- Maxlite, Inc. v. Jiaxing Super Lighting Electric Appliance Co., Ltd.All claims unpatentablePTAB · Apr 29, 2022 · IPR2020-00208 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 7, and 12–18 are unpatentable as anticipated by Duan under § 102(a)(1).
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“a B.S. degree in electrical engineering, or an equivalent field, as well as at least 2-4 years of academic or industry experience in lighting design, including knowledge of LEDs and related technology for driving LEDs. A person of ordinary skill in the art with a higher level of education may have fewer years of academic or industry experience, or vice versa. Pet. 22 (citing Ex. 1002 ¶ 10). Patent Owner does not contest Petitioner’s articulation of the level of skill in the art. PO Resp. 4–5. We regard Petitioner’s definition as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, we adopt Petitioner’s proposal.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“embodiments that operate with a low frequency driving signal in a double-ended configuration, Patent Owner did not recite “low frequency” or “double-ended” in its claims and instead chose the broader term “first driving mode.” See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). The fact that a limitation in the specification may define over the prior art does not justify importing that limitation into the claims unless a term is expressly defined such that the patentee becomes his own lexicographer or there is an express disavowal of claim scope. See GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1308–09 (Fed. Cir. 2014). There is no evidence of an express disavowal here. As to lexicography, we disagree with Patent Owner’s contention that the Specification defines the phrase “first driving mode.” Patent Owner relies on the mere fact that the specification describes an embodiment with a first driving mode that has a low frequency driving signal and is in a “double-ended” configuration, but this is not sufficient to define the term. The specification does not require that a low frequency driving signal must necessarily be used. In fact the specification, although not entirely clear, suggests that the driving signal may be from a high frequency ballast. Ex. 1001, 51:8–14. Thus, the fact that the patent here discloses a low frequency driving signal does not mean that all the claims are directed to such a driving signal. See E-Pass Tech., Inc. v. 3Com Corp., 343 F.3d 1364, 1368–69 (Fed. Cir. 2003). Indeed, dependent claim 15 recites “the first driving mode is performed when the external driving signal is a relatively low frequency or voltage signal,” while the independent claims were directed to a more general driving signal. The doctrine of claim differentiation suggests that the independent claims here should not include explicit limitations of a dependent claim. See Phillips, 415 F.3d at 1315 (“[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.”); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“We determine that Patent Owner has not shown sufficiently that the Chinese priority patent applications it relies on—the ’636 Chinese Application and the ’586 Application—provide written description support for the limitation of “a mode determination circuit, configured to generate a first determined result signal based on the external driving signal” and “a mode switching circuit, coupled to the filter circuit and the driving circuit, configured to determine whether to perform a first driving mode or a second driving mode based on the first determined result signal,” recited in claim 1. PO Resp. 31–34, 60–67. Specifically, Patent Owner relies on structures in the ’636 Chinese Application and the ’586 Application that are not sufficiently similar to structures in the ’826 patent i.e., DR Circuit 140, excluding diodes D5 and D6, as shown in Figs. 24i-j and 29b. Id. at 27 (citing Ex. 2001, 23–24, 29, and 33, Fig. 24i–j and 29b).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“For the reasons above, Patent Owner has not established that claim 1 of the ’826 patent is entitled to the effective filing date of the ’636 Chinese Application (i.e., June 10, 2015) or the ’586 Application (i.e., March 26, 2015). Because the remaining asserted claims are dependent claims, Patent Owner has also not established that claims 7 and 12–18 of the ’826 patent are entitled to the effective filing date of the ’636 Chinese Application or the ’586 Application. The application that led to the ’826 patent was filed on March 25, 2016. The ’826 patent claims it is a continuation-in-part of application No. 15/055,630 (“the ’630 Application”), filed on February 28, 2016. So, even if the challenged claims were entitled to the earlier February 28, 2016 filing date, Duan issued on July 1, 2015, and is, thus, prior art to the challenged claims of the ’826 patent under 35 U.S.C. § 102(a)(1).” slip op. at 18
Patent outcomesUS 9,807,826 unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites PhillipsPatents in suitUS 9,807,826 - Vudu, LLC v. Ideahub, Inc.All claims unpatentablePTAB · Apr 14, 2022 · IPR2020-01688 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 3, 4, 6, 8, 11, 13, 15, 18, 19, 21, and 23 are unpatentable over DIS 23009-1; the revised contingent motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 18–19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor 6 Patent Owner does not present objective evidence of nonobviousness. does it present its own definition. We adopt Petitioner’s definition as it is consistent with the specification of the ’830 patent and the cited references.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes that we construe “adaptation set,” “SegmentBase,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in its briefing. We need not construe any claim term to resolve any issues before us, and therefore, do not expressly define any claim term in our Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
“not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely because paragraph 253 uses the term “[h]ereinafter” before it discloses “two simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited 8 Ex. 2005 is Application No. 16/168,933 (“the ’933 application”). in limitations [38.6], [40.6], and [46.6]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicates a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. MTA 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 38, 40, and 46 do not find sufficient written description support in the ’644 application nor in the ’933 application, whether considered individually or collectively, and thus, these claims contain new matter.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“rationale for combining DIS 23009-1 with M20060, Petitioner persuasively contends that: A POSA would have been motivated to add the additional “metadata” described in M20060 to the MPDs described in the DIS 23001-6 or DIS 23009-1 references in order to enable the client to choose the most suitable version of media content among alternative versions of media content. For example, M20060 describes that the additional metadata (e.g., the extended accessibility element and the usedWith, equivalentTo, bitDepth, minBitDepth, and maxBitDepth attributes) helps “both users and clients to select appropriate representations” by, for example, “1) supporting accessibility, 2) describing relationships of representations, and 3) describing media’s bit depth.” Moreover, a POSA would have had an expectation of success in modifying the MPDs in DIS 23001-6 or DIS 23009-1 to include the additional metadata described below because it simply would have been a matter of adding additional metadata to the MPD XML schemas described in DIS 23001-6 or DIS 23009-1. Id. (citing Ex. 1094 ¶ 33; Ex. 1097 § 1, 1). Dr. Bestavros persuasively explains that “M20060 expressly references the DIS 23001-6 reference and proposes specific modifications to the MPEG DASH metadata included in the MPD XML schema.” Ex. 1094 ¶ 34 (citing Ex. 1097 § 1, 1 (introduction of M20060); Ex. 1097, 7 (references cited by M20060)).” slip op. at 41
Patent outcomesUS 10,270,830 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,270,830 - Vudu, Inc. v. Ideahub, Inc.All claims unpatentablePTAB · Apr 14, 2022 · IPR2020-01689 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 11, 25, 27, and 29 are unpatentable as anticipated by and obvious over DIS 23009-1; the revised contingent motion to amend proposing claims 31–35 is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level Of Ordinary Skill In The Art Petitioner contends that: A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor does it present its own definition in any of its briefing. We adopt Petitioner’s definition as it is consistent with the Specification of the ’414 patent and the cited references.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner proposes that we construe “adaptation set,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in any of its briefing. 6 Patent Owner does not present objective evidence of nonobviousness. and therefore, do not expressly define any claim term in our Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot shown unpatentable
“The newly-cited portion in paragraph 232 does not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited in limitations [31.11], [32.12], and [35.7]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicate a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 31, 32, and 35 do not have sufficient written description support in the ’644 application and the ’092 application, either individually or collectively, and as such, contain new matter.” slip op. at 29
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“are not entitled to a priority date earlier than March 16, 2012 (the filing date of PCT ’922), because the disclosure of KR10-2011-0023271 does not support at least the limitations of: “the adaptation set includes one or more attributes or elements that are common to each of the representations for that adaptation set,” as recited in independent claims 1 and 11, and the “SegmentTemplate” recited in independent claims 25. Patent Owner has not asserted, after institution, that the challenged claims are entitled to an earlier date. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327–28 (Fed. Cir. 2008) (indicating that patent owner bears a burden of production in arguing that the asserted references are not prior art based on entitlement to an earlier priority date). As such and for the reasons discussed below, Petitioner has persuasively demonstrated that DIS 23001-6, DIS 23009-1, and 3GPP TS 26.247 qualify as prior art to the challenged claims, because Petitioner has sufficiently demonstrated that the references were publicly accessible prior to the applicable priority date of March 16, 2012.” slip op. at 12
Patent outcomesUS 10,313,414 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,313,414 - Unified Patents Inc. v. Ideahub, Inc.All claims unpatentablePTAB · Feb 7, 2022 · IPR2020-01338 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–9 are unpatentable; substitute claims 13–16 are denied as obvious over Chen, OAI, 3GPP, and Brueck, and claims 17–20 are withdrawn.
RulingsFinal written decision- Expert testimonyPatent owner expert discountedDenied
“B. Patent Owner’s Motion under § 42.64(c) is denied as based on untimely objections to testimony. Patent Owner styled its Motion as a “Motion to Exclude Petitioner’s” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner offers an assessment as to the level of skill in the art as of” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“9. Rationale to combine Chen and OAI” slip op. at 39
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“8. Whether OAI is Analogous Prior Art Petitioner set forth reasons why OAI is analogous art in its Petition.” slip op. at 34
Patent outcomesUS 8,645,562 unpatentable§ 103 obviousnesscites Phillips · KSR · Graham · NautilusPatents in suitUS 8,645,562 - Apple Inc. v. Corephotonics, Ltd.All claims unpatentablePTAB · Dec 7, 2021 · IPR2020-00862 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 2, 5, 9–14, 17, 21, and 22 are unpatentable under §103 over the Golan-based combinations; the Board found the combinations taught the limitations and secondary considerations lacked nexus.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Here, as explained below in Section III.E.2., under either articulation of the level of skill in the art Petitioner has shown the claims would have been obvious. Therefore, we do not need to determine whether knowledge of photography is required for the level of skill in this case. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (Where a determination of level of skill would not change the result “we find no harm under the circumstances of this case in the Board’s failure to set forth express findings as to the level of skill.”). For the reasons above, we determine, on the full record before us, that the level of ordinary skill in the art proposed by Petitioner is consistent with the ’332 patent and the asserted prior art. We adopt that level for the purpose of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner asserts “for the purposes of this proceeding and the analysis presented herein, no claim term requires express construction [and that it] analyzes the claims consistent with ordinary and customary meaning as would be understood by a POSITA in light of the specification.” Pet. 8. Patent Owner does not request construction of any claim term. See generally PO Resp. 12 12 Patent Owner proposed a construction for the limitation “no-switching criterion,” as recited in each of the challenged claims in its Preliminary Response. Prelim. Resp. 7–8. Patent Owner asserted “no-switching criterion” should be construed as “one more criteria determined based on inputs obtained from the two camera images.” Id. at 7. In the Institution Decision, we did not limit “no-switching criterion” to “one more criteria determined based on inputs obtained from the two camera images.” Patent Owner did not address claim construction in its Patent Owner Response. See generally PO Resp. Our Scheduling Order states that “Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.” Paper 8, 8. Thus, Patent Owner’s proposed construction for the limitation “no-switching criterion” is waived and we do not explicitly We do not discern a dispute between the parties regarding any limitation and we need not expressly construe any limitation to resolve the controversy before us. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- BurdenUnpatentable
“We have reviewed Petitioner’s arguments, the supporting testimony provided by Dr. Durand, the cited portions of Golan, Martin, and Togo and the other cited evidence and we are persuaded that the proposed combination teaches the limitations recited in independent claim 1 as set forth above. Petitioner’s rationales for combining Golan and Martin and Golan, Martin, and Togo are set forth earlier in this Section, and is determined to be supported by sufficient rational underpinning for at least the reasons set forth above. Patent Owner’s contentions regarding secondary considerations of non-obviousness are set forth above and, as discussed, do not weigh in favor of non-obviousness because Patent Owner has not established a nexus between the claimed invention and the cited evidence. For the foregoing reasons, we conclude Petitioner establishes unpatentability of independent claim 1 over Golan and Martin by a preponderance of the evidence. Accordingly, we are persuaded that Petitioner demonstrates the unpatentability of claim 1 over the combination of Golan, Martin, and Togo by a preponderance of the evidence.” slip op. at 55
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We do not agree with Patent Owner’s arguments, which are premised on a “physical” or “bodily” incorporation of limitations of one reference into the other. This is not the standard. See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”). The relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Rather than express obviousness as the physical incorporation of a structure from one reference into the structure of another reference, the prior art should be viewed as a combination of teachings from different sources, and the use of those teachings by one of ordinary skill in the art. See KSR Int’l Co., 550 U.S. at 418(the conclusion of obviousness can be based on the interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art). Petitioner contends “Togo’s image-quality-based no-switching criterion teachings apply to the combination regardless of whether a distance between cameras is close or whether optical axes are parallel.” Pet. Reply 10 (citing Ex. 1040 ¶ 52). Petitioner seeks only “to incorporate Togo’s teachings of a no-switching criterion based on a specific ‘setting magnification X’ and ‘photography distance Y’ of an object to be imaged.” Pet. 32 (citing Ex. 1005 ¶ 15; Ex. 1010 ¶¶ 2, 37, 49; Ex. 1003 ¶ 68). Thus, Patent Owner’s argument does not undermine Petitioners showing For the foregoing reasons, we are persuaded that Petitioner’s rationale for combining Golan, Martin, and Togo is supported by sufficient rational underpinning. See KSR, 550 U.S. at 418. We are further persuaded that the cited evidence sufficiently supports Dr. Durand’s testimony.” slip op. at 43
Patent outcomesUS 10,356,332 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,356,332 - Apple Inc. v. Corephotonics, Ltd.All claims unpatentablePTAB · Dec 7, 2021 · IPR2020-00861 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 4, 8–12, 15, 19, and 20 are unpatentable as obvious over the Golan, Martin, and Togo combinations, with Levey, Border, or Parulski added for certain dependent claims.
RulingsFinal written decision- Skill levelOther
“Here, as explained below in Section III.E.2., under either articulation of the level of skill in the art Petitioner has shown the claims would have been obvious. Therefore, we do not need to determine whether knowledge of photography is required for the level of skill in this case. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (Where a determination of level of skill would not change the result, “we find no harm under the circumstances of this case in the Board’s failure to set forth express findings as to the level of skill.”). For the reasons above, we determine, on the full record before us, that the level of ordinary skill in the art proposed by Petitioner is consistent with the ’898 patent and the asserted prior art. We adopt that level for the purpose of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner asserts “for the purposes of this proceeding and the analysis presented herein, no claim term requires express construction [and that it] analyzes the claims consistent with ordinary and customary meaning as would be understood by a POSITA in light of the specification.” Pet. 8. Patent Owner does not request construction of any claim term. See generally PO Resp.12 12 Patent Owner proposed a construction for the limitation “no-switching criterion,” as recited in each of the challenged claims, in its Preliminary Response. Prelim. Resp. 7–9. Patent Owner asserted “no-switching criterion” should be construed as “one more criteria determined based on inputs obtained from the two camera images.” Id. at 7. In the Institution Decision, we did not limit “no-switching criterion” to “one more criteria determined based on inputs obtained from the two camera images.” Patent Owner did not address claim construction in its Patent Owner Response. See generally PO Resp. Our Scheduling Order states that “Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.” Paper 8, 8. Thus, Patent Owner’s proposed construction for the limitation “no-switching criterion” is waived, and we do not We do not discern a dispute between the parties regarding any limitation and we need not expressly construe any limitation to resolve the controversy before us. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“from parallax, which Martin depends on. Id. at 40 (citing Ex. 2001 ¶ 84; Ex. 1001, 7:50–53). “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (quoting In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)). We are not persuaded that the invention claimed in the ’898 patent or Golan teaches away from Martin because they do not discourage or lead one in a direction divergent from Martin’s teachings relevant to “evaluat[ing] if a no-switching criterion is fulfilled or not fulfilled . . .” as recited in claim 1. In addition to providing an autostereoscopic display of 3D images using parallax images, Martin also discloses aligning these same parallax images using transformation parameters. See Ex. 1006, 5:38–42. Thus, Martin’s teaching of critical alignment does not appear to be divergent from or incompatible with the scope of independent claim 1 or the objectives of the ’898 patent. Nor is Martin incompatible with Golan for having a different objective. Petitioner need not show that Martin shares a common objective with Golan or the patent at issue. Intelligent Bio-Systems, 821 F.3d at 1367. Thus, Patent Owner’s teaching away argument does not undermine Petitioner’s contentions.” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“from parallax, which Martin depends on. Id. at 40 (citing Ex. 2001 ¶ 84; Ex. 1001, 7:50–53). “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (quoting In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)). We are not persuaded that the invention claimed in the ’898 patent or Golan teaches away from Martin because they do not discourage or lead one in a direction divergent from Martin’s teachings relevant to “evaluat[ing] if a no-switching criterion is fulfilled or not fulfilled . . .” as recited in claim 1. In addition to providing an autostereoscopic display of 3D images using parallax images, Martin also discloses aligning these same parallax images using transformation parameters. See Ex. 1006, 5:38–42. Thus, Martin’s teaching of critical alignment does not appear to be divergent from or incompatible with the scope of independent claim 1 or the objectives of the ’898 patent. Nor is Martin incompatible with Golan for having a different objective. Petitioner need not show that Martin shares a common objective with Golan or the patent at issue. Intelligent Bio-Systems, 821 F.3d at 1367. Thus, Patent Owner’s teaching away argument does not undermine Petitioner’s contentions.” slip op. at 34
Patent outcomesUS 10,230,898 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,230,898 - Apple Inc. v. Corephotonics, Ltd.All claims unpatentablePTAB · Dec 7, 2021 · IPR2020-00896 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1–12 are unpatentable: claims 1–11 over the listed §103 grounds, and claim 12 over Chen, Iwasaki, and Beich.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“testimony, and the accompanying Zemax diagrams and we are persuaded that Petitioner establishes that the combination of Ogino and Chen II teaches the limitation recited in claim 4. Petitioner apparently relies on the same motivation to combine Ogino and Chen II as it does for independent claim 1, which we determined above is supported by sufficient rational underpinning with a reasonable expectation of success. See Pet. 26–36; supra § III.E.3.b. Accordingly, we are persuaded that Petitioner establishes unpatentability of claim 4 over the combination of Ogino and Chen II by a preponderance of the evidence.” slip op. at 30
- Skill levelOther
“B. Level of Ordinary Skill in the Art” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“determine that Petitioner’s contentions and Dr. Sasián’s supporting testimony are sufficiently supported by the cited portions of Iwasaki and that Iwasaki teaches each of the limitations of claim 1 and its preamble. Patent Owner does not dispute Petitioner’s showing. For the foregoing reasons, we are persuaded that Petitioner establishes the unpatentability of claim 1 over Iwasaki by a preponderance of the evidence.” slip op. at 17
Patent outcomesUS 10,317,647 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,317,647 - Apple Inc. v. Corephotonics Ltd.All claims unpatentablePTAB · Dec 6, 2021 · IPR2020-00897 · APJ Gregg I Anderson · IPR · Final written decision
Claims 1–24 are unpatentable as obvious over Ogino Example 5 and Bareau; claims 1–3 and 5–8 are also unpatentable over Ogino Example 4 and Bareau.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “(i) a bachelor’s degree in Physics, Optical Sciences, or equivalent training, as well as (ii) approximately three years of experience in designing multi-lens optical systems.” Pet. 7 (citing Ex. 1003, 1111). Petitioner further alleges a person of ordinary skill “would have known how to use lens design software such as Code V, Oslo, or Zemax, and would have taken a lens 9 The Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011) revised 35 U.S.C. §§ 102 and 103, effective March 16, 2013. The ’277 patent has an effective filing date later than March 16, 2013 (see Section II.C, fn. 5). Thus, the grounds asserted are under the AIA version of 35 U.S.C. § 103. 10 Petitioner primarily relies on Examples 4 and 5, but also cites Example 6. See, e.g., Pet. 27. We consider all cited portions of Ogino. 11 Petitioner alternates its citations to the Sasián Declaration (Ex. 1003) between page numbers and paragraph numbers. Compare Pet. 7 (citing page) with Pet. 9 (citing paragraph). We refer to page numbers, which are used more often in the Petition, using paragraph cites when they are referenced. design course.” Id. (citing Ex. 1003 ¶ 19). Patent Owner “does not disagree” with Petitioner’s proposed description of a person of ordinary skill in the art. PO Resp. 12 (citing Ex. 2001 ¶ 20). On this record, and to the extent relevant to our findings, we adopt Petitioner’s proposal which is consistent with the prior art of record.” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“and “total track length” (“TTL”)12 in the final decisions in the ’1140 and ’1146 IPRs. Pet. 8; id. at fn. 2. Specifically, our analysis concluded “effective focal length” is “the focal length of a lens assembly.” ’1140 IPR, Paper 37, 10; ’1146 IPR, Paper 37, 8. We further concluded “total track 12 We also noted in the Institution Decision that Petitioner proposed a different construction of TTL in IPR2020-00877 (“’877 IPR”), which involves the same parties. Inst. Dec. 11. The parties were advised to “address during trial whether and why the construction of this term should differ.” Id. Neither party did so. length” is “the length of the optical axis spacing between the object-side surface of the first lens element and one of: an electronic sensor, a film sensor, and an image plane corresponding to either the electronic sensor or a film sensor.” ’1140 IPR, Paper 37, 10–18; ’1146 IPR, Paper 37, 8–14. The challenged patents in the ’1140 and ’1146 IPRs share common subject matter with the ’277 patent. See Section II.B above. Neither party disputes the constructions of EFL and TTL from the ’1140 or ’1146 IPRs as set forth above. Pet. 8; PO Resp. 13. There is no dispute as to the meaning of EFL or TFL. Accordingly, to the extent relevant and to complete the record, we maintain the above constructions of EFL and TTL for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“2. Remaining claim terms In the Institution Decision, we determined no other claim term required construction. Inst. Dec. 10–11. Both parties agree that the remaining words of the claims do not require express construction and are given their ordinary and customary meaning as understood by a person of ordinary skill in the art. Pet. 8; PO Resp. 13.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We find that Dr. Sasián’s lens design software analysis using the Zemax software shows that L4 and L5 do not touch. See Reply 8–9 (citing Ex. 1037 ¶ 14 (Zemax ray analysis showing L4 and L5 do not touch)).29 Patent Owner disputes the design process used by Dr. Sasián but does not rebut the ray analysis and did not provide a response from Dr. Milster. See Sur-Reply 5–7. In making our finding, we credit Dr. Sasián’s opinion testimony as supported by his ray analysis. Regardless, as we have already found, manufacturing considerations such as touching lenses do not provide a reason not to combine Bureau with Ogino Example 4.” slip op. at 29
Patent outcomesUS 10,324,277 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,324,277 - Apple Inc. v. Corephotonics, Ltd.Some claims unpatentablePTAB · Nov 2, 2021 · IPR2020-00878 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 2, 4–6, 9–15, 17, 18, 20–23, and 25–29 are unpatentable; claims 3, 8, 16, 19, 24, and 30 were not shown unpatentable.
RulingsFinal written decision- BurdenMixed
“35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 1, 2, 4–6, 9–15, 17, 18, 20–23, and 25–29 of the ’897 patent are unpatentable and that Petitioner has not shown, by a preponderance of the evidence, that claims 3, 8, 16, 19, 24, and 30 of the ’897 patent are unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would include someone who had, at the priority date of the ’897 Patent, (i) a Bachelor’s degree in Physics, Optical Sciences, or equivalent training, as well as (ii) approximately three years of experience in designing multi-lens optical systems. Such a person would have had experience in analyzing, tolerancing, adjusting, and optimizing multi-lens systems for manufacturing, and would have been familiar with the specifications of lens systems and their fabrication. In addition, a POSITA [person of ordinary skill in the art] would have known how to use lens design software such as Code V, Oslo, or Zemax, and would have taken a lens design course. Pet. 6–7 (citing Ex. 1003 ¶¶ 19–20). Patent Owner applied the same level of skill for the purposes of this IPR. PO Resp. 14–15 (citing Ex. 2001 ¶ 19). We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Therefore, for purposes of this Final Written Decision, we adopt Petitioner’s assessment of the level of skill in the art because it is consistent with the ’897 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Patent Owner argues that no “dispute between the parties in this IPR depends on the construction of EFL, TTL, or of any other claim term [and] submits that the Board should refrain from construing any terms in the patent for the purposes of this proceeding.” PO Resp. 17. Petitioner does not respond to this argument. See generally Pet. Reply. We agree with Patent Owner. If we were to adopt either construction, it would not change the determination made in this Decision. Thus, we decline to construe any claim terms for purposes of this Final Written Decision. 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)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“unpatentable under 35 U.S.C. § 102 as anticipated by Ogino. Pet. 10–40. Patent Owner does not present arguments related to this ground. See generally PO Resp. For the reasons that follow, we are persuaded that the evidence supports Petitioner’s arguments and thus, Petitioner establishes by a preponderance of the evidence that claims 1, 4, 9–15, 17, 20, and 25–29 are unpatentable under 35 U.S.C. § 102 as anticipated by Ogino.” slip op. at 17
Patent outcomesUS 10,330,897 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,330,897 - Apple Inc. v. Corephotonics, Ltd.Some claims unpatentablePTAB · Nov 2, 2021 · IPR2020-00877 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 2, 5–7, 11–13, 15, 16, 18, 20, and 21 are unpatentable as obvious; claims 3 and 4 were not shown unpatentable because the May combination was insufficiently supported.
RulingsFinal written decision- BurdenMixed
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). The burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, 800 F.3d at 1378 (citing Tech. Licensing Corp. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in an inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” Magnum, 829 F.3d at 1380. Thus, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art render the challenged claims unpatentable. slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends [A] person of ordinary skill in the art (“POSITA”) would include someone who had, as of the priority date of the ’840 Patent (i) a Bachelor’s degree in Physics, Optical Sciences, or equivalent training, as well as (ii) approximately three years of experience in designing miniature lens systems for mobile device applications. . . . Such a person would have had experience in analyzing, tolerancing, adjusting, and optimizing multi-lens systems, and would have been familiar with the specifications of lens systems, especially lenses configured for use in mobile devices, such as cell phones. . . . In addition, a POSITA would have known how to use lens design software such as Code V, Oslo, or Zemax, and would have taken a lens design course. . . . Such a POSITA would have been familiar with photographic lenses and with mechanical and electronic devices. Lack of work experience can be remedied by additional education, and vice versa. Pet. 6–7 (citing Ex. 1003, 10). Patent Owner “applies the level of ordinary skill in the art set forth in the petition and used by the Board in its Institution Decision.” PO Resp. 3 (Inst. Dec. 8). We determine that the level of ordinary skill in the art proposed by Petitioner is consistent with the ’840 patent and the asserted prior art. We apply Petitioner’s definition in making the findings and conclusions rendered in this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Independent claim 1 recites “the Telephoto lens unit and the Wide lens unit having, respectively, total track length (TTL)/effective focal length (EFL) ratios smaller and larger than 1 and defining separate Telephoto and Wide optical paths.” Ex. 1001, 19:48–52. Petitioner asserts that “a POSITA would find, in light of the specification, the term ‘total track length (TTL)’ to include ‘the length of the optical axis spacing between the object-side surface of the first lens element and the image plane.’” Pet. 8 (citing Ex. 1003, 20) (emphasis omitted). Petitioner further asserts that, although the Specification of the ’840 patent does not expressly define EFL, “its meaning is well known in the art, as exemplified in Li ([Ex.] 1007), which states that ‘[t]he focal length of a lens assembly [is] also referred to as the effective focal length[.]’” Pet. 8–9 (quoting Ex. 1007, 2:59–61) (alterations in the original). Patent Owner “does not believe that any terms require construction to resolve the disputes addressed in this response.” PO Resp. 3. We do not discern a dispute as to the claim terms TTL and EFL in this proceeding and as such, we need not expressly construe these terms. Nidec Motor Corp., 868 F.3d at 1017. .” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“(2) Discussion of Rationale for Combining We have reviewed the record developed at trial including the cited portions of Parulski, Huang, and Tang. We determine that Petitioner has supported its seven reasons for combining Parulski, Huang, and Tang with sufficient rational underpinning evidenced by the exhibits cited above. Patent Owner does not dispute Petitioner’s rationale for combining. See generally PO Resp. We determine that Petitioner has shown that an ordinarily skilled artisan would have been motivated to combine Parulski, Huang, and Tang, and that such motivation is supported by sufficient rational underpinning. Based on the complete record developed at trial, we determine that cited portions of Parulski, Huang, and Tang sufficiently support Petitioner’s contentions with respect to the telephoto lens unit and the wide lens unit as claimed.” slip op. at 22
Patent outcomesUS 10,288,840 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,288,840
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.