 6 of Metzger depict the gaps as being defined between four distinct side support beams 25. Furthermore, as Patent Owner points out, Mr. Kuchel appears to agree that there are no passages formed through the side support beams 25 of Figures 5 and 6. Ex. 2003, 107:12–108:9, 108:17–108:21. For these reasons, we determine that Metzger’s gaps are not formed through an internal wall, as required by claim 1. In the Reply, Petitioner asserts that, even if Metzger discloses four discrete, spaced-apart beams or walls, “the gaps or slices between walls are apertures in a structure through which air can pass.” Pet. Reply 15 (emphasis added). This argument is not persuasive because claim 1 recites that the fluid passage is formed through the internal wall (which Petitioner asserts is met by Metzger’s side support beam 25), not just any structure. Petitioner’s general assertion that air passes through “a structure” fails to establish that the gaps are formed in a side support beam.” slip op. at 16

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

    “Specifically, Petitioner argues that one of ordinary skill in the art would have understood from Metzger “that an air passage would be necessary to bypass the side support beam 25 and inflate the upper tubular periphery for the air mattress to function as intended.” Id. (citing Ex. 1002 ¶ 200). According to Petitioner, because Metzger discloses only a single air inlet valve, an ordinarily skilled artisan would have understood that providing openings, or fluid passages, through the side support beam 25, in lieu of or in addition to the gaps between the side support beam 25, would have been a simple solution to adequately inflate the peripheral frame of the mattress defined by the side support beam(s) 25. Id. at 74–75 (citing Ex. 1002 ¶ 200). Petitioner thus presents two alternate theories for modifying Metzger: (1) providing fluid passages in at least one side support beam 25 in addition to the gaps, and (2) providing fluid passages in lieu of the gaps. In support of the first theory, Petitioner only argues that providing fluid passages in the side support beams, in addition to the gaps between the ends of the side support beams, would have allowed the peripheral frame to inflate more freely. Id. at 75 (citing Ex. 1002 ¶ 201). In its Response, Patent Owner contends that “Petitioner is just wrong.” PO Resp. 45 (citing Ex. 2001 ¶¶ 146–149). Dr. Letton testifies that pumps used to inflate air mattresses are low flow and low pressure and generally inflate an air mattress to a maximum pressure of around 1 psi. Ex. 2001 ¶ 147. Dr. Letton further testifies that, with Metzger’s design, the” slip op. at 28

  Patent outcomesUS 7,353,555 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,353,555
• Med-El Elektromedizinische Geräte Ges.M.B.H. v. Sonova AGAll claims unpatentable
  PTAB · Mar 31, 2022 · IPR2021-00023 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1, 2, 7, 8, and 14 are unpatentable over Meier; claims 5, 10, and 11 are unpatentable over Meier and Kenigsberg.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “porous cover element for acoustic aperture SE, Meier’s disclosure is not so limited. Id. at 3:18–21. For example, Meier describes “cover elements for vents.” Id. at 4:66; see Ex. 2011, 73:1–5 (Dr. Giacomin’s similar testimony). Petitioner, relying on the testimony of Dr. Giacomin, explains that “[b]ased on the disclosure of Meier, the cover element covers the air vent in a manner similar to how the cover elements are shown covering the acoustic input or output apertures, e.g., the cover element is assembled with the housing such that crevices are formed between these two components.” Pet. 26–27; see also id. at 21 (same); Ex. 1002 ¶¶ 42, 44–46, 52, 60–61. Dr. Giacomin testifies that even when a nonporous cover element is used, the cover element needs to be coated with a hydrophobic coating to prevent water from entering the vents, i.e., crevices. Ex. 2011, 73:1–23. Dr. Giacomin’s testimony below illustrates Petitioner’s position.” slip op. at 30

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “materials science.” Pet. 17–18 (citing Ex. 1002 ¶ 20). Patent Owner does not propose its own definition or dispute Petitioner’s proposed definition except to assert that “other disciplines including electrical engineering should be included.” PO Resp. 8–9. In light of the record before us, we determine that Petitioner’s proposed definition is consistent with the prior art of record and apply it for this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings on ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). We also include disciplines, including electrical engineering, as Patent Owner proposes. Accordingly, the definition for a person of ordinary skill in the art, applied herein, “would have had, as of December 2003, the equivalent of a Bachelor of Science degree in chemical engineering, mechanical engineering, electrical engineering, physics, or a related discipline and at least two years of related experience, preferably with a working understanding of plastics manufacturing, chemistry, and/or materials science.”” slip op. at 9

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

    “Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with Patent Owner that this term need not be expressly construed because, as explained below, Petitioner has sufficiently shown the cited art discloses a “coating” regardless of whether we adopt Petitioner’s proposed construction.” slip op. at 11

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Petitioner has not persuasively explained why we should depart from the construction for “hydrophobic” adopted in the district court. Nor has Petitioner persuasively explained why here different constructions should apply in different forums. See Tr. 6:16–7:9, 32:3–9. Pursuant to 37 C.F.R. § 42.100(b), we have considered the district court construction of the term “hydrophobic,” which is consistent with the record evidence, and adopt it as our own. Therefore, we construe “hydrophobic” to mean “having resistance to water penetration wherein the contact angle between the water droplet with the surface exceeds 90 degrees.”” slip op. at 15

  Patent outcomesUS 7,267,847 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,267,847
• Phillips 66 v. Magēmā Technology, LLCInstitution denied
  PTAB · Jan 21, 2022 · IPR2021-01173 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Weiss-based grounds teach or suggest the claimed residual marine fuel oil.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “D. Discretionary Denial Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 15 (PTAB May 13, 2020) (precedential). Prelim. Resp. 12–31. Petitioner disagrees. Pet. 6–12. Because we deny institution based on the merits of Petitioner’s unpatentability arguments, we need not decide whether to exercise discretion to deny institution.” slip op. at 17

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

    “We determine we need not expressly construe any terms of the challenged claims at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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 7

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

    “feedstock HMFO and the product HMFO of the challenged claims, as Petitioner argues it does, Petitioner must show that Weiss ’974 teaches or suggests four facts: (1) the pre-hydrotreatment HSFO is a residual petroleum 10 Petitioner defines “HSFO” as being a “high-sulfur HMFO” and “LSFO” as being a “low-sulfur HMFO.” Pet. 1. product, (2) the pre-hydrotreatment HSFO is ISO-8217-compliant, (3) the post-hydrotreatment LSFO is a residual petroleum product, and (4) the posthydrotreatment LSFO is ISO-8217-compliant. Petitioner does not show all four of these facts sufficiently to demonstrate a reasonable likelihood of prevailing in showing that the challenged claims are anticipated by Weiss ’974 or obvious over the combination of Weiss ’974 and Weiss ’515.” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 10,584,287
• Tomofun, LLC v. Doggyphone LLCRehearing denied
  PTAB · Dec 10, 2021 · IPR2021-00260 · APJ Patrick R Scanlon · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution because Petitioner did not show the Board overlooked or misapprehended its arguments or abused its discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “Substantial evidence is ‘such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.’” OSI Pharm., LLC v. Apotex” slip op. at 2

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

    “Claim(s) Ground 35 U.S.C. § Reference(s)/Basis Challenged 1 7 102(b) Alasaarela1 2 8 103(a) Alasaarela 3 7–9 102(b) Beccaria2 4 7–9 103(a) Carelli,3 Beccaria 5 7–9 103(a) Bloksberg,4 Beccaria Pet. 4. Petitioner asserts that Alasaarela discloses the audio signal limitation for Grounds 1 and 2. Id. at 23–24, 31. Petitioner asserts that Beccaria discloses the audio signal limitation for Ground 3, and Carelli discloses the audio signal limitation for Ground 4. Id. at 36–37, 48. For Ground 5, Petitioner asserts that Bloksberg discloses the audio signal limitation. Id. at 60.” slip op. at 3

  • BurdenDecided for patent owner

    “As such, the Petition does not indicate with sufficient particularity that Petitioner relies on the Examiner’s finding as a basis for asserting that Bloksberg discloses the audio signal limitation and, thus, does not satisfy Petitioner’s burden on this point. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio- Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). Because the Petition did not indicate clearly that it was relying on the Examiner’s finding, we could not have misapprehended or overlooked such a position. In addition, Patent Owner was not afforded a fair opportunity to dispute any reliance on the Examiner’s finding or the reasoning underlying the finding.” slip op. at 5

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

    “We disagree with Petitioner’s characterization of Ground 3 as being based on obviousness. Rather, the Petition clearly asserts for Ground 3 that “Claims 7-9 are anticipated under 35 U.S.C. § 102 by Beccaria[].” Pet. 4; see also id. at 32 (“Ground 3 – Claims 7–9 Are Unpatentable As Anticipated By Beccaria[]”). Petitioner’s Ground 3 analysis of claim 7 relies on Beccaria disclosing each limitation, including the audio signal limitation. Id. at 32–40. Petitioner’s Rehearing Request does not direct us to any portion of the Petition for Ground 3 that asserts any claim limitation would have been obvious over Beccaria, alone or in combination with another reference. Accordingly, we are not persuaded that we misapprehended Petitioner’s argument with respect to Beccaria.” slip op. at 9

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 9,723,813
• Med-El Elektromedizinische Geräte Ges.M.B.H. v. Advanced Bionics AGSome claims unpatentable
  PTAB · Jun 2, 2021 · IPR2020-00190 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1, 2, and 4–7 are unpatentable as obvious over Dooley and von Ilberg 1999; claims 3 and 8 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence at this stage of the proceeding, including the asserted prior art.” Dec. Inst. 21. In its Response, Patent Owner notes that “Dr. Zeng explains that he would particularly emphasize experience relating to designing or developing cochlear implants and hearing aids, or systems for fitting such prostheses to patients,” but indicates that it does not dispute Petitioner’s proposed level of ordinary skill in the art for the purposes of this proceeding. PO Resp. 13 (citing Ex. 2014 ¶ 66). Based on our review of the complete record, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution. We” slip op. at 9

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

    “Petitioner asserts that the Specification of the ’747 patent defines the term “electric-acoustic processor.” Pet. 20 (citing Ex. 1001, 10:65–67, 11:1–7). In the Decision on Institution, we determined that it was not necessary to construe “electric-acoustic processor” at that stage of the proceeding. Dec. Inst. 22 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Patent Owner agrees the term “electric-acoustic processor” does not require construction for purposes of this proceeding. PO Resp. 14. Accordingly, we do not expressly construe “electric-acoustic processor” for this Decision.” slip op. at 10

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

    “that “configured to generate or apply . . . acoustic stimulation signals to the acoustic sensing organs of the ear” means more than simply being capable of applying acoustic stimulation signals. Dec. Inst. 28. In its Response, Patent Owner argues that the term should be given its plain meaning and does not require explicit construction. PO Resp. 15–16. Patent Owner adds that: To the extent there is a dispute, Patent Owner agrees with the Board’s reasoning that the “configured to” language does not merely reflect an intended use and requires more than a device that is simply “capable of” generating or applying the recited acoustic or electric stimulation in different or separate configurations. Id. at 16 (citing Dec. Inst. 28). Petitioner does not respond to Patent Owner’s assertion that “configured to generate or apply” should be given its plain meaning but does indicate that it disagrees with our “construction” of the term “configured to.” Pet. Reply 14–15 (citing Dec. Inst. 27–28). Petitioner, however, does not present any reasoning supporting its assertion the Board was wrong or offer any argument regarding how “configured to” should be construed. See generally Pet. Reply. We did not expressly construe “configured to” or “configured to generate or apply” in the Decision on Institution, but, as noted above, we did determine that that “configured to generate or apply . . . acoustic stimulation signals to the acoustic sensing organs of the ear” means more than simply being capable of applying acoustic stimulation signals. Dec. Inst. 28. Based on the complete record, we still are not persuaded by Petitioner’s argument that “configured to” should be construed as merely “capable of,” and for the reasons in the Decision on Institution, which we adopt here, we determine acoustic sensing organs of the ear” means more than simply being capable of applying acoustic stimulation signals.” slip op. at 11

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

    “Anderson discloses an embodiment (“the acoustic embodiment”) in which earpiece 10 includes speaker 15 that generates acoustic waves (i.e., acoustic signals) to stimulate the user’s ear. Ex. 1003, 3:58–60, 4:33–35, 5:18–21, 6:63–67, Figs. 1, 2. Anderson also discloses in Figure 10 a different embodiment (“the cochlear implant embodiment”) that combines earpieces 10’ and 10” with a cochlear implant system. Id. at 27:25–45, Fig. 10. In this embodiment, “[s]peakers 15 in the left and right earpieces serve no purpose in the cochlear implant application, as the user is profoundly deaf, and may be disconnected to conserve power.” Id. at 27:52– 55. Because Anderson discloses that the speakers serve no purpose in the cochlear implant embodiment and could be disconnected from power, we determine that the speakers are not used in this embodiment. In addition, Petitioner does not direct us to—nor are we aware of—any disclosure in Anderson indicating that speaker 15 of the cochlear implant embodiment receives a signal that causes the speaker to generate acoustic output. In contrast, Anderson discloses that earpiece headset 21 of Figure 2, which is functionally equivalent to speaker 15 of the acoustic embodiment, receives a modified speech signal and converts this signal to acoustic waves. Ex. 1003, 4:33–35, 5:18–21; see also id. at 6:63–67 (disclosing that speaker 15 produces a processed acoustic signal that corresponds to the ambient acoustic signal detected by microphone 12). embodiment cannot generate or apply acoustic stimulation signals. For these reasons, we determine that speakers 15 in the cochlear implant embodiment are not configured to generate or apply acoustic stimulation signals.” slip op. at 16

  Patent outcomesUS 8,155,747 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,155,747
• Microsoft Corporation v. Iron Oak Technologies, LLCAll claims unpatentable
  PTAB · May 7, 2020 · IPR2019-00107 · APJ Arthur M Peslak · IPR · Final written decision

  Claim 1 is unpatentable as anticipated by Oberlander and obvious over Oberlander or Dutta and Oberlander; the remaining alternative grounds were not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art in the field of the ’658 patent would have a “Bachelor’s degree in computer 7 No evidence of objective indicia of non-obviousness is in the record. engineering, computer science, electrical engineering, physics or a similar discipline” and “at least two years of relevant experience including, for example, work related to computer and telecommunications networking.” Pet. 8 (citing Ex. 1003 ¶ 32). Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp. Based on the foregoing, we adopt Petitioner’s definition of the level of ordinary skill in the art because it appears reasonable and consistent with the disclosure of the ’658 patent and the prior art of record.” slip op. at 8

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

    “Based on all the evidence of record and the parties’ respective arguments, we determine that express construction of these claim terms is not necessary for the purposes of this Decision. 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’”). To the extent necessary, claim terms will be construed below when addressing the parties’ arguments.” slip op. at 10

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

    “Patent Owner’s contention is based on an implicit construction of “associated with” which requires that communication attributes be present in the structure of the data base shown in Oberlander’s Figure 5. However, Patent Owner does not provide any arguments or intrinsic evidence in support of such a construction. See PO Resp. 2–3. Further, a plain and ordinary meaning of the word “associated” is “related, connected, or combined together.” See https://www.merriam-webster.com/dictionary/ associated. Consequently, the relevant inquiry is not whether communication attributes are present in the same table as the Oberlander’s network lists but rather whether the network lists are related to, connected to, or combined with communication attributes.” slip op. at 21

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

    “Patent Owner’s contention is based on an implicit construction of “associated with” which requires that communication attributes be present in the structure of the data base shown in Oberlander’s Figure 5. However, Patent Owner does not provide any arguments or intrinsic evidence in support of such a construction. See PO Resp. 2–3. Further, a plain and ordinary meaning of the word “associated” is “related, connected, or combined together.” See https://www.merriam-webster.com/dictionary/ associated. Consequently, the relevant inquiry is not whether communication attributes are present in the same table as the Oberlander’s network lists but rather whether the network lists are related to, connected to, or combined with communication attributes. Oberlander’s message 300 contains attributes field 310 that includes various attributes of a message including “message priority,” as noted by Petitioner, and “message logical size.” Ex. 1005, 3:66–4:9; see also Ex. 1003 ¶ 125 (“attributes help determine which network . . . the message will be routed on.”) (citing Ex. 1005 4:62–5:1). Figure 7b of Oberlander, discloses “a graphical representation of a logic function that delimits messages based upon size.” Id. at 5:58–59, Fig. 7b. Oberlander further discloses in connection with Figure 9 that “the attribute 310 values of the received message 300 are applied to the logic function of the retrieved record at block 912 by NMM 115. At block 914 a check is performed by NMM 115 to determine whether the logic function is true or false” based on the message attribute value. Id. at 8:47–51, Fig. 9. If the logic function is true at step 914, “flow proceeds to block 918, where the network ID list stored in field 505 of the retrieved record is written by NMM 115 into Null field 308 of the message 300.” Id. at 8:61–64, Fig. 9. As discussed above, message 300 includes attributes field 310. Id. at Fig. 9. Patent Owner confirms that this is the process by which Oberlander’s logic functions are used. See Sur-reply 6, 8–10. As a result, in the case of the logic function shown in Figure 7b, the network ID list stored in field 505 is related to (i.e., “associated with”) the communication attribute of message size. See also Ex. 1003 ¶ 125. Based on the arguments and evidence presented by Petitioner discussed above and after considering Patent Owner’s arguments, we determine that Petitioner establishes that Oberlander discloses the limitation “each ordered list associated with one of a plurality of communication attributes.”” slip op. at 21

  Patent outcomesUS 5,966,658 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,966,658
• Unified Patents Inc. v. American GNC CorporationRehearing denied
  PTAB · Mar 17, 2020 · IPR2019-00505 · APJ Patrick R Scanlon · IPR · Rehearing

  The Board denied Unified Patents’ rehearing request and left institution denied because it had not shown JSC was reasonably likely to qualify as a publicly accessible printed publication.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

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

    “likelihood” standard applicable to decisions to institute an inter partes review. We agree with Petitioner that the “reasonable likelihood” standard applies to the issue of whether a reference asserted in a petition for inter partes review qualifies as a prior art printed publication. See id. at 3. As the Board held in a recent precedential decision, “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 4

  • BurdenInstitution denied meritsDecided for patent owner

    “are factual disputes that reach beyond the ‘reasonable likelihood’ standard and are more appropriately developed during an instituted trial.” Id. We disagree with this broad assertion because it ignores the fact that, in this case, as explained on pages 15‒16 of the Decision, Petitioner’s evidence does not meet a minimum threshold showing to even present a factual dispute as to availability and dissemination of the reference. See Hulu, Paper 29 at 13 (establishing that the Petition must identify, with particularly, evidence sufficient to establish a reasonable likelihood of public accessibility before the critical date).” slip op. at 5

  § 102 anticipation
  Patents in suitUS 6,411,871
• Haag-Streit AG v. Eidolon Optical, LLCNo claims unpatentable
  PTAB · Dec 19, 2019 · IPR2018-01311 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1, 5, 6, 8–10, 14–16, and 19 were not shown unpatentable because the cited references did not disclose an LED itself generating blue light energy.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating that it “appear[ed] consistent with the record at th[at] stage of the proceeding.” Dec. Inst. 6. Patent Owner does not address or dispute Petitioner’s proposed definition of the level of ordinary skill in the art. See generally PO Resp.; Sur-reply. Petitioner did not further address this issue in the Reply. See generally Pet. Reply. We continue to apply Petitioner’s proposed level of ordinary skill in the art in the analysis below.” slip op. at 7

  • ExcludeOther

    “As discussed above (see supra § II.C.3.a), to resolve the dispute between the parties here, we need not make a determination one way or the other regarding Patent Owner’s assertion as to the specific amount of power necessary to cause sodium fluorescein to fluoresce. Instead, the outcome here follows from the determination that Petitioner (who has the overall burden of persuasion as to unpatentability) has not persuasively established the existence, as of February 5, 1992, of a blue LED having sufficient power output to cause sodium fluorescein to fluoresce. Accordingly, we dismiss Petitioner’s motion as to Exhibit 2014 as moot because we need not rely on that exhibit (or the specific statement highlighted by Petitioner) in this Decision. See TPG 79–80.” slip op. at 43

  • Strike new argumentNew argument disregardedDecided for patent owner

    “commercially available by CREE, Inc. in 1992” and asserts that “Patent Owner’s arguments are wrong in that blue LEDs having sufficient output power to cause sodium fluorescein to fluoresce existed in 1992 at the time of Longobardi.” Pet. Reply 28, 32. When asked, during the oral hearing, for evidentiary support for these statements, Petitioner attempted to rely on Exhibit 2024. See Tr. 13:14–14:18 (counsel for Petitioner generally discussing Exhibit 2024 as potential support). That exhibit, however, was not discussed or relied on in either of Petitioner’s briefs. Id. at 38:22–39:20 (counsel for Petitioner discussing Exhibit 2024, but also acknowledging that it was not cited in either brief). We will not further consider Petitioner’s untimely argument as to Exhibit 2024. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (noting that the “Board was obligated to dismiss [the petitioner’s] untimely argument . . . raised for the first time during oral argument”); Patent Trial and Appeal Board Consolidated Trial Practice Guide (“TPG”) 85–86 (Nov. 2019) (discussing how, at the oral hearing, a party “may only present arguments relied upon in the papers previously submitted”), available at https://www.uspto.gov/sites/default/ files/documents/tpgnov.pdf. Petitioner did not identify any other record support for the two assertions as to the alleged state of the art in 1992.” slip op. at 30

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “one of ordinary skill in the art would have understood Longobardi as implicitly disclosing the presence of a blue LED is that, as argued by Patent Owner, none of the declaration testimony of Dr. Jiao supports that position. See PO Sur-reply 5 (“Petitioner lacks evidence that Longobardi implicitly or inherently teaches an LED sufficient to generate blue light energy itself as required by claim 1. Petitioner’s expert does not testify as to this fact.” (emphasis added)), 7 (“Petitioner fails to provide any expert testimony . . . that Longobardi teaches a blue light energy created by the LED.”). Indeed, in the entire section of the Reply Brief discussing why Longobardi allegedly implicitly discloses a blue LED, Petitioner never cites to Dr. Jiao’s testimony as evidence of how one of ordinary skill in the art would have understood the highlighted passages. See Pet. Reply 18–22; see also PO Sur-reply 14 (“Petitioner’s attorney arguments that Longobardi implicitly discloses the limitation of at least one LED sufficient to generate blue light energy itself as required by claim 1 are unreasonable.”). “Attorney argument is not evidence.” Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017); see also Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (citing this aspect of Icon Health in the context of an appeal from an inter partes review). In addition, the testimony in Dr. Jiao’s Reply Declaration that is cited in Petitioner’s Reply (in the part discussing the state of the art of blue LEDs “[i]n 1992” (Pet. Reply 26)) does not actually support Petitioner on the ultimate factual issue here. See Pet. Reply 26–32 (citing Jiao Reply. Decl. ¶¶ 11–21). Instead, most of Dr. Jiao’s testimony in these paragraphs summarizes and addresses Dr. Lebby’s position on the 1-milliwatt issue (discussing Exhibits 1021 and 1022). See Jiao Reply Decl. ¶¶ 11–20. After that discussion, Dr. Jiao concludes with a paragraph taking the position that one of ordinary skill in the art “at the time of the invention would have found that Longobardi teaches and suggests the use of a blue LED having sufficient power to cause sodium fluorescein to fluoresce.” Id. ¶ 21. None of Dr. Jiao’s testimony, however, actually addresses the state of the art of blue LEDs in 1992, which, as acknowledged by Petitioner, is the relevant point in time to assess the alleged implicit disclosures in Longobardi.” slip op. at 27

  Patent outcomesUS 6,547,394 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,547,394
• SZ Dji Technology Co., Ltd. / Parrot Inc. v. Drone-Control, LLCAll claims unpatentable
  PTAB · Jun 11, 2019 · IPR2018-00207 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1–15 are unpatentable: claims 1, 3–6, 8–11, and 13–15 are anticipated by Thornberg ’983; claims 2, 7, and 12 are obvious over Thornberg ’983 and Karem. The motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner did not file a Patent Owner Response and has not otherwise disputed Petitioner’s proposed level of skill. See Tr. 77:1–6. We find, based on our review of the complete record, that the evidence of record supports a level of ordinary skill in the art consistent with Petitioner’s definition. Our findings are supported by the level of ordinary skill in the art reflected by the prior art of record and the ’116 patent. See Ex. 1001, 1:36–37 (“This invention relates generally to radio controlled toys such as airplanes and helicopters.”); Ex. 1006, 1:8–10 (“The present invention relates to the control of remotely operated vehicles, and more particularly to a variable reference for the control of a remotely operated vehicle.”), see id. at 3:41–44 (“The system provides for the referencing of vehicle commands based on an operator frame of reference so that control commands provided by the operator remain intuitive and independent of the orientation of the vehicle with respect to the operator.”). Thus, we adopt Petitioner’s proposed level of ordinary skill in the art and apply it to our discussion below.” slip op. at 11

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

    “Ex. 1006, 5:22–29. We further observe that once the disclosed pitch/roll commands (i.e., command data) are provided to the pitch axis and roll axis transformation functions, the pitch axis transformation 410 and roll axis transformation 412 use transformation equations to determine a transformed pitch stick signal (TPSS) and a transformed roll stick signal (TRSS). See Ex. 1006, 6:17–28. In other words, the flight control computer transforms received command pitch/roll data into TPSS and TRSS commands. In performing this transformation, the pitch axis transformation function 410 and the roll axis transformation function 412 also receive a transformation angle (θ) input. Id. at 5:30–32. Thornberg ’983 teaches that the transformation angle θ is determined based on the true heading of the vehicle as determined by the navigation system 36 and the desired vehicle reference and vehicle reference mode. Id. at 5:31–35. As discussed above, we find that the true heading of the vehicle as determined by navigation system 36 provides motion data generated by a sensor. Thornberg ’983 teaches that the transformations into TPSS and TRSS take into account transformation angle (θ), which Thornberg ’983 teaches is determined based on the true heading (i.e., motion data) of the vehicle and the control data (pitch/roll commands) received from control panel 200 of the remote operator control. See Ex. 1006, 4:29–33, 5:23–25, 5:36–38. Further, in the operator reference mode, the orientation of the operator/remote control upon activation of the operator mode is used as the reference axis (i.e., operator’s coordinate system). Additionally, as noted in the Petition (see Pet. 30–31), Thornberg ’983 teaches a variable operator reference mode in which the operator reference changes based on changes in the orientation of the operator control panel. Ex. 1006, 7:32–35. Based on the disclosure discussed above, we find that the pitch and roll commands received at lines 405, 415 in the operator mode teach command data in “a first coordinate system from a perspective of the remote control device” as recited in claim 1. Moreover, we find that Thornberg ’983 teaches that the received pitch/roll command data is transformed into control data in “a second coordinate system that is from a perspective of the RC aircraft.” Specifically, Thornberg ’983 teaches that the transformation equations 1 and 2 transform the pitch command and roll command based on the difference between the aircraft heading and the reference heading. See Ex. 1066, 7:9–11, 7:19–24. Further, Dr. Hansman testifies that TPSS and TRSS control data control the vehicle in the vehicle’s coordinate system, which is from the perspective of the vehicle. Ex. 1003 ¶ 411. We credit Dr. Hansman’s undisputed testimony in this regard because this testimony is consistent with the disclosure of Thornberg ’983, which teaches, among other things, that “[t]he system provides for the referencing of vehicle commands based on an operator frame of reference so that control commands provided by the operator remain intuitive and independent of the orientation of the vehicle with respect to the operator.” Ex. 1006, 3:41–44.” slip op. at 19

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

    “[a] POSITA would have been motivated to modify Thornberg’s control panel 200 to “control” the UAV 100 in a hovering state, i.e., by sending appropriate lift command data to the vehicle when the operator releases the input controls as Karem teaches, in order to facilitate aerial tasks that may involve a hovering state, such as airborne surveillance, inspection, maintenance, and repair, that Thornberg teaches were “well known” uses of UAVs. Ex. 1006, 1:15-24; Ex. 1003, ¶443. Pet. 45. We are persuaded that Petitioner’s rationale and evidence demonstrate by a preponderance of the evidence that claims 2, 7, and 12 would have been obvious in view of Thornberg ’983 and Karem. For example, Petitioner’s arguments are supported by the disclosure of Karem, which teaches a remotely-operated vehicle in a hovering state (Ex. 1008, 7:13–23, 32–39, and Thornberg ’983 teaches remotely operated vehicles include helicopters (Ex. 1006, 1:14–17). Further, Petitioner’s arguments are supported by Dr. Hansman’s undisputed testimony that a POSITA would have been motivated to modify Thornberg ’983’s control panel 200 to control UAV 100 in a hovering state, i.e., by sending appropriate lift command data to the vehicle when the operator releases the input controls as Karem teaches, in order to facilitate aerial tasks that may involve a hovering state, such as airborne surveillance, inspection, maintenance, and repair. Ex. 1003 ¶ 443. This testimony is supported by Thornberg ’983’s teaching that (1) airborne surveillance, inspection, maintenance, and repair were well known uses of UAVs; and (2) remote operation of UAVs apply to remotely operated helicopters. See Ex. 1006, 1:15–24.” slip op. at 29

  • Expert testimonyPetitioner expert creditedOther

    “In the same manner described in the ’116 patent, we find that the orientation of the control panel in Thornberg ’983 indicates the angular displacement (i.e., position data) of the vehicle relative to the operator mode reference axis because the control panel is directed toward the vehicle. Thornberg ’983’s Figure 2 discloses that the control panel is directly facing the remotely operated vehicle, which is nearly identical to placement of the remote control device and RC aircraft in Figure 5 of the ’116 patent. Ex. 1001, 3:67–4:2, Fig. 5; Ex. 1006, Fig. 2.” slip op. at 50

  Patent outcomesUS 9,079,116 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,079,116
• SZ Dji Technology Co., Ltd. v. Drone-Control, LLCAll claims unpatentable
  PTAB · May 29, 2019 · IPR2018-00206 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–18 are unpatentable, principally because Thornberg ’983 anticipates them or renders them obvious; the contingent motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have an equivalent of a Bachelor’s degree from an accredited institution in electrical engineering, mechanical engineering, aeronautical or astronautical engineering, robotics, computer science, or any other discipline covering principles of design, operation, and/or control of unmanned aerial vehicles, including remote-controlled vehicles, and would have a working knowledge of the design, development, implementation, or deployment of such technologies. Additional education could substitute for experience, and significant experience could substitute for formal education. Pet. 12 (citing Ex. 1003 ¶ 28). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See Tr. 77:1–6; see also Ex. 2005 ¶ 48 (Patent Owner’s declarant adopting this definition of the person of ordinary skill in the art for purposes of declaration testimony).” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “The only question, then, is whether orientation data can suffice by itself to qualify as “motion data,” as Petitioner contends, or whether data indicating a change in the vehicle’s position is essential, as Patent Owner argues. On that question, we agree with Petitioner that orientation data is sufficient. The Specification describes that motion sensing module 122 generates motion data 124 based on the motion of the aircraft and that motion sensing module 122 includes one or more axes of accelerometers or gyroscopes or other devices that alone, or with further processing by processing module 126, can generate data that represents θ, φ3, and/or other motion parameters such as R, Z, etc., that can be used in transforming the command data 104 to control data 128. Ex. 1001, 5:6–11 (emphases added). This disclosure supports a broad understanding of “motion data” as any data generated by the sensing module that represents a position, orientation, or motion parameter.” slip op. at 17

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Based on the complete record, we are persuaded by Petitioner’s contention. Although Thornberg ’983 does not state explicitly that the signals transmitted from the control panel to the vehicle are RF signals, we agree that a skilled artisan, considering the context of Thornberg ’983’s disclosure, would have recognized that the transmitted signals could comprise RF signals. “What a reference teaches or suggests must be examined in the context of the knowledge, skill, and reasoning ability of a skilled artisan,” and “is not . . . limited to what a reference specifically ‘talks about’ or what is specifically ‘mentioned’ or ‘written’ in the reference.” Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005); see also Manual of Patent Examining Procedure (“MPEP”) § 2144.01 (“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”) (quoting In re Preda, 401 F.2d 825, 826 (CCPA 1968)). Furthermore, we credit Dr. Hansman’s testimony that an ordinarily skilled artisan would understand Thornberg ’983’s disclosure to mean that the transmitted control signals “are radio frequency (RF) signals, as antennas are most commonly used for.” Ex. 1003 ¶ 295.” slip op. at 25

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

    “We are persuaded by Petitioner’s assertion that Thornberg ’983’s flight control computer 38 corresponds to the claimed processing module. As discussed above (see supra § III.D.1), flight control computer 38 is provided with transformation function 400. Ex. 1006, 5:9–12. Transformation function 400 receives an input of command data (the pitch command and the roll command) from the control panel through antenna 42 and an input of the transformation angle, θ, which is based on the true heading of the vehicle provided by navigation system 36. Id. at 5:19–31, Fig. 6. Transformation function 400 (via pitch axis transformation function 410 and roll axis transformation function 412) transforms the pitch command and the roll command into a transformed pitch stick signal (TPSS) and a transformed roll stick signal (TRSS) using equations that are based on the transformation angle. Id. at 6:17–28. When the system is in the operator reference mode, the TPSS and TRSS (i.e., control data) are in accordance with a second coordinate system that is from a perspective of the vehicle. Id. at 6:8–11 (“In an operator reference mode, the orientation of the operator upon activation of the operator mode is used as the reference axis.”). Patent Owner argues that Thornberg ’983 does not disclose transforming command data into control data based on motion data. PO Resp. 8–13; Sur-Reply 6–8. Patent Owner agrees that, in Thornberg ’983, transformation uses transformation angle θ, which is determined based on the vehicle’s true heading. PO Resp. 8. But Patent Owner contends that transformation angle θ is not “motion data” because it is solely an indication of orientation. Id. (citing Ex. 2005 ¶¶ 74–75). The distinction Patent Owner urges between Thornberg ’983 and the claimed subject matter is based on Patent Owner’s proposed construction of “motion data” as requiring data indicative of a change in position. See id. at 8–9; see also Tr. 103:1–8. For the reasons discussed in Section III.C., we decline to adopt Patent Owner’s proposed construction. Under the construction we have adopted, Thornberg ’983’s transformation angle θ is motion data because, as both parties agree, it indicates the vehicle’s orientation.” slip op. at 28

  Patent outcomesUS 8,649,918 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,649,918

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.