- Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentablePTAB · Sep 28, 2023 · IPR2023-00123 · APJ Brian D Range · IPR · Final written decision
Claims 21–40, 42–44, 47–49, 52–53, 56–59, 62–63, 65–68, 71–73, 77–78, 81–82, and 85–91 are unpatentable over Begemann, Krames, and Allen; claim 41 was not shown unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 21 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52. One requirement of this apparatus is that it comprise “at least one semiconductor chip” (id. at 10:1) where the “at least one semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts.” Id. at EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction of “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as meaning “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 54 (quoting Ex. 1008, 10). Notably, claim 21 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 12
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“The facts above are evidence of the Krames reference’s publication as of June 29, 2000, because the facts tend to make the Krames reference’s publication as of June 29, 2000, more probable than it would be without the facts. See Fed. R. Evid. 401(a) (defining evidence as relevant “if it has any tendency to make a fact more or less probable than it would be without the 13 We note that Dr. Lebby does not directly state when the Proceedings were widely available. See Sur-Reply 14. evidence”). The evidence is sufficient to support publication. Meanwhile, no evidence of record suggests that Krames was not a printed publication as of June 29, 2000. Thus, a preponderance of the evidence supports Krames’s prior art status. Patent Owner argues that Ms. Watters “never establishes a firm date when Krames was purportedly available to the relevant public.” Resp. 25. Patent Owner bases this argument by taking a tortured reading of Ms. Watters’s statement that “[m]embers of the interested public could locate a copy of [the Proceedings] on or after June 29, 2000, the date it was catalogued.” Id. (quoting Ex. 1020, 3); see also Sur-Reply 13–14. The best understanding of Ms. Watters’s statement, in view of the context of Ms. Watters explaining the library’s cataloguing process, is that a member of the interested public had two options: the person could choose to locate the Proceedings on June 29, 2000, or the person could choose to locate the Proceedings after June 29, 2000. Thus, the statement supports public availability as of June 29, 2000.” slip op. at 25
Patent outcomesUS 6,465,961 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,465,961 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentablePTAB · Sep 28, 2023 · IPR2022-00847 · APJ Brian D Range · IPR · Final written decision
Claims 21, 22, 25, 26, 28–30, 32–36, 40, 42–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 are unpatentable over Begemann, Krames, and Allen; claim 41 is …
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Patent Owner’s argument is unpersuasive because the Krames declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 21 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52. One requirement of this apparatus is that it comprise “at least one semiconductor chip” (id. at 10:1) where the “at least one semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts.” Id. at EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction of “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as meaning “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 54 (quoting Ex. 1008, 10). Notably, claim 21 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 12
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“It is unnecessary to construe any other claim terms in this Decision because none of the parties’ disputes turn on the meaning of other claim terms. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 22
Patent outcomesUS 6,465,961 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,465,961 - Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentablePTAB · 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 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,633,304 - Linkedin Corporation v. Ebuddy Technologies B.V.No claims unpatentablePTAB · Jun 30, 2023 · IPR2022-00164 · APJ Jason M Repko · IPR · Final written decision
LinkedIn did not prove claims 1–3 and 6–10 unpatentable on any asserted Eaton- or Kim-based anticipation or obviousness ground.
RulingsFinal written decision- ExcludeOther
“In its Motion to Exclude, Patent Owner seeks to exclude Petitioner’s Exhibits 1017–1020, 1022–1026, 1030, 1032, 1033, 1034, and 1036. Mot. 1. Even without excluding any of these exhibits, Petitioner has not proven that any challenged claims are unpatentable. Thus, we dismiss Patent Owner’s Substitute Motion to Exclude as moot.” slip op. at 36
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s alternative definition that “a PHOSITA[3] would possess equivalent additional formal education such as graduate studies, or work experience to replace formal education” is unclear or, at best, does not meaningfully contribute to the first definition. See id. For example, Petitioner does not explain whether or how additional graduate studies would be both equivalent and additional to the education described in the first definition. See id. Patent Owner does not propose an alternative definition. See generally PO Resp.; Sur-reply. Thus, in this decision, we apply Petitioner’s proposed definition, without the alternative qualifier about “equivalent additional formal education . . . or work experience.” See Pet. 6. We determine that Petitioner’s definition is supported by the testimony of Dean Willis. Ex. 1004 ¶¶ 32–35.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We need only construe terms that are in controversy and only to the extent necessary to resolve the dispute. 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)). We need not construe any terms to resolve the issues in this case.” slip op. at 6
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“We credit Dr. Rajeev Surati’s testimony6 (Ex. 2020 ¶ 2053) on this issue over Dean Willis’s testimony (Ex. 1004 ¶¶ 211–13) because Dr. Rajeev Surati’s testimony is more consistent with Kim’s disclosure and Dean Willis’s Declaration lacks an adequate explanation. Thus, Petitioner has not shown that Kim discloses the associating step.” slip op. at 16
Patent outcomesUS 8,230,135 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,230,135 - Linkedin Corporation v. Ebuddy Technologies B.V.No claims unpatentablePTAB · Jun 30, 2023 · IPR2022-00165 · APJ Jameson Lee · IPR · Final written decision
Claims 1–3 and 6–10 were not shown unpatentable because Eaton and Kim each failed to disclose the claimed array and alternative-title limitations, and the obviousness grounds did not cure those deficiencies.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“alternative” or “alternative title.” Neither party contends that “alternative” or “alternative title” is a term of art with an art recognized meaning. In plain English, “alternative” as an adjective designates something that is another option, another choice. Dictionary.com (accessed June 23, 2022), https://www.dictionary.com/browse/alternative (Ex. 3002) (“affording a choice of two or more things, propositions, or courses of action,” “(of two things, propositions, or courses) mutually exclusive so that if one is chosen the other must be rejected: The alternative possibilities are neutrality and war.”). The specification of the ’179 patent also consistently uses the word “alternative” to mean something in lieu of or in place of another choice. For instance, the ’179 patent describes: Advantageously, data associated with the event can also (or in the alternative) be provided to the title provisioning engine 616. Ex. 1001, 8:15–17 (distinguishing “also” from “alternative”). A given event may cause the title provisioning engine 616 to rewrite the entire title array 618 with title strings associated with the most recent events. Alternatively, a given event may cause the title provisioning engine 616 to append title strings to the end of the title array 618. Id. at 8:24–28 (using “alternative” in mutually exclusive context). slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“During oral hearing, counsel for Petitioner clarified that the index to an array may start from “0” rather than “1” and that the index also need not be a number. Tr. 18:13–19:19. With that clarification, counsel for Patent Owner indicated that there no longer is any dispute with regard to the meaning of “array.” Tr. 61:14–25. Accordingly, we have no need to construe the term “array.” 4. “event” The term “event” is recited in independent claim 1. The specification” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“reproduced above, are “event messages / strings 300 (shaded in green).” Pet. 30 (citing Ex. 1006 ¶ 31). But the cited evidence does not support that assertion. Paragraph 31 of Eaton describes the referenced column simply as “associated event 300.” Ex. 1006 ¶ 31. Further, even if the column stores associated event messages, Petitioner cites nothing to show that the associated messages in server memory column 300 are the event presence notification messages discussed above in the context of limitation 1[ii]. Alternatively, Petitioner relies on Eaton’s Figure 6 embodiment. Pet. 31. Petitioner asserts (id.) that in the Figure 6 embodiment server memory 160 stores an array of event notifications, referencing an annotated version of Eaton’s Figure 6, reproduced below: Figure 6 is a block diagram of an alternate embodiment of a server memory for use within a server of the instant message communication system, and Petitioner has shaded the EVENT AN–NN column green and the words “SERVER MEMORY” red. Ex. 1006 ¶ 19. Petitioner asserts that both the TOPIC N column 540 and the EVENT AN-NN column 670 as the stored event notifications. Pet. 31 (citing Ex. 1006 ¶¶ 56–58). But the assertion is not supported by the cited evidence. Paragraphs 56–58 of Eaton do not indicate that either topic entries 540 or event entries 670 are the event presence notification messages discussed above in the context of limitation 1[ii]. In its Reply, Petitioner asserts that event presence notification message EPNM “is associated with the character strings labelled Topics [1]- [N], and using ‘Topic N’ as the example, it is tied to ‘Event[s] AN-NN’ (representing the ‘events’ from the plurality of events 180 discussed in Claim 1[i]).” Reply 22. Even assuming that there is an association, Petitioner still has not shown that EPNM is any of Topics [1]-[N] in Figure 6. Similarly, Petitioner has not shown that EPNM is any of Event [1]-[N] in Figure 2.” slip op. at 26
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“’179 Patent as provided above in Ground 1. To the extent that there are arguably any meaningful differences between those claims and Eaton’s disclosures, those differences would have been trivial and obvious modifications to make for a PHOSITA.” Pet. 49. This conclusory assertion of obviousness does not specifically identify any difference between the claimed invention and Eaton, and does not provide any reasoning or rational underpinning to support the assertion. Conclusory assertions of obviousness are insufficient to satisfy Petitioner’s burden of proof. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Petitioner asserts that to the extent that Eaton discloses various, “distinct” embodiments, it would have been obvious to one with ordinary skill in the art to combine Eaton’s teachings into a single system. Pet. 49. Petitioner also asserts that one with ordinary skill in the art “would understand that Eaton discloses possible configurations and/or operations of the same system, and to the extent that it is argued or found otherwise, the functions would have been entirely obvious to combine for [one of ordinary skill in the art] given Eaton’s express disclosures.” Id. It is uncertain what distinct embodiments are referred to by Petitioner. However, even assuming that the disclosures of Eaton’s embodiments, already discussed by Petitioner, are properly combinable, there still remains the deficiencies, discussed above in the alleged anticipation of claim 1 by Eaton, relating to the step of storing the event notification in an array, the step of providing the event notification from the array to a process executed by a processor, and the step of providing an alternative title from the array to the process. Accord Inst. Dec. 57.” slip op. at 33
Patent outcomesUS 8,402,179 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,402,179 - 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 · GrahamPatents in suitUS 6,465,961 - 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 · GrahamPatents in suitUS 6,465,961 - Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentablePTAB · 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 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,195,932 - Microsoft Corporation v. Throughputer, Inc.Institution deniedPTAB · May 31, 2023 · IPR2022-01566 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were unpatentable over grounds relying on Tuan, which was not shown to be a printed publication.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“Id. ¶ 11; see id. at pp. 22–30 (Appendix TUAN01). Ms. Munford does not otherwise address Tuan, and Ms. Munford’s conclusory assertion that Tuan “was made available to the public” (id. ¶ 11) is insufficient. As our reviewing court has explained, it is “critical” that there be “some evidence that a person of ordinary skill could have reasonably found” the reference. Samsung, 929 F.3d at 1369; see also id. at 1372 (stating that a reference “is not publicly accessible if the only people who know how to find it are the ones who created it”). In other words, even assuming that Ms. Munford establishes Tuan was technically available to the public in October 2009, her testimony fails to support a finding that an ordinary artisan could have located Tuan with reasonable diligence.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“identify, with particularity, evidence sufficient to establish a reasonable likelihood that Tuan was publicly accessible before the critical date. See Hulu, IPR2018-01039, Paper 29 at 13. As a result, we determine that Petitioner fails to show a reasonable likelihood that Tuan qualifies as a printed publication. See id. Each of the grounds presented in the Petition relies on a combination of Kupferschmidt and Tuan (Pet. 2), so we determine that Petitioner has not shown a reasonable likelihood that it will prevail with respect to its assertions that claims 1–8 would have been unpatentable over the proposed combinations of Kupferschmidt and Tuan. As a consequence, we do not institute an inter partes review.” slip op. at 16
§ 102 anticipationcites KSR · GrahamPatents in suitUS 11,036,556 - PTAB · May 31, 2023 · IPR2023-00171 · APJ Gregg I Anderson · IPR · Institution
The Board instituted inter partes review of claims 1–5, 7–9, 14, and 20 on all asserted grounds, finding a reasonable likelihood that at least claim 1 is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/ default/files/documents/interim_proc_discretionary_denials_aia_parallel_ district_court_litigation_memo_20220621_.pdf (the “Interim Procedure”). The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. In this proceeding, Petitioner stipulates that “it will not pursue an invalidity defense in the parallel district court action based on the same grounds as in this petition or any grounds that could have reasonably been raised before the PTAB.” Pet. Prelim. Reply 1. Petitioner asserts that its stipulation is the same as the one in Sotera. Id. at 1–2. Patent Owner does not dispute that Petitioner adopts the identical stipulation from Sotera but argues it “cannot cure the fact that [Fintiv] Factors 2, 3, 5 and 6 all remain heavily in favor of denying institution.” See PO Prelim. Sur-Reply 3. factors help the Board assess the potential for conflicting decisions and duplicative efforts when there is a PTAB proceeding held in parallel to district-court litigation. See Interim Procedure 1–2. But here, Petitioner’s Sotera stipulation ensures the grounds that the Board resolves will differ from those considered in the parallel district-court litigation. See id. at 7–8. This eliminates the potential for conflicting decisions and duplicative efforts. See id. Thus, in light of Petitioner’s stipulation, we decline to deny institution under Fintiv. Id. at 3.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“V. CONCLUSION As explained above, we determine that Petitioner has established a reasonable likelihood of prevailing in its challenge to at least claim 1 of the ’130 patent. Thus, we institute an inter partes review of all challenged claims on all asserted grounds. VI. ORDER In consideration of the foregoing, it is hereby: ORDERED that inter partes review is instituted with respect to all claims and all grounds of unpatentability raised in the Petition;” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention of the ’130 patent “would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of wireless communication technology.” Pet. 5 (citing Ex. 1003 ¶ 23). Patent Owner does not propose a level of ordinary skill. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill because we are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’130 patent.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Declaration, Exhibit 1002, in part because the Declaration merely copies the Petition. Prelim. Resp. 22. This argument finds support in our recent decision in Xerox. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (August 24, 2022) (precedential). In Xerox, we denied institution and held a declaration is entitled to little weight when it contains an exact restatement of the petition’s conclusory arguments without any additional supporting evidence or reasoning. Although we agree that the Petition and supporting evidence or reasoning. For the reasons explained below, at this stage, we are persuaded that the Petition and Ding Declaration are sufficiently supported by the disclosures from Kwak. The weight given to the Ding Declaration is not dispositive for any disputed issue.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,736,130
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.