- Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoSome claims unpatentablePTAB · May 22, 2024 · IPR2023-01122 · APJ Jason W Melvin · IPR · Final written decision
Claims 1–8, 10–19, 21–30, 32, and 33 are unpatentable over Gotou and Karlsson; claims 9, 20, and 31 were not shown unpatentable under either asserted ground.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“bachelor’s degree (B.S.) in mechanical engineering, electrical engineering, optical engineering, applied physics, or an equivalent field, as well as at least 2 years of industry experience in the area of automotive lighting and lighting-control systems” and “may work as part of a team” listing an example. Pet. 10 (citing Ex. 1003 ¶¶ 41–43). In its Response, Patent Owner “does not dispute Petitioner’s proposed level of ordinary skill.” PO Resp. 21 (citing Pet. 10). Following Petitioner’s assertion in the Reply that Patent Owner’s declarant does not satisfy the agreed level of ordinary skill (see Pet. Reply 2–5), Patent Owner relies on Petitioner’s expert’s statement that “a higher level of education or skill might make up for less experience” to argue that the level of skill does not require specific industry experience and instead encompasses work in optics and imaging systems. PO Sur-Reply 1–9 (quoting Ex. 1003 ¶ 42). We proceed with the agreed level of ordinary skill. We note that the parties’ belated dispute regarding the level of skill does not affect our analysis, as further discussed below regarding Petitioner’s Motion to Exclude.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“solution for vehicle headlamps because, at the time of invention, LEDs produced output levels far below “typical tungsten halogen” bulbs. PO Resp. 39. Thus, argues Patent Owner, using Karlsson’s LEDs would render Gotou unsuitable for its intended purpose of adjusting illumination direction. Id. at 39–40. We do not agree. Most significantly, Karlsson is specifically directed to a motor vehicle headlight capable of varying its emitted beam. E.g., Ex. 1010, 1:3–7. And Karlsson expressly discloses that LEDs are appropriate options for its headlamp. Id. at 4:32–5:1, 14:1–4, 19:34–36, 21:13–17. In addition, Petitioner cites to multiple exhibits that support its contention that skilled artisans would have recognized the benefits of LEDs as light sources for headlamps. Pet. 56 (citing Ex. 1005, 4:9–15, 6:9–12, Claims 4 and 5; Ex. 1006 ¶¶ 5, 7, 8, 20, 27; Ex. 1009, 19:27–29, 20:9–12, 23:8–12; Ex. 1010, 4:25–35, 13:24–29, 11:29–32; Ex. 1011, 1:18–2:3, 3:18–26, 8:13–20, 10:6–11, 10:21–22). Patent Owner counters that evidence by pointing to its expert’s declaration and to the industry’s recognition that LEDs provided less illumination than incandescent bulbs. PO Resp. 39 (citing Ex. 2006 ¶¶ 25–38; Ex. 2012, 3). Of course, evidence about an individual LED’s output does not undermine Petitioner’s combination because headlamps using LEDs, such as Karlsson’s, used many individual devices. E.g., Ex. 1010, 13:24–14:4, Fig. 6. We conclude that the weight of evidence establishes that Karlsson’s LED-based light source would have been sufficient to implement a vehicle headlamp, as disclosed in Karlsson. For the same reasons as illumination level, Patent Owner’s arguments regarding heat management and packaging are not persuasive. See PO Resp. 44–45. Because (1) Karlsson discloses a system using LEDs and (2) the challenged claims impose no specific requirements regarding Patent Owner’s asserted characteristics, we conclude that those characteristics would not have counseled against the proposed combination. See Ex. 1010, 3:34–35 (“[I]t is furthermore possible to comply with relevant national and international regulations.”).” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableDecided for patent owner
“We agree with Patent Owner. Claim 9 recites “the control of the second plurality of LED light sources, which naturally and logically refers to claim 8’s “control . . . a second plurality of LED light sources providing light directed towards an area including at least a portion of the other vehicle to diminish glare to a driver of the other vehicle.” Thus, the claim language’s antecedent basis establishes that claim 9’s control must also be “to diminish glare to a driver of the other vehicle.” The Petition does not identify teachings in the prior art that render claim 9’s limitation obvious under the correct claim interpretation. Nor does Petitioner’s Reply explain how the asserted combination satisfies Patent Owner’s construction, which we adopt. See Pet. Reply 23–24. Therefore, Petitioner has failed to carry its burden for claims 9, 20, and 31.” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner. Claim 9 recites “the control of the second plurality of LED light sources, which naturally and logically refers to claim 8’s “control . . . a second plurality of LED light sources providing light directed towards an area including at least a portion of the other vehicle to diminish glare to a driver of the other vehicle.” Thus, the claim language’s antecedent basis establishes that claim 9’s control must also be “to diminish glare to a driver of the other vehicle.” The Petition does not identify teachings in the prior art that render claim 9’s limitation obvious under the correct claim interpretation. Nor does Petitioner’s Reply explain how the asserted combination satisfies Patent Owner’s construction, which we adopt. See Pet. Reply 23–24. Therefore, Petitioner has failed to carry its burden for claims 9, 20, and 31.” slip op. at 22
Patent outcomesUS 11,208,029 mixedClaim construction§ 103 obviousnessPatents in suitUS 11,208,029 - Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoSome claims unpatentablePTAB · May 22, 2024 · IPR2022-01586 · APJ Jason W Melvin · IPR · Final written decision
Claims 1–8, 10–19, 21–30, 32, and 33 are unpatentable over Gotou and Karlsson; claims 9, 20, and 31 were not shown unpatentable under either asserted ground.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“bachelor’s degree (B.S.) in mechanical engineering, electrical engineering, optical engineering, applied physics, or an equivalent field, as well as at least 2 years of industry experience in the area of automotive lighting and lighting-control systems” and “may work as part of a team” listing an example. Pet. 10 (citing Ex. 1003 ¶¶ 41–43). In its Response, Patent Owner “does not dispute Petitioner’s proposed level of ordinary skill.” PO Resp. 21 (citing Pet. 10). Following Petitioner’s assertion in the Reply that Patent Owner’s declarant does not satisfy the agreed level of ordinary skill (see Pet. Reply 2–5), Patent Owner relies on Petitioner’s expert’s statement that “a higher level of education or skill might make up for less experience” to argue that the level of skill does not require specific industry experience and instead encompasses work in optics and imaging systems. PO Sur-Reply 1–9 (quoting Ex. 1003 ¶ 42). We proceed with the agreed level of ordinary skill. We note that the” slip op. at 7
- Expert testimonyOther
“Considering Karlsson’s statement that its emitted light beam may be produced from a “window which can shift . . . from the left to the right,” we conclude that the record better supports Petitioner’s position. In that regard, we credit Dr. Jiao’s testimony that skilled artisans would understand Karlsson to disclose a device capable of adapting its beam shape to myriad possible situations, rather than a device that illuminates all possible light sources unless detecting an oncoming vehicle. Ex. 1036 ¶¶ 51–64.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“B. CLAIM CONSTRUCTION The parties agree that no express claim construction is required. Pet. 10–11; PO Resp. 21–22. Other than two disputes discussed below regarding dependent claims, we agree that the claims do not require express construction. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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)). As to the two disputes that implicate claim scope, we discuss the relevant issues in context below. See infra at 21 (§ II.C.7), 22 (§ II.C.8).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“to the dispute here, claim 1 requires capability to “determine a light change . . . to increase light in a direction of road curvature” and control a first plurality of LEDs “to provide light based at least in part on the determined light change.” Ex. 1001, 95:66–96:8. Claim 8 requires capability to control a second plurality of light sources “to diminish glare to a driver of the other vehicle.” Id. at 97:5–14. Claim 9 recites “the control of the second plurality of LED light sources is based at least in part on third data received from a non-camera sensor of the motor vehicle.” Id. at 97:18–20. Petitioner asserts that “Gotou’s map data is not from a camera sensor” and therefore satisfies claim 9’s language. Pet. 88. Patent Owner disputes that assertion, arguing that claim 9’s control of the second plurality takes its antecedent basis from claim 8, which requires that the control be to diminish glare. PO Resp. 36. Because Gotou’s map data is used to accommodate road curvature, not to diminish glare to oncoming vehicles, Patent Owner submits that Petitioner’s proof is inadequate. Id. Petitioner responds that claim 9 recites “additional control,” not the same control from claim 8 that is limited in purpose. Pet. Reply 23–24. We agree with Patent Owner. Claim 9 recites “the control of the second plurality of LED light sources, which naturally and logically refers to claim 8’s “control . . . a second plurality of LED light sources providing light directed towards an area including at least a portion of the other vehicle to diminish glare to a driver of the other vehicle.” Thus, the claim language’s antecedent basis establishes that claim 9’s control must also be “to diminish glare to a driver of the other vehicle.” The Petition does not identify teachings in the prior art that render claim 9’s limitation obvious under the correct claim interpretation. Nor does Petitioner’s Reply explain how the asserted combination satisfies Patent Owner’s construction, which we adopt. See Pet. Reply 23–24. Therefore, Petitioner has failed to carry its burden for claims 9, 20, and 31.” slip op. at 21
Patent outcomesUS 11,208,029 mixedClaim construction§ 103 obviousnessPatents in suitUS 11,208,029 - PTAB · May 20, 2024 · IPR2024-00114 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–8 on all asserted grounds, finding a reasonable likelihood that at least one claim would have been obvious over DiPerna964 and Strack.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We determine below that Fintiv factors 1–5 do not favor discretionary denial. Thus, we do not reach the issue of whether the merits are compelling. CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022- 01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (precedential) (Board must first address Fintiv factors 1–5, and should engage the compelling merits question only if that analysis favors discretionary denial) (“CommScope”). 7. Balancing the Fintiv Factors Weighing against exercising our discretion to deny institution is factor 3 involving the parties’ limited investment and lack of substantive orders in the District Court litigation. Factor 4 concerning the limited overlap of the issues in the two cases also weighs against discretionary denial. Only factor 5, that Petitioner and the defendant in the District Court litigation are the same party, weighs in favor of discretionary denial. Factor 1 concerning the absence of a stay in the District Court litigation, and factor 2 concerning the close proximity between the start of trial in the District Court litigation and the estimated deadline for the final written decision, are neutral on the facts of this case. We therefore determine that the balance of factors 1–5 weighs against discretionary denial. Accordingly, we do not consider the issue of whether compelling merits have been shown under factor 6. See CommScope, Paper 23 at 4–5.2” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Pet. 9 (citing Ex. 1006, 23) (emphasis added). From this passage, we understand the “safety” switch to be “separate” from the panic button, not a part of it. This understanding is reinforced by claim 7 which depends from claim 1 and recites that the mobile device “further compris[es] a safety switch,” meaning it is a separate element from the panic button. Ex. 1001, 9:3–4. Thus, moving the safety switch into position readies the panic button, which is not the same as the panic button readying itself to perform functions in claims 1–8 of the ’404 patent. Patent Owner does not sufficiently address this issue in its assertions. See Prelim. Resp. 5–7. Patent Owner’s reliance on disclosures elsewhere in the ’404 patent is likewise not persuasive. Prelim. Resp. 5–6. For example, the ’353 application mentions “ready” in relation to using a self-defense mechanism such as pepper spray, which has not been shown to be related to the panic button. Ex. 1006, 5, 9–10. Although Patent Owner relies on the ’353 application’s description of voice activation using a codeword, voice activation does not ready the panic button for activation to perform functions, but actually activates the panic button to perform those functions. Prelim. Resp. 6 (citing Ex. 1006, 17). Petitioner thus met its burden here to demonstrate that claims 1–8 of the ’404 patent lack written description support for a panic button adapted to “ready itself” to perform the recited functions because the limitation is not present in the ’353 application to which the ’404 patent claims priority. Pet. 8–10. The burden of production thus shifted to Patent Owner to demonstrate that the ’353 application has written description support for this limitation, which it has not done on this record. Prelim. Resp. 5–7.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“of the proceeding, we are persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions that at least one of claims 1–8 of the ’404 patent would have been obvious under 35 U.S.C. § 103 based on the ground set forth in the Petition. Accordingly, we institute trial for all challenged claims on all grounds asserted by Petitioner. See SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). Our factual findings, conclusions of law, and determinations at this stage of the proceeding are preliminary, and based on the evidentiary record developed thus far. At this stage of the proceeding, we have not made a final determination with respect to the patentability of the challenged claims or to the construction of any claim term. V. ORDER For the foregoing reasons, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–8 of the ’404 patent is hereby instituted on all challenges to patentability set forth in the Petition; and” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner has shown sufficiently that a POSITA would have combined DiPerna964 and Strack with a reasonable expectation of success. Pet. 16–18. DiPerna964 and Strack are directed to similar mobile devices for use in security and emergency situations. Id. at 16–17. Petitioner demonstrates sufficiently that a POSITA would have regarded Strack’s arming and timer technique as an improvement that would have been useful with DiPerna964’s mobile device (at least in some circumstances) to provide the user with additional time to evaluate whether triggering the 911 call is warranted. Id. at 17–18. This amounts to the use of a known technique to improve similar devices in the same way, which is a recognized rationale for combining prior art references. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401, 417 (2007). Accordingly, on this record, Petitioner has presented a reasonable likelihood that a POSITA would have combined DiPerna964 and Strack with a reasonable expectation of success. Pet. 16–18.” slip op. at 22
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,265,404 - PTAB · May 20, 2024 · IPR2024-00113 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 9–15 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We do not agree with Patent Owner’s argument that Petitioner wrongly considered the parties’ investment in the parallel litigation as of when the Petition was filed as opposed to when the institution decision is made. Prelim. Resp. 21. Petitioner indicated that “investment in the parallel litigation will have remained low at the time of institution,” thus indicating the proper timeframe for consideration of this factor. Pet. 69. Although the parties have expended some resources in the District Court litigation, the evidence shows that the District Court has not issued any substantive orders, a Markman hearing has not yet been conducted, and expert reports have not been exchanged. Id. (citing Ex. 1035). Accordingly, this factor weighs against exercising our discretion to deny institution. Fintiv at 10; NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential, designated May 7, 2019) (determining that “the advanced state of the district court proceeding is an additional factor that weighs in favor of denying the Petition,” where the district court proceeding was “nearing its final stages, with expert discovery ending” soon).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION In light of the foregoing, based on the current record and at this stage of the proceeding, we are persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions that at least one of claims 9–15 of the ’404 patent would have been obvious under 35 U.S.C. § 103 based on the grounds set forth in the Petition. Accordingly, we institute trial for all challenged claims on all grounds asserted by Petitioner. See SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018); 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim”). Our factual findings, conclusions of law, and determinations at this stage of the proceeding are preliminary, and based on the evidentiary record developed thus far. At this stage of the proceeding, we have not made a final determination with respect to the patentability of the challenged claims or to the construction of any claim term. V. ORDER For the foregoing reasons, it is ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 9–15 of the ’404 patent is hereby instituted on all challenges to patentability set forth in the Petition; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial and that the trial will commence on the entry date of this decision.” slip op. at 46
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends as follows: A person of ordinary skill in the art (“POSITA”) at the time of the ’404 patent’s priority date would have had at least a Bachelor’s of Science Degree (or equivalent) in an academic area emphasizing electrical engineering, computer engineering, computer science, or a related technical field, and about 1-2 years of experience working with telematics systems (e.g. familiarity with wireless communications, geolocation systems, and human-computer interfaces). A greater amount of education in an academic area emphasizing electrical engineering, computer engineering, computer science, or a related technical field, would compensate for fewer years of work experience, and more years of work experience would compensate for less education. This is the appropriate level of skill, whether the claims are entitled to priority as of January 2005 or January 2019. Pet. 7–8 (citing Ex. 1002 ¶¶ 14–16). At this stage of the proceeding, Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we will use Petitioner’s proposed level for purposes of this Decision.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that “no express constructions of the claims are necessary to assess whether the prior art reads on the [challenged claims]” and that “the claims should be given their plain and ordinary meaning.” Pet. 8. Patent Owner states that “at this stage in the proceeding, Patent Owner will apply the ordinary and customary meaning to the ’404 patent’s claim terms.” Prelim. Resp. 4. As Petitioner and Patent Owner do not dispute the meaning of any claim term at this time, we decline to expressly construe any claim term, and instead apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b). We address claim interpretation to the extent necessary in our obviousness analysis below.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,265,404 - Zebra Technologies Corporation v. Lone Star SCM Systems, Ltd.All claims unpatentablePTAB · Feb 22, 2024 · IPR2022-01377 · APJ Ken B Barrett · IPR · Final written decision
Claims 1–8, 10–12, and 14–22 are unpatentable: claims 1–8, 12, and 14–22 as anticipated by Garber; claims 10 and 11 as obvious over Garber and Andersen.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“3. The Alleged Anticipation of Claim 1 a. A portable interrogator, comprising: Petitioner contends that the preamble is not limiting, but, to the extent that it is, Garber discloses a portable interrogator. Pet. 12–13 (citing, inter alia, Ex. 1005, 14:59–62, 15:63–65). Petitioner asserts that Garber discloses a portable interrogator in the form of a hand-held RFID device, and points to, inter alia, Garber’s description of Figure 4 as depicting “a block diagram of an RFID interrogation system interacting with an RFID tag.” Id. at 12 (quoting Ex. 1005, 3:46–47) (emphasis omitted). Patent Owner does not raise any arguments regarding this contention. b. an antenna configured to receive a first signal from a first object; Petitioner contends that Garber discloses a hand-held RFID device having an antenna for the RFID reader. Pet. 13–14 (citing Ex. 1005, 15:43– 46, 16:11–13, Fig. 13; Ex. 1002 ¶¶ 75–78). Petitioner further contends that Garber’s Figure 13 depicts the antenna receiving an RFID signal from a tag attached to a library book. Id. at 13. Petitioner additionally contends that Garber discloses the identification, by the RFID device, of multiple items via code signals 202, thus disclosing an antenna configured to receive a first signal from a first object. Id. at 14. Petitioner notes that Garber states, “[t]he hand-held RFID device . . . is capable of identifying multiple items that are within the range of the device.” Id. (quoting Ex. 1005, 14:40–45) (emphasis and alterations in original). Petitioner further asserts that “Garber also teaches that ‘if items used in the library are first placed on a book cart [in close proximity without obstructions], for example, the hand-held device could make a single pass by the items on the cart to record them.’” Id. (quoting Ex. 1005, 18:25–27) (emphasis and alterations in original). Patent Owner does not raise any arguments regarding these contentions. c. a control and processing subsystem configured to discern a presence of said first object from said first signal; and Petitioner contends that: Garber discloses a control and processing subsystem (e.g., the processor in the hand-held RFID device/computer 108) configured to discern a presence of (e.g., decoding response from tags to identify tagged item) said first object (e.g., the RFID tags) from said first signal (e.g., signals produced by tags/response code signal 202). Pet. 17 (citing Ex. 1002 ¶¶ 79–84); see also id. at 14–17. Patent Owner does not raise any arguments regarding this contention.” slip op. at 38
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“4. Motivation to Combine Garber and Andersen Relying on the testimony of Dr. Sharony, Petitioner argues that one of ordinary skill would have been motivated to combine Garber and Andersen for several reasons. Pet. 49, 52 (citing Ex. 1002 ¶¶ 187–196). First, Petitioner argues that Garber and Andersen are analogous art to the ’293 patent “because they are in the same field of endeavor—namely, interrogation systems.” Id. at 49. Specifically, Petitioner argues that Garber and Andersen are analogous to the ’293 patent “because they are reasonably pertinent to the technical problem allegedly addressed by the claimed invention.” Id. Petitioner contends that “[t]he ’293 Patent identifies deficiencies in the prior art as including [inter alia] a requirement ‘that each device be interrogated separately’ (versus ‘[t]he ability to interrogate a plurality of closely spaced tags simultaneously’).” Id. at 49–50 (citing Ex. 1001, 4:16–25, 5:56–6:15, 6:40–46) (third alteration in original). According to Petitioner, Garber discloses, among other things, that “‘[a]nother benefit’ of the RFID device as ‘the ability to process multiple items at one time’ where ‘conventional devices having only optical bar code scanners can process only a single item . . . at one time.’” Id. at 50 (citing Ex. 1005, 13:25–30, 13:30–36 (“greatly reduc[ing] the time required for library staff to process multiple items.”)) (alterations in original). Petitioner argues that “Andersen is also analogous because it teaches ‘a system for tracking inventory having RFID components” and is designed to remedy the deficiencies of prior art inventory tracking systems using bar codes, which can be torn, destroyed, or hidden from view. Id. at 50–51 (citing Ex. 1007, 1:8–10, 1:58–2:2, 2:4–5). Additionally, according to Petitioner, Andersen is intended to address multipath errors and teaches that one way to refine radio signals received by RFID tags is by using a Kalman filter. Id. at 51 (citing Ex. 1007, 11:25–28, 11:32–36). Petitioner also argus that Andersen “provides ample motivation to add a Kalman filter to Garber’s hand-held device” to provide “correction of multi scanned signal / multipath errors.” Pet. 51 (citing Ex. 1007, 11:25–28, 11:32–36, 12:39–41). “As such,” Petitioner asserts, one of ordinary skill would have found it obvious “to modify Garber’s handheld device, which is used inside a library where shelves and other obstacles can result in multipath errors, to use Andersen’s Kalman filter to address these errors.” Id. Additionally, according to Petitioner, one of ordinary skill “could have combined Andersen’s Kalman Filter with Garber’s hand-held device using known methods, and such a filter would merely perform the same function—resolving errors to improve detection accuracy, which is entirely predictable.” Id. at 51–52. Finally, Petitioner contends, one of ordinary skill would have had a reasonable expectation of success in making the proposed combination because “[t]he interrogator components described in Garber and Andersen were well-known at the time,” and the modification of Garber’s interrogator to include Andersen’s Kalman filter would have been straightforward for a person of ordinary skill. Id. at 52. Patent Owner responds that Petitioner’s motivation to combine Garber and Andersen is insufficient. PO Resp. 29–32; PO Sur-reply 23. First, Patent Owner argues that the combination is based on impermissible hindsight because Petitioner did not explain why one of ordinary skill would have combined Garber and Andersen “to teach a control and processing unit employing an adaptive integrated filter or multiscan, coherent signal processing.” PO Resp. 31. According to Patent Owner, one of ordinary skill would not have been motivated to combine Garber and Andersen because “Andersen teaches the use of filters to correct multipath signal errors arising from the transmission of a single signal,” while the ’293 patent “teaches the use of filters to process multiple diverse inputs with a signal representing an RFID object to discern the presence of that object and teaches multiscan, coherent signal processing to coordinate the processing of a plurality of signals.” Id. “In either case,” Patent Owner contends, “the problems solved by the ’293 Patent involve multiple signals and not the single signal problem addressed by Andersen.” Id.” slip op. at 68
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“5. Objective Indicia of Non-Obviousness Patent Owner asserts that there is evidence of long felt but unresolved need that constitutes objective indicia of nonobviousness. PO Resp. 32–33; see PO Sur-reply 24 (“others in the field had attempted and failed to solve the problems addressed by the ‘293 Patent”). Patent Owner also makes certain assertions regarding the adoption and possible acquisition of its technology. PO Resp. 34; see also PO Sur-reply 24 (referring to “industry acceptance of Lone Star’s inventions”). Petitioner characterizes these latter assertions as allegations of industry praise and commercial success. Pet. Reply 24. In support of its objective indicia arguments, Patent Owner relies solely on the declaration of named-inventor John Volpi (Ex. 2018). See PO Resp. 32. Petitioner argues that there is no nexus to the claimed invention because Patent Owner “has not identified the merits of the claimed invention or any product that embodies the claimed features or is coextensive with them.” Pet. Reply 23–24. Petitioner also argues that Patent Owner “has not established industry praise or commercial success, let alone a nexus to the merits of the claimed invention.” Id. at 24. As the Federal Circuit has explained: For objective evidence of secondary considerations to be relevant, there must be a nexus between the merits of the claimed invention and the objective evidence. See In re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995). A showing of nexus can be made in two ways: (1) via a presumption of nexus, or (2) via a showing that the evidence is a direct result of the unique characteristics of the claimed invention. A patent owner is entitled to a presumption of nexus when it shows that the asserted objective evidence is tied to a specific product that “embodies the claimed features, and is coextensive with them.” Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). . . . However, even absent a presumption of nexus, “the patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373–74 (Fed. Cir. 2019) (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)).” slip op. at 72
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Motion to exclude, deniedDenied
“exhibits for use at oral argument. Paper 31 (Petitioner’s objections); Paper 33 (Patent Owner’s objections). Petitioner contends that certain of Patent Owner’s demonstrative exhibit slides contain new argument not previously made in any paper and evidence not previously asserted or relied on in any paper. See Paper 31. Patent Owner similarly contends that certain of Petitioner’s demonstrative exhibit slides contain new argument and evidence not previously referenced or relied on. See Paper 33. The parties’ demonstrative exhibits are not evidence and we do not rely on them herein. See PTAB Consolidated Trial Practice Guide 84 (Nov. 2019), available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf (explaining that demonstratives exhibits are merely “aids to oral argument and not evidence” and therefore “the Board has not found that such objections are helpful in many cases”). Accordingly, we do not sustain the parties’ objections.” slip op. at 79
Patent outcomesUS 10,482,293 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,482,293 - Zebra Technologies Corporation v. Lone Star SCM Systems, Ltd.All claims unpatentablePTAB · Feb 22, 2024 · IPR2022-01376 · APJ Ken B Barrett · IPR · Final written decision
Claims 1–4 and 6–20 are unpatentable: the Board found the asserted Garber-based anticipation and obviousness grounds established, while not reaching three alternative grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Examiner’s prior art references, in order to read an RFID tag, required each tag to be isolated from others, either by distance or through the use of a strategically placed RF shield. The applicant distinguished the claimed subject matter over those relatively unsophisticated RFID readers (that could only read one tag at a time) by amending the claims to recite, by the inclusion of “close proximity” and “unshielded,” a more sophisticated interrogator that did not need to use spacing or shielding. This is consistent with the background section of the ’717 patent stating that RFID systems at the time of the patent were better than relatively unsophisticated bar code systems. See Ex. 1001, 4:6–22; see also PO Resp. 17–18 (Patent Owner quoting the same after re-stating the Board’s preliminary construction and conceding that “[t]he Board conclusion here is supported by the plain language of the ‘717 Patent.”). Specifically, the ’717 patent explains that “[a]n important attribute of RFID interrogation systems is that a number of tags can be interrogated simultaneously stemming from the signal processing,” and that “[a] related and desirable attribute is that there is not typically a minimum separation required between the tags.” Ex. 1001, 4:6– 12. “Most other identification systems, such as systems employing bar codes, usually impose that each device be interrogated separately.” Id. at 4:17–19.” slip op. at 23
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“means-plus-function limitation governed by 35 U.S.C. §112 ¶ 6 and, accordingly, is limited to corresponding structure (and equivalents) disclosed” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“3. The Alleged Anticipation and Obviousness of Claim 1” slip op. at 39
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“4. Motivation to Combine Garber and Andersen Relying on the testimony of Dr. Sharony, Petitioner argues that one of” slip op. at 84
Patent outcomesUS 9,996,717 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,996,717 - Zebra Technologies Corp. v. Lone Star SCM Systems, Ltd.All claims unpatentablePTAB · Feb 22, 2024 · IPR2022-01375 · APJ Russell E Cass · IPR · Final written decision
The Board held claims 1–4, 6–7, 10–19, 21, and 22 unpatentable, finding the asserted Garber grounds proven and not reaching the alternative grounds.
RulingsFinal written decision- Expert testimonyOther
“4. Motivation to Combine Garber and Andersen Relying on the testimony of Dr. Sharony, Petitioner argues that one of ordinary skill would have been motivated to combine Garber and Andersen for several reasons. Pet. 60 (citing Ex. 1002 ¶¶ 244–254). First, Petitioner argues that “Garber and Andersen are analogous art to the ’182 patent because they are in the same field of endeavor—namely, interrogation systems.” Id. Specifically, Petitioner relies on its arguments in Ground 2 that “Garber is analogous to the ’182 patent because it is reasonably pertinent to the technical problem allegedly addressed by the claimed invention.” Id. at 60–61; see id. at 52–53. Petitioner argues that “Andersen is also analogous because it teaches ‘a system for tracking inventory having RFID components” and is designed to remedy the deficiencies of prior art inventory tracking systems using bar codes, which can be torn, destroyed, or hidden from view. Id. at 61 (citing Ex. 1007, 1:8–10, 1:58–2:2, 2:4–5). Additionally, according to Petitioner, Andersen is intended to address multipath errors and teaches that one way to refine radio signals received by RFID tags is by using a Kalman filter. Id. (citing Ex. 1007, 11:25–28, 11:32–36). Petitioner also argus that Andersen “provides ample motivation to add a Kalman filter to Garber’s hand-held device” to provide “correction of multi scanned signal / multipath errors.” Pet. 61–62 (citing Ex. 1007, 11:25–28, 11:32–36, 12:39–41). “As such,” Petitioner asserts, one of ordinary skill would have found it obvious “to modify Garber’s handheld device, which is used inside a library where shelves and other obstacles can result in multipath errors, to use Andersen’s Kalman filter to address these errors.” Id. at 62. Additionally, according to Petitioner, one of ordinary skill “could have combined Andersen’s Kalman filter with Garber’s hand- held device using known methods, and such a filter would merely perform the same function—resolving errors to improve detection accuracy, which is entirely predictable.” Id. Finally, Petitioner contends, one of ordinary skill would have had a reasonable expectation of success in making the proposed combination because “[t]he interrogator components described in Garber and Andersen were well-known at the time,” and the modification of Garber’s interrogator to include Andersen’s Kalman filter would have been straightforward for a person of ordinary skill. Id. Patent Owner responds that Petitioner’s motivation to combine Garber and Andersen is insufficient. PO Resp. 46–49; PO Sur-reply 27. First, Patent Owner argues that the combination is based on impermissible hindsight because Petitioner did not explain why one of ordinary skill would have combined Garber and Andersen “to teach a control and processing unit employing an adaptive integrated filter or multiscan, coherent signal processing.” PO Resp. 48. According to Patent Owner, one of ordinary skill would not have been motivated to combine Garber and Andersen because “Andersen teaches the use of filters to correct multipath signal errors arising from the transmission of a single signal,” while the ’182 patent “teaches the use of filters to process multiple diverse inputs with a signal representing an RFID object to discern the presence of that object and teaches multiscan, coherent signal processing to coordinate the processing of a plurality of signals.” Id. “In either case,” Patent Owner contends, “the problems solved by the ’182 [p]atent involve multiple signals, not the single signal problem addressed by Andersen.” Id. Petitioner responds that the references themselves provide explicit” slip op. at 83
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“3. Analysis of Independent Claim 1 a) 1[pre]: “[an] interrogator, comprising:” Petitioner argues that, to the extent the preamble is limiting, Garber discloses it. Pet. 16. Petitioner points to Garber’s disclosure that “[a] handheld RFID device can interrogate and identify RFID-tagged items,” and that the hand-held RFID device “preferably includes an RFID reader and writer.” Id. (citing Ex. 1005, 14:49–62, 15:63–65) (emphasis omitted). “Furthermore,” Petitioner contends, “Figure 4 of Garber discloses ‘a block diagram of an RFID interrogation system interacting with an RFID tag,’” and RFID tags “respond to requests for information by the interrogator.” Id. (citing Ex. 1005, 3:46–47, 5:44–45). Patent Owner does not present arguments specifically directed to the preamble of claim 1. See PO Resp. Based on the full trial record, we find that Petitioner’s cited evidence sufficiently supports its contentions regarding the preamble.8” slip op. at 38
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“4. Motivation to Combine Garber and Andersen Relying on the testimony of Dr. Sharony, Petitioner argues that one of ordinary skill would have been motivated to combine Garber and Andersen for several reasons. Pet. 60 (citing Ex. 1002 ¶¶ 244–254). First, Petitioner argues that “Garber and Andersen are analogous art to the ’182 patent because they are in the same field of endeavor—namely, interrogation systems.” Id. Specifically, Petitioner relies on its arguments in Ground 2 that “Garber is analogous to the ’182 patent because it is reasonably pertinent to the technical problem allegedly addressed by the claimed invention.” Id. at 60–61; see id. at 52–53. Petitioner argues that “Andersen is also analogous because it teaches ‘a system for tracking inventory having RFID components” and is designed to remedy the deficiencies of prior art inventory tracking systems using bar codes, which can be torn, destroyed, or hidden from view. Id. at 61 (citing Ex. 1007, 1:8–10, 1:58–2:2, 2:4–5). Additionally, according to Petitioner, Andersen is intended to address multipath errors and teaches that one way to refine radio signals received by RFID tags is by using a Kalman filter. Id. (citing Ex. 1007, 11:25–28, 11:32–36). Petitioner also argus that Andersen “provides ample motivation to add a Kalman filter to Garber’s hand-held device” to provide “correction of multi scanned signal / multipath errors.” Pet. 61–62 (citing Ex. 1007, 11:25–28, 11:32–36, 12:39–41). “As such,” Petitioner asserts, one of ordinary skill would have found it obvious “to modify Garber’s handheld device, which is used inside a library where shelves and other obstacles can result in multipath errors, to use Andersen’s Kalman filter to address these errors.” Id. at 62. Additionally, according to Petitioner, one of ordinary skill “could have combined Andersen’s Kalman filter with Garber’s hand- held device using known methods, and such a filter would merely perform the same function—resolving errors to improve detection accuracy, which is entirely predictable.” Id. Finally, Petitioner contends, one of ordinary skill would have had a reasonable expectation of success in making the proposed combination because “[t]he interrogator components described in Garber and Andersen were well-known at the time,” and the modification of Garber’s interrogator to include Andersen’s Kalman filter would have been straightforward for a person of ordinary skill. Id. Patent Owner responds that Petitioner’s motivation to combine Garber and Andersen is insufficient. PO Resp. 46–49; PO Sur-reply 27. First, Patent Owner argues that the combination is based on impermissible hindsight because Petitioner did not explain why one of ordinary skill would have combined Garber and Andersen “to teach a control and processing unit employing an adaptive integrated filter or multiscan, coherent signal processing.” PO Resp. 48. According to Patent Owner, one of ordinary skill would not have been motivated to combine Garber and Andersen because “Andersen teaches the use of filters to correct multipath signal errors arising from the transmission of a single signal,” while the ’182 patent “teaches the use of filters to process multiple diverse inputs with a signal representing an RFID object to discern the presence of that object and teaches multiscan, coherent signal processing to coordinate the processing of a plurality of signals.” Id. “In either case,” Patent Owner contends, “the problems solved by the ’182 [p]atent involve multiple signals, not the single signal problem addressed by Andersen.” Id. Petitioner responds that the references themselves provide explicit” slip op. at 83
- ExcludeDenied
“rely on them herein. See PTAB Consolidated Trial Practice Guide 84 (Nov. 2019), available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf (explaining that demonstratives exhibits are merely “aids to oral argument and not evidence” and therefore “the Board has not found that such objections are helpful in many cases”). Accordingly, we do not sustain the parties’ objections.” slip op. at 88
Patent outcomesUS 9,646,182 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,646,182 - Zebra Technologies Corporation v. Lone Star SCM Systems, Ltd.All claims unpatentablePTAB · Feb 22, 2024 · IPR2022-01374 · APJ Aaron W Moore · IPR · Final written decision
Claims 1, 3–10, 15, 16, and 18 are unpatentable as obvious under § 103 over Garber and Werb, with Andersen added for claims 6, 7, and 18.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Dr. Sharony, contends that a person having ordinary skill in the art at the time of the alleged invention “would have had at least a bachelor’s degree in electrical engineering, computer science, or a related field” and “significant experience with detection devices, like RFID and metal detectors.” Pet. 5 (citing Ex. 1002 ¶ 22). Patent Owner does not address Petitioner’s proposal or offer a different definition, and we determine that Petitioner’s formulation is consistent with the qualifications a person would have needed to understand and implement the teachings of the ’711 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself may reflect an appropriate level of skill in the art). We thus apply Petitioner’s description of the person of ordinary skill in the art. B.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“The lack of the word “means” in a claim element creates a rebuttable presumption that § 112 ¶ 6 does not apply. See Williamson v. Citrix Online, LLC, 2 The District Court similarly concluded that “sensing subsystem” “is not a means- plus-function term subject to § 112 ¶ 6.” See Ex. 1015, 4. 792 F.3d 1339, 1348 (Fed. Cir. 2015). “When a claim term lacks the word ‘means,’ the presumption can be overcome . . . if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Id. at 1349 (citation omitted). “Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6.” Id. at 1350 (citation omitted). We conclude that Petitioner has not overcome the presumption against applying § 112, ¶ 6. Petitioner’s critical propositions—that “the ‘sensing subsystem’ term is a nonce word” and that “the purely functional prefix ‘sensing’ does nothing to impart structure to the term ‘subsystem’” (Pet. 6)—are conclusory attorney-argument for which Petitioner points to no adequate evidentiary support. See Williamson, 792 F.3d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”). Accordingly, we maintain our determination that § 112 ¶ 6 does not apply to “a sensing subsystem configured to provide a signal having a signature representing a presence of a radio frequency identification (RFID) object.”” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededMixed
“We do not adopt either of the proposed constructions because we conclude they add features from embodiments but fail to identify the required “clear indication in the intrinsic record that the patentee intended” to limit the claims in the manner proposed. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004). Instead, we conclude that “sensing subsystem” is “a component configured to detect a signal representing an object,” as proposed by Petitioner, but without “self-contained.” This is functionally the same as Patent Owner’s proposed construction with the conversion concept omitted, and also consistent with the District Court’s construction, which was “components configured to detect and convert a signal representing an object.” See Ex. 1015, 4.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We do not agree with Petitioner’s argument that “multiscan, coherent signal processing” does not require multiple scans. As noted above, Petitioner and Dr. Sharony acknowledge that “multiscan, coherent signal processing” is not a term of art and should be given its plain and ordinary meaning, and we find that the plain and ordinary meaning of “multiscan” requires multiple scans because the term is a combination of the prefix “multi,” which means more than one, with “scan.” Interpreting “multiscan” to cover only a single scan would read the prefix “multi” out of the claim term. Similarly, construing “multiscan” to require multiple signals, but not multiple scans, would read “scan” out of the term. Our understanding is consistent with the ’711 patent, which states as follows: The integrated mode of operation may employ multiscan, coherent signal processing of diverse multiple inputs to achieve significantly higher detection sensitivities thereby allowing more precise object location and identification. Ex. 1001, 18:18–22 (emphasis added). This sentence indicates that “multiscan, coherent signal processing” processes “diverse multiple inputs” to achieve higher 4 Here and elsewhere we substitute italics for bold emphasis used by the parties. detection sensitivities. However, it does not redefine the ordinary meaning of the term “multiscan” so that it would cover scanning only once rather than scanning multiple times, or cover receiving multiple inputs but not multiple scans.” slip op. at 14
Patent outcomesUS 7,557,711 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,557,711 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Smart Mobile Technologies LLCSome claims unpatentablePTAB · Jan 23, 2024 · IPR2022-01248 · APJ Aaron W Moore · IPR · Final written decision
Claims 14–21 and 23–26 are unpatentable under §103; claims 1–13 and 27–30 were not shown unpatentable because the asserted combinations failed to establish multiplexing.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“education.” Id. (citing Ex. 1003 ¶¶ 27–28). Patent Owner does not propose a level of ordinary skill and does not dispute Petitioner’s proposal. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, and because we find it generally consistent with the disclosures of the ’653 patent and the cited prior art, we adopt it. C.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Construction Petitioner states that “no formal claim constructions are necessary in this proceeding.” Pet. 2. Patent Owner does seek an express construction of any claim term, and we thus conclude that we need not expressly construe any terms to resolve the issues before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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)). D.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“d. Multiplexing Being “Well-Known” Petitioner additionally argues that multiplexing techniques were well- known. See Pet. 34; Pet. Reply 18. Even if that is correct, however, it is insufficient because Petitioner must show that it would have been obvious to modify Yegoshin to add multiplexing, and merely establishing that multiplexing was known in other contexts is insufficient to show how or why Yegoshin should be modified.” slip op. at 22
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Patent Owner filed an opposition to the motion. See Paper 24. Patent Owner contends that the declaration is untimely and unfairly prejudicial because it circumvents our word count limitations and amounts to an additional brief because it analyzes claim construction and includes new cites to the record. See id. at 2–10. Having reviewed the parties’ positions, we grant the Motion. We note, however, that in view of the full record, and for the reasons below, our determination would not change even if we denied the motion. B.” slip op. at 9
Patent outcomesUS 8,842,653 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,842,653 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Smart Mobile Technologies LLCSome claims unpatentablePTAB · Jan 23, 2024 · IPR2022-01249 · APJ Hyun J Jung · IPR · Final written decision
Claims 14–15, 17–21, and 27–30 are unpatentable as obvious; claims 1–13, 16, and 26 were not shown unpatentable.
RulingsFinal written decision- Skill levelOther
“C. Level of Ordinary Skill in the Art” slip op. at 9
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“A. Petitioner’s Motion to Submit Supplemental Information” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“agree that “Yegoshin’s phone is configured to switch between cellular and IP communication modes, and also ‘capable of taking some calls via cellular path while receiving other calls via IP path’” but that does not lead to the conclusion, or support, that “in order to receive calls on both cellular network and WLAN simultaneously or to switch between two networks, the phone includes multiplexing of the signals communicated on two network paths.” Ex. 1003 ¶¶ 126 (citing Ex. 1004, 3:18–22, 5:33–65), 127 (citing Ex. 1004, 5:33–65; Ex. 1006, 1:6:12, 1:54–60, 3:53–61). The declarant’s citations to the record also do not support that Yegoshin’s “phone includes multiplexing of the signals communicated on two network paths.” Ex. 1004, 3:18–22, 5:33–65; Ex. 1006, 1:6:12, 1:54–60, 3:53–61.” slip op. at 45
Patent outcomesUS 9,019,946 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,019,946
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.