• Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentable
  PTAB · Sep 1, 2023 · IPR2022-00650 · APJ Brian D Range · IPR · Final written decision

  Claims 1–3, 5–8, 11–14, and 16 are unpatentable over the asserted anticipation and obviousness grounds.

  RulingsFinal written decision

  • Additional discoveryAdditional discovery, deniedDenied

    “To succeed, a motion to submit supplemental information pursuant to 37 C.F.R. § 42.123(b) must meet two requirements. First, the motion must show why the supplemental information reasonably could not have been obtained earlier. 37 C.F.R. § 42.123(b). Second, the motion must show that consideration of the supplemental information would be in the interest of justice. Id. As we explain below, Patent Owner’s motion fails to meet either requirement.” slip op. at 10

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other

    “B. Patent Owner’s Objections to Petitioner’s Demonstrative Slides Patent Owner objects to a number of Petitioner’s demonstratives for oral argument because, for example, the demonstratives constitute evidence that Petitioner did not reference or discuss in a prior paper. See, e.g., Paper 29 passim. We have considered the objections. Demonstratives for oral argument, however, are not evidence. Paper 24, 2 (Order Setting Oral Argument); see also Consolidated Trial Practice Guide 84, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Demonstrative exhibits used at the final hearing are aids to oral argument and not evidence.”). We do not rely on demonstratives as evidence in our decision making; instead, we rely solely on the arguments properly presented in the parties’ briefs and the evidence of record. Because demonstratives do not affect our decision making, Patent Owner’s objections to the demonstratives likewise do not affect our decision making. We dismiss Patent Owner’s objections as moot.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennas used in RFID devices versus developing antennas used in RFID devices for inductive coupling). The specification of the ’304 patent describes its technical field as relating to a smart card that may comprise an RFID (radio frequency identification) chip with antenna components for operating in contactless modes. Ex. 1001, 1:37–54. The specification discusses both inductive and capacitive coupling. See, e.g., id. at 3:14–39. Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be used by various RFID systems. See Ex. 2005, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Id. Thus, we are not persuaded that the level of ordinary skill should be confined to developing antenna for RFID devices that are used for inductive coupling. For the purposes of this 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.” Pet. 7.9” slip op. at 18

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “F. Dr. van der Weide’s Testimony Patent Owner argues that we should not give substantial weight to the testimony of Petitioner’s declarant, Dr. van der Weide, for several reasons. PO Resp. 45–51. Patent Owner first argues that Dr. van der Weide lacks relevant experience to provide opinions through the lens of a person having ordinary skill in the art. Id. at 45–46 (citing Ex. 2003 ¶ 96). According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with relevant inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. at 45. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Moreover, Petitioner presents evidence that Dr. van der Weide’s experience exceeds even Patent Owner’s articulation of the level of ordinary skill in the art. Pet. Reply 25–27 (citations omitted). Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7; Ex. 1004 (van der Weide curriculum vitae).” slip op. at 19

  Patent outcomesUS 9,633,304 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,633,304
• Samsung Electronics Co., Ltd. v. Netlist, Inc.Instituted
  PTAB · Aug 2, 2023 · IPR2023-00455 · APJ Daniel J Galligan · IPR · Institution

  The Board instituted inter partes review of claims 1–29 on all asserted grounds, finding a reasonable likelihood of success on the Perego and JESD79-2 obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution in view of the district court litigation. Prelim. Resp. 53–56. A Memorandum from Director Vidal titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)6 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. Petitioner has submitted such a stipulation for all claims in this proceeding, which are all of the claims of the ’215 patent. Ex. 1093; Paper 8 at 1; Paper 9 at 1. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 5

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “In evaluating arguments under Section 325(d), we use a two-part framework, determining, first, “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id.” slip op. at 6

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

    “On this record, we are sufficiently persuaded by Petitioner’s argument that a person of ordinary skill in the art would have combined the teachings of Perego and JESD79-2. As Petitioner correctly points out (Pet. 32), Perego discloses using DDR2 memory devices. Ex. 1071, 10:56–59 (“Other memory devices may be implemented on module 400, for example, Double Data Rate 2 (DDR2) DRAM devices and Synchronous DRAM (SDRAM) devices.”). On this record, we find this teaching to use DDR2 sufficiently supports Petitioner’s rationale to combine Perego with JESD79-2, which is the JEDEC DDR2 SDRAM Specification. Ex. 1064, 1 (cover page); see also Prelim. Resp. 44 (parenthetical noting that “JESD79-2 is a specification for individual DDR2 SDRAMs”). As to Patent Owner’s argument that Rambus memories lack a chip select network (Prelim. Resp. 25–26), the reference on which Patent Owner relies discloses that chip select information is still used in the particular Rambus devices described. See Ex. 1069, 11 (“[I]n the Rambus bus organization, all addresses, commands, data, and chip-select information are sent on the same bus lines.”), 12 (“[T]he example system uses a total of nine (9) lines to carry all necessary information, including addresses, commands, chip-select information, and data.”). Thus, on this record, Patent Owner’s focus on the lack of a chip select network, which is not recited in the claims of the ’215 patent, appears misplaced. We address Patent Owner’s more specific arguments below in the discussion of individual claim recitations.” slip op. at 14

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

    “Claim 21 is method claim and recites similar structure in the preamble. Petitioner cites this claim language in support of its position that a rank can have just one memory device. Pet. 28 (citing Ex. 1001, 37:32–38 (portion of claim reproduced above)). On this record, we determine that the claim language supports Petitioner’s position. Claim 1 recites “at least one first memory integrated circuit in the first rank and at least one second memory integrated circuit in the second rank.” This language is met if there is one memory integrated circuit in each rank because “at least one” includes just one. On this record, we disagree with Patent Owner’s argument that this claim language “do[es] not define the term ‘rank’” but, rather, “provide[s] context that a claimed ‘buffer’ can be, but need not be, coupled to multiple memory devices in the rank.” See Prelim. Resp. 9–10. Claim 1 recites “a buffer coupled between the at least one first memory integrated circuit and the memory bus, and between the at least one second memory integrated circuit and the memory bus,” and it further recites “enabl[ing] communication of the first data burst between the at least one first memory integrated circuit and the memory controller through the buffer” and “enabl[ing] communication of the second data burst between the at least one second memory integrated circuit and the memory controller through the buffer.” If there is only one memory device in each rank, then the buffer will only be connected to the one memory device in each rank. If two memory devices are the “at least one first memory integrated circuit in the first rank” then the buffer would be “coupled between the [two memory devices] and the memory bus.”” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR
  Patents in suitUS 9,858,215
• Samsung Electronics Co., Ltd. v. Netlist, Inc.Instituted
  PTAB · Aug 2, 2023 · IPR2023-00454 · APJ Daniel J Galligan · IPR · Institution

  The Board instituted IPR on claims 1–15 on all asserted grounds, finding a reasonable likelihood that Samsung would show at least one claim obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)6 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district 2 US 7,363,422 B2, issued Apr. 22, 2008 (Ex. 1071). 3 Joint Electron Devices Engineering Council (JEDEC) DDR2 SDRAM Specification (JESD79-2), September 2003 (Ex. 1064). 4 US 2006/0277355 A1, published Dec. 7, 2006 (Ex. 1073). 5 US 7,024,518 B2, issued Apr. 4, 2006 (Ex. 1078). 6 Available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. Petitioner has submitted such a stipulation for all claims in this proceeding, which are all of the claims of the ’417 patent. Ex. 1093; Paper 8 at 1; Paper 9 at 1. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 5

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “In evaluating arguments under Section 325(d), we use a two-part framework, determining, first, “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, 7 Chapter 31 (35 U.S.C. §§ 311–319) relates to inter partes review. IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id.” slip op. at 6

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

    “competent evidence” to show that “the overall CAS latency of the memory module is greater than an actual operational CAS latency of each of the memory devices,” as recited in claim 1. Prelim. Resp. 44. We disagree. Petitioner presents detailed testimony from Dr. Wolfe explaining how Perego’s registered data transfers would have introduced delay. In particular, Dr. Wolfe, citing Perego’s disclosures of data latches and an internal clock to generate synchronizing clock signals (Ex. 1071, 12:65–13:5, 17:61–63, Fig. C), provides the following testimony: A Skilled Artisan would have understood from these disclosures that Perego’s latching of the data signals and the use of internal synchronizing clock signals adds a predetermined amount of time delay for each data transfer through the buffer because the output of the latch needs to be in synchronization with an internal clock. A Skilled Artisan would have understood that such registering of the data signals would require the addition of a fixed time delay, such as one clock cycle, for each registered data transfer through the circuitry with respect to the actual operational CAS latency of each of the plurality of memory integrated circuits. Ex. 1003 ¶ 360. Dr. Wolfe further explains how Perego’s “latching delays in the buffer device of Perego increase the overall CAS latency of the memory module compared to the CAS latency of the memory devices.” Ex. 1003 ¶ 362 (citing Ex. 1071, 12:65–13:5, 18:65–19:3, Figs. 5B, 5C). On this record, we find Petitioner’s evidence sufficiently persuasive to show that Perego teaches that “data transfers through the circuitry are registered for an amount of time delay such that the overall CAS latency of the memory module is greater than an actual operational CAS latency of each of the memory devices,” as recited in claim 1. We are sufficiently persuaded by Petitioner’s contentions for the” slip op. at 33

  • Skill levelSkill level board ownOther

    “To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 11,093,417
• Huhtamaki Flexible Packaging Germany GmbH & Co. KG v. Danapak Flexibles A/SInstituted
  PTAB · Jun 20, 2023 · PGR2023-00008 · APJ Kristina M Kalan · PGR · Institution

  The Board instituted post-grant review of claims 1–13 on all petitioned grounds, finding it more likely than not that at least one challenged claim is unpatentable.

  RulingsInstitution decision

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

    “To institute post-grant review, we must determine that the information presented in the Petition, “if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims of the ’624 patent is unpatentable. Thus, we institute post-grant review.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “evaluated the subject matter of Riis during examination of the ’624 patent, we agree that Riis was before the Office, as discussed in connection with our analysis of the first part of the Advanced Bionics framework, above. Examiner T presumably was aware of Riis by virtue of having initialed an IDS containing Riis in the ’624 patent’s application and also by virtue of having initialed an IDS containing Riis in the ’067 Application, but Examiner T did not apply Riis in connection with the examination of the ’624 patent. On this record, Patent Owner also fails to show that the claims of the child application leading to the ’624 patent are substantially similar to those of the parent ’814 patent in which Examiner S considered Riis, and, thus, consideration of Riis during the prosecution of the ’814 patent does not equate to consideration of Riis during the prosecution of the ’624 patent. Regarding Patent Owner’s argument (2) that Petitioner fails to sufficiently show how the Examiner erred in evaluating the prior art, we find Petitioner’s arguments demonstrate that Examiner T, the examiner of the ’624 patent, did not apply Riis (or Wypych or Tatarka) during the examination of the’624 patent. As Petitioner argues, the error lies in that “the Examiner failed to consider the relevance of Riis as it applied to the pending method claims,” because although “Riis was considered during examination of the parent ’999 application, Riis was not similarly considered during examination of the ’018 application which led to the ’624 patent.” Pet. 76–77. We determine that the circumstances here demonstrate that the Examiner erred in evaluating the prior art.” slip op. at 12

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “35 U.S.C. § 322(a)(2) to deny institution, arguing that the Petition fails to identify every RPI. Prelim. Resp. 10–11, 56–60. Patent Owner argues that the Petition “should also have identified its parent corporation, Huhtamäki Oyj . . . as well as the related corporation Huhtamaki, Inc. . . . as RPIs to comply with the statutory requirements for a PGR.” Id. at 10. On this record, we determine that we need not address whether Huhtamäki Oyj and Huhtamaki, Inc. are unnamed RPIs because, even if they were, it would not create a time bar or estoppel under 35 U.S.C. § 325. See SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (PTAB Oct. 6, 2020) (precedential); Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38 at 6 (PTAB Mar. 4, 2016) (precedential) (Board’s jurisdiction to consider a petition does not require a “correct” identification of all RPIs in a petition); see also Blue Coat Sys., Inc. v. Finjan, Inc., IPR2016-01444, Paper 11 at 10 (PTAB July 18, 2017) (“evidence [of failure to identify all RPIs] is, at best, suggestive regarding an issue that is not jurisdictional”); Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019) (“[I]f a petition fails to identify all real parties in interest . . . the Director can, and does, allow the petitioner to add a real party in interest.” (quoting Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en banc))). Here, notwithstanding the arguments devoted to the RPI issue in the Preliminary Response, Preliminary Reply, and Preliminary Sur-Reply, we are not persuaded that Petitioner is barred or estopped from this proceeding, or that Petitioner purposefully omitted Huhtamäki Oyj or Huhtamaki, Inc. to gain some advantage. As Petitioner argues, the “RPI analysis is not necessary at institution, because Patent Owner has not alleged Petitioner would be time barred or otherwise estopped based on unnamed RPIs.” Prelim. Reply 5 (quoting SharkNinja, IPR2020-00734, Paper 11 at 18). As SharkNinja states, certain Board decisions go through extensive analysis to determine whether parties should have been named as RPIs, whereas other Board decisions determine that “such a lengthy exercise is unnecessary for the purposes of rendering a decision on institution of trial.” SharkNinja, IPR2020-00734, Paper 11 at 19. Here, as in SharkNinja, we find the latter approach better serves the interest of cost and efficiency. Thus, at this time and on this record, we will not consider whether Huhtamäki Oyj or Huhtamaki, Inc. must be named as RPIs.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the invention “would have had a relevant technical degree in Chemical Engineering, Polymer Science, Materials Science, or the like, and 2–3 years of experience in laminate or film manufacture or similar packaging manufacture and that less experience may be necessary with additional education and vice versa.” Pet. 17 (citing Ex. 1003 ¶¶ 66–72). In its 4 Neither Patent Owner nor Petitioner appear to present any evidence directed to secondary considerations. See generally Pet.; Prelim. Resp.; Prelim. Reply; Prelim. Sur-Reply. Preliminary Response, Patent Owner does not contest Petitioner’s asserted level of ordinary skill in the art. See generally Prelim. Resp. We adopt Petitioner’s definition, which is consistent with the level of skill in the art at the time of the invention as reflected by the prior art and the ’624 patent. 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 17

  Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 11,260,624
• Signify North America Corp. v. Cao Lighting, Inc.Instituted
  PTAB · Jun 15, 2023 · IPR2023-00214 · APJ Brian D Range · IPR · Institution

  Instituted inter partes review of claims 21, 25–29, 36, 40–43, 47–49, and 52–57 on all asserted grounds; Petitioner showed a reasonable likelihood of prevailing on obviousness.

  RulingsInstitution decision

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

    “The facts here are analogous to those of Hulu, LLC. The Bogner reference provides the indicia at bottom left corner of its first page. Ex. 1007, 143. The indicia states: “Part of the SPIE Conference on Light- Emitting Diodes Research, Manufacturing and Applications III • San Jose, California • January 1999 SPIE Vol 3621 • 0277-786X/99/$10.00.” Id. The January 1999 date being printed adjacent to the name of a particular conference and San Jose, California suggests that the paper was presented at the 1999 conference. The “99” within 0277-786X/99/$10,00 indicates a 1999 publication, and the “$10.00” suggests public availability at the price of ten dollars in 1999. As further evidence, Petitioner includes in the record a page from the SPIE website that appears to be from October 12, 2022. Ex. 1007, 1. The page indicates Bogner was published “14 April 1999” in “SPIE Proceedings Vol. 3621.” Id.11 This information is consistent with the indicia on the first page of the paper itself. The evidence, in total, supports Petitioner’s contention that the paper was presented at a conference in January 1999 and then published within SPIE Proceedings Volume 3621 in April 1999–– absent contrary evidence, which Patent Owner does not advance at this stage of the proceeding. As in Hulu, LLC, the Bogner reference’s indicia provide some evidence of printed publication status. The page from the SPIE website provides further evidence. Thus, given the record as a whole, which contains some evidence that Bogner was a printed publication as of 1999 and no evidence to the contrary, and in view of the Hulu LLC precedent, we determine that Petitioner has established at this stage of the proceeding a reasonable likelihood that the Bogner reference is a printed publication that was publicly accessible before the critical date12 of the challenged patent.” slip op. at 17

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner

    “Conclusion Factor one weighs strongly against exercising our discretion to deny institution, factor three weighs against exercising our discretion to deny institution or is neutral, factors six and seven are neutral or weakly favor discretionary denial, and the remaining factors are neutral. The balance of the General Plastic factors thus weighs against exercising our discretion under § 314(a) to deny institution. Accordingly, we decline to exercise our discretion to deny institution based on the General Plastic factors.” slip op. at 24

  • Parallel petitionsDecided for petitioner

    “Here, we decline to exercise discretion to deny this Petition based upon multiple Petitions for three reasons. First, as we explain in Section III(H) of this decision, the Petition is strong on the merits, and Patent Owner has, at this stage, offered little argument refuting the merits. Second, Patent Owner’s burden to respond to both petitions is lessened by Patent Owner’s familiarity with much of the prior art at issue. As Patent Owner emphasizes, all or nearly all of the art in the Petitions was previously raised either during prior examination or in other inter partes reviews. Indeed, it seems likely that, if the Cree IPR (or related follow on IPRs) proceeds to a decision on the merits, there may be little left unresolved for the instant Petition. Institution here, however, provides Petitioner an opportunity to challenge the ’961 patent based on Krames in the event that the IPR based on Cree does not reach a decision on the merits. Third, while the two petitions present different invalidity grounds (addressing the same claims) and, as explained above, are not wholly redundant, the two parallel petitions have a great deal of overlap. Prelim. Resp. 26 (arguing that the two petitions are “redundant”). Because portions of the petitions are similar, this also reduces Patent Owner’s burden to respond. Thus, based on the totality of specific circumstances unique to these two petitions, we decline to exercise discretion to deny institution based on parallel petitions.” slip op. at 25

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

    “IV. CONCLUSION For the reasons above, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to challenged claims 21, 25–29, 36, 40–43, 47– 49, and 52–57 of the ’961 patent. At this juncture in the proceeding, we have not made a final determination with respect to the patentability of the challenged claims, or with respect to claim construction. V. ORDER For the foregoing reasons, it is ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 21, 25–29, 36, 40–43, 47–49, and 52–57 of the ’961 patent is hereby instituted with respect to all grounds of unpatentability set forth in the Petition; and” slip op. at 52

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 6,465,961
• Signify North America Corp. v. Cao Lighting, Inc.Instituted
  PTAB · Jun 15, 2023 · IPR2023-00213 · APJ Brian D Range · IPR · Institution

  The Board instituted IPR on claims 21, 25–29, 36, 40–43, 47–49, and 52–57 on all asserted grounds, finding a reasonable likelihood of success on the §103 obviousness challenges.

  RulingsInstitution decision

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

    “Conclusion as to claim 21 Based on the evidence in the present record, we determine that Petitioner has shown sufficiently for purposes of this Decision that the combination of Begemann, Bogner, and Sugiura teaches or suggests all elements of claim 21 and that Petitioner sufficiently shows that a person of ordinary skill in the art would have had reason to combine the references’ teachings with rational underpinning and reasonable expectation of success. Thus, we determine Petitioner has established a reasonable likelihood of prevailing in showing that claim 21 is unpatentable over the combination of Begemann, Bogner, and Sugiura. b. Dependent Claims 25–29, 36, 40, 42, 43, 47–49, and 52–57 Petitioner accounts for the limitations recited in claims 25–29, 36, 40, 42, 43, 47–49, and 52–57 (which depend from claim 21). Pet. 6, 51–71. Petitioner shows sufficiently for purposes of this Decision that each element of claims 25–29, 36, 40, 42, 43, 47–49, and 52–57 is taught or suggested by the combined teachings of Begemann, Bogner, and Sugiura and shows reason to combine the references’ teachings with rational underpinning and reasonable expectation of success. Thus, we determine that Petitioner has sufficiently established a reasonable likelihood of establishing claims 25–29, 36, 40, 42, 43, 47–49, and 52–57 are obvious in view of Begemann, Bogner, and Sugiura.” slip op. at 45

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “We do not agree, however, that Petitioner fails to show material error. Rather, Petitioner shows sufficiently that the outcome of the reexamination hinged on Patent Owner’s representation that the prior art did not teach LED chips “configured to output light at greater than about 40 milliwatts.” Pet. 19 (quoting Ex. 1014, 238–239 (Patent Owner’s statement in file history); see also Ex. 1014, 159 (examiner explaining that claims are found patentable based on Patent Owner’s argument that the “greater than about 40 milliwatts” recitation is not “taught or suggested by any reference currently relied on”). Petitioner then explains in detail why Patent Owner’s representation, and the Examiner’s resulting conclusion, was in error. Pet. 20–24. Petitioner’s explanation as to why Begemann, the cited art, actually taught the “greater than about 40 milliwatts” recitation is supported by the evidence of record sufficiently to demonstrate a reasonable likelihood of success at trial. See, e.g., Ex. 1002 ¶¶ 85–93, 141–144 (Petitioner’s witness, Dr. Jokerst, explaining why the references suggest the “greater than about 40 milliwatts” recitation when a correct calculation is applied).” slip op. at 20

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner

    “the presently cited art at the time a different petitioner filed the Cree IPR. Prelim. Resp. 27. We note, however, that this factor also includes considering whether the prior art relied on in the later petition “could have been found with reasonable diligence.” General Plastic, slip op. at 20. Although the cited references easily could have been found by reviewing the ’961 patent’s file history, it is less clear that the key alleged error in Patent Owner’s representations concerning the teachings of those references would have been readily apparent. As such, this factor is neutral. 3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; Patent Owner argues that Petitioner used the Board’s institution decision (instituting trial) in the Cree IPR as a roadmap for its petitions. Prelim. Resp. 27–28. Patent Owner, however, presents no factual evidence merely result from the strength of references raised in prior reexamination rather than copying from one petition to another. The record lacks evidence directly establishing how or why Petitioner came to select the evidence the Petition relies upon, and we decline to speculate. to support this point, for example, instances in the Petition that facially support a finding that the arguments presented in the Petition track the analysis in the Board’s prior institution decision. Moreover, we agree with Petitioner that the road-mapping concern is either not relevant or is less relevant when the earlier IPR was instituted. Reply 1–2; see also General Plastic, slip op. at 17–18 (explaining that factor 3 is directed to road-mapping concerns). This is not a multiple-bites-of-an-apple situation where the second bite is modified after the first bite fails. This factor weighs against discretionary denial or is neutral.” slip op. at 24

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

    “The facts here are analogous to those of Hulu, LLC. The Bogner reference provides the indicia at bottom left corner of its first page. Ex. 1007, 143. The indicia states: “Part of the SPIE Conference on Light- Emitting Diodes Research, Manufacturing and Applications III • San Jose, California • January 1999 SPIE Vol 3621 • 0277-786X/99/$10.00.” Id. The January 1999 date being printed adjacent to the name of a particular conference and San Jose, California suggests that the paper was presented at the 1999 conference. The “99” within 0277-786X/99/$10,00 indicates a 1999 publication, and the “$10.00” suggests public availability at the price of ten dollars in 1999. The indicia also suggest that the paper was published by an established publisher—SPIE (the international society for optics and photonics). As further evidence, Petitioner includes in the record a page from the SPIE website that appears to be from October 12, 2022. Ex. 1007, 1. The page indicates Bogner was published “14 April 1999” in “SPIE Proceedings Vol. 3621.” Id.10 This information is consistent with the indicia on the first page of the paper itself. The evidence, in total, supports Petitioner’s contention that the paper was presented at a conference in January 1999 and then published within SPIE Proceedings Volume 3621 in April 1999–– absent contrary evidence, which Patent Owner does not advance at this stage of the proceeding. As in Hulu, LLC, the Bogner reference’s indicia provide some evidence of printed publication status. The page from the SPIE website provides further evidence. Thus, given the record as a whole, which contains some evidence that Bogner was a printed publication as of 1999 and no evidence to the contrary, and in view of the Hulu LLC precedent, we determine that Petitioner has established at this stage of the proceeding a reasonable likelihood that the Bogner reference is a printed publication that was publicly accessible before the critical date11 of the challenged patent.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 6,465,961
• Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentable
  PTAB · Jun 12, 2023 · IPR2022-00235 · APJ Stacey G White · IPR · Final written decision

  Claims 1–7 are unpatentable: claims 1–7 over Takeda-322 under §§ 102 and 103, claims 1–6 over Murayama under § 102, and claim 7 over Murayama under §§ 102 and 103.

  RulingsFinal written decision

  • Adverse judgmentDecided for patent owner

    “Under the circumstances of this case, we do not agree that adverse judgment with respect to the disclaimed claims is appropriate. Our Rules, provide that a party may request judgment against itself. 37 C.F.R. § 42.73(b). Here, Patent Owner is not requesting adverse judgment against itself. While it is true that 37 C.F.R. § 42.73(b) provides that “[a]ctions construed to be a request for adverse judgment include . . . (2) [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial” (emphasis added), we decline to construe Patent Owner’s statutory disclaimer as a request for adverse judgment in this proceeding because Patent Owner does not disclaim all challenged claims and the majority of the challenged claims remain in this trial.” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). Petitioner points out that “the claims are not limited to a [Booster Antenna (BA)] operating at any particular frequency range.” Reply 25. In addition, Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be at use by various RFID systems. See Ex. 2005, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Thus, we are not persuaded that the level of ordinary skill should be narrowly confined to developing antenna for RFID devices that are used for inductive coupling. For the purposes of this 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.” Pet. 87.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “testimony of Petitioner’s declarant, Dr. van der Weide, because he “he lacks relevant experience, his testimony runs counter to fundamental principles of the RFID technology disclosed in the ’932 patent, and his testimony evidences a lack of candor.” PO Resp. 46. According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Moreover, Petitioner presents evidence that Dr. Van der Weide’s experience exceeds even Patent 7 We further note that our final determination, on the merits, would be the same even under Patent Owner’s definition of the level of ordinary skill in the art. Owner’s articulation of the level of ordinary skill in the art. Reply 25–27. Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7; Ex. 1004 (van der Weide curriculum vitae).” slip op. at 11

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

    “Petitioner asserts that “[n]o claim term requires an exact outer boundary construction, because the prior art relied upon herein meets the claim terms under any reasonable interpretation.” Pet. 9. Patent Owner proposes constructions for the claim terms “booster antenna,” “card antenna component,” “coupler coil component,” and “extension antenna component.” PO Resp. 25–45. According to Patent Owner, Petitioner also has proposed its own constructions for these terms, despite stating that no claim term requires construction. Id. at 25–26. We address “booster antenna” and “extension antenna” below.8 It is unnecessary to construe “card antenna component” or “coupler coil component” in this Decision 8 Patent Owner also argues that Petitioner belated construes “card body” in Petitioner’s Reply. Sur-Reply 16–18. We do not construe “card body” because this construction is not necessary to resolve this matter. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). because none of the parties’ disputes turn on the meaning of either term. See, e.g., Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 13

  Patent outcomesUS 9,195,932 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,195,932
• Netflix, Inc. v. Robocast, Inc.Institution denied
  PTAB · May 11, 2023 · IPR2023-00081 · APJ David C Mckone · IPR · Institution

  The Board denied institution because Netflix had not shown a reasonable likelihood of proving claims 1, 2, 37, or 38 unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). 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 explained below, we decline to institute an inter partes review of the ’451 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not see a substantial difference between the parties’ proposals. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). However, our Decision would be the same under Patent Owner’s proposal.” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for patent owner

    “we consider whether that construction was intended to encompass varying durations during the creating step or the displaying step. In its opinion, the Microsoft court observed that the defendants in that case argued that “before created,” and that “the ‘duration information’ is a parameter that the user can then interact with in order to vary the display of each resource.” Ex. 1014, 22. Patent Owner, the court continued, argued that “all that is required is for the user to maintain control over the actual presentation of the resource during the ‘displaying’ step, and that no duration information need be provided during the ‘creating a show structure of nodes’ step.” Id. at 22–23. The Microsoft court “agree[d] with [Patent Owner] that the user should be able to vary the duration of the content during show structure playback. This is the ‘interactive’ component of the claim.” Id. at 23; see also Prelim. Resp. 29 (arguing that this reasoning supports Patent Owner’s position that “the claim language expressly requires that the end user be able to ‘vary said duration’ for how long resource content currently ‘is being displayed’ to the user in ‘accordance with said show structure’ to which the resource belongs”). Here, the Microsoft court expressly states that the duration is varied during show structure playback, which is a clear reference to claim 1’s step of “displaying a content corresponding to each of said resources automatically in accordance with said show structure.” The Microsoft court “also finds that some duration information must be provided when the show structure of nodes is created,” that “‘parameter’ is a helpful concept for construction,” and that “the ‘duration information’ may be understood to be synonymous with a ‘parameter,’ as that timing information is the variable that will specify how long a particular content will be displayed.” Ex. 1014, 23. Thus, the Microsoft court construed claim 1 to require providing a variable duration parameter in the creating” slip op. at 13

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

    “As noted above, the Microsoft court construed “interactively variable duration information” to mean “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1014, 22. The construction itself suggests that the duration information is varied during display, because it is in the context of resources being displayed sequentially and “the viewer of the content can change the parameter.” As to Escobar, Petitioner contends that “[w]hen playing decision lists/timelines in the authoring tool using Button 174 (invoking subroutine E), the user is the viewer of the content.” Pet. 49 (citing Ex. 1004, 6:40–45). Thus, Petitioner appears to contend that, during the process of creating a show structure, the creator is a viewer if the creator can view the edited content corresponding to a node as the show structure is being created. Here, Petitioner would satisfy the “viewer” aspect of the Microsoft court’s construction by pointing to a creator viewing a piece of the show structure during the creating step, although Escobar does not teach that the creator can vary the duration of content while viewing it or that durations can be varied while a show structure (as opposed to a node being created) is being displayed in the displaying step, as discussed in more detail below.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 7,155,451
• Solaredge Technologies Ltd. v. Koolbridge Solar, Inc.All claims unpatentable
  PTAB · Apr 17, 2023 · IPR2022-00007 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–13 and 20 are unpatentable: claims 1–3 and 8–10 over Tracy, claims 4 and 11 over Tracy and Fujimoto, claims 6 and 20 over Tracy and De, claim 7 over Tracy and Bond, and …

  RulingsFinal written decision

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

    “IV. CLAIM CONSTRUCTION In the Decision to Institute we declined to treat any of the claim terms as mean-plus-function terms because the terms have an ordinary and customary meaning. Dec. to Inst. 14–15. Neither party has proposed any other claim constructions. We apply the plain and ordinary meaning in this Decision.” slip op. at 7

  • Expert testimonyPetitioner expert creditedOther

    “Dr. Baker’s testimony is persuasive evidence that Tracy discloses the claimed floating DC power source, as Tracy’s terminals are not permanently connected to the neutral.” slip op. at 24

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

    “We agree with Petitioner that Patent Owner unrealistically reads this definition to mean there can never be a connection to ground or neutral, because Patent Owner ignores the disclosure in the ’822 patent of temporarily connecting one or the other of the floating DC sources to neutral, as discussed above. Id. at 9–10 (citing Ex. 1001, 3:52–60, 4:27–40, 10:44–47, 11:1–7, 11:25–28, 23:47–52; Ex. 1074, Baker Reply Decl. ¶¶ 12–13).” slip op. at 20

  Patent outcomesUS 8,937,822 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,937,822
• Unified Patents, LLC v. Robocast, Inc.Institution denied
  PTAB · Jan 20, 2023 · IPR2022-01125 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable over Henley or Shoham and Richardson.

  RulingsInstitution decision

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

    “establish anticipation under 35 U.S.C. § 102, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). While the elements must be arranged in the same way as is recited in the claim, “the reference need not satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990). Identity of terminology between the anticipatory prior art reference and the claim is not required. Prior art references must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for petitioner

    “used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Certain terms recited in the challenged claims were construed during prior litigation of the ’451 patent, i.e., the parent of the challenged ’932 patent. Ex. 1011 (claim construction order in cases involving Microsoft and Apple); Ex. 2009, 5 (clarification of certain claim constructions on summary judgment). Patent Owner advocates that we adopt such prior constructions in this proceeding, and Petitioner “does not dispute” such constructions. Pet. 10–13; Prelim. Resp. 6–8. We have reviewed the court’s claim-construction order, and adopt its construction of the following terms for purposes of this Decision. First, we construe “node,” which is recited in multiple claims, as “an identifier of a resource that includes an address to the resource and the duration for which the resource’s content is to be presented by default.” See Ex. 1011, 16–17; Pet. 12; Prelim. Resp. 7. Second, we construe “show structure of nodes,” which is recited in challenged independent claims 1 and 22, as well as in challenged dependent claim 4, as “a structure that is arranged for the display of content by specifying one or more paths through a plurality of nodes. The show structure of nodes specifies the duration of any display,” but there is no durational requirement separate from the construction of “node.” See Ex. 1011, 2–13; Pet. 11–12; Prelim. Resp. 7. Third, we construe “interactively variable duration information,” which is recited in challenged independent claim 1, as well as challenged dependent claims 2 and 26, as “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1011, 22–23; Pet. 13; Prelim. Resp. 7.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, or a related subject and two or more years of experience working with computer networks and the accessing and presentation of networked resources to users in the 1996 timeframe.” Pet. 10 (citing Ex. 1012 ¶ 51). Petitioner adds that “[t]his description is approximate, and a higher level of education or specific skill might make up for less experience and vice-versa.” Id. Patent Owner proposes that a person of ordinary skill in the art “would have the equivalent of a four-year degree from an accredited institution (usually denoted as a B.S. degree) in computer science, computer engineering or the equivalent, and experience with, or exposure to, topics in computer networking, multimedia, and web systems. A person of ordinary skill in the art would also have approximately 3-5 years of professional experience with these topics.” Prelim. Resp. 6. In addition, Patent Owner say that “[a]dditional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education.” Id. (citing Ex. 2005 ¶ 28). Both parties support their proposals with testimony by their respective experts. See Ex. 1012 ¶ 51; Ex. 2005 ¶ 28. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “distinction. See Ex. 2005 ¶ 30 (“Henley discloses a ‘video optimized stream server system 10,’ also referred to as ‘media streamer,’ for use by broadcasters to deliver content to end users, or viewers.”). In particular, Dr. Almeroth observes that, in Figure 1 of Henley, reproduced above, system controller 64 is illustrated graphically as connected to multiple user controls 65, but is shown connected only to a single display 66. Id. ¶ 31. This structure, in combination with Henley’s description of the drawing, leads Dr. Almeroth to conclude that user control 65 “corresponds to a ‘set top box[]’” for an end user, and that system controller 64 corresponds to a separate “‘user interface’ for the operator.” Id. Specifically, Dr. Almeroth points to Henley’s description of system controller 64 as “respond[ing] to inputs from user control set top boxes 65 to cause commands to be generated that enable media streamer 10 to access a requested video presentation.” Id.; Ex. 1013, 8:30–32 (emphasis added). Dr. Almeroth also notes Henley’s explanation that “[s]ystem controller 64 is further provided with a user interface and display facility 66 which enables a user to input commands, such as by hard or soft buttons, and other data to enable an identification of video presentations, the scheduling of video presentations, and control over the playing of a video presentation.” Ex. 2005 ¶ 31; Ex. 1013, 8:33–38. These disclosures by Henley support Dr. Almeroth’s conclusion that “[t]his ‘user interface and display facility 66’ is for an operator—not an end user.” See Ex. 2005 ¶ 31. Dr. Almeroth provides additional reasoning to support this conclusion. For example, Henley explains that “[s]ystem controller 64 responds to inputs from user control set top boxes 65 to cause commands to be generated that enable media streamer 10 to access a requested video presentation.” Ex. 1013, 8:30–32. In light of this, because an end user would interact with the set-top box shown as user control 65, Dr. Almeroth reasons that “it would make no sense” for display 66 to be for the end user. Ex. 2005 ¶ 32. We agree with this reasoning. In addition, Dr. Almeroth observes that Henley describes two types of interfaces for media streamer 10, a command line interface and a graphical user interface. Id. ¶ 33 (citing Ex. 1013, 18:47–50). Because the command line interface can be used for “batch” functionality, Dr. Almeroth reasons, and we agree, that the command line interface is for broadcast operators, rather than for end users. Id. With respect to the graphical user interface shown in Figure 8, reproduced above, Dr. Almeroth further reasons that a person of skill in the art would understand that it relates to operator controls, rather than end-user controls, because Henley specifically describes it as showing keys “used to operate the media streamer.” Id. ¶ 34; Ex. 1013, 4:5– 6. In other words, according to Dr. Almeroth, “[t]he graphical user interface corresponds to the command line interface.” Ex. 2005 ¶ 34. Dr. Almeroth’s reasoning is compelling. Notably, Figure 8 shows “Batch” button 130 and “Import/Export” button 132 to “move video data into and out of the media streamer.” See Ex. 1013, 19:20–22, 19:30–31. As Dr. Almeroth testifies, these are not functions that a person of ordinary skill in the art would understand to be available for end users, but are appropriate for broadcast operators: “None of these commands are consistent with those that would be available to an end user of, e.g., a set top box or pay-per-view system.” Ex. 2005 ¶ 35. In light of this compelling testimony, we agree with Patent Owner and find that “Henley . . . does not describe . . . the end user’s interface or controls.” See Prelim. Resp. 22.” slip op. at 24

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,965,932

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.