• Microchip Technology Inc. v. HD Silicon Solutions LLCSome claims unpatentable
  PTAB · Dec 13, 2022 · IPR2021-01042 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–11, 13–27, and 29–32 are unpatentable as anticipated by Haswell or obvious over Haswell and Itou; claims 12 and 28 were not shown unpatentable over Haswell and Lempel.

  RulingsFinal written decision

  • Skill levelDecided for petitioner

    “III. LEVEL OF ORDINARY SKILL IN THE ART In determining the level of skill in the art, we consider the “type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field.” Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’619 patent would have had the following education and experience: at least (1) a master’s degree in electrical engineering, computer science, or a related degree, and at least 3-5 years of experience in computer architecture and cache memory design; or (2) a bachelor’s degree in electrical engineering, computer science, or a related degree, and at least 5-6 years of experience in computer architecture and cache memory design. Pet. 5 (citing Ex. 1002 ¶ 27). Patent Owner does not dispute this level of skill. See generally PO Resp. Based on the final record before us, including the prior art of record, we adopt Petitioner’s proposal, which is also supported by Dr. Sechen’s testimony. See Ex. 1002 ¶ 28.” slip op. at 8

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

    “A. “instruction cache” Each of claims 1, 21, and 29, specifically require a method or system for instruction error correction that uses “an instruction cache.” In its Petition, Petitioner does not specifically advocate for an interpretation of “instruction cache.” In our Institution Decision, we noted the importance of the meaning of the term because “Patent Owner challenges two of the prior art references (Haswell and Itou) as not disclosing an instruction cache, as claimed, arguing instead that each reference uses a main storage memory or similar.” Dec. on Inst. 21–22. In the Institution Decision, we preliminarily found that the instruction cache is a memory for the storage of instructions that are accessed and executed by the processor. Id. (citing Ex. 1001, 1:62– 64, code (57)). We also noted that lack of argument and evidence at that phase of the proceeding. Id. The parties responded by including additional argument, testimony, and evidence in the final record, which we now consider. Patent Owner argues that an “instruction cache” is distinct from main memory. PO Resp. 31–32. Patent Owner first relies on the cross-examination testimony of Dr. Sechen (Exhibit 2005), Petitioner’s expert. Id. Dr. Sechen testified during questioning that the main memory is not an instruction cache in that “it wouldn’t satisfy the normal definition of an instruction cache, which has certain features.” Id. (quoting Ex. 2005, 61:20– 62:7, 98:3–101:10). Patent Owner further argues that Dr. Sechen “also explained that the retrieval of data from an instruction cache is faster than from main memory due in part to its proximity to the processor.” Id. at 32 (quoting Ex. 2005, 166:8–18). Patent Owner further relies on the description of an “instruction cache” found in the Specification of the ’619 patent, that “[t]he instruction cache 103 is a memory for the storage of instructions 109 that are accessed and executed by the processor 106.” Id. (quoting Ex. 1001, 1:62–64). Patent Owner also relies on the testimony of its own expert, Dr. Przybylski, who testifies that “the retrieval of data from a cache is faster (and thus takes fewer instruction cycles) than retrieval from main memory,” and “[b]ecause an instruction cache only holds a subset of the contents of main memory at any given time, a cache requires tags, a tag storage, and hit/miss logic in order to autonomously determine whether the fetch of an instruction can be satisfied from the cache.” Ex. 2003 ¶¶ 65, 66; Ex. 1001, 3:19–21.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther

    “B. “means for detecting an error” Independent claim 29 recites “means for detecting an error in each of the instructions concurrently with the fetching of a respective one of the instructions.” Ex. 1001, 12:51–53. Petitioner contends, and we agree, that “[t]his element is interpreted under pre-AIA 35 U.S.C. §112, ¶6 because it claims ‘means for’ and then recites the function of ‘detecting an error in each of the instructions concurrently with the fetching of a respective one of the instructions.’” Pet. 38. Petitioner identifies the corresponding structure as the error correction circuitry 129. Id. (citing Ex. 1001, 7:53–55 (“error detection of the same instruction 109 is performed by the error correction circuitry 129 (FIG. 1)”). Patent Owner does not challenge this interpretation. We find Petitioner’s showing persuasive as to the interpretation of the “means for detecting an error” limitation. C. “means for generating a corrected instruction” Claim 30 recites “means for generating a corrected instruction if the error is detected in the instruction, the corrected instruction being a corrected version of the instruction.” Ex. 1001, 12:55–56. Petitioner contends, and we agree, that this element “is interpreted under pre-AIA 35 U.S.C. §112, ¶6 because it claims ‘means for’ and then recites the function of “generating a corrected instruction if the error is detected in the instruction, the corrected instruction being a corrected version of the instruction.” Pet. 40–41. Petitioner identifies the corresponding structure as the error correction logic 143 or circuit 129. Pet. 41. Petitioner relies on the ’619 patent’s disclosure of “when an error is detected ‘in either the instruction 109 or the error correction code 113, then the error correction logic 143 proceeds to generate a corrected version of the instruction 109 and its associated error correction code 113.’” Id. (citing Ex. 1001, 6:7–11; Ex. 1002 ¶ 134). Additionally, Petitioner notes that “the ’619 patent discloses that the error correction circuitry 129 (e.g., collectively) generates a corrected version of the instruction 109 and its corresponding error correction code 113. Pet. 41–42 (citing Ex. 1001, 10:1– 3; Ex. 1002 ¶ 134) (footnote omitted). Thus, according to Petitioner, “a [person of ordinary skill in the art] POSITA would understand that either the error correction logic 1292 or the error correction logic 143, which belongs to the error correction logic 129, generates the corrected instruction.” Pet. 42 (citing Ex. 1002 ¶ 134). Patent Owner does not challenge this interpretation. We find Petitioner’s showing persuasive as to the interpretation of the” slip op. at 20

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

    “transfer of instructions from memory to a computer processor.” Id. at 1:7–11; see id. at 2:13–15 (“a method and system for detecting error during transfer of data signals from a data memory that permits correction of the error”). Accordingly, Petitioner has shown by a preponderance of the evidence that Haswell discloses “error correction” as required by the preamble of claim 1.” slip op. at 28

  Patent outcomesUS 7,302,619 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,302,619
• Hanwha Solutions Corporation / Hanwha Q Cells USA, Inc. v. Rec Solar Pte. Ltd.All claims unpatentable
  PTAB · Dec 9, 2022 · IPR2021-00988 · APJ Brian D Range · IPR · Final written decision

  Claims 1–6, 11, and 13 are unpatentable as obvious over Huang and Wu; claims 1, 2, and 4 are also anticipated by Zhang.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Petitioner’s position is persuasive. We agree that documents from the Japanese Patent Office are self-authenticating official government documents. The technical issues regarding missing pages in the originally filed version of the document do not cause us to question authenticity. We also agree that Petitioner uses the documents to establish what the documents teach rather than establishing the truth of what the documents teach. In Reply, Patent Owner argues that Petitioner relies on the date printed on the document to prove up the truth of when the document was published. Mot. Excl. Reply 1–2. To the extent this is the case, an exception to hearsay applies because the document is a record of a public office. Fed. R. Evid. 803(8)(B) (a record of public office is an exception to the hearsay rule if the opponent does not show that the source of information or other circumstances “indicate a lack of trustworthiness”). Here, Patent Owner does not persuasively demonstrate a lack of trustworthiness; Patent Owner does not identify any substantively meaningful distinction in the missing pages of the originally filed document and does not identify any evidence to suggest that the missing pages were anything more than a harmless technical error. For the reasons above, Patent Owner’s motion to exclude is denied with respect to these documents. B.” slip op. at 8

  • Skill levelSkill level board ownOther

    “Petitioner’s proposal is too broad. PO Resp. 8. For example, a person who merely installs solar panels for three years (satisfying “professional experience in solar energy”) while having some familiarity with module manufacturing would not be of ordinary skill in the design aspects of the ’060 patent as, for example, reflected by the claims at issue and the ’060 patent’s text and figures. See, e.g., Ex. 1001, Figs. 2a, 2b, 3a, 3b, 4a, 4b, 3:22–7:44. On the other hand, we also determine that Patent Owner’s proposal is too narrow. A person could, for example, have ordinary skill in the art of the ’060 patent by virtue of non-professional experience (for example, academic experience). When assessing relevant experience, research work done for a university (beyond mere classroom study) would have been just as valuable as research work done for a corporation. Also, ordinary skill in the art could be demonstrated by work that requires understanding of the ’060 patent’s field even if not “designing, developing, and/or researching” in the field itself. We, thus, determine that a person of ordinary skill in the art of the ’060 patent would have been someone with a bachelor’s degree in electrical engineering, applied physics, or the like, and at least two years of (a) experience designing, developing, and/or researching in the field or (b) experience in solar energy that required an understanding of the ’060 patent’s field. Alternatively, that person would have had an advanced degree in electrical engineering, applied physics, or the like and at least one year of (a) experience designing, developing, and/or researching in the field or 7 Our analysis is constrained to the extent neither party addresses the Best Medical factors with particularity. For example, the briefing does not address the educational level of the inventor. patent’s field.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We next assess whether or not Dr. Kimball’s testimony properly qualifies as evidence in this matter. The Federal Circuit has held that expert testimony about the perspective of a person of ordinary skill in the art (as Dr. Kimball provides here) must come from a person having at least ordinary skill in the art. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022) (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)) (holding that ITC Administrative Law Judge abused discretion by admitting expert testimony of witness who lacked the experience of a person having ordinary skill in the art); see Mot. Excl. 6–7 (arguing this point). Patent Owner, however, cites no authority that expert testimony on such matters come from a person having ordinary skill in the art at the time of the invention. Cf. Scentair Tech., LLC v. Prolitiec Inc., IPR2021-00012, Paper 22 at 61 (PTAB Apr. 22, 2022) (similarly noting a party’s lack of authority on this point). Beyond needing to come from a person of ordinary skill in the art, expert testimony is admissible if the expert has the “scientific, technical, or other specialized knowledge [that] will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702. Furthermore, “[t]here is … no requirement of a perfect match between the expert’s experience and the relevant field.” USPTO, Patent Trial and Appeal Board Consolidated Trial Practice Guide, 34 (Nov. 2019). Here, Petitioner adequately establishes that Dr. Kimball qualifies as a” slip op. at 12

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

    “Patent Owner argues, however, that where claim 4 recites “the first and second solar cell series are coupled with the bypass diode of the first solar cell unit via a first cross-connector, and the third and fourth solar series are coupled with the bypass diode of the second solar cell unit via a second cross-connector,” the word “a” means “one.” PO Resp. 13–14. In particular, Patent Owner argues that a person of ordinary skill in the art via one or more cross-connectors” and that “a” meaning “one” in claim 4 is necessary for claim 4 to further limit claim 1. Id. Petitioner argues that “a” means “one or more.” Pet. Reply 2–4. We agree with Petitioner. The ’040 patent explicitly defines “a” consistently with Petitioner’s position by stating that “it should be noted that the term ‘comprising’ does not exclude other elements or steps and the ‘a’ or ‘an’ does not exclude a plurality.” Ex. 1001, 7:62–63. The ’040 patent’s explicit definition is consistent with typical usage of “a” in this patent law context. See, e.g., KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (explaining that “a” in patent parlance means “one or more” for open-ended claims reciting the transitional phrase “comprising”). Patent Owner’s argument regarding claim construction is unpersuasive because Claim 4 further limits claim 1 by explicitly requiring first and second crossconnectors; claim 1 does not recite a “cross-connector.” Ex. 1001, 8:2–22. Thus, we construe “a” in this context as meaning “one or more.”” slip op. at 15

  Patent outcomesUS 10,749,060 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,749,060
• Moleculight, Inc. v. Swift Medical Inc.Instituted
  PTAB · Nov 9, 2022 · PGR2022-00041 · APJ Brian D Range · PGR · Institution

  The Board instituted PGR of claims 1–20 on all petition grounds, finding it more likely than not that at least one claim is unpatentable under § 102 or § 103.

  RulingsInstitution decision

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

    “challenges the patentability of claims 1–20 of the ’345 patent under 35 U.S.C. §§ 102 and 103. Patent Owner did not file a preliminary response. We have jurisdiction under 35 U.S.C. § 324(a), which provides that a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “invention would “have had at least a bachelor’s degree in engineering with relevant coursework, and the equivalent of at least two years of work experience in the design, operation, and functioning of imaging systems, amounting to familiarity with concepts related to illumination and detection schemes for optical imaging systems.” Pet. 14 (citing Ex. 1004 ¶ 48). Petitioner further asserts that “[a]dditional relevant work experience could substitute for a bachelor’s degree, and additional education or training could substitute for relevant work experience.” Id. We find Petitioner’s proposed definition is consistent with the cited prior art and the disclosure of the ’345 patent. Thus, for purposes of this decision, we determine that a person of ordinary skill in the art as of the date of the invention would have had a bachelor’s degree in engineering with relevant coursework, and the equivalent of at least two years of work experience in the design, operation, and functioning of imaging systems, amounting to familiarity with concepts related to illumination and detection schemes for optical imaging systems. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 8

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

    “B. Claim Construction We need only construe terms that are in controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Here, Petitioner “submits that no explicit construction is necessary when applying the prior art presented,” but notes “the Board may wish to construe ‘a central aperture of the illumination unit’ in claim 5[, construe] ‘proper distance’ in claim 13, and [consider] application of 35 U.S.C. § 112(f) in view of the prosecution history of the ‘345 patent.” Pet. 10. Petitioner also addresses “a central aperture of the illumination unit” as claim 5 recites and “proper distance” as claim 13 recites. Id. at 10–11. Petitioner also addresses the possibility of various terms invoking 35 U.S.C. § 112(f). Id. at 11–13. For purposes of this decision, we determine that claim construction is unnecessary for institution of this post grant review. As we explain herein, Petitioner adequately establishes that it is more likely than not that Petitioner would prevail in showing that at least one of the challenged claims is unpatentable under §§ 102 or 103. This is true whether based on plain and ordinary meaning or based on the various alternatives Petitioner presents when addressing claim construction. Pet. 9–14” slip op. at 9

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

    “C. Relevant Law To establish anticipation under 35 U.S.C. § 102, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Thus, the dispositive question is whether one skilled in the art would have reasonably understood or inferred from a prior art reference that every claim element is disclosed in that reference. Eli Lilly v. Los Angeles Biomedical Research Inst. at Harbor–UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,266,345
• Infineon Technologies AG v. Feinics Amatech TeorantaInstituted
  PTAB · Sep 12, 2022 · IPR2022-00650 · APJ Brian D Range · IPR · Institution

  Instituted IPR on claims 1–3, 5–8, 11–14, and 16 based on the asserted grounds, finding a reasonable likelihood of prevailing.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to all of the challenged claims of the ’304 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2

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

    “Takeda-322 does not explain how to space adjacent turns of its spiral booster and exciting coils. Ex. 1003 ¶ 75. As explained above, however, Ayala-362 explains how this spacing or pitch should be adjusted in order to optimize inductive coupling, resonant frequencies, and communication. Pet. 17; Ex. 1003 ¶¶ 76–77; Ex. 1006, code (57), 25–26. It has long been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955); see also In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.”). The present record supports that a person of ordinary skill in the art would have known to choose a pitch for Takeda-322’s various coils as Ayala-362 suggests. The record also supports that such an implementation would have had a reasonable expectation of success. Pet. 19 (providing citations to evidence providing support); Ex. 1003 ¶ 85. As such, the present record adequately establishes that a person of ordinary skill in the art would have reached the “Takeda-322/Ayala-362 smart card” as Petitioner describes it. Pet. 21.” slip op. at 17

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached

    “The Federal Circuit has held that in an inter partes review there are two distinct burdens of proof: the burden of persuasion and the burden of production. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)). Petitioner bears the ultimate burden of persuasion regarding unpatentability, which never shifts to Patent Owner. Id. at 1379. Dynamic Drinkware, however, also establishes that Petitioner has the initial burden of production to show a reference is prior art. Id. Once Petitioner’s burden of production is satisfied, the burden of production then shifts to Patent Owner to refute Petitioner’s argument by either showing the prior art does not actually render the claims unpatentable or does not qualify as prior art. Id. at 1380. The burden of production then shifts back to Petitioner to respond to Patent Owner’s argument. Id.” slip op. at 22

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

    “Petitioner does not propose any claim terms for construction and contends that “the prior art meets the claim terms under any reasonable interpretation.” Pet. 9. Petitioner also argues that the plain meaning of “pitch” may refer to interturn gap distance (IGD). See Pet. 35–36; see also id. at 5 (explaining IGD). Petitioner also presents an alternative argument in the event that pitch is limited to average center-to-center distance (CCD). Id. at 36–39. As we explain below, Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim under each of these constructions. Thus, we determine that no claim terms require express construction for purposes of this Decision. See, e.g., Nidec Motor Corp. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,633,304
• Askeladden L.L.C. v. Aml IP LLCInstitution denied
  PTAB · May 11, 2022 · IPR2022-00319 · APJ Michael L Woods · IPR · Institution

  The Board denied institution on all grounds and claims 1–13 because the Petition did not show a reasonable likelihood that Armes, alone or with Steury or Maritzen, rendered the claims unpatentable.

  RulingsInstitution decision

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

    “to satisfy both the “bridge computer” and at least one “service provider computer,” we do not see how the method steps recited in limitations B, Ci, and Cii are satisfied. Petitioner’s attempt to satisfy these steps with Armes’s card provider 3 computer (i.e., as the “bridge computer”) raises multiple questions that persuade us Petitioner has not demonstrated by a reasonable likelihood that these limitations are satisfied. For example, to satisfy the recited “service providers,” Petitioner relies on “incentive rewards [or MR] companies.” Pet. 25 (citing Ex. 1005 ¶¶ 52, 59, 87); see also id. at 40 (relying on MR company to satisfy limitation B); see also id. at 41 (relying on MR company to satisfy limitation Ci); see also id. at 43 (relying on MR company to satisfy limitation Cii). Petitioner also cites to the testimony of Mr. Zatkovich. See, e.g., id. at 39– 41 (citing Ex. 1002 ¶¶ 120–124). The Petition does not clearly explain how Armes’s “bridge computer” (i.e., the card provider’s computer system) makes a “determin[ation] from among the plurality of service providers,” however, when the card provider itself is a service provider. The testimony of Mr. Zatkovich does not relieve our confusion. Mr. Zatkovich’s testimony merely parrots, verbatim, that which is in the Petition. Compare Ex. 1002 ¶¶ 120–124, with Pet. 39–41. Although Petitioner and Mr. Zatkovich cite to Armes, the citations are to disjointed disclosure whose relevance is not clearly apparent. See Fritch, 972 F.2d 1266 (“one cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art”); see also Karsten, 242 F.3d at 1383 (“[To establish anticipation,] all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.”). For instance, Mr. Zatkovich cites to both Armes’s back end application service 8 and STN system 18 for performing the step of “determining from among the plurality of service providers . . . whether the given vendor is associated with the same [or different] service provider.” See Ex. 1002 ¶¶ 122, 124; see also Pet. 40; see also supra § I.D. It is not clear to us, however, how “STN system 18” and “backend application service 8”—both acting as the “bridge computer”—perform the step of “determining from among the plurality of service providers . . . whether the given vendor is associated with the same [or different] service provider,” as recited in claim 1. In support of his assertions, Mr. Zatkovich quotes Armes’s disclosure that “CAS 7 recognizes the transaction as involving a STN 15, and forwards the request to the STN system 18” (Ex. 1002 ¶ 122, citing Ex. 1005 ¶ 109)) and “backend application service 8, upon receiving a STN 15, recognizes the associated PPC originated with another card issuer 92” (Ex. 1002 ¶ 124 (citing Ex. 1005 ¶ 95)). Even if “CAS 7 recognizes the transaction as involving a STN 15,” for example, we do not see this as performing the step of “determining whether the given vendor is associated with the same service provider,” as Petitioner asserts. See Pet. 40. As explained above, Armes uses STNs to improve credit card security (supra § II.D.1), and the computer system’s mere recognition that “the transaction [] involve[es] a STN” is not a determination of “whether the given vendor is associated with the same service provider.”” slip op. at 36

  • Skill levelSkill level board ownDecided for patent owner

    “We are not persuaded that a POSITA “would have at least one or two years of experience with payment or credit systems,” as Petitioner proposes (see Pet. 17), or “would have at least a Master of Science [] Degree . . . or equivalent work experience in the field of computer networks,” as Patent Owner proposes. See Prelim. Resp. 6. Rather, we adopt a hybrid of Petitioner’s and Patent Owner’s proposed level of skill. For purposes of this Decision, we find that a POSITA at the time of the invention would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related study along with knowledge of the general structure of payment or credit systems, its hardware and software components.” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Both parties acknowledge and agree with the final Claim Construction Order. See Pet. 14; see also Prelim. Resp. 4. We further note that the claims of the ’979 patent “shall be construed using the same claim construction standard that would be used to construe the claim[s] in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2021). For purposes of this Decision, we consider and adopt the District Court’s claim construction of “bridge computer” in our analysis. Id. (“Any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the inter partes review proceeding will be considered.”). 2. “service provider” In the Claim Construction Order, the court concluded that the term “service provider” shall mean “a business that provides internet-related services to customers.” Ex. 1017, 1. Petitioner does not propose a construction of this term. See Pet. 11– 16. Patent Owner, on the other hand, expounds upon the District Court’s claim construction, submitting that there are two different types of “service providers”: (1) “A service provider of [the] type may maintain a virtual presence on the web in the form of a web site”; and (2) one that “may offer on-line access to customers (e.g., broadband or dial-up Internet access using an Internet account associated with the service).” See Prelim. Resp. 4–5. Patent Owner does not dispute the District Court’s interpretation, however, and acknowledges that “[t]hese different types of service providers are referred to collectively herein as ‘service providers’ or ‘Internet service providers’.” Id. 5. For purposes of this Decision, we consider and adopt the District Court’s claim construction of “service provider” in our analysis. 37 C.F.R. § 42.100(b).” slip op. at 14

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

    “Specifically, we agree with Patent Owner that Petitioner improperly uses hindsight “to pick and choose among isolated disclosures in [Armes] to deprecate the claimed invention.” Prelim. Resp. 28 (quoting In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (quoting In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988))); see also Karsten, 242 F.3d at 1383 (“[To establish anticipation,] all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.”).” slip op. at 34

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,876,979
• 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
• Glux Visual Effects Tech (Shenzhen) Co. / Leyard Optoelectronic Co. et al. v. Ultravision Technologies, LLCAll claims unpatentable
  PTAB · Nov 30, 2021 · IPR2020-01050 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1, 2, 9, 13, and 20 are unpatentable as anticipated by Guoshi; claims 7, 18, 22–24, 26–28, and 30 are unpatentable as obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not set forth an ordinary artisan’s skill level. See generally PO Resp. Rather, Mr. Credelle, Patent Owner’s expert, states that he “do[es] not disagree with Mr. Flasck’s proposed level of ordinary skill in the art.” Ex. 2002 ¶ 29. In our Institution Decision, we preliminarily adopted Petitioner’s explanation and assessment of the ordinary skill level, determining the position was consistent with the ’294 patent and the asserted prior art. Inst. Dec. 12–13. As neither party challenges our preliminary finding regarding Accordingly, we reaffirm that one of ordinary skill in the art at the time of the invention would have: (i) a bachelor’s degree in mechanical engineering, electrical engineering, or physics, or undergraduate training in an equivalent field, and (ii) at least two years of experience in the design and/or implementation of LED panels. Additional graduate education could substitute for professional experience, and significant work experience could substitute for formal education. See id. at 12 (setting forth and adopting Petitioner’s unopposed position as to the level of ordinary skill in the art) (citing Ex. 1005 ¶¶ 43–49).” slip op. at 11

  • Prior constructionPrior construction adoptedDecided for patent owner

    “be construed so as to not include a cabinet. PO Resp. 18. Patent Owner points out that “[t]he District Court construed the term ‘modular display panel’ to mean ‘interchangeable display panel for a multi-panel modular display configured for use without a cabinet.’” Id. (citing Ex. 1019, 18). And, that “[t]he District Court further construed ‘cabinet’ to mean ‘enclosure separate from the LED panel(s) to protect the LED panel(s) from the environment, including water.’” Id. at 18 (citing Ex. 1021). Patent Owner further contends that Petitioner has agreed to this construction in the District Court proceeding. Id. at 18 n.1 (citing Exs. 2007, 2008). Petitioner does not dispute this construction. During oral hearing Petitioner’s Counsel stated “I think that the parties agree that the display module of the challenged claims do not employ a cabinet.” Tr. 13:33–23. Based on the parties’ apparent agreement, and considering the record before us and the District Court’s Claim Construction Memorandum (Ex. 1019), we see no reason not to apply the District Court’s claim construction. See 37 CFR § 42.100(b) (Providing that any claim construction determination in a related civil action must be considered by the Board.). Accordingly, “modular display panel” means “interchangeable display panel for a multi-panel modular display configured for use without a cabinet.” Ex. 1019, 18.” slip op. at 13

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

    “relevant to the claim construction analysis” and “is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (citation omitted). The ’294 patent Specification reveals that the electronic display panels are intended to be used in interior and also exterior weather dependent environments, and without a cabinet. See Ex. 1001, 5:36–43, 58– 60 (The detailed description explaining that “[t]hese displays are designed to protect against weather, without a heavy cabinet,” and that, “weather is the number one culprit for damage to LED displays.”). The ’294 patent further describes LED panels where “the display is IP 67 rated and therefore waterproof and corrosion resistant, . . . in other embodiments, equipment can be designed with an IP 68 rating to operate completely underwater.” Id at 5:48–55. The ’294 patent describes further that, “where weatherproofing is not as significant, the panels can have an IP 65 or IP 66 rating.” Id. at 5:56– 57. 7 Exhibit 2010 replaces Exhibit 2004 which was a “rough draft transcript” that was uncertified. Ex. 2004, 1:9. During the hearing, the panel requested a certified transcript of the deposition record. See Tr. 5:22–6:16. We refer to the certified transcript, Ex. 2010, in this opinion. See Ex. 2010, 161. waterproofing where the higher the IP rating the more waterproof the device becomes. Id. at 5:48–57. Thus, the term “waterproof,” on its face, can cover a range of environmental conditions and IP ratings including “normal weather,” such as snow, rain, and fog as Mr. Flask confirmed during his deposition. Ex. 2010, 31:24–25, 33:10–13. In his Declaration, Mr. Flask also testifies that there are a range of waterproof enclosures, “IP 65 indicates a dust tight enclosure that is waterproof against jets of water[,] and IP 68 indicates a dust tight enclosure that is waterproof against continuous immersion in water.” Ex. 1005 ¶ 58 (citing Ex. 1016, 3). Considered as a whole, Mr. Flask’s testimony is consistent with the ’294 patent Specification—namely that a “waterproof” display can include protection from normal weather conditions as well as when “operat[ing] completely underwater.” Ex. 1001, 5:55.” slip op. at 15

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

    “Guoshi fairly explains that the LEDs are attached on one side, and the power and control modules are attached on the other, i.e. first and second, sides of the printed circuit board. Ex. 1008 ¶ 27. Guoshi states that “[t]he LED light emitting units (21) and the power module (22) are separately situated on the two opposite surfaces of the circuit board (20).” Id. Guoshi describes further that “[t]he LED light emitting units (21) are situated on the first surface (28), and the power module (22) and control module are both situated above this second surface (29) and fit with the main body (12).” Reading this description as a whole, we find Guoshi’s description straightforward. Given a plain and ordinary reading of this description we understand that Guoshi’s LEDs are “attached to a first side of the printed circuit board,” and on the opposite side that the power and control module are also “attached to the printed circuit board,” and within “a recess” of the casing as recited in claim 1. Also, there is no dispute that Guoshi teaches the” slip op. at 38

  Patent outcomesUS 9,978,294 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,978,294
• Avery Dennison Rfid Company / Avery Dennison Retail Information Services LLC v. Evrythng LimitedInstitution denied
  PTAB · Nov 16, 2021 · IPR2021-00865 · APJ Sharon Fenick · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood that claims 1–26 were unpatentable over the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). 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 the Director determines . . . 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

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

    “We agree with Patent Owner. As Petitioner argues, Gentile does discuss the use of a scanner to add “additional information” to a unique record for an object, however, Gentile does not disclose the use of a scanner to read a unique identifier for an object during the creation of an association between the unique identifier and an object as required by the claims. Id. at 23–26; see Ex. 1004 ¶¶ 59–61, 65–72. Gentile discloses that “[a]t the time and “stored in product information database 108.” Ex. 1004 ¶¶ 59, 65. Gentile also discloses that at the time the product record associated with the identifier is stored, additional information can be added that could come from a scanning device. Id. ¶¶ 66–67. However, this “additional information” is disclosed as information in addition to the unique identifier. Id. ¶ 67. It is only after the initial association has been created that a scanner is disclosed in Gentile as being used to scan the unique identification tag on a product. Id. ¶¶ 61, 69–70. The claim requires that a scan be performed to determine an identifier for an object, “and then” that the identifier is used to add the object to the object information service, but this is not disclosed by Gentile’s process of creating an association between a unique product identifier and a database record (as disclosed in Figure 2 of Gentile and related disclosure) or by Gentile’s process of scanning a unique product identifier to access an already extant record (as disclosed in Figure 3 of Gentile and related disclosure). Petitioner’s showing relies on elements from each of these two separate processes, for example relying on Gentile’s disclosures of a device scanning a QR code on an object to obtain the identifier (Pet. 42–44) for step (b) and then on the disclosures relating to the initial association of the identifier with a database record for step (c) (Pet. 45–47).” slip op. at 18

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

    “E. Asserted Obviousness of Claims 1–11, 13–18, and 21–26 over Gentile and Massé Petitioner’s arguments regarding the unpatentability of claims 1–11, 13–18, and 21–26 rely on the arguments made with respect to anticipation of claim 1 by Gentile. Pet. 58–62. Therefore, for the same reasons, we determine that Petitioner has not shown a reasonable likelihood of prevailing in showing claims 1–11, 13–18, and 21–26 would have been obvious over Gentile and Massé. F. Asserted Obviousness of Claims 1–11, 13–18, and 20–26 over Gentile and Harris Petitioner’s arguments regarding the unpatentability of claims 1–11, 13–18, and 20–26 rely on the arguments made with respect to anticipation of claim 1 by Gentile. Pet. 62–74. Petitioner does describe Harris as teaching a portion of step (c) of claim 1, however, Petitioner’s argument is that Harris teaches providing “product updates” in order to “update” the records in the ¶¶ 343–345). Petitioner argues that a product ID is included in such updates, and that therefore, “the product updates of Harris include ‘a unique identifier’ and are provided to the ‘product identification database’” via an API. Id. at 69–70. However, Petitioner does not provide any teaching that addresses the deficiency noted in the ground with respect to anticipation over Gentile – and there is no discussion of any teaching of Harris which, alone or in combination with Gentile, would describe the required determination of an identifier for an object that is unique within the information service, which is obtained at a device and then used to add an object to the object information service so as to be accessible using the unique identifier. For this reason, and for the reasons described with respect to the anticipation of claim 1 by Gentile, we determine that Petitioner has not shown a reasonable likelihood of prevailing in showing claims 1–11, 13–18, and 21–26 would have been obvious over Gentile and Harris. G. Asserted Obviousness over Combinations including Boncyk Relying on arguments regarding anticipation by Gentile and obviousness over Gentile and Massé or Gentile and Harris, Petitioner argues that certain claims are unpatentable over a combination of Gentile and Boncyk (claims 1–11, 13–18, and 21–26), Gentile, Massé, and Boncyk (claims 1–11, 13–18, and 20–26), and Gentile, Harris, and Boncyk. Pet. 74– 80. These arguments incorporate by reference the prior arguments, describing a different location for the identification mechanism of step (b) of claim 1. Id. Again, no teaching is identified that addresses the deficiency noted in the grounds upon which these arguments rely. anticipation by Gentile and obviousness over Gentile and Massé or Gentile and Harris, we determine that Petitioner has not shown a reasonable likelihood of prevailing in showing claims 1–11, 13–18, and 21–26 would have been obvious over Gentile and Boncyk, or that claims 1–11, 13–18, and 20–26) would have been obvious over Gentile, Massé, and Boncyk or over Gentile, Harris, and Boncyk. H. Asserted Obviousness over Combinations including Davis Relying on arguments regarding anticipation by Gentile and obviousness over Gentile and Massé or Gentile and Harris, Petitioner argues that claims 1–26 are unpatentable over a combination of Gentile and Boncyk, Gentile, Massé, and Boncyk, and Gentile, Harris, and Boncyk. Pet. 80–85. These arguments incorporate by reference the prior arguments, substituting an online identification mechanism and the generation of new identifiers for objects “on the fly” when identifying an object. Pet. 80–83. No teaching is identified that addresses the deficiency noted in the grounds upon which these arguments rely. Therefore, for the reasons described with respect to the showings of anticipation by Gentile and obviousness over Gentile and Massé or Gentile and Harris, we determine that Petitioner has not shown a reasonable likelihood of prevailing in showing claims 1–26 would have been obvious over Gentile and Davis, over Gentile, Massé, and Davis, or over Gentile, Harris, and Davis.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the time of the effective filing date, a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, electrical engineering, or a related field of study, and at least three years of experience with online web services, database systems, and/or related software applications.” Pet. 21–22 (citing Ex. 1003 at ¶ 127). Petitioner adds, “[t]his is an approximation and additional education (e.g., masters/doctorate degree(s)) could make up for less practical experience (and vice versa). Id. Patent Owner does not present a different proposal for level of skill or comment on Petitioner’s proposal. See Prelim. Resp. For purposes of this Decision on Institution, we adopt Petitioner’s proposed level of ordinary skill in the art. This level of skill comports with the teachings of the ’595 patent and the asserted prior art.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,582,595
• LKQ Corporation / Keystone Automotive Industries, Inc. v. GM Global Technology Operations LLCNo claims unpatentable
  PTAB · Oct 8, 2021 · PGR2020-00055 · APJ Robert L Kinder · PGR · Final written decision

  Claim 1 was not shown unpatentable as anticipated by the Leopaard or obvious over the Leopaard alone or with the Equinox.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “designer of ordinary skill analysis whereas the overall claimed design cannot be accurately compared to the Leopaard vehicle. As we discuss in more detail below, there are simply too many aspects of the claimed design that are not adequately disclosed by the images of the Leopard. Although LKQ’s experts project what is likely to be in these evidentiary voids, we do not find estimations of design features on par with an actual showing. LKQ’s anticipation and obviousness theories are based too much on speculation and conjecture about what features might be present in the Leopaard’s skid bar (see, e.g., Pet. Reply 22 (“most likely”)), or that various features can be discounted as “likely barely noticeable” or “unlikely to be noticeable.” Id. at 25, 28. With this understanding, we compare the design claim to the Leopaard, noting both the similarities and difference and also the shortcomings in evidence.” slip op. at 43

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “individual who has at least an undergraduate degree in transportation or automotive design and experience in the field of transportation design, or someone who has several years’ work experience in the field of transportation or automotive design. Pet. 37 (citing Ex. 1003 ¶¶ 41–42; Ex. 1004 ¶ 39). GM originally argued for a slightly different standard for the ordinary designer in its Preliminary Response, but for purposes of its Response, GM has acquiesced in LKQ’s definition. See PO Resp. 8. Mr. Peters contends that “I do not discern any relevant differences between these proposals, nor do I have any substantive disagreement with Mr. Gandy’s proposal. My opinion is the same, regardless of which definition is applied.” Ex. 2004 ¶ 27. Based on the final record, we adopt Petitioner’s proposed definition of the ordinary designer.” slip op. at 16

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

    “contentions. As we analyze in detail below, LKQ’s case is not persuasive for several reasons, including its failure to provide sufficient evidence. LKQ has not produced images of the Leopaard that would enable a persuasive comparison with corresponding views of the claimed invention. The evidence produced by LKQ related to the Leopaard simply fails to clearly show several claimed aspects of the design. Because the Petition omits sufficient views of any complete single skid bar (Ex. 2004 ¶ 51), the evidence produced by LKQ related to the Leopaard simply fails to clearly show several claimed aspects of the design. For example, Exhibits 1006– 1009 include front or perspective views that show, at most, only an upper portion of a skid bar. Exhibit 1010 shows slightly more of the skid bar of its vehicle, but also omits a significant portion of the bottom of the skid bar. Ex. 2004 ¶ 51; Ex. 2006, 77:2–21. The exhibits do not show a sufficient bottom view to allow comparison and the exhibits also have obscured side views due to other trim features covering the outsides of the skid bar. For these and other reasons such as the differences between the designs discussed below, LKQ has failed to meet its burden of proof.” slip op. at 18

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

    “Petition does propose any other modifications to the Leopaard. LKQ’s obviousness analysis failed to address the differences that contribute to the overall appearance of the ’508 patent’s design. As discussed above, the evidence shows multiple readily apparent differences between the claimed design and the Leopaard. We agree with Mr. Peters that “[t]he differences I discussed above in the context of the ordinary observer are just as significant to the ordinary designer, who would likewise have recognized these readily visible features.” Ex. 2004 ¶ 86. These same differences in the aggregate create an overall ornamental design that is not basically the same between the claimed design of the ’508 patent and the Leopaard. Accordingly, the Leopaard is not a proper Rosen reference. Even before modifications may be considered, LKQ has the burden to show that the Leopaard, as it currently is “in existence,” has design characteristics of which are basically the same as the claimed design. High Point Design, 730 F.3d at 1311. Considering the Leopaard before any proposed modifications, it is not a proper Rosen reference. Ex. 2004 ¶ 84. The Leopaard does not give basically the same visual impression as the patented design because the Leopaard does not teach a substantial vertical front face, bottom surface and edge (continuous surface below the recesses), outwardly projecting top and side surfaces, curvature from side-to-side, deep recesses entirely visible from the front, and outer perimeter shape. See id. ¶¶ 49, 52–85. As Mr. Peters testifies, the Leopaard does not have substantially the same overall appearance because “the respective designs include numerous fundamentally different design characteristics,” which “[t]he Petition does not specifically address.” Id. ¶¶ 83, 84. Without accounting for these differences—and particularly, the significance of these differences to the designer of ordinary skill in the art—the Petition lacks sufficient evidence that the Leopaard is “a single reference that creates basically the same visual impression” as the claimed design. Indeed, the differences described above in the context of the ordinary observer are just as significant to the ordinary designer, who is aware of readily apparent differences when assessing the visual impression of designs. Ex. 2004 ¶¶ 25, 84–86. Thus, we are not persuaded that a designer of ordinary skill would have viewed the Leopaard to give basically the same visual impression as the ’508 patent.” slip op. at 58

  Patent outcomesUS D855,508 not shown unpatentable
  § 102 anticipation§ 103 obviousness
• Machinex Industries, Inc. v. JJG IP Holdings, LLCAll claims unpatentable
  PTAB · Oct 4, 2021 · IPR2020-00899 · APJ Michael L Woods · IPR · Final written decision

  Claims 1–16 are unpatentable under the asserted §103 grounds, including combinations based on Carlsohn and Arleth.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966). citations will be to the exhibits’ page numbers, rather than the native page numbers. 4 By e-mail communication from the Board on June 25, 2020, we authorized Petitioner to file a corrected Exhibit 1008. Our reference to Exhibit 1008 is to the corrected, second-filed exhibit, filed on July 7, 2020. Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field. Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. Moreover, these factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determining a level of ordinary skill, we also may look to the prior art, which may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In the Institution Decision, we determined that a person having” slip op. at 9

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

    “plain and ordinary meaning, and determined that the plain and ordinary meaning of “proximate” is “nearby. Inst. Dec. 18. Accordingly, we construed “disposed proximate to a visible or infrared source,” as recited in Limitation 1(c), to mean “disposed nearby” the visible or infrared source. See id. We further note that during prosecution of the ’346 patent, the applicant acknowledged that the term “‘proximate’ is broad in its scope.” See Ex. 1020, 70 (emphasis added).” slip op. at 20

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

    “1. Relevant Law Petitioner bears the burden of establishing by a preponderance of the” slip op. at 27

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

    “3. Independent Claim 1 We address the claim limitations using Petitioner’s nomenclature as” slip op. at 41

  Patent outcomesUS 9,950,346 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,950,346

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.