• Uatp IP LLC v. Slick Slide LLCSome claims unpatentable
  PTAB · Oct 2, 2026 · PGR2024-00054 · APJ Brian D Range · PGR · Final written decision

  Claims 22–26 are unpatentable based on obviousness; claims 1–17, 27, and 28 were not shown unpatentable. Patent Owner’s motion to terminate was denied.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “1. Mesh Layer Petitioner contends “no formal claim construction is necessary in this” slip op. at 13

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

    “5. Analysis On this complete record, we determine that Petitioner’s arguments do” slip op. at 31

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

    “form of nylon and some form of Teflon (and possible combinations thereof) having the specific coefficient of friction range given in limitation [1c] breaks down, because the building blocks of the obviousness argument are not sufficiently identified in Phillips alone, nor in the supporting testimony. Accordingly, we determine that Petitioner’s arguments and evidence fail to show that Phillips renders the challenged claims obvious. 6. Conclusion Based on the foregoing, we determine that Petitioner has not established by a preponderance of the evidence that claims 1–4, 6, and 7 would have been anticipated by or obvious in view of Phillips.” slip op. at 33

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

    “2. Products and Nexus We first consider the issue of whether certain evidence relied upon by” slip op. at 20

  Patent outcomesUS 11,998,854 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham · Nautilus
  Patents in suitUS 11,998,854
• Samsung Electronics Co., Ltd. / Apple Inc. v. RJ Technology LLCSome claims unpatentable
  PTAB · Jan 17, 2025 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 2–4 and 6–18 are unpatentable as obvious over Abe and Guyomard, with claims 9–10 also obvious over Iwaizono; claims 1 and 5 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years of experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. (citing Ex. 1002 ¶¶ 50–51). Patent Owner “does not dispute Petitioner’s level of ordinary skill.” PO Resp. 17. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the disclosures of the ’641 patent and the prior art of record.” slip op. at 9

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

    “We also agree with Patent Owner that the charge cut-off voltage is not necessarily the applied voltage during charging. PO Resp. 20. Rather, depending on the charging protocol used and when in the charging cycle the voltage is applied, the applied voltage could be higher than the battery voltage. Ex. 2013; Ex. 2006 ¶ 91. For example, as discussed in more detail below with respect to the Uemura grounds, when fast charging using constant current is used and the charging rate is not slow, the applied voltage will be higher than the battery voltage when the constant current charging phase is stopped. Ex. 2006 ¶ 91; Ex. 2013. Likewise, during constant current/constant voltage charging, the applied voltage approximates the battery voltage only when the battery is nearly completely charged. Ex. 2013; Ex. 2006 ¶ 91. Thus, the applied voltage may be, but is not necessarily, the charge cut-off voltage. In view of the foregoing, we construe “charge cut-off voltage” in claims 1 and 5 as “the maximum value to which the battery is configured to be charged.” PO Resp. 18; Ex. 2008, 217:6–11; Pet. Reply 5. Contrary to Patent Owner’s arguments, however, we do not understand the phrase “configured to be charged” to necessarily represent a single voltage for the battery that is determined based on the structure and chemistry of the battery. Pet. Reply 4–5. Rather, the charge cut-off voltage is a selected potential, or voltage, of the battery or cell at the end of charging that is controlled by a circuit or device, such as a charger or control circuit within the battery. Ex. 1001, 9:50–55; Ex. 1048, 2, 7–8; Ex. 1008, 3:9–13. And, for the reasons discussed herein, the charge cut-off voltage may be, but is not necessarily, the same as the applied voltage during charging. PO Resp. 20.” slip op. at 15

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

    “charge cut-off voltage “greater than 4.2 V but less than 5.8 V” and calculating a specific or theoretic capacity “with a charge cut-off voltage limited to 4.2” (claim 1) or “with a charge cut-off voltage set at 4.2 V” (claim 5). Ex. 1001, 16:56–61, 17:6–11. Although the parties dispute the precise scope of these claim terms, the parties agree that the first use of “charge cut-off voltage” in claims 1 and 5 refers to the potential of the battery as a whole (between the cathode and the anode), and not a half-cell voltage using lithium metal as a counter electrode.10 Tr. 17:1–3 (agreeing 10 With respect to the phrase “as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V,” the parties in fact appear to be in that the first use of “charge cut-off voltage” in claim 5 refers to a full-cell voltage); Sur-reply 5; PO Resp. 22. We need not further construe the claims to resolve the disputes between the parties. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 16

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Given Mr. Juzkow’s unambiguous testimony that Uemura uses constant current charging that would stop when the applied voltage reached 11 The chart is reproduced from SAFT, Charging your lithium-ion batteries: 5 expert tips for a longer lifespan, (https://www.saft.com/energizing-iot/charging-your-lithium-ion-batteries-5-expert-tips-longerlifespan#:~: text=When%20the%20battery%20provides%20current,This%20restore s%20the%20battery's%20capacity). 4.3 V, as well as Dr. Yao’s persuasive testimony that Uemura’s constant charging rate is not slow, we credit the testimony of Dr. Yao that one of ordinary skill in the art would have understood that the internal voltage to which the battery of Uemura was charged is less than 4.3 V. Ex. 2006 ¶ 119. In particular, Dr. Yao persuasively testifies that one of ordinary skill in the art would have believed that the charge cut-off voltage was no more than 4.2 V, and most likely equal to “about 4 V.” Id. ¶¶ 119–122.” slip op. at 21

  Patent outcomesUS 7,749,641 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,749,641
• Samsung Electronics Co., Ltd. / Apple Inc. v. RJ Technology LLCSome claims unpatentable
  PTAB · Jan 17, 2025 · IPR2023-01183 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 2–4 and 6–18 are unpatentable as obvious over Abe and Guyomard, with claims 9 and 10 also obvious over Iwaizono; claims 1 and 5 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years of experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. (citing Ex. 1002 ¶¶ 50–51). Patent Owner “does not dispute Petitioner’s level of ordinary skill.” PO Resp. 17. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the disclosures of the ’641 patent and the prior art of record.” slip op. at 9

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

    “constructions. First, we agree with Petitioner that the ’641 patent indicates that the charge cut-off voltage selected for a particular battery need not be a fixed property of the battery or something that is set by the design and chemistry of the battery. Consistent with this conclusion, the ’641 patent discloses that a “charging device controls the charge cut-off voltage of the single lithium-ion cell within a range from 4.3 V to 5.8 V.” Ex. 1001, 9:50– 55. This strongly suggests that the charge cut-off voltage is controlled by the charger and is not necessarily an inherent property of the battery. Patent Owner contends that this is merely an unclaimed embodiment, but the relevant disclosure states that the charging device for the “present invention” may be any type of device “with the proviso that said charging device controls the charge cut-off voltage.” Id. at 9:50–53.” slip op. at 12

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

    “charge cut-off voltage “greater than 4.2 V but less than 5.8 V” and calculating a specific or theoretic capacity “with a charge cut-off voltage limited to 4.2” (claim 1) or “with a charge cut-off voltage set at 4.2 V” (claim 5). Ex. 1001, 16:56–61, 17:6–11. Although the parties dispute the precise scope of these claim terms, the parties agree that the first use of “charge cut-off voltage” in claims 1 and 5 refers to the potential of the battery as a whole (between the cathode and the anode), and not a half-cell voltage using lithium metal as a counter electrode.10 Tr. 17:1–3 (agreeing 10 With respect to the phrase “as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V,” the parties in fact appear to be in that the first use of “charge cut-off voltage” in claim 5 refers to a full-cell voltage); Sur-reply 5; PO Resp. 22. We need not further construe the claims to resolve the disputes between the parties. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 16

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Given Mr. Juzkow’s unambiguous testimony that Uemura uses constant current charging that would stop when the applied voltage reached 11 The chart is reproduced from SAFT, Charging your lithium-ion batteries: 5 expert tips for a longer lifespan, (https://www.saft.com/energizing-iot/charging-your-lithium-ion-batteries-5-expert-tips-longerlifespan#:~: text=When%20the%20battery%20provides%20current,This%20restore s%20the%20battery's%20capacity). 4.3 V, as well as Dr. Yao’s persuasive testimony that Uemura’s constant charging rate is not slow, we credit the testimony of Dr. Yao that one of ordinary skill in the art would have understood that the internal voltage to which the battery of Uemura was charged is less than 4.3 V. Ex. 2006 ¶ 119. In particular, Dr. Yao persuasively testifies that one of ordinary skill in the art would have believed that the charge cut-off voltage was no more than 4.2 V, and most likely equal to “about 4 V.” Id. ¶¶ 119–122. Petitioner argues that because the battery of Uemura is charged “to” a maximum voltage of 4.3 V, Uemura discloses the claimed charge cut-off voltage under either Petitioner’s or Patent Owner’s construction of the term. Pet. Reply 11–12 (citing Ex. 1009 ¶ 81; Ex. 1044 ¶¶ 56–59). This argument is not persuasive because Mr. Juzkow unambiguously testified that charging in Uemura stopped when the applied voltage reached 4.3 V, and Uemura discloses that the battery was charged “at” a voltage ranging from 4.3 V to 2.0 V, not “to” such a voltage. Ex. 1009 ¶ 81; Ex. 2008, 113:2–13; Ex. 2006 ¶ 119 n.64; Sur-reply 9. In view of the foregoing, we determine that Petitioner has not demonstrated by a preponderance of the evidence that Uemura anticipates independent claims 1 and 5 of the ’641 patent.” slip op. at 21

  Patent outcomesUS 7,749,641 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,749,641
• Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting v. Cao Lighting, Inc.Some claims unpatentable
  PTAB · Sep 28, 2023 · IPR2022-00848 · APJ Brian D Range · IPR · Final written decision

  Claims 21, 22, 25, 26, 28–30, 32–36, 40, 42–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 are unpatentable under § 103; claim 41 is not shown …

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 18 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52, EPRC 1:32. One requirement of this apparatus is that it comprise “a semiconductor chip” (id. at 9:66) where “said semiconductor chip is a light emitting diode (LED) chip EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction (Resp. 14) of “said semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as referring to “a semiconductor LED chip capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor LED chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 53 (quoting Ex. 1008, 10). Notably, claim 18 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 9

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’770 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 16. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’770 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 15

  • Prior constructionPrior construction adoptedTerm construed patent owner constructionDecided for patent owner

    “Delaware held, with respect to related U.S. Patent 6,465,961, construed “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” Resp. 14 (citing Ex. 1024, 15–18). Petitioner responds that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1. We note that the language of claim 18 does not precisely match the language the District Court considered, it is substantively the same. The record supports a construction very similar to the construction the District Court adopts, and we reference the District Court’s reasoning. Ex. 1024, 15– 18. We, thus, construe claim 18’s recitation that “said semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as referring to “a semiconductor LED chip that is capable of emitting light greater than about 40 milliwatts.” It is unnecessary to construe any other claim terms in this Decision because none of the parties’ disputes turn on the meaning of other terms. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 17

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

    “The facts above are evidence of the Krames reference’s publication as of June 29, 2000, because the facts tend to make the Krames reference’s publication as of June 29, 2000, more probable than it would be without the evidence. See Fed. R. Evid. 401(a) (defining evidence as relevant “if it has any tendency to make a fact more or less probable than it would be without the evidence”). The evidence is sufficient to support publication. Meanwhile, no evidence of record suggests that Krames was not a printed publication as of June 29, 2000. Thus, a preponderance of the evidence supports Krames’s prior art status. Patent Owner argues that Ms. Watters “never establishes a firm date when Krames was purportedly available to the relevant public.” Resp. 21. Patent Owner bases this argument by taking a tortured reading of Ms. Watters’s statement that “[m]embers of the interested public could locate a copy of [the Proceedings] on or after June 29, 2000, the date it was catalogued.” Id. (quoting Ex. 1020, 3); see also Sur-Reply 12–13. The best understanding of Ms. Watters’s statement, in view of the context of Ms. Watters explaining the library’s cataloguing process, is that a member of the interested public had two options: the person could choose to locate the Proceedings on June 29, 2000, or the person could choose to locate the Proceedings after June 29, 2000. Thus, the statement supports public availability as of June 29, 2000.” slip op. at 21

  Patent outcomesUS 6,634,770 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,634,770
• Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentable
  PTAB · Sep 28, 2023 · IPR2023-00129 · APJ Brian D Range · IPR · Final written decision

  Claims 21–40, 42–44, 47–49, 52–53, 56–59, 62–63, 65–68, 71–73, 77–78, 81–82, 85–86, and 88–91 are unpatentable over Begemann, Krames, and Allen; claim 41 is not shown unpatentable.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “In the Reply, Petitioner uses the Krames declaration (Ex. 1028) to argue, for example, that a person of ordinary skill in the art would have used a lower amperage than the 1.5 A dc that Patent Owner’s Response focuses on. Reply 8 (citing Ex. 1028 ¶ 22). This use of the Krames declaration is timely because it responds to an argument Patent Owner makes in the Patent Owner Response. 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in . . . patent owner response.”). As to relevancy and whether the Krames declaration is applicable to the facts of this case, the issues at hand are (1) whether or not a person having ordinary skill would have had reason to use the Krames LED with Begemann with a reasonable expectation of success and (2) whether or not the Krames LED is capable of outputting light at greater than about 40 milliwatts. Again, we emphasize that claim 21 does not recite a method where the LED within the recited semiconductor light source actually outputs greater than about 40 milliwatts. The Krames declaration is relevant to the facts of this case because the declaration has bearing on whether or not a person of ordinary skill in the art would have combined the Krames reference’s LED with Begemann’s lightbulb design. See, e.g., Ex. 1028 ¶ 22. Patent Owner argues that evidence must be relevant to motivation to combine “an LED chip from the Krames article (operating at 1.5 amps to produce 170 milliwatts of output)” but claim 21 has no “operating at 1.5 amps to produce 170 milliwatts of output” requirement. What is relevant is that Krames discloses a single chip that has the capability of outputting more or less light depending on operating conditions. Pet. Opp. 3; see also Ex. 1008, 8 (providing that Figure 12 of the Krames reference is described as illustrating “[l]ight output vs. current characteristic of a blue … 1x1 mm2 AlGaInN LED in a power package, compared to a conventional AlGaInN LED in a 5 mm lamp a package”). Because claim 21 does not require actually running the recited LED at any particular wattage or amperage, it is appropriate for the Krames declaration to rebut Patent Owner’s argument that a person of ordinary skill would not have considered using the Krames LED with Begemann at high amperage by explaining that a person of ordinary skill in the art would have considered using the exact same Krames LED with Begemann at a low amperage instead and that at this lower amperage the Krames LED would generate an amount of heat that would be easily dissipated by Begemann’s lamp while still providing an optical output of “greater than about 40 milliwatts” as recited by claim 21. Ex. 1028 ¶¶ 23–24 (citing Ex. 1008, 8). The fact that the Krames LED is configured to run at the high amperage if desired for a different application does not negate the rationale for combining the Krames LED to run at a lower amperage.” slip op. at 14

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19

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

    “particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Patent Owner’s claim construction is well-supported by the record including the reasoning provided by the California and Delaware district courts. Ex. 2002, 19–21 (California district court explaining why the “reflective layers” must be distinct layers based on how claim 8 is structured and also explaining why the amount of reflection must be non-negligible); Ex. 2003, 2, 13 (Delaware district court explaining why reflection has to be more than negligible but need not reflect more light than the light absorbed or transmitted). We, thus, agree that “first and a second reflective layers . . . 10 Patent Owner’s proposed claim construction combines various statements made by the district courts into one statement. Resp. 15 (citing Ex. 2002, 19–21; Ex. 2003, 2, 13). serving to reflect light emitted by said active layer” means that the “first and second reflective layers are distinct from each other and reflect more than negligible light.” We further note that the preponderance of the evidence supports that as little as one percent light reflectance is “non-negligible” in this context. Reply 4; also Ex. 1032, 188:7–14 (Patent Owner’s witness, Dr. Shealy, testifying that reflection “on the order of one percent” would be more than negligible); see also Tr. 53 (counsel for Patent Owner agreeing that Dr. Shealy opined that “three percent reflection is enough to be non-negligible”).” slip op. at 21

  Patent outcomesUS 6,465,961 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,465,961
• Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentable
  PTAB · Sep 28, 2023 · IPR2023-00123 · APJ Brian D Range · IPR · Final written decision

  Claims 21–40, 42–44, 47–49, 52–53, 56–59, 62–63, 65–68, 71–73, 77–78, 81–82, and 85–91 are unpatentable over Begemann, Krames, and Allen; claim 41 was not shown unpatentable.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 21 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52. One requirement of this apparatus is that it comprise “at least one semiconductor chip” (id. at 10:1) where the “at least one semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts.” Id. at EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction of “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as meaning “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 54 (quoting Ex. 1008, 10). Notably, claim 21 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 12

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19

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

    “particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20

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

    “The facts above are evidence of the Krames reference’s publication as of June 29, 2000, because the facts tend to make the Krames reference’s publication as of June 29, 2000, more probable than it would be without the facts. See Fed. R. Evid. 401(a) (defining evidence as relevant “if it has any tendency to make a fact more or less probable than it would be without the 13 We note that Dr. Lebby does not directly state when the Proceedings were widely available. See Sur-Reply 14. evidence”). The evidence is sufficient to support publication. Meanwhile, no evidence of record suggests that Krames was not a printed publication as of June 29, 2000. Thus, a preponderance of the evidence supports Krames’s prior art status. Patent Owner argues that Ms. Watters “never establishes a firm date when Krames was purportedly available to the relevant public.” Resp. 25. Patent Owner bases this argument by taking a tortured reading of Ms. Watters’s statement that “[m]embers of the interested public could locate a copy of [the Proceedings] on or after June 29, 2000, the date it was catalogued.” Id. (quoting Ex. 1020, 3); see also Sur-Reply 13–14. The best understanding of Ms. Watters’s statement, in view of the context of Ms. Watters explaining the library’s cataloguing process, is that a member of the interested public had two options: the person could choose to locate the Proceedings on June 29, 2000, or the person could choose to locate the Proceedings after June 29, 2000. Thus, the statement supports public availability as of June 29, 2000.” slip op. at 25

  Patent outcomesUS 6,465,961 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,465,961
• Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentable
  PTAB · Sep 28, 2023 · IPR2022-00847 · APJ Brian D Range · IPR · Final written decision

  Claims 21, 22, 25, 26, 28–30, 32–36, 40, 42–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 are unpatentable over Begemann, Krames, and Allen; claim 41 is …

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s argument is unpersuasive because the Krames declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 21 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52. One requirement of this apparatus is that it comprise “at least one semiconductor chip” (id. at 10:1) where the “at least one semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts.” Id. at EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction of “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as meaning “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 54 (quoting Ex. 1008, 10). Notably, claim 21 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 12

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19

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

    “particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20

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

    “It is unnecessary to construe any other claim terms in this Decision because none of the parties’ disputes turn on the meaning of other claim terms. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 22

  Patent outcomesUS 6,465,961 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,465,961
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Nov 2, 2015 · IPR2014-00810 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–3 and 5–7 are unpatentable as anticipated by Silberschatz; Petitioner did not show claims 4 and 8 unpatentable because Silberschatz does not disclose allocating or de-allocating a specific telecommunications resource.

  RulingsFinal written decision

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

    “In this case, the ’637 patent discloses multiple embodiments of telephony and telecommunication resources being allocated and de-allocated, but during prosecution, the applicant removed the modifying limitation of “telecommunication”3 leaving only the term “resource” in the issued claims. Compare Ex. 1004, 60–69 (Application No. 09/072,436) with Ex. 1002, 44–47. The claims, thus, recite “resource” and do not recite “telecommunications resource” nor do they recite “computer resource.” The lack of a limiting term modifying “resource” indicates a scope broader than the scope encompassed by a “resource” that is limited to only a “telecommunications resource” or “computer resource.” Moreover, the Examiner characterized the claims of the application that issued as the ’637 patent as “broader in scope than the claims [in] the parent patent.” Ex. 1002, 95. The Applicant did not dispute the Examiner’s characterization of the claims. Id. at 107. Although the ’637 patent discloses embodiments using “resources,” the ’637 patent does not define explicitly the term “resource.” Therefore, we look to the ordinary meaning of the term as would be understood by one of 3 The term “telecommunication” was recited in the proposed claims of earlier-filed parent Application No. 09/072,436. The ’637 patent claims priority to patent Application No. 09/072,436. See Ex. 1002, 1. ordinary skill in the art. A technical dictionary, IEEE Dictionary4, defines “resource” as “[a]ny capability that must be scheduled, assigned, or controlled by the underlying implementation to assure non[-]conflicting usage by processes.” Id. at 976. As shown by the dictionary definition, one of ordinary skill in the art would understand “resource” is not limited to a telecommunications resource or a computer resource.5 Thus, the ordinary meaning of “resource” is consistent with the term’s use in the ’637 patent, which readily interchanges the term “resources” with “components” and “capability” in the context of computer telephony resources. Ex. 1001, 1:27–29. For example, in one embodiment in the ’637 patent, the telecommunication “resource” is a telephony line card that is coupled to a telephone. Id. at 9:12–15. In other embodiments, the telecommunication “resources” are components or ports coupled via a data bus to a central processing unit system, a data port system, a video system, a network system, a storage controller, and a high speed communication system. Id. at 8:1–27, 10:64–11:10, 11:14–22. In every embodiment in the ’637 patent, 4 IEEE 100: The Authoritative Dictionary of IEEE Standards Terms: Seventh Edition (Standards Information Network, IEEE Press ©2000) (Ex. 3001) (hereinafter “IEEE Dictionary”). 5 Petitioner’s Declarant, Dr. Forys, testified on cross-examination that a person of ordinary skill in the art would have telecommunications experience because all of the embodiments in the ’637 patent are directed to telecommunications. Ex. 2002, 47:2–14. Based on this testimony, Patent Owner argues that the ’637 patent would be understood by a person of ordinary skill in the art in the context of a telecommunications systems. PO Resp. 8–9. We agree the ’637 patent may have been understood in the context of a telecommunications system, however, that does not indicate that a skilled artisan would have understood “resource” to have been limited to only a telecommunications resource. resources are a component or capability of a system that is managed (i.e., identified, allocated, de-allocated) by some module in the service kernel. Id. at 9:27–39, 10:10–14, 10:64–11:10, 11:14–22. Accordingly, we do not agree with Patent Owner’s position, because” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s Declarant, Dr. Forys, opines that a person of ordinary skill in the art relevant to the ’637 patent “would have a B.S. degree in Electrical Engineering, Computer Science, or an equivalent field and one year to two years of industry experience in telecommunications.” Ex. 1003 ¶ 32. Patent Owner does not disagree with Petitioner’s assertions regarding the level of skill in the art, nor does Patent Owner’s Declarant, Dr. Akl, offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the ’637 patent. PO Resp. 9–10; Ex. 2003 ¶ 42. Based on our review of the ’637 patent, the types of problems and solutions described in the ’637 patent and cited prior art, and the testimony of Petitioner’s Declarant, we conclude that a person of ordinary skill in the art at the time of the claimed invention would have had at least a Bachelor’s degree in Electrical Engineering, Computer Science, or a similar discipline, and at least one year of work experience in telecommunications technologies. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16

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

    “We do agree with Patent Owner’s argument, however, with regards to dependent claims 4 and 8, which require the return of “the allocated telecommunications resources to control of the management module.” Ex. 1001, 21:52–22:6, 22:44–52; see supra, Section II.A.3. Petitioner has not indicated a disclosure in Silberschatz that demonstrates the allocation or de-allocation of a specific telecommunications resource. Therefore, we determine that Petitioner has failed to meet its burden to show Silberschatz anticipates dependent claims 4 and 8.” slip op. at 21

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We do not agree with Patent Owner’s position, because Petitioner identifies CPU time as a specific resource that is requested (Pet. 23–24), allocated (id. at 25), used (id. at 25), and de-allocated (id. at 26). We credit the testimony of Dr. Forys, who explains how and where Silberschatz discloses each element of the challenged claims. See Ex. 1003 ¶¶ 64–80. Specifically, Dr. Forys testifies regarding the request, allocation, use, and de-allocation of a single type of resource (e.g., CPU time), thereby meeting the limitations of the challenged claims. Id. ¶¶ 74–80. Although Patent Owner correctly points out that Petitioner discusses multiple types of resources, we do not agree that Petitioner discusses or applies the disclosure of Silberschatz inconsistently, because Petitioner at least consistently identifies CPU time as a resource requested, allocated, used, and de-allocated.” slip op. at 21

  Patent outcomesUS 7,324,637 mixed
  Claim construction§ 102 anticipationcites Graham
  Patents in suitUS 7,324,637
• Groupon, Inc. v. Blue Calypso, LLCSome claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00046 · APJ Michael W Kim · CBM · Final written decision

  Claims 1, 4–6, 10, and 14 are unpatentable as anticipated by Paul; claims 7–9 and 11 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “we determine the meaning of the claims for purposes of this decision. In a covered business method patent review, a claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.300(b). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We construe the terms below in accordance with these principles.” slip op. at 7

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

    “subscriber according to the incentive program.” Petitioner contends that the express definitions of terms set forth in the “Definitions” section of the ’055 patent are the proper constructions of those terms. Pet. 10. We agree. Accordingly, we accept those definitions as proper constructions of “incentive” and “incentive program.” Furthermore, through their assertions concerning standing, Petitioner asserts that “incentive” and “incentive program” are financial in nature. We agree. Pet. 6–7. The ’055 patent repeatedly, and almost exclusively, discloses “incentive” and “incentive program” in a financial context. For example, the ’055 patent discloses that cash incentives are provided on debit cards or as cash distributions. Ex. 1001, 2:28–29. In another example, incentives are disclosed as “payments,” “payouts,” and “distributions.” Ex. 1001, 2:51, 6:34–45, 7:31–34, 8:3–6. In a further example, incentive programs are disclosed as having financial budgets and accounts that are debited until depletion. Ex. 1001, 6:41–45, 7:18–20, 8:50–56. Accordingly, we construe “incentive” and “incentive program” as being financial in nature.” slip op. at 8

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

    “do not find sufficient evidence that the Ratsimor paper was accessible publicly and, therefore, we conclude that Petitioner has failed to show that the Ratsimor paper is a printed publication under 35 U.S.C. § 102(b). Section 102 states: “A person shall be entitled to a patent unless . . . (b) the invention was . . . described in a printed publication . . . more than one year prior to the date of the application for patent . . . .” 35 U.S.C. § 102(b) (2011). “The statutory phrase ‘printed publication’ has been interpreted to give effect to ongoing advances in the technologies of data storage, retrieval, and dissemination.” In re Hall, 781 F.2d 897, 898 (Fed. Cir. 1986). As such, a printed publication under 35 U.S.C. § 102(b) may be an electronic publication, such as the Ratsimor paper is purported to be. See In re Wyer, 655 F.2d 221, 226 (CCPA 1981) (holding that an electronic publication is considered to be a “printed publication” “upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation”). The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009).” slip op. at 12

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

    “1. Principles of Law To establish anticipation, 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). To anticipate, a prior art reference must disclose more than “multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371. 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). Moreover, the prior art reference is read from the perspective of one with ordinary skill in the art. In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t 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.”).” slip op. at 19

  Patent outcomesUS 8,438,055 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 8,438,055
• Groupon, Inc. v. Blue Calypso, LLCSome claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00035 · APJ Michael W Kim · CBM · Final written decision

  Claims 1–25 and 29 are unpatentable: claims 2–15, 20–23, and 29 over Paul; claims 1–19, 23–25, and 29 for lack of written description. Claims 26–27 were not shown unpatentable.

  RulingsFinal written decision

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

    “Accordingly, we look to the ordinary meaning of the term “subsidy”— financial assistance given by one to another.5 The ’516 patent’s use of “subsidy” is consistent with its ordinary meaning. Specifically, the ’516 patent describes an advertiser setting up a subsidy program to subsidize communication fees, offer product discounts, generate and accumulate “reward points” for subscribers, or mitigate or defer other expenses of the subscriber. Ex. 1001, 3:21–27 (referring to Fig. 2). These examples are financial in nature. Product discounts reduce the monetary cost of a financial transaction, reward points are a form of currency, and mitigating or deferring expenses reduces the monetary cost of a financial transaction or postpones the monetary cost of a financial transaction, respectively. Also, the ’516 patent describes, as part of a subscriber setup process, an intermediary presenting, to a subscriber for selection, “subsidy programs 5 AMERICAN HERITAGE DICTIONARY 896 (3d ed. 1992) (defining “subsidy” as “1. Monetary assistance granted by a government to a person or group in support of an enterprise regarded as being in the public interest. 2. Financial assistance given by one person or government to another.”). available, including the criteria for continued subsidy and levels of subsidy.” Ex. 1001, 4:41–43 (referring to Fig. 3). For these reasons, in the Decision to Institute, the Board construed “subsidy” as “financial assistance given by one to another.” Dec. 7–9. Neither party challenges this construction. Having considered whether the construction set forth in the Decision to Institute should be changed in light of evidence introduced during trial, we are not persuaded any modification is necessary. Therefore, we maintain the construction of “subsidy” as “financial assistance given by one to another.”” slip op. at 7

  • BurdenNot shown unpatentable

    “The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). 1. Whether the Ratsimor Paper Was Publicly Accessible in November 2003 Although Petitioner does provide some evidence to support its position, after considering all of the evidence regarding the facts and the circumstances surrounding the public accessibility of the Ratsimor paper, in view of the relevant case law, we determine that Petitioner has not met its burden of showing that the Ratsimor paper was publicly accessible in November 2003.” slip op. at 18

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

    “The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). 1. Whether the Ratsimor Paper Was Publicly Accessible in November 2003 Although Petitioner does provide some evidence to support its position, after considering all of the evidence regarding the facts and the circumstances surrounding the public accessibility of the Ratsimor paper, in view of the relevant case law, we determine that Petitioner has not met its burden of showing that the Ratsimor paper was publicly accessible in November 2003.” slip op. at 18

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

    “1. Principles of Law To establish anticipation, 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). To anticipate, a prior art reference must disclose more than “multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371. 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). Moreover, the prior art reference is read from the perspective of one with ordinary skill in the art. In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t 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.”).” slip op. at 24

  Patent outcomesUS 7,664,516 mixed
  Claim construction§ 102 anticipation§ 112 disclosurecites Phillips
  Patents in suitUS 7,664,516

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.