- Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Feb 6, 2024 · IPR2023-01099 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution on claims 21–26 because the Fintiv factors favored discretionary denial and the petition did not present compelling evidence of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“It strikes us as inefficient to conduct, in parallel with the Texas Litigation, numerous inter partes reviews of the same seven patents. This is particularly the case here where the best available evidence indicates that the Texas Litigation will go to trial approximately six months prior to when a final written decision would be entered if inter partes review were to be instituted. Thus, this additional reason weighs in favor of discretionary denial. G. Fintiv Conclusion As a whole, the Fintiv factors weigh in favor of discretionary denial of the Petition, with factor 1 being neutral, factors 2, 3, 5, and 6 weighing in favor of discretionary denial and factor 4 weighing slightly against it. However, we “will not deny institution based on Fintiv if there is compelling evidence of unpatentability.” CommScope Techs. LLC v. Dali Wireless Inc., No. IPR2022-01242, Paper 23 at 4 (PTAB Feb. 27, 2023) (precedential) (“CommScope”). Thus, we now consider the merits of the Petition under this higher standard.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“III. ANALYSIS UNDER COMPELLING MERITS STANDARD “[T]he compelling merits standard is a higher standard than the standard for institution set by statute.” Commscope at 3 (referring to 35 U.S.C. § 314(a)). “[W]hen determining whether there is a compelling unpatentability challenge, the Board evaluates whether the Petition presents challenges in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. (quotation marks and citation omitted). Put another way, the compelling merits standard is satisfied “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” Id. at 4 (citation omitted). For the reasons explained below, the Petition fails to meet this standard.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“The Petition’s reason for why a person of ordinary skill in the art allegedly would have made the proposed modification, i.e., “to expand/compliment applications compatible with those contemplated by Okada to use thin(ner) devices” (Pet. 20), is not persuasive. Rather, it appears, based on the record presented, that the proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Ratti, 270 F.2d at 813 (A combination of references is “not a proper ground for rejection” where it “would require a substantial reconstruction and redesign of the elements shown [in the prior art] as well as a change in the basic principles under which [the prior art] construction was designed to operate.”); In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (reversing BPAI decision affirming obviousness rejection where a proposed modification to the prior art would have “rendered [it] inoperable for its intended purpose”). For these reasons, the Petition does not present “compelling evidence of unpatentability.” Commscope at 4.” slip op. at 26
- Obviousness (§103) › KSR rationalesNot reached
“The Petition’s reason for why a person of ordinary skill in the art allegedly would have made the proposed modification, i.e., “to expand/compliment applications compatible with those contemplated by Okada to use thin(ner) devices” (Pet. 20), is not persuasive. Rather, it appears, based on the record presented, that the proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Ratti, 270 F.2d at 813 (A combination of references is “not a proper ground for rejection” where it “would require a substantial reconstruction and redesign of the elements shown [in the prior art] as well as a change in the basic principles under which [the prior art] construction was designed to operate.”); In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (reversing BPAI decision affirming obviousness rejection where a proposed modification to the prior art would have “rendered [it] inoperable for its intended purpose”). For these reasons, the Petition does not present “compelling evidence of unpatentability.” Commscope at 4.” slip op. at 26
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,462,942 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Feb 6, 2024 · IPR2023-01096 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution on claims 20–23 and 30 because the Fintiv factors favored denial and the petition lacked a compelling unpatentability challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“NHK applies to the situation where the district court has set a trial date to occur earlier than the Board’s deadline to issue a final written decision in an instituted proceeding. In a case where, in contrast to the facts present in NHK, the district court has set a trial date after the Board’s deadline to issue a final written decision in an instituted proceeding, the Board may be less likely to deny institution under 35 U.S.C. § 314(a) based on district court trial timing depending on other factors as set forth below. Fintiv at 3. The instant situation is the former one described above by Fintiv and to which “NHK applies.”” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Here, Petitioner argues that a person of ordinary skill in the art would have “modif[ied] the Okada system to use ‘a receiver coil which has a substantially planar shape and is located parallel to a surface of the portable device’ (and complimented such a design with corresponding planar primary coil).” Pet. 21 (quoting claim 20). Petitioner states that the skilled artisan would have done so “to expand/compliment applications compatible with those contemplated by Okada to use thin(ner) devices.” Id. (citing Ex. 1002 ¶135). The cited declaration testimony repeats this statement and adds that the modification could reduce size and/or weight of a device and, due to the “close proximity of coupling,” could improve power transmission efficiency, reduce energy waste, and shorten charging time. Ex. 1002 ¶135.” slip op. at 22
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“the Petition, with factor 1 being neutral, factors 2, 3, 5, and 6 weighing in favor of discretionary denial and factor 4 weighing slightly against it. However, we “will not deny institution based on Fintiv if there is compelling evidence of unpatentability.” CommScope Techs. LLC v. Dali Wireless Inc., No. IPR2022-01242, Paper 23 at 4 (PTAB Feb. 27, 2023) (precedential) (“CommScope”). Thus, we now consider the merits of the Petition under this higher standard. III. ANALYSIS UNDER COMPELLING MERITS STANDARD “[T]he compelling merits standard is a higher standard than the standard for institution set by statute.” CommScope at 3 (referring to 35 U.S.C. § 314(a)). “[W]hen determining whether there is a compelling unpatentability challenge, the Board evaluates whether the Petition presents challenges in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. (quotation marks and citation omitted). Put another way, the compelling merits standard is satisfied “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” Id. at 4 (citation omitted). For the reasons explained below, the Petition fails to meet this standard.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. Because Petitioner’s formulation of the level of ordinary skill in the art appears consistent with the ’371 patent and the asserted prior art, and because there is no argument to the contrary at this stage of the proceeding, we apply it in our analysis below.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,316,371 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Jan 10, 2024 · IPR2023-01087 · APJ David Cotta · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 and 27 would have been obvious over Nakamura, Odendaal, and Calhoon.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“established a reasonable likelihood that it will prevail on its assertion that the challenged claims are unpatentable based on the grounds advanced here. Harmonic Inc., 815 F.3d at 1363; 35 U.S.C. § 312(a)(3). 2. Conclusion Based on the record before us, Petitioner has not presented adequate reasoning to show a reasonable likelihood that one having ordinary skill in the art would have been led to modify Nakamura with the teachings of Odendaal in the manner claimed. Having considered all of the arguments and evidence currently of record, we determine that Petitioner has not shown a reasonable likelihood of that it will prevail in establishing that claims 1 and 27 would have been obvious over the combination of Nakamura, Odendaal, and Calhoon. IV. CONCLUSION On this preliminary record, Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable based on the ground advanced in the Petition.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“On the present record, we are not persuaded that Petitioner has shown that the POSA would have been motivated to modify Nakamura to include Odendaal’s spiral coils in place of Nakamura’s multiple winding sections wound around a ferrite core. As discussed above, the configuration of multiple winding sections wound around a common ferrite core allows Nakamura’s system to provide multiple different power levels and to align charging and receiving equipment for optimal transmission. The Petition asserts that “the Nakamura-Odendaal system/device [would] include features and perform functionalities like those described by Nakamura.” Pet. 29. But the Petition does not explain how it proposes to obtain multiple power level functionality using Odendaal’s simple untapped planar coils. Nor does the Petition explain how it proposes to preserve Nakamura’s alignment functionality using Odendaal’s untapped planar coils. See 8 Odendaal also discloses bi-filar and multi-filar spirals (id. at 2:51–55; Fig 1B) but Petitioner does not rely on those disclosures (see, e.g., Ex. 1002 ¶¶ 75–77; 129–134 (discussing the disclosures of Odendaal relied upon for obviousness without discussing bi-filar and multi-filar spirals)). In addition, as Patent Owner explains (Prelim. Resp. 47–48), Odendaal does not describe these bi- and multi-filar spirals as having the ability to act separately. Rather, Odendaal teaches that the spirals are placed on top of each other and separated by a dielectric film that forms a capacitor. Ex. 1008, 3:32–40. Thus, Odendaal’s bi- and multi-filar spirals would act like a single coil. Id.” slip op. at 20
- Expert testimonyPetitioner expert discountedOther
“have known how to configure the modified system/device such that it operated as intended consistent with Nakamura’s teachings/designs.” Pet. 30 (citing Ex. 1002 ¶ 141). But Petitioner and Dr. Baker never explain what the combined system would look like or how it would work. Petitioner’s omission to address how its combined system would work is illustrated in how it addresses the claim requirement that a magnetic field is received “in a direction substantially perpendicular to the plane of the receiver coil.” Ex. 1001, 27:17–18 (claim limitation reciting “the receiver coil has a generally planar shape so that a magnetic field received in a direction substantially perpendicular to the plane of the receiver coil is used to inductively generate a current in the receiver coil,”); 30:15–18 (same). To address this requirement, Petitioner relies not on a discussion of how the magnetic field in the proposed combined system of Nakamura and Odendaal would work (i.e., in the planar coil configuration), but on the magnetic field generated by Nakamura’s multi-section winding and ferrite core – i.e., the very winding it proposes to replace with Odendaal’s planar coils. Pet. 19–20. The significant differences between Nakamura’s multiple winding sections and Odendaal’s simple planar coil make it difficult to discern, on this record, how Odendaal’s coils would be incorporated in Nakamura’s 9 To the extent Petitioner contends that the combined Nakamura/Odendaal system would lack these functionalities, it undermines the POSA’s motivation to use planar coils in Nakamura’s system. 21 system without compromising functionality.10 Absent further explanation as to how the combined system of Nakamura and Odendaal would preserve Nakamura’s functionality, we give little weight to Dr. Baker’s conclusory testimony that the POSA would have known how to do so. Ex. 1002 ¶ 141; 37 C.F.R. § 42.65(a) (“expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no 10 Petitioner extensively relies on internal cross-references in both the Petition and in Dr. Baker’s Declaration. For example, paragraph 141 of Dr. Baker’s Declaration, refers to “my analysis and discussions above in this section,” “my analysis and discussions in Sections IX.A.1(a)-1(b),” and “my analysis and discussions in Sections VIII.A-B, IX.A.1(a)-(b).” As another example, paragraph 140 of Dr. Baker’s Declaration refers to “my analysis and discussions above in this section,” “my analysis and discussions above regarding state of art disclosures such as those in Exs. 1006–1007, 1009– 1011, 1015, 1024–1030,” “my discussions above in Section V.B and those above where I reference state-of-art references supporting such understanding,” and “my analysis and discussions in Sections IX.A.1(a)– (l).” Similarly, the Petition states that “[o]ther disclosed features would have been included in the Nakamura-Odendaal system (including as further modified below) for reasons explained,” and provides a citation to “§§IX.A.1(a)–(l)).” Pet. 30. Although there is no rule against internal crossreferencing, and we recognize that it can be useful to avoid duplication, Petitioner’s cross-referencing here results in a lack of clarity. Our Consolidated Trial Practice Guide (Nov. 2019) (available at https://www.uspto.gov/TrialPracticeGuideConsolidated) provides that “parties should avoid submitting a repository of all of the information that a judge could possibly consider, and instead focus on concise, well-organized arguments, easy-to-follow arguments supported by readily identifiable evidence of record.” Petitioner has failed to follow this guidance, which has made it difficult to discern Petitioner’s precise contentions as to the combination of Nakamura and Odendaal, and further supports that Petitioner has not shown “with particularity” why the ’440 patent is unpatentable over Nakamura, Odendaal, and Calhoon. 22 weight.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (PTAB Aug. 24, 2022) (precedential) (holding declaration is entitled to little weight when it contains an exact restatement of the petition’s unsupported, conclusory assertions without any additional supporting evidence or reasoning).” slip op. at 21
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends: A person of ordinary skill in the art as of the claimed priority date of the ’440 patent (“POSITA”) would have had at least a master’s degree in electrical engineering, or a similar discipline, and two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems. More education can supplement practical experience and vice versa. Pet. 3–4 (citing Ex. 1002 ¶¶ 20–21). Patent Owner does not challenge Petitioner’s proposed definition of the POSA for purposes of its preliminary response. Prelim. Resp. 6. Petitioner’s definition appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’440 9 patent. Accordingly, for purposes of this Decision, we accept Petitioner’s proposed definition of the person of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,577,440 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Jan 10, 2024 · IPR2023-01102 · APJ William V Saindon · IPR · Institution
Institution was denied for claims 15, 17, and 20–23 because Petitioner did not show a reasonable likelihood that any challenged claim was obvious over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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”)); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). At the institution phase of an inter partes review, Petitioner’s burden is to show that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“POSITA”) would have had “at least a master’s degree in electrical engineering, or a similar discipline, and two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems” and that “[m]ore education can supplement practical experience and vice versa.” Pet. 4 (citing Ex. 1002 ¶¶ 21–22, 23–66). slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“requires a microcontroller configured for “operating in a first mode of operation using a first protocol,” wherein that protocol “is an inductive charging communication-and-control protocol that comprises uni-directional messaging.” In this mode, the claim requires a first communication sent from the receiver (the charged device) to the base system (the charger). Ex. 1001, 72:6–9 (“sending . . . a first communication”). The claim also requires the microcontroller to be configured for “operating in a second mode of operation using a second protocol,” wherein that protocol “is an inductive charging communication-and-control protocol that defines bi-directional messaging.” Id. at 72:12–16. In this mode, the claim requires a second communication sent from the receiver to the base system, and also a third communication sent from the base system to the receiver. Id. at 72:18– 26 (“sending . . . a second communication” and “receiving . . . [a] third communication”). We also note that claim 5, which depends from independent claim 1 (which is similar to claim 15), specifies that “the first mode of operation is a subset of the second mode of operation,” but also note that claim 15 does not have a similar claim that depends from it. Id. at 71:11–12. Independent claim 24 is similar, but states that the second protocol “comprises bi-directional messaging” (emphasis added), instead of claim 1’s recitation of “defines bi-directional messaging” (emphasis added). Compare id. at 72:16 with id. at 74:1. The fact that the two modes of operation specified in claim 15 are otherwise effectively identical but for the unidirectional and bidirectional aspects, suggests that the claims use these terms to distinguish the two modes. In other words, it tends to indicate that the words “uni-directional” and “bi-directional” in claim 15 are intended to refer to distinct messaging protocols (rather than “uni-directional” being merely half of “bi-directional”). See Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) (“Proper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.”). Likewise, the first mode recites “sending . . . a first communication,” whereas the second mode recites both “sending” and “receiving” communications. Although not dispositive (given the “comprising” language of the claims), this language is consistent with an understanding that unidirectional modes only have a sending of information (from the perspective of the power receiving device) whereas bidirectional modes have two-way messaging between the charger and receiver.” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“testimony of Petitioner’s expert and find that it does not provide a factual basis for Petitioner’s assertion that unidirectional messaging is just one leg of bidirectional messaging. See, e.g., Pet. 23 (citing Ex. 1002 ¶¶ 112). In particular, the expert’s testimony largely just repeats the assertions of the Petition, without providing sufficient additional analysis or evidence useful to determine how a person of ordinary skill in the art would construe those terms. See Ex. 1002 ¶¶ 112–114; see also 37 C.F.R. § 42.65(a) (“expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (PTAB 2022) (precedential) (holding declaration is entitled to little weight when it contains an exact restatement of the petition’s unsupported, conclusory assertions without any additional supporting evidence or reasoning). Instead, Petitioner’s expert appears to largely assume that the prior art reference Sogabe discloses unidirectional messaging, giving the expert’s opinion little probative value. Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quoting Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)); Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some circumstances unsupported oral testimony can be sufficient to provide prior knowledge or use, it must be regarded with suspicion and subjected to close scrutiny.”).” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,342,777 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Jan 10, 2024 · IPR2023-01101 · APJ William V Saindon · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–3, 5–11, 13, 14, and 24 would have been obvious over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review (“Decision”) under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons provided below, we determine Petitioner has not satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has not demonstrated a reasonable likelihood that at least one claim of the ’777 patent is unpatentable, we do not institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“are otherwise effectively identical but for the unidirectional and bidirectional aspects suggests that the claims use these terms to distinguish the two modes. In other words, it tends to indicate that the words “uni-directional” and “bi-directional” in claim 1 are intended to refer to distinct messaging protocols (rather than “uni-directional” being merely half of “bi-directional”). See Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) (“Proper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.”).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“POSITA”) would have had “at least a master’s degree in electrical engineering, or a similar discipline, and two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems” and that “[m]ore education can supplement practical experience and vice versa.” Pet. 4 (citing Ex. 1002 ¶¶ 21–22). Patent Owner does not challenge Petitioner’s proposed level of skill. Prelim. Resp. 11. We adopt Petitioner’s definition for purposes of this Decision. slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“testimony of Petitioner’s expert and find that it does not provide a factual basis for Petitioner’s assertion that unidirectional messaging is just one leg of bidirectional messaging. See, e.g., Pet. 25 (citing Ex. 1002 ¶¶ 120–121). In particular, the expert’s testimony largely just repeats the assertions of the Petition, without providing sufficient additional analysis or evidence useful to determine how a person of ordinary skill in the art would construe those terms. See Ex. 1002 ¶¶ 120–125; see also 37 C.F.R. § 42.65(a) (“expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (PTAB 2022) (precedential) (holding a declaration is entitled to little weight when it contains an exact restatement of the petition’s unsupported, conclusory assertions without any additional supporting evidence or reasoning). Instead, Petitioner’s expert in the cited paragraphs appears to largely assume that the prior art reference Sogabe discloses unidirectional messaging, giving the expert’s opinion little probative value. Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quoting Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)); Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some circumstances unsupported oral testimony can be sufficient . . . it must be regarded with suspicion and subjected to close scrutiny.”).” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,342,777 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Jan 8, 2024 · IPR2023-01093 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution on claims 2, 4, and 18 under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id. at 6.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner reports that it “believes that no special constructions are necessary to assess whether the challenged claims are unpatentable over the asserted prior art.” Pet. 5 (citing Baker Decl. ¶ 68). Patent Owner does not dispute Petitioner’s position or discuss claim construction. Therefore, we determine there are no claim terms that need to be construed at this stage.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“patent would have possessed “at least a master’s degree in electrical engineering, or a similar discipline,” and would have had “two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems,” with additional education supplementing “practical experience and vice versa.” Pet. 4 (citing Baker Decl. ¶¶ 20–21). Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regard Petitioner’s description as consistent with the challenged patent and 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, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,201,500 - Infineon Technologies AG v. Amatech Group LimitedSome claims unpatentablePTAB · Dec 1, 2023 · IPR2022-00951 · APJ Stacey G White · IPR · Final written decision
Claims 1, 2, 4–6, and 8–10 are unpatentable as obvious; claims 3 and 11 were not shown unpatentable, and claim 7 was not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find that Petitioner’s description is consistent with the prior art and patent specification currently before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For purposes of our Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” See Pet. 8. In addition, we note that we agree with Patent Owner’s statement that the distinction between the parties’ proposals is not material to any dispute before us and we find that our determinations would be the same under either definition of the person of ordinary skill in the art.” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We are not persuaded that Dr. van der Weide’s cited testimony is of a nature that should lead us to give his testimony no weight. We note that Patent Owner did not move to strike or exclude Dr. van der Weide’s testimony. When considering credibility and weight of evidence below, we consider Dr. van der Weide’s testimony as a whole as well as all other evidence of record and accord it the appropriate weight.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“provide an express construction of the full breadth of a claim term. “The Board is required to construe ‘only those terms ... that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). As such, we proceed in line with Federal Circuit case law, which “prescribes—deciding only the issues necessary to resolve the dispute before it.” Nichia Corp. v. DSS, Inc., No. 2022-1704, 2023 WL 7211097, at *3 (Fed. Cir. Nov. 2, 2023) (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). The Federal Circuit has long recognized that “[c]laim construction is a matter of resolution of disputed meanings and technical scope” and that claim construction may be required in an obviousness context “when the meaning or scope of technical terms and words of art is unclear and in dispute and requires resolution in order to determine obviousness.” U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). In order to determine whether Petitioner’s obviousness grounds meet their required burden of proof, we need not expressly state the full scope of this claim term. Thus, we are within our authority to proffer a construction that determines the scope of a claim term in a manner sufficient to determine whether the asserted art teaches the claim. In other words, there may be other ways to meet the disputed limitation, but for the purposes of our Decision, it is proper to expressly determine a claim term’s scope only as much as is required to resolve the disputed issues before us.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“the invention(s), but rather as examples of some of the embodiments.” Id. at 25:65–26:1; see also id. at 6:18–20 (embodiments “should be construed as illustrative rather than limiting”), 5:22–24 (“non-limiting example”). The Federal Circuit has noted that “[e]mbodiments in the specification—even if there is only one embodiment—cannot limit the scope of the claims absent the patentee’s ‘words or expressions of manifest exclusion or restriction.’” Apple Inc. v. Wi-LAN Inc., 25 F.4th 960, 967 (Fed. Cir. 2022) (citing Hill- Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014)). After reviewing the complete record, we see no such manifest exclusion or restriction in the ’240 patent specification. We decline Patent Owner’s request to limit the claims to the described single-frequency embodiments. See Phillips, 415 F.3d at 1323. We need not provide further express construction of this claim language for purposes of this Decision.” slip op. at 23
Patent outcomesUS 9,165,240 mixedClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,165,240 - PTAB · Nov 28, 2023 · IPR2023-00920 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted IPR on all challenged claims and all grounds after finding a reasonable likelihood that claims 12–18 would be unpatentable over Jiang, Jiang2, and Jiang3.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’218 patent. Thus, we institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Patent Owner argues that Petitioner’s “generic motivations” to “increase power savings” fail to provide sufficient motivation to modify Jiang’s power gating system to supply multiple voltages. Prelim. Resp. 33– 39. Patent Owner asserts that the devices in each reference operates effectively and that Petitioner has not offered any motivation to modify what Jiang has already achieved. Pet. 38–39. On the present record, we disagree with Patent Owner. Petitioner asserts that a POSITA would have understood that different portions of a chip have different power requirements and that providing high voltages to the portions requiring high voltages and providing lower voltages (as opposed to no voltage) to the portions of the rest of the chip that require lower voltages would result in power savings. See Pet. 26–27; Ex. 1003 ¶¶ 90–93. Whether it would have been obvious to replace Jiang’s global power mesh with a mesh having two separate power sources is an issue that is best resolved on a full record.” slip op. at 32
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“A reference patent or published patent application can be entitled to the benefit of its provisional application’s filing date for pre-AIA 35 U.S.C. § 102(e) prior art purposes on two conditions. First, the provisional application must provide sufficient support for at least one claim in the reference patent or published patent application. See Dynamic Drinkware, 800 F.3d at 1381 (“A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.”). Second, the provisional application must provide sufficient support for the subject matter relied upon for prior art purposes in the reference patent or published patent application. See In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (“[A]n applicant is not entitled to a patent if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application or U.S. non-provisional application.”); Ex parte Mann, 2016 WL 7487271, at *5 (PTAB Dec. 21, 2016) (stating that the party claiming priority also must show that the subject matter relied upon in the non-provisional is sufficiently supported in the provisional application [and that t]his subject matter test is in addition to the comparison of claims required by Dynamic Drinkware”); Here, Petitioner fails to sufficiently show that Chiu’s Provisional Application (Ex. 1011) provides written description support for either (1) any claim of Chiu or (2) the subject matter that Petitioner relies upon in Chiu for prior art purposes. Petitioner provides no comparison or analysis of the material disclosed in Chiu’s Provisional Application with either Chiu’s claims or the subject matter in Chiu that Petitioner relies upon in its unpatentability argument. See Prelim. Resp. Petitioner’s invitation to the Board to compare the disclosure of Chiu and Chiu’s provisional application is not sufficient to meet this burden. See Benitec Biopharma Ltd. v. Cold Spring Harbor Labs., IPR2016-00016, Paper 8 at 9 (PTAB Mar. 31, 2016) (stating the petitioner failed to provide sufficient evidence that the asserted reference qualified as prior art when it failed to provide expert testimony or sufficient evidence that the provisional application provides support for the claims in the asserted reference); Comcast Cable Commc'ns, LLC v. Promptu Sys. Corp., IPR2018-00345, Paper 10 at 25–26 (PTAB July 2, 2018) (stating the petitioner’s “barebones analysis” was insufficient to show “how the [provisional underlying the asserted reference] provides support for the subject matter relied upon [in the asserted reference]”). Accordingly, Petitioner has not shown that Chiu is entitled to the priority date of its provisional application, and thus has not sufficiently shown that Chiu qualifies as prior art to the ’218 patent.” slip op. at 29
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We disagree with Patent Owner. As noted above, claim element 12[c] recites “a global power mesh, coupling to the first local power mesh and the second local power mesh, to provide the power needed by the first power domain and the second domain separately.” Neither party has provided an express or detailed claim construction analysis of this claim language. Nor does the ’218 patent appear to indicate that the phrase recited in claim element 12[c] should be afforded any special definition. See Ex. 1001. A plain and ordinary reading of this phrase, however, indicates that the global power mesh must be able to provide power needed by the first and second power domains separately. Pet. 21–22; Ex. 1004, Abstract, 1–2, Fig. 1(b); Ex. 1003 ¶¶ 78–85. Petitioner sufficiently shows that Jiang’s global power mesh is able to provide power separately to the first and second power domains by selectively turning off and on each domain’s sleep transistors, each of which is provided power by the global mesh.14 Pet. 22–23 (citing Ex. 1003 ¶ 81). Dr. Subramanian explains that the use of sleep transistors between the global power mesh and the first and second local power meshes enables the global power mesh to power each domain “separately” by 14 Petitioner has sufficiently shown, and Patent Owner does not dispute, that Jiang teaches sleep transistors are independently operable. Pet. 22–23; Ex. 1004, Abstract, 1–2, Fig. 1(b); Ex. 1003 ¶¶ 81–85. selectively turning off each domain’s sleep transistor when desired. Ex. 1003 ¶ 81 (citing Ex. 1004, Abstract, 1, 2). Dr. Subramanian further explains that turning off the power to the local power mesh, through use of the sleep transistors, will necessarily turn off the power to the macro (power domain) underlying the partial local power mesh. Ex. 1003 ¶ 81. Thus, Petitioner’s argument and evidence that Jiang discloses connecting global power mesh power VDD to the gated macros (power domains) through the sleep transistors and the local meshes provides a sufficient showing that Jiang discloses a global power mesh that provides power to the power domains through the sleep transistors and local power meshes.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,006,218 - Moleculight, Inc. v. Swift Medical Inc.All claims unpatentablePTAB · Nov 3, 2023 · PGR2022-00041 · APJ Brian D Range · PGR · Final written decision
Claims 1–20 were cancelled; substitute claims 21–24 and 27–38 were unpatentable as obvious, and withdrawn claims 25–26 were not reached.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Based on the record as a whole with emphasis on the technical level the ’345 patent’s disclosure and asserted prior art, we agree with Patent Owner that a degree in physics and/or optics rather than engineering could be sufficient. We disagree, however, that “at least two years work experience” is unclear. “At least two years work experience” refers to two or more years of experience working in the field of design, operation, and functioning of imaging systems. We, thus, determine that that a person of ordinary skill in the art as of the date of the invention would have had at least a bachelor’s degree in engineering, physics, or optics with relevant coursework, and the equivalent of at least two years of work experience in the design, operation, and functioning of imaging systems, amounting to familiarity with concepts related to illumination and detection schemes for optical imaging systems. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this decision, we determine that express claim construction is unnecessary. Our decision here would be the same whether based on plain and ordinary meaning or based on the various alternatives Petitioner presents when addressing claim construction. Pet. 9–14.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“The matter now before us is distinguishable from Xerox. As we explain below, Petitioner establishes unpatentability of the amended claims by extensively citing evidence including the prior art at issue. Petitioner and Dr. Georgakoudi properly map the Patent Owner’s amended claims to the explicit teachings of the asserted art. Sur-Reply 1–2. Thus, the position of Petitioner and Dr. Georgakoudi is not unduly conclusory. Rather, Dr. Georgakoudi’s testimony is generally credible because it is consistent with and tied closely to the teachings of the cited art. Thus, when choosing whether or not to cite Dr. Georgakoudi’s testimony and consider whether or not it is credible with respect to any given issue, we do so while considering the record as a whole.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“5. Reason to Combine We first address the combination of Petit and Fawzy . Petitioner argues that it would have been obvious to a person having ordinary skill in the art to combine Petit’s long pass filter with Fawzy’s imaging apparatus. Opp. 8. Petitioner’s argument is supported by a preponderance of the evidence. Both Fawzy and Petit teach devices for capturing and analyzing images of dermatological conditions based on light wavelengths reflecting off a patient’s skin. Id. (citing Ex. 1008 ¶¶ 89, 92; Ex. 1020 ¶ 88). The preponderance of evidence supports that a person of ordinary skill in the art would have understood that emission filters, such as those taught by Petit, are a well-known mechanism to predictably filter out wavelengths of light that are not relevant to the imaging at hand. Id. (citing Ex. 1020 ¶ 87). A person of ordinary would have understood that filtering out undesired wavelengths could avoid undesired interference. Id. at 8–9 (citing Ex. 1008 ¶¶ 44,80). Petit teaches a long-pass filter having a cut-on wavelength of 450±25 nm. Ex. 1020 ¶ 98. Such a filter would be helpful in accomplishing Fawzy’s goal of “control[ling] optical coupling of the digital camera to capture only reflected light originating from the interaction of light from the spectral light source with an object being imaged.” Ex. 1008 ¶ 107. The combination would also be helpful for determining effective treatment as Petit teaches. Ex. 1020 ¶ 87. As such, we determine that a person having ordinary skill in the art would have had reason to combine Petit’s long pass filter with Fawzy’s imaging apparatus and would have had a reasonable expectation of success in making the combination.” slip op. at 18
Patent outcomesUS 11,266,345 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,266,345 - PTAB · Oct 26, 2023 · IPR2023-00789 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted inter partes review of claims 1–5, 8, and 9 on all three § 103 grounds because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’245 patent. Thus, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham, 383 U.S. at 17–18. Petitioner argues that “[a]s of May 19, 2009, a person of ordinary skill in the art (“POSITA”) would have had a B.S.E.E. and at least 3-4 years of professional experience in the field of integrated circuit design; or an M.S.E.E. and 1-2 years of professional experience in the field of integrated circuit design; or a Ph.D. in electrical engineering.” Pet. 25–26 (citing Ex. 1003 ¶ 4). Although phrased slightly differently, Patent Owner provides essentially the same definition of a POSITA. In particular, Patent Owner asserts that “[a] person of ordinary skill in the art of this technology at the time of the invention would have had at least a bachelor’s degree in electrical engineering or an equivalent field and at least 3‒4 years of professional experience in the field of integrated circuit design.” Prelim. Resp. 14. Patent Owner further argues that “[s]omeone with additional education but less professional experience may qualify as a POSITA, such as someone with a master’s degree in electrical engineering and 1‒2 years of professional experience in the field of integrated circuit design or someone with a Ph.D. in electrical engineering.” Id. regarding the level of one of ordinary skill in the art. We also note that this definition of a POSITA appears to be consistent with the level of ordinary skill in the art that is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Based on the present record, we agree with Patent Owner that the term “spiral inductor” recited in the preamble is limiting. Without the preamble, the body of claim 1 does not recite a structurally complete invention. The body of claim 1 recites a number of “metal layers” having a collection of “segments,” number of via sets, and limitations requiring certain segments and vias to construct a number of shunt windings and a crossover region. Without the preamble, it is unclear from just the recitations in the body of claim 1 what field of art the claim relates to. The preamble is therefore necessary to provide context as to which field of art the recited limitations pertain so as to understand limitations in the claim body. As such, the term “spiral inductor” recited in the preamble is necessary to give life, meaning, and vitality to the claim. dependent claim 8, thus further indicating that the preamble of claim 1 is a necessary component of the claimed invention. See Pitney Bowes, F.3d at 1305 (stating that a preamble claim should be construed as limiting the scope of the claim “[i]f the claim preamble, when read in the context of the entire claim, recites limitations of the claim”); Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1358 (Fed. Cir. 2012) (“a preamble phrase that provides antecedent basis for a claim limitation generally limits the scope of the claim”).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“segment and the first set of vias construct a first shunt winding; the second segment, the fifth segment and the second set of vias construct a second shunt winding.” Ex. 1001, 9:59–62 (emphasis added). Petitioner argues that one of ordinary skill in the art would have understood that “shunt windings,” as claim 1 recites, means “windings in parallel.” Pet. 27. Petitioner contends that the ’245 patent describes a first segment, a fourth segment, and a first set of vias as constructing a first shunt winding and a second segment, fifth segment, and a second set of vias as constructing a second shunt winding, which are depicted in the drawings. Id. at 27–28 (citing Ex. 1001, 1:64–67, 4:22–24, 6:27–28, Figs. 2, 6B). According to Petitioner, “[t]he 245 patent distinguishes a ‘shunt winding’ from a ‘serial winding’” because the ’245 patent states “symmetric spiral inductor 500 is a multi-layer stacked spiral inductor combining the first inductor 510 (i.e., the serial winding) with the second inductor 610 (i.e., the shunt winding). . .” Id. at 28–29 (citing Ex. 1001, 6:14–17, Figs. 6A, 6B). Petitioner asserts that “[t]his distinction is consistent with how a common understanding of ‘shunt’ is to place components in parallel.” Id. at 29 (citing Ex. 1020; Ex. 1021; Ex. 1003 ¶¶ 89, 113–116). Petitioner further argues that “patents and technical articles confirm this understanding.” Id. at 29–30 (citing Ex. 1018 ¶ 6, 22, 23; Ex. 1030, 1, 7, 9). Petitioner also contends that this is consistent with how Patent Owner interprets the claim language due to the interchangeable use of “shunt winding” and “parallel winding” in the Taiwanese priority application. Id. at 30 (citing Ex. 1023, 9, 23; Ex. 1003 ¶¶ 117–120). Patent Owner does not dispute Petitioner’s claim construction. At this stage of the proceeding, we agree with Petitioner’s undisputed contentions and construe “shunt windings” to mean windings in parallel.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,936,245
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.