- TCT Mobile (US) Inc / TCL China Star Optoelectronics Technology Co., Ltd et al. v. Semiconductor Energy Laboratory Co., Ltd.Institution deniedPTAB · Jul 19, 2022 · IPR2022-00151 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because claims 1–6 were supported by the earlier priority application, making Kwon unavailable as prior art, and the petition lacked adequate reasons to combine Kwon and Yamazaki.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the parties’ arguments and the evidence of record, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“[A] patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995). The earlier filed application provides support for the claims of the later application if the earlier application “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Petitioner contends the ’671 application does not include support for the following limitation of claims 1 and 4: “wherein a capacitance is formed in a region overlapping with the channel formation region by arranging the gate electrode, the second insulating film, and the power supply line in this order” (the “capacitance limitations”). Pet. 6. According to Petitioner, support for the capacitance limitations was added for the first time in the ’766 application. Pet. 6. slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Petitioner has not presented an adequate rationale to combine Kwon and Yamazaki to arrive at the claimed invention. Among other things, Petitioner argues “[a] person of ordinary skill would have been motivated to replace the channel formation region of [Kwon] with the channel formation region of [Yamazaki] to solve the TFT threshold voltage variation issue identified in [Kwon].” Pet. 38 (citing Ex. 1002 ¶ 114). Further, Petitioner asserts that OLED current can be reduced by increasing the channel length of the TFT such that a person of ordinary skill would have been motivated to use a TFT with a larger channel length as taught by Yamazaki. Pet. 36–37. But we agree with Patent Owner that the ’049 patent itself suggests that relationship, not Kwon or Yamazaki, and that Petitioner’s suggested motivation to combine Kwon and Yamazaki is guided by improper hindsight. See Prelim. Resp. 52–53. Petitioner’s reliance on the Kanicki Declaration is misplaced, as Dr. Kanicki’s testimony is conclusory and does not state the basis for that testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We also agree with Patent Owner that Petitioner failed to establish that a person of ordinary skill would have had a reasonable expectation of success in combining the references. Prelim. Resp. 54–59 (citing Samsung Elecs. Co. v. Elm 3DS Innovations, LLC, 925 F.3d 1373 (Fed. Cir. 2019) among other cases). We agree with Patent Owner that the semiconductor technology at issue in this proceeding is complex and that a skilled artisan’s expectation of success should have been explained and supported by evidence. Prelim. Resp. 55; see also Samsung, 925 F.3d at 1382–83 (affirming the Board, which “repeatedly stated that integrated-circuit technology is complex and, as such, looked for specific evidence that a person of ordinary skill in the art would have reasonably expected success in combining [prior art fabrication process and dielectric material]”). Petitioner and Dr. Kanicki are silent as to whether a skilled artisan would have had a reasonable expectation of success and we do not see evidence presented by Petitioner from which we would infer that a skilled artisan would have had that expectation. Accordingly, we determine Petitioner has not presented adequate reasons for combining Kwon and Yamasaki.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightTeaching away not foundDecided for patent owner
“Petitioner has not presented an adequate rationale to combine Kwon and Yamazaki to arrive at the claimed invention. Among other things, Petitioner argues “[a] person of ordinary skill would have been motivated to replace the channel formation region of [Kwon] with the channel formation region of [Yamazaki] to solve the TFT threshold voltage variation issue identified in [Kwon].” Pet. 38 (citing Ex. 1002 ¶ 114). Further, Petitioner asserts that OLED current can be reduced by increasing the channel length of the TFT such that a person of ordinary skill would have been motivated to use a TFT with a larger channel length as taught by Yamazaki. Pet. 36–37. But we agree with Patent Owner that the ’049 patent itself suggests that relationship, not Kwon or Yamazaki, and that Petitioner’s suggested motivation to combine Kwon and Yamazaki is guided by improper hindsight. See Prelim. Resp. 52–53. Petitioner’s reliance on the Kanicki Declaration is misplaced, as Dr. Kanicki’s testimony is conclusory and does not state the basis for that testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 10
§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,680,049 - Bose Corporation v. Koss CorporationAll claims unpatentablePTAB · May 31, 2022 · IPR2021-00297 · APJ Gregg I Anderson · IPR · Final written decision
Claims 1–14 are unpatentable: claims 1–14 as obvious over the listed combinations; the Pelland anticipation ground fails because the claims are entitled to the PCT filing date.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states that its proposal is “not far removed” from Petitioner’s. Neither party argues the level of ordinary skill as part of their arguments on the merits. We instituted trial on Petitioner’s proposed level of ordinary skill. We are not presented with any reason to change that determination and, given Patent Owner’s acquiescence, we maintain the level of skill proposed by Petitioner.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We are not persuaded that the extrinsic evidence Patent Owner relies on, in the form of dictionary definitions and conclusory expert testimony, supports any difference between “seamless handoff” and “transition automatically.” Extrinsic evidence is, in general, less reliable than intrinsic evidence in determining how to interpret the claim. Phillips, 415 F.3d at 1318 (listing reasons extrinsic evidence lacks the reliability of the patent and its prosecution history).” slip op. at 12
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for patent owner
“Drs. Williams and Casali both testify “Wilson’s stereo design would have been consistent with Nakagawa’s intended use and its depiction of a wireless headset having two earphones (Nakagawa, Fig. 1).” Id. (citing Ex. 1003 ¶ 236; Ex. 1005 ¶ 125). Dr. Casali testifies that a monaural design can include two earphones. See Ex. 1005 ¶ 47. Dr. Casali further explains that “diotic” is where “both earphones receiv[e] and output[] the same signal.” Id. (citing Ex. 1017, 1:22–23 (by the filing date of the ’155 patent one or two headphones were used for “monaural or stereo listening”)); contra Ex. 2023 ¶ 33 (two headphones are necessarily stereo). We credit the Casali Declaration and its discussion of Nakagawa that the sound input and output of two headphones is not necessarily stereo and can be monaural. Based on the preceding, we find that Nakagawa does not expressly” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Based on the preceding, we find that Nakagawa does not expressly disclose stereo headphones and Wilson does. A person of ordinary skill would have had reason to add stereo output taught by Wilson to the headphones of Nakagawa. Pet. 61 (citing Ex. 1003 ¶ 236; Ex. 1005 ¶ 125; Ex. 1022 ¶¶ 3, 28). We credit the Williams Declaration and find that a person or ordinary skill would have understood that “wireless headsets (like Nakagawa’s) by 2008 were ‘often battery powered,’ ‘generally [by] rechargeable [batteries] so that the batteries can be re-used instead of being discarded after use.’” Ex. 1003 ¶ 237 (citing Ex. 1021, 1:5–13) (alterations in original). We further find that, although Nakagawa does not expressly disclose that its wireless headset is battery powered, power is needed for the electrical components and is suggested. See Pet. 62 (citing Ex. 1021, 1:5–13; Ex. 1003 ¶ 237); see also PO Resp. 23 (acknowledging a battery is needed to power common components of Wilson and Nakagawa). A person of ordinary skill would have reason to look to Wilson’s teaching of rechargeable batteries and a docking station for recharging wireless headsets. See Ex. 1003 ¶ 237.” slip op. at 23
Patent outcomesUS 10,368,155 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,368,155 - Vmware, Inc. v. Cirba IP Inc.All claims unpatentablePTAB · May 4, 2022 · IPR2021-00008 · APJ Russell E Cass · IPR · Final written decision
Claims 1–33 are unpatentable: claims 1–5, 9–16, 20–27, and 31–33 are anticipated by Power, and claims 1–33 are obvious over Power and Kerr.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“As discussed below, we find that all of the challenged claims have been shown to be unpatentable based on Grounds 1 and 2 involving Power and/or Power and Kerr. See §§ II.D, II.E, infra. Therefore, we need not decide whether the challenged claims are also unpatentable based on Ground 3 involving Van Hoose and Le. Because the parties’ dispute concerning the terms “N-to-1 compatibility analysis” and “N-by-N compatibility analysis” relates to Ground 3, and is not necessary to resolve Grounds 1 and 2, we need not expressly construe these terms for purposes of this Decision, and decline to do so. See Nidec, 868 F.3d at 1017.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Based on the full trial record, we agree with Petitioner that “evaluating one or more source systems against other source systems” should not be construed to require “directly” comparing source systems with other source systems. First, there is nothing in the plain meaning of the claim language itself that requires a “direct” comparison. The dictionary definitions relied on by Patent Owner define “against” as “compared or contrasted with,” which does not require that the comparison be “direct.” Ex. 2016, 23; Ex. 2017, 63. The dictionary’s example of “profits are up [against] last year,” is only one example, and also does not necessarily require a direct comparison because, as Petitioner points out, by sorting profits over the last five years, one might see that this year’s profits are ranked first and last year’s are last. Pet. Reply, 5–6. The ’492 patent specification also supports construing “evaluating . . . against” as not restricted to only “direct” comparisons. The specification uses the term “directly against,” which implies that the term “against” is not limited to only “direct” comparisons. Ex. 1001, 14:20–22. See Philips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (“[T]he claim in this case refers to ‘steel baffles,’ which strongly implies that the term ‘baffles’ does not inherently mean objects made of steel.”). Thus, the inventors knew how to refer to “direct” comparisons, and chose not to do so in the claims.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the alleged invention “would have at least a bachelor’s degree in computer science, computer engineering, or electrical engineering and 2–3 years of experience related to administering distributed computing environments,” and that a “master’s degree or higher is acceptable in place of work experience.” Pet. 13 (citing Ex. 1002 ¶ 21). In the Preliminary Response, Patent Owner did not object to Petitioner’s proposed level of ordinary skill, but reserved the right to dispute it if an inter partes review was instituted. Prelim. Resp. 13. In our Institution Decision, we adopted Petitioner’s assessment of the level of ordinary skill in the art, determining that it is consistent with the ’492 patent and the asserted prior art of record. Inst. Dec. 12. During the trial, Patent Owner stated that it does not offer a competing definition of a person of ordinary skill in the art for purposes of this proceeding. PO Resp. 10. Based on the full trial record, we adhere to the level of ordinary skill set forth in our Institution Decision.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Based on the full trial record, we find that Power’s “sorting” and “ordering” of source candidates discloses “evaluating one or more source systems against other source systems” as claimed. As discussed in Section II.A.3 above, we agree with Petitioner that “evaluating one or more source systems against other source systems” does not require a “direct” comparison between source systems. Given this understanding, we find that Power’s sorting of source candidates based on “future state criteria” evaluates source candidates against each other. As discussed above, Power lists the following three examples of “future state criteria” ranked by priority: PRIORITY 1: Lease expiration or max depreciation > 1 year away PRIORITY 2: Peak utilization > 50% capacity PRIORITY 3: Peak utilization + Projected growth < 95% capacity Ex. 1004, 12:16–23. In this analysis, source candidates are “identified in order of the priority of the criteria that they do (or do[] not[)] meet.” Id. at 12:35–37. Thus, “hardware devices having less than one year remaining on their leases, or less than one year until they are fully depreciated, are the first to be identified as source candidates and paired to target candidates.” Id. at 12:37–40. “Next, any remaining hardware devices whose peak utilization is less than fifty percent (50%) capacity are identified as source candidates and paired to target candidates.” Id. at 12:40–43. “Finally, any remaining hardware devices whose peak utilization and projected growth equals more than ninety-five percent (95%) of capacity are identified as source candidates and paired to target candidates.” Id. at 12:43–47. We find that this process “evaluat[es] one or more source systems against other source systems” because it takes a group of source systems and compares them using a common set of criteria as a reference point to rank them in priority order. The fact that a common reference criteria is used for the evaluation instead of a a 1-to-1 comparison of each source system against each other source system does not mean that Power does not compare source systems with each other. For example, measuring the weight of each of a set of items using a scale, placing the items into buckets based on weight ranges, and then ordering the items by weight by emptying the buckets in order from the heaviest to the lightest would indirectly” slip op. at 27
Patent outcomesUS 10,523,492 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,523,492 - TCT Mobile (US) Inc / TCL China Star Optoelectronics Technology Co., Ltd et al. v. Semiconductor Energy Laboratory Co., Ltd.Institution deniedPTAB · Apr 26, 2022 · IPR2021-01573 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the parties’ arguments and the evidence of record, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“(1) Adachi’s embodiments disclosing blue phosphorescent OLEDs as described in columns 13–16, and (2) the red fluorescent OLED mentioned in Adachi’s background discussion. This is not appropriate in an anticipation analysis. See Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369–71 (Fed. Cir. 2008) (explaining that anticipation requires a clear disclosure of the claimed invention with elements arranged as in the claim and without any need for combining distinct disclosures).” slip op. at 8
§ 102 anticipationPatents in suitUS 7,372,199 - PTAB · Apr 26, 2022 · IPR2022-00024 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 1, 2, and 4 for every petitioned ground, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the Petition, the Preliminary Response, the Preliminary Reply, and the Preliminary Sur-reply, as well as all supporting evidence, we determine that Petitioner shows a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“at the time of the invention of the ’181 patent would have had the following education and experience: (1) at least an undergraduate degree in computer science or closely-related field, or similar advanced post-graduate education; and (2) 1–2 years of experience with systems related to secure communications systems, particularly in the transaction context, where more experience may substitute for less education and vice versa.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only terms that are in controversy need be construed. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Other than to the extent we construe the term “counter value” below, no explicit construction of any claim term is required for the purposes of this Decision.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We are not persuaded by Patent Owner at this stage that the language of the claims requires the counter value in the generating step to be a pre-incremented instance of the counter value. We are not persuaded that the claim’s use of the article “a” before counter value in the generating step and “the” before in the incrementing provides anything more than proper antecedent basis for the counter value. And, Patent Owner apprises us of no other claim language that would require a pre-incremented instance of the counter value. See generally Prelim. Resp.; Prelim. Reply. Further, we are not persuaded that the generating step’s counter value is required to be “preincremented” for claim 1 to be consistent with the ’181 patent because, according to Patent Owner, the embodiment of method 300 discloses the creating the RFID transaction device authentication tag (step 306) before incrementing the counter value (step 310) (Ex. 1001, 11:37–59). Contrary to Patent Owner’s argument, the ’181 patent specifically states that “the steps recited in any of the method or process claims may be executed in any order and are not limited to the order present.” Ex. 1001, 16:33–36. For these reasons, we are not persuaded by Patent Owner at this stage that the language of the claims requires the counter value in the generating step to be a pre-incremented instance of the counter value.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,066,181 - Unified Patents, LLC v. Smart Path Connetions, LLCInstitution deniedPTAB · Apr 25, 2022 · IPR2021-01551 · APJ David C Mckone · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of prevailing on any challenged claim under the asserted anticipation or obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). 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 ’599 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“’599 patent. As Patent Owner observes, claim 41, which depends from claim 32, recites “wherein said metric comprises a cost factor that is computed between one of said ingress nodes and said respective one of said nodes.” This suggests that “a metric,” as recited in claim 32, is broader than, and not limited to, a number of spans between two nodes. See Phillips, 415 F.3d at 1314–15 (“[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.” (citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004)). The Specification confirms that “a metric” is broader than Patent Owner’s understanding. For example, the Specification states: In the detailed examples given below, the metric is defined in such a way that the route selected is the one with the lowest metric score. Alternatively, many different metrics can be defined. For example, the metric may be defined so that the dynamic selection of ingress and exit points could be responsive to a maximum value of the metric. Ex. 1001, 9:49–54 (emphasis added). Thus, we conclude that “a metric” is not limited to a number of spans or hops between two nodes and can include other properties, such as bandwidth.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have had at least a Bachelor’s degree in Optical, Electrical, Computer, and/or Network Engineering (or related subject matter), and two to three years of relevant industry experience, or the equivalent thereof.” Pet. 18 (citing Ex. 1002 ¶¶ 99–104). Patent Owner takes no position with respect to Petitioner’s proposal and 9 The record does not include allegations or evidence of objective indicia of nonobviousness. makes no proposal of its own. Prelim. Resp. 19–20. Petitioner’s proposal is reasonable in light of the descriptions in the ’599 patent and prior art, and is supported by expert testimony. For purposes of this decision, we adopt Petitioner’s proposed level of skill in the art.” slip op. at 16
- Expert testimonyPetitioner expert discountedDecided for patent owner
“modification when it describes that the “default COST for OSPF purposes is modified” to be in terms of bandwidth. Pet. 27 (citing Ex. 1004, 23:1–39). According to Petitioner, “this formula could be similarly modified to prioritize other ‘COSTs,’ e.g., number of spans.” Id. Petitioner argues that this would have been “more efficient.” Id. (citing Ex. 1002 ¶¶ 171–174). Dr. Sichitiu testifies, in conclusory fashion, that minimizing delays would be a priority and that optimizing for the number of spans would optimize for other aspects such as delay, bandwidth, and reliability. Ex. 1002 ¶ 173. However, the conclusory nature of the testimony, and the lack of an 16 Patent Owner complains that the Petition “presents a mishmash claim chart that is indiscernible and indecipherable . . . as to what the actual theories are.” Prelim. Resp. 39 n.1. We agree that the Petition’s combination of its anticipation and obviousness theories into one claim chart with few helpful guideposts results in a set of theories that is not a model of clarity. Nevertheless, we focus on the theory presented in the Petition that would most closely address the deficiencies noted above for Petitioner’s anticipation theory. explanation of the basis for it, renders the testimony less helpful. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Petitioner next argues that selecting an optimal ingress node was recognized in the art as a problem and that modifying COST to represent number of spans was a known technique that would have predictably addressed this problem. Pet. 28–29 (citing Ex. 1002 ¶¶ 162–173, 175–177). Petitioner argues that this combination “would have predictably resulted in M/G-POP 53 consistently ‘select[ing]’ either M-POP 43 or 45 as the ‘ingress node’ for each ‘calculated’ route according to the constituent ‘COST’ (‘responsively to said metric’).” Id. (alteration by Patent Owner). Dr. Sichitiu’s testimony that selecting an optimal ingress node was a recognized problem is conclusory and does not identify a basis. Ex. 1002 ¶ 176. We agree with Patent Owner (Prelim. Resp. 28) that Petitioner’s argument and testimony suffer from hindsight bias. Moreover, Petitioner does not provide meaningful explanation as to why this combination would have predictably resulted in M/G-POP 53 selecting either M-POP 43 or 45 as the ingress node. As Patent Owner observes, “Petitioner fails to address how a POSITA would reconfigure Sistanizadeh and maintain its particularized network to stay operable.” Prelim. Resp. 31.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 7,551,599 - PTAB · Apr 19, 2022 · IPR2022-00007 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–13 and 20, finding a reasonable likelihood of success on each asserted ground in the petition.
RulingsInstitution decision- Parallel petitionsOther
“We decline Petitioner’s invitation to provide advisory opinions by entertaining different Petitions advancing alternative claim constructions. As Petitioner has expressed its preference for Petition 1, which cites Tracy as the primary reference, we exercise our discretion to entertain Petition 1. We decline to institute inter partes review based on Petitions 2 and 3.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“XI. CONCLUSION For the reasons discussed above, we find that Petitioner has demonstrated a reasonable likelihood that it will succeed on the following challenges to patentability: Claims 1–3 and 8–10 as anticipated by Tracy; Claims 1–3 and 8–10 as obvious over Tracy; Claims 4 and 11 as obvious over Tracy and Fujimoto; Claims 6 and 20 as obvious over Tracy and De; Claim 7 as obvious over Tracy and Bond; XII. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes review of the ’822 patent is hereby instituted, commencing on the entry date of this Order, and 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;” slip op. at 50
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). construed as means plus function terms: DC to AC converter, switch[ing] controller, AC ground leak detector, bi-directional DC-to-DC converter, common-mode filter. Pet. 17–21. Although Petitioner states these terms “could be construed as means-plus-function limitations,” Petitioner states that if the panel does not construe them as such, these terms should be construed according to their ordinary and customary meaning. Id. at 17. According to Petitioner, whether these limitations are construed as means plus function terms or according to their ordinary and customary meaning, the prior art discloses the limitations of the challenged claims. Petitioner does not explain why terms that have an ordinary and customary meaning should be construed as means-plus-function limitations in the context of the ’822 patent. Therefore, we apply the ordinary and customary meaning to each limitation. Vivid Techs., 200 F.3d at 803.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VIII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that at the time of the patent application, a person of ordinary skill “would have had a bachelor’s degree in electrical engineering or a similar discipline and three years of design experience with power electronics, including experience designing power converters.” Pet. 17 (citing Ex. 1002, Declaration of Dr. R. Joseph Baker (“Baker Decl.”)). Patent Owner does not discuss the level of ordinary skill. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); of ordinary skill is consistent with the subject matter of the claims and references, we apply Petitioner’s proposed level of skill in this Decision.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,937,822 - PTAB · Mar 17, 2022 · IPR2021-01593 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–18 across all asserted grounds, finding a reasonable likelihood of success on the anticipation grounds and the Shiomi–Stephens obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Although the parties and the district court have invested some effort in the ’186 and ’188 proceedings, we find the investment at this stage relatively minor, especially considering the tasks not yet completed in the district court proceeding. Patent Owner does not dispute Petitioner’s assertion that no depositions yet have occurred. Pet. 10; Prelim. Resp. 1–5. Although some pretrial activity has been completed, much more remains, including the deadline for amended pleadings, fact discovery, submission of expert reports, expert discovery, and a number of other pretrial activities. Ex. 3001, 4–5. Additionally, Patent Owner does not dispute Petitioner’s position that it promptly filed the Petition. Prelim. Resp. 4. On the whole, this factor weighs against exercising discretion to deny institution.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and the associated evidence, for the reasons described below, we institute inter partes review of all the challenged claims on all the grounds set forth in the Petition.” slip op. at 2
- BurdenInstituted
“the Petition must explain clearly its bases for asserting unpatentability of the challenged claims. A proper petition “identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claims is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a). We require that a petition include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). We also require that a petition “specify where each of the elements of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Petitioner’s challenge of claims 1–10, 13, and 15–18 as allegedly obvious over Shiomi fails to meet these requirements. The Petition neither identifies any difference between the teachings of Shiomi and the challenged claims, nor identifies any specific allegedly obvious modification of Shiomi’s teachings. Thus, Petitioner’s presentation of its challenge of claims 1–10, 13, and 15–18 as allegedly obvious over Shiomi stymies a proper obviousness analysis, which requires ascertaining the “differences between the prior art and the claims at issue.” Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Nevertheless, because we institute a trial on other grounds, we institute a trial on this ground as well. See 37 C.F.R. § 42.108(a) (“When instituting inter partes 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.”). See also SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 35
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“At this stage, we find Petitioner has shown sufficiently that Childs discloses claim 1’s recitation of “determining a transfer mode between synchronous and asynchronous, wherein a configuration register specifies said transfer mode between synchronous and asynchronous.” (3) “determining whether said transfer mode is write or read” Petitioner argues that “Childs discloses determining whether the transfer mode is a read or write mode.” Pet. 19. Petitioner cites Childs disclosure of various signals with output registers 34 and output enable registers 48. Id. at 19–20. For example, Petitioner contends that “[t]hrough the state of the write enable signal (W*) and output enable signal (OE2), Childs determines whether the transfer is a read or write operation.” Id. at 20. At this stage, we find Petitioner has shown sufficiently that Childs discloses claim 1’s recitation of “determining whether said transfer mode is write or read.” (4) “transferring data according to said determined mode” Addressing this claim language, the Petition contends that Childs discloses transferring data according to said determined mode. For example, Childs describes a synchronous read cycle at Col. 4:27–48 (“during a read cycle of memory 20. . .”), and a synchronous write cycle at Col. 4:49–Col. 5:5 (“during a write cycle…”). Further, an example of transferring data according to the asynchronous mode is described at Col. 8:28–45 (“In the asynchronous mode. . .”). In both synchronous and asynchronous modes, data is transferred as data signal Q from output register 34. See Ex. 1008 (Childs) at Col. 4:15–19; Ex. 1011 (Ayazi Decl.) at ¶¶ 107.” slip op. at 24
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 6,791,898 - Western Digital Corporation / Western Digital Technologies, Inc. et al. v. Martin KusterAll claims unpatentablePTAB · Feb 10, 2022 · IPR2020-01410 · APJ Nabeel U Khan · IPR · Final written decision
Claims 1–18 are unpatentable: claims 1–4, 9–13, and 18 as anticipated by Hsiao, and claims 1–18 as obvious over Hsiao and Sun.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposed level of ordinary skill does not materially differ from that articulated by Mr. Welch. Both require a bachelor’s in many of the same fields and roughly one to two years of experience with USB protocols or USB product development. Neither Petitioner nor Patent Owner indicates that the outcome of any arguments made in this case would change depending on the level of ordinary skill in the art. We adopt Petitioner’s description, which we determine to be consistent with the level of skill reflected in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that we would reach the same conclusions under either proposed level of ordinary skill.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The term “mounted on” appears in several limitations of claim 1, including limitations 1.c, 1.d, and 1.e. The dispute between the parties, however, centers only on how the term should be construed in limitation 1.e, which recites “a contact bar mounted on the connection surface of the substrate” (Ex. 1001, 9:63–64) and only with respect to the Grounds involving Chen. Patent Owner does not dispute Petitioner’s contentions that Hsiao teaches a contact bar “mounted on” the connection surface of the substrate. See PO Resp. 42–55. For the reasons stated below, we determine Petitioner has not shown that Chen teaches certain other limitations of the independent claims regardless of whether it teaches “a contact bar mounted on the connection surface of the substrate.” See infra § II.D.2. Thus, it is not necessary to construe the term “mounted on” to resolve the dispute between the parties.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“2. Embedded to be Exposed Upon the Cover of the Contact Bar The only word in the phrase “embedded to be exposed upon the cover of the contact bar,” recited in claims 1, 12, and 18, that Petitioner offers a construction for is the word “embedded,” which Petitioner argues has no special meaning in the art and should be afforded its ordinary dictionary definition of “set firmly into a mass or material.” Pet. 26 (citing Ex. 1005 ¶ 111). Patent Owner does not dispute Petitioner’s construction. PO Resp. 34–35. We adopt Petitioner’s construction, which we find is supported by the evidence of record. Ex. 1005 ¶ 111.” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
“It is well established that when a party seeks to prove conception through an inventor’s testimony, the party must proffer independent evidence corroborating the inventor’s testimony. Cooper, 154 F.3d at 1330. To be “independent,” the corroborating evidence must be evidence other than the inventor’s testimony. In re NTP, Inc., 654 F.3d 1279, 1291 (Fed. Cir. 2011). The sufficiency of the proffered corroboration is determined by a “rule of reason” analysis in which all pertinent evidence is examined. See NTP, 654 F.3d at 1291. Even under the “rule of reason” analysis, however, the “evidence of corroboration must not depend solely on the inventor himself.” Cooper, 154 F.3d at 1321; see also Hahn v. Wong, 892 F.2d 1028, 1033 (Fed. Cir. 1989) (corroborating evidence must be “independent of information received from the inventor”).” slip op. at 16
Patent outcomesUS 8,705,243 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,705,243 - Western Digital Corporation / Western Digital Technologies, Inc. et al. v. Martin KusterSome claims unpatentablePTAB · Feb 10, 2022 · IPR2020-01391 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 11, 12, and 14–19 are unpatentable: claims 11 and 12 are anticipated by Hsiao, and claims 11 and 14–19 are obvious over He and Cheng or He, Cheng, and Hiller.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposed level of ordinary skill does not differ materially from that presented by Mr. Welch. Both require a bachelor’s degree in many of the same fields and roughly one to two years of experience with USB protocols or USB product development. The arguments presented by Petitioner and Patent Owner do not indicate that the outcome of this case would change depending on the level of ordinary skill in the art. We, therefore, adopt Petitioner’s description, which we determine to be consistent with the level of skill reflected in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that we would reach the same conclusions under either proposed level of ordinary skill.” slip op. at 8
- BurdenDecided for patent owner
“Proof of conception must be by “corroborating evidence which shows that the inventor disclosed to others his ‘completed thought expressed in such clear terms as to enable those skilled in the art’ to make the invention.” Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985) (citing Field v. Knowles, 183 F.2d 593, 601 (CCPA 1950)); see also Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996) (corroboration requirement “arose out of a concern that inventors testifying in patent infringement cases would be tempted to remember facts favorable to their case by the lure of protecting their patent or defeating another’s patent”). Similarly, an inventor’s testimony alone is insufficient to establish an earlier reduction to practice. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169–71 (Fed. Cir. 2006). Instead, a party seeking to prove an actual reduction to practice must proffer evidence corroborating that testimony. Id. at 1170. The sufficiency of corroboration is determined according to a “rule of reason.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993). This, however, does not dispense with the requirement that some independent evidence provide corroboration. Coleman, 754 F.2d at 360. The requirement of “independent” corroboration requires evidence other than the inventor’s testimony. In re NTP, Inc., 654 F.3d 1279, 1291–92 (Fed. Cir. 2011). 3. Discussion We find that Patent Owner has not met its burden of establishing that Mr. Kuster conceived and reduced to practice his invention prior to the filing dates of Hsiao or He. By itself, Mr. Kuster’s testimony is insufficient to establish that he reduced his invention to practice prior to the November 23, 2010, filing date or Hsiao or the June 2, 2010, filing date of He. “Throughout the history of the determination of patent rights, oral testimony by an alleged inventor asserting priority over a patentee’s rights is regarded with skepticism, and as a result, such inventor testimony must be supported by some type of corroborating evidence.” Woodland Tr. v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998) (quoting Price, 988 F.2d at 1194). Patent Owner has failed to provide sufficient independent evidence corroborating Mr. Kuster’s testimony.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We do not agree with this argument. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Moreover, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” so the fact that it would take some creativity to carry out the combination does not defeat a finding of obviousness. KSR, 550 U.S. at 421; see also ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016) (“The rationale of KSR does not support [the] theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B.”). We find there is support for making this combination of He and Cheng in the testimony of Dr. Baker that addition of a controller is “conventional” in USB flash drives. Baker Decl. ¶ 167. We find that for the reasons given by Dr. Baker, a person of ordinary skill would have added a controller to He. We determine that the combination of He and Cheng teaches each limitation of claim 11. We address Patent Owner’s argument that there are objective indicia of obviousness, infra. We conclude that Petitioner has demonstrated that claim 11 would have been obvious over He and Cheng.” slip op. at 37
- Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for patent owner
“attorney argument, not evidence.” Pet. Reply 26. We agree. Patent Owner does not back up its argument with testimony or other credible evidence. To demonstrate long-felt need, a patentee must point to an “articulated identified problem and evidence of efforts to solve that problem” which were, before the invention, unsuccessful. Tex. Instruments v. Int’l Trade Comm’n, 988 F.2d 1165, 1178 (Fed. Cir. 1993). All Patent Owner proves, if anything, is that after the USB 3.0 specification issued, a number of companies rushed in to provide contacts that met the new standard. Patent Owner does not demonstrate that they failed where Mr. Kuster succeeded. In fact, there is no evidence that Mr. Kuster ever commercialized his invention.8 8 Victorinox never paid for the work Mr. Kuster did on the USB 3.0 memory device, and to Mr. Kuster’s knowledge, never marketed the product. Kuster Dep. 22:21–24:13. Patent Owner contends “Mr. Kuster’s invention filled the existing need for a durable yet slim USB flash drive compatible with USB 3.0 that was easy to manufacture.” PO Resp. 77. But instead of presenting independent evidence of failure of the others to solve known technical or manufacturing problems, Patent Owner relies on generalized statements concerning the need for USB 3.0 connectors and solutions by others that Patent Owner contends have not been successful. PO Resp. 74–77. We are not persuaded by Patent Owner’s argument that Mr. Kuster’s alleged invention filled a long-felt need where others failed.” slip op. at 29
Patent outcomesUS 8,693,206 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,693,206
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.