- Samsung Display Co., Ltd. v. Pictiva Displays International Ltd.Some claims unpatentablePTAB · Jan 22, 2026 · IPR2024-01094 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1, 2, 6, and 8–14 are unpatentable as obvious over Ma; claims 3 and 4 were not shown unpatentable over Werner.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A person of ordinary skill in the art (“POSA”) at the time of the alleged invention of the ’223 patent would have had a university degree in chemistry and additional expertise or a second university degree in the field of electrical engineering, particularly optoelectronics, or alternatively a university degree in electrical engineering and additional expertise or a second university degree in the field of chemistry. The person of ordinary skill in the art has spent several years studying the structure and function of organic optoelectronic components, in particular OLEDs, and has detailed knowledge of the chemical structure of light-emitting organic layers and the transport of charge carriers to these layers. In this respect, the person of ordinary skill in the art works at the interface between electrical engineering/physics (charge carrier transport and light emission processes in optoelectronic components) and chemistry, in particular organic chemistry (materials and layer stack combinations suitable). Pet. 14 (citing Ex. 1003 ¶¶ 46–47). Patent Owner does not dispute Petitioner’s contention. See generally Resp. Neither party indicates that the result would change depending on the definition selected. We adopt Petitioner’s uncontested proposed definition, because it is consistent with the disclosures of the asserted prior art references. See Ex. 1005, (code 57); Ex. 1007, 8107 (abstracts of the references asserted in the patentability challenges).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under that standard, claim terms generally are given their plain and ordinary meaning as would have been understood by the ordinarily skilled artisan at the time of the invention and within the context of the entire patent disclosure. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party indicates that an express construction for any claim term is necessary to resolve the disputes at hand. Pet. 15; see generally Resp. On this record, we determine that no claim term requires express construction for purposes of this Decision. In our analysis of the challenges, however, we discuss the meaning of the terms “metal complex” and “central metal atom,” which appear in claim 1 (Ex. 1001, 19:19–20) to the extent necessary to resolve Patent Owner’s contention that Petitioner fails to establish that Ma invalidates claim 1. See Resp. 53, 56–58.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Whether Ma qualifies as a “printed publication” involves an inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). A reference is considered “publicly accessible” upon a satisfactory showing that the document has been “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence[] can locate it.” Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008); see Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 10– 11 (PTAB Dec. 20, 2019) (precedential).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Based on the information presented, we find Petitioner has the better position. Patent Owner admits that joint vaporization means “two materials vaporize together.” Reply 21 (quoting Resp. 54). As Petitioner argues, “This is what Ma discloses.” Id. We agree with Petitioner that Ma describes a “two-component” electron transport layer having a “thickness with one value.” Id.; see Ex. 1007, 811 (reporting a “co-deposited” application of “BPhen:LiQ” that is “50 nm thick”). Ma’s disclosure, thereby, strongly “indicates that the two components were vaporized together––as opposed to creating a ‘macroscopically homogenous form’” prepared by sequentially vaporizing the individual components as Patent Owner “hypothesizes.” Reply 21 (citing Ex. 1020 ¶¶ 42–44; Ex. 2041 ¶¶ 155–157); see Resp. 54– 55; see also Ex. 1007, 811 (Ma’s description of its device fabrication, appearing in the third paragraph of the experiments section). Petitioner further advances evidence that “[p]reparing a layer that is ‘macroscopically homogeneous’ but potentially microscopically heterogeneous,” as Patent Owner postulates, “would introduce excessive variability and render the data noncomparable and unreliable, thus undermining the experiment’s purpose.” Reply 21 (citing Ex. 1020 ¶ 44); see Resp. 54–55. Patent Owner presents no counterargument or evidence that is persuasive to undercut Petitioner’s reasoning or evidence on that point. See Sur-reply 19–22. Petitioner also argues that an ordinarily skilled artisan would have recognized “that vaporizing materials together would best achieve Ma’s objective of assessing the current density using different Liq doping percentages.” Reply 22 (citing Ex. 1007, 811; Ex. 1020 ¶ 51). Here again, Petitioner’s evidence on point stands uncontested. See Sur-reply 19–22 (declining to contest that point). On this record, therefore, we agree with Petitioner that, as to the relevant disclosure in Ma, “the most natural interpretation of ‘co-deposition’ for forming a layer, particularly when there is nothing to indicate that the materials” are “vaporized sequentially,” is that the materials are co-deposited by joint vaporization. Reply 22 (citing Ex. 1020 ¶ 46–51). We further agree that, “[u]nder a preponderance standard, Ma’s disclosures are sufficient to render joint vaporization at least obvious.” Id. For the above reasons, we determine that Petitioner demonstrates by a preponderance of the evidence that Ma discloses joint vaporization as required by the challenged claims.” slip op. at 15
Patent outcomesUS 8,558,223 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,558,223 - BMW Of North America, LLC / General Motors, LLC v. Arigna Technology Ltd.Some claims unpatentablePTAB · Feb 23, 2023 · IPR2022-00641 · APJ Garth D Baer · IPR · Final written decision
Claims 4, 6, and 7 are unpatentable: claim 4 is anticipated by Torii, and claim 6 is obvious over Torii and Hebinuma; claims 1–3, 5, 8, and 9 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“These formulations are similar. We adopt Petitioner’s description as it is consistent with the prior art and patent specification before us and 8 US 6,413,822 B2, Jul. 2, 2002 (Ex. 1033, “Williams99”). supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). However, our decision would be the same under either formulation.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. CLAIM CONSTRUCTION Petitioner and Patent Owner offer different constructions for a single claim term—“penetrating.” See PO Resp. 19; Pet. Reply 1. However, the parties’ differing constructions do not impact our unpatentability analysis. Therefore, we decline to construe this term. We find no claim terms require express construction to determine unpatentability. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Rather, as explained above, Petitioner relies on the top portion of Torii’s electrode 13 as the claimed source electrode, and the bottom portions as the claimed conductive portions. That is, even if Patent Owner is correct that the claimed source electrode and conductive portions must be distinct structures, that does not undermine Torii’s disclosure because Petitioner relies on distinct portions of Torii’s larger, single-hashed element labeled electrode 13. Because Petitioner does not rely on the same structure, i.e., the entire electrode 13 of Torii, for each of two distinct claim elements, our conclusion does not conflict with the Federal Circuit’s holding in Becton. See Becton, 616 F.3d at 1254 (holding that a single hinge structure could not be both the claimed spring means and the claimed separate hinged arm); id. at 1255 (noting that “[i]f the hinged arm and the spring means are one and the same, then the hinged arm must be ‘connected to’ itself,” which is “a physical impossibility”) (emphasis added). Instead, we agree with Petitioner that this case is more analogous to Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231–32 (Fed. Cir. 2011), where the court held the front half of a cutting box satisfied a “cutting box” limitation, and its rear half satisfied a separate “dust collection structure” limitation. See id.; Pet. Reply 3. Like Powell, which “divided the cutting box” into two portions that each met a single claim limitation, Petitioner argues that one portion of Torii’s electrode 13 (the top portion, colored red by Petitioner) discloses the source electrode, and the remaining portions of Torii’s electrode 13 (the bottom portions, colored pink by Petitioner) discloses the conductive portions. See Powell, 663 F.3d at 1231. In Powell, the claim required “[the] cutting box interior [to be] in fluid communication with [the] dust collection structure,” and the court found that this requirement did not require that the two elements “be wholly separate structures.” Id. at 1229, 1231–32. Similarly, we determine that the requirement that the source electrode and conductive portions are electrically connected does not require that these be wholly separate structures. For these reasons, we agree with Petitioner that together, the top portion of Torii’s electrode 13 discloses the source electrode and the bottom portions of Torii’s electrode 13 disclose the conductive portions recited in claim 4.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We agree with Petitioner that Hebinuma teaches the oval trenches recited in claim 6. See Ex. 1027, Fig. 9. In addition, we agree that Petitioner’s proposed combination would have been obvious because it amounts to no more than a simple substitution of one known element for another, i.e., Hebinuma’s elliptical trenches for Torii’s rectangular ones. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Thus, with the analysis outlined above, Petitioner has articulated sufficient reasoning with rational underpinning to support the legal conclusion that its proffered combination would have been obvious to one skilled in the art. See id. at 418. Patent Owner raises several arguments in contesting Petitioner’s obviousness challenge, none of which we find persuasive. For example, we disagree with Patent Owner that Torii and Hebinuma are not analogous art because a skilled artisan “would not have looked to Hebinuma to improve on Torii.” PO Resp. 72–76. The ’867 patent, Torii, and Hebinuma are all in the same field of “power semiconductor device[s] having a trench gate structure.” Ex. 1001, 1:5–8; Ex. 1027 ¶¶ 1–3; Ex. 1030 ¶¶ 1–4. Thus, Torii and Hebinuma are analogous to the ’867 patent. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). We also disagree with Patent Owner’s argument that one skilled in the art would not have had a reasonable expectation of success because Hebinuma’s oval-shaped trenches were “substantially more challenging” than Torii’s “well-known and well-studied” rectangular-trench solution. PO Resp. 77 (citing Ex. 2013 ¶¶ 128–130). Instead, we agree with Petitioner that one skilled in the art could reasonably expect success because the change “requires only minor changes to the photolithography mask” (Pet. 72; see Ex. 1002 ¶ 364), and because both Torii and Hebinuma expressly teach different trench shapes (see Ex. 1030 ¶ 116 (teaching that “the corner portion of the aperture . . . may be rounded”); Ex. 1027 ¶ 49 (teaching that “the contact trench Tc can be formed under similar conditions . . . with the exception of changing the patterning shape”)).” slip op. at 17
Patent outcomesUS 8,247,867 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Enfish · KSRPatents in suitUS 8,247,867 - BMW Of North America, LLC / General Motors, LLC v. Arigna Technology Ltd.Some claims unpatentablePTAB · Feb 23, 2023 · IPR2022-00631 · APJ Garth D Baer · IPR · Final written decision
Claims 4, 6, and 7 are unpatentable: claim 4 is anticipated by Torii, and claim 6 is obvious over Torii and Hebinuma; claims 1–3, 5, 8, and 9 were not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“petition in IPR2022-00631 (challenging the same claims of the ’867 patent on the same grounds), and a motion for joinder (seeking to join this proceeding as a petitioner). BMW of N. Am., LLC v. Arigna Tech. Ltd, IPR2022-00631 (PTAB Mar. 8, 2022), Papers 1, 2 (petition), 4 (motion for joinder). We granted institution in IPR2022-00631 and granted BMW’s motion for joinder. Paper 28 (PTAB Sept. 1, 2022). Similarly, General Motors LLC (“GM”) filed a petition in IPR2022-00641 (challenging the same claims of the ’867 patent on the same grounds), and a motion for joinder (seeking to join this proceeding as a petitioner). General Motors, LLC v. Arigna Tech. Ltd., IPR2022-00641 (PTAB Mar. 8, 2022), Papers 2 (petition), 3 (motion for joinder). We granted institution in IPR2022-00641 and granted GM’s motion for joinder. Paper 29 (PTAB Sept. 1, 2022). VW and Patent Owner then reached a settlement and this proceeding was terminated only as to VW. Paper 30 (PTAB Sept. 9, 2022). Accordingly, we refer to BMW and GM, collectively, as “Petitioner.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“These formulations are similar. We adopt Petitioner’s description as it is consistent with the prior art and patent specification before us and 8 US 6,413,822 B2, Jul. 2, 2002 (Ex. 1033, “Williams99”). supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). However, our decision would be the same under either formulation.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“B. CLAIM CONSTRUCTION Petitioner and Patent Owner offer different constructions for a single claim term—“penetrating.” See PO Resp. 19; Pet. Reply 1. However, the parties’ differing constructions do not impact our unpatentability analysis. Therefore, we decline to construe this term. We find no claim terms require express construction to determine unpatentability. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We disagree with Patent Owner’s argument because it mischaracterizes Petitioner’s reliance on Torii. Petitioner does not rely on a single structure as disclosing both the claimed source electrode and conductive portions. Rather, as explained above, Petitioner relies on the top portion of Torii’s electrode 13 as the claimed source electrode, and the bottom portions as the claimed conductive portions. That is, even if Patent Owner is correct that the claimed source electrode and conductive portions must be distinct structures, that does not undermine Torii’s disclosure because Petitioner relies on distinct portions of Torii’s larger, single-hashed element labeled electrode 13. Because Petitioner does not rely on the same structure, i.e., the entire electrode 13 of Torii, for each of two distinct claim elements, our conclusion does not conflict with the Federal Circuit’s holding in Becton. See Becton, 616 F.3d at 1254 (holding that a single hinge structure could not be both the claimed spring means and the claimed separate hinged arm); id. at 1255 (noting that “[i]f the hinged arm and the spring means are one and the same, then the hinged arm must be ‘connected to’ itself,” which is “a physical impossibility”) (emphasis added). Instead, we agree with Petitioner that this case is more analogous to Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231–32 (Fed. Cir. 2011), where the court held the front half of a cutting box satisfied a “cutting box” limitation, and its rear half satisfied a separate “dust collection structure” limitation. See id.; Pet. Reply 3. Like Powell, which “divided the cutting box” into two portions that each met a single claim limitation, Petitioner argues that one portion of Torii’s electrode 13 (the top portion, colored red by Petitioner) discloses the source electrode, and the remaining portions of Torii’s electrode 13 (the bottom portions, colored pink by Petitioner) discloses the conductive portions. See Powell, 663 F.3d at 1231. In Powell, the claim required “[the] cutting box interior [to be] in fluid communication with [the] dust collection structure,” and the court found that this requirement did not require that the two elements “be wholly separate structures.” Id. at 1229, 1231–32. Similarly, we determine that the requirement that the source electrode and conductive portions are electrically connected does not require that these be wholly separate structures.” slip op. at 13
Patent outcomesUS 8,247,867 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Enfish · KSRPatents in suitUS 8,247,867 - BMW Of North America, LLC / General Motors LLC v. Arigna Technology Ltd.Some claims unpatentablePTAB · Feb 23, 2023 · IPR2021-01321 · APJ Garth D Baer · IPR · Final written decision
Claims 4, 6, and 7 are unpatentable: claim 4 is anticipated by Torii, and claim 6 is obvious over Torii and Hebinuma; claims 1–3, 5, 8, and 9 were not proven unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“These formulations are similar. We adopt Petitioner’s description as it is consistent with the prior art and patent specification before us and 8 US 6,413,822 B2, Jul. 2, 2002 (Ex. 1033, “Williams99”). supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). However, our decision would be the same under either formulation.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“B. CLAIM CONSTRUCTION Petitioner and Patent Owner offer different constructions for a single claim term—“penetrating.” See PO Resp. 19; Pet. Reply 1. However, the parties’ differing constructions do not impact our unpatentability analysis. Therefore, we decline to construe this term. We find no claim terms require express construction to determine unpatentability. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Rather, as explained above, Petitioner relies on the top portion of Torii’s electrode 13 as the claimed source electrode, and the bottom portions as the claimed conductive portions. That is, even if Patent Owner is correct that the claimed source electrode and conductive portions must be distinct structures, that does not undermine Torii’s disclosure because Petitioner relies on distinct portions of Torii’s larger, single-hashed element labeled electrode 13. Because Petitioner does not rely on the same structure, i.e., the entire electrode 13 of Torii, for each of two distinct claim elements, our conclusion does not conflict with the Federal Circuit’s holding in Becton. See Becton, 616 F.3d at 1254 (holding that a single hinge structure could not be both the claimed spring means and the claimed separate hinged arm); id. at 1255 (noting that “[i]f the hinged arm and the spring means are one and the same, then the hinged arm must be ‘connected to’ itself,” which is “a physical impossibility”) (emphasis added). Instead, we agree with Petitioner that this case is more analogous to Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231–32 (Fed. Cir. 2011), where the court held the front half of a cutting box satisfied a “cutting box” limitation, and its rear half satisfied a separate “dust collection structure” limitation. See id.; Pet. Reply 3. Like Powell, which “divided the cutting box” into two portions that each met a single claim limitation, Petitioner argues that one portion of Torii’s electrode 13 (the top portion, colored red by Petitioner) discloses the source electrode, and the remaining portions of Torii’s electrode 13 (the bottom portions, colored pink by Petitioner) discloses the conductive portions. See Powell, 663 F.3d at 1231. In Powell, the claim required “[the] cutting box interior [to be] in fluid communication with [the] dust collection structure,” and the court found that this requirement did not require that the two elements “be wholly separate structures.” Id. at 1229, 1231–32. Similarly, we determine that the requirement that the source electrode and conductive portions are electrically connected does not require that these be wholly separate structures. For these reasons, we agree with Petitioner that together, the top portion of Torii’s electrode 13 discloses the source electrode and the bottom portions of Torii’s electrode 13 disclose the conductive portions recited in claim 4.” slip op. at 14
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Patent Owner raises several arguments in contesting Petitioner’s obviousness challenge, none of which we find persuasive. For example, we disagree with Patent Owner that Torii and Hebinuma are not analogous art because a skilled artisan “would not have looked to Hebinuma to improve on Torii.” PO Resp. 72–76. The ’867 patent, Torii, and Hebinuma are all in the same field of “power semiconductor device[s] having a trench gate structure.” Ex. 1001, 1:5–8; Ex. 1027 ¶¶ 1–3; Ex. 1030 ¶¶ 1–4. Thus, Torii and Hebinuma are analogous to the ’867 patent. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). We also disagree with Patent Owner’s argument that one skilled in the art would not have had a reasonable expectation of success because Hebinuma’s oval-shaped trenches were “substantially more challenging” than Torii’s “well-known and well-studied” rectangular-trench solution. PO Resp. 77 (citing Ex. 2013 ¶¶ 128–130). Instead, we agree with Petitioner that one skilled in the art could reasonably expect success because the change “requires only minor changes to the photolithography mask” (Pet. 72; see Ex. 1002 ¶ 364), and because both Torii and Hebinuma expressly teach different trench shapes (see Ex. 1030 ¶ 116 (teaching that “the corner portion of the aperture . . . may be rounded”); Ex. 1027 ¶ 49 (teaching that “the contact trench Tc can be formed under similar conditions . . . with the exception of changing the patterning shape”)).” slip op. at 18
Patent outcomesUS 8,247,867 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Enfish · KSRPatents in suitUS 8,247,867 - Cloudflare, Inc. / Splunk Inc. v. Sable Networks, Inc.Some claims unpatentablePTAB · Oct 18, 2022 · IPR2022-00228 · APJ Juliet Mitchell Dirba · IPR · Final written decision
Claims 3, 9–13, 19–24, 29–33, and 39–44 are unpatentable under §103; claims 17, 18, 37, and 38 are not shown unpatentable over Yung alone.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that the level of ordinary skill in the art corresponds to “an undergraduate degree (or equivalent) in electrical engineering, computer science, or comparable subject” and “3–5 years of academic or industry experience in computer networking or comparable industry experience.” Pet. 11 (citing Ex. 1003 ¶ 27). In the Institution Decision, we adopted this articulation of the level of ordinary skill. Inst. Dec. 15. At trial, neither party disputed our preliminary finding. See PO Resp.; Pet. Reply. We remain persuaded that this articulation of the level of skill in the art is supported by the ’593 patent, the asserted prior art, and Dr. Jeffay’s testimony. See Inst. Dec. 15 (citing Ex. 1003 ¶ 27). Accordingly, we determine that the level of ordinary skill in the art corresponds to an undergraduate degree (or equivalent) in electrical engineering, computer science, or comparable subject and 3–5 years of academic or industry experience in computer networking or comparable industry experience.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“1. Means-plus-function limitations Petitioner contends the challenged claims include means-plus-function limitations that should be interpreted under 35 U.S.C. § 112 ¶ 6, and for each, Petitioner identifies a construction for use in this proceeding. Pet. 11– 14.12 Petitioner submits that no other terms require construction for purposes of this proceeding. Id. at 12. In the Institution Decision, we agreed with Petitioner that the identified limitations are means-plus-function limitations. Inst. Dec. 16 (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) (holding that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies”)). We also stated that we were persuaded that Petitioner had correctly identified the recited functions and the components in the Specification that perform those functions. Id. at 16– 17. As a result, we preliminarily adopted the following constructions: Limitation” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“Instead, Patent Owner points to the Specification, but this also fails to support Patent Owner’s contention. Although claims are read in view of the Specification (Phillips, 415 F.3d at 1315), they are not limited to the embodiments disclosed in it (id. at 1323). Patent Owner identifies (and we perceive) no passage in the Specification that could be read as redefining this claim phrase or disavowing part of its scope. See Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365, 1367 (Fed. Cir. 2012). In fact, the passages cited by Patent Owner are directed to the handling of a single flow, and none expressly indicates that an identical method must be used for each flow processed. See Ex. 1001, 6:25–31, 7:51–52, 8:12–17. Thus, we determine that the Specification does not justify importing the limitation proposed by Patent Owner into the claims. Accordingly, having reviewed the intrinsic record, we disagree with Patent Owner’s contention that claims 9 and 29 require computing a badness factor for each flow or all flows; rather, this claim limitation may be satisfied by computing a badness factor for a single flow.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“3. Other constructions The parties do not propose constructions for any other terms or phrases. See Pet. 11–14; PO Resp. Based on the record before us, we do not find it necessary to provide express claim constructions for any other terms or phrases. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
Patent outcomesUS 8,243,593 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,243,593 - Cloudflare, Inc. / Splunk Inc. v. Sable Networks, Inc.Some claims unpatentablePTAB · Oct 18, 2022 · IPR2021-00909 · APJ Juliet Mitchell Dirba · IPR · Final written decision
Claims 3, 9–13, 19–24, 29–33, and 39–44 are unpatentable under § 103; claims 17, 18, 37, and 38 were not shown unpatentable over Yung.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that the level of ordinary skill in the art corresponds to “an undergraduate degree (or equivalent) in electrical engineering, computer science, or comparable subject” and “3–5 years of academic or industry experience in computer networking or comparable industry experience.” Pet. 11 (citing Ex. 1003 ¶ 27). In the Institution Decision, we adopted this articulation of the level of ordinary skill. Inst. Dec. 15. At trial, neither party disputed our preliminary finding. See PO Resp.; Pet. Reply. We remain persuaded that this articulation of the level of skill in the art is supported by the ’593 patent, the asserted prior art, and Dr. Jeffay’s testimony. See Inst. Dec. 15 (citing Ex. 1003 ¶ 27). Accordingly, we determine that the level of ordinary skill in the art corresponds to an undergraduate degree (or equivalent) in electrical engineering, computer science, or comparable subject and 3–5 years of academic or industry experience in computer networking or comparable industry experience.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“1. Means-plus-function limitations Petitioner contends the challenged claims include means-plus-function limitations that should be interpreted under 35 U.S.C. § 112 ¶ 6, and for each, Petitioner identifies a construction for use in this proceeding. Pet. 11– 14.12 Petitioner submits that no other terms require construction for purposes of this proceeding. Id. at 12. In the Institution Decision, we agreed with Petitioner that the identified limitations are means-plus-function limitations. Inst. Dec. 16 (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) (holding that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies”)). We also stated that we were persuaded that Petitioner had correctly identified the recited functions and the components in the Specification that perform those functions. Id. at 16– 17. As a result, we preliminarily adopted the following constructions: Limitation” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for patent owner
“In particular, claim 9 recites a method for processing a flow that includes computing a badness factor for the flow. Ex. 1001, 11:63–8. Patent Owner identifies (and we perceive) no limitation that requires a badness factor to be computed for each flow. Inst. Dec. 44 (addressing substantially similar argument presented in preliminary response); see also Ex. 1001, 13:32–44 (claim 29). During trial, Patent Owner neither responds to this analysis nor points to a claim limitation that allegedly includes this requirement. Instead, Patent Owner points to the Specification, but this also fails to support Patent Owner’s contention. Although claims are read in view of the Specification (Phillips, 415 F.3d at 1315), they are not limited to the embodiments disclosed in it (id. at 1323). Patent Owner identifies (and we perceive) no passage in the Specification that could be read as redefining this claim phrase or disavowing part of its scope. See Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365, 1367 (Fed. Cir. 2012). In fact, the passages cited by Patent Owner are directed to the handling of a single flow, and none expressly indicates that an identical method must be used for each flow processed. See Ex. 1001, 6:25–31, 7:51–52, 8:12–17. Thus, we determine that the Specification does not justify importing the limitation proposed by Patent Owner into the claims. Accordingly, having reviewed the intrinsic record, we disagree with Patent Owner’s contention that claims 9 and 29 require computing a badness factor for each flow or all flows; rather, this claim limitation may be satisfied by computing a badness factor for a single flow.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Having considered the parties’ arguments and evidence, we are persuaded that Copeland discloses this limitation. Copeland analyzes a flow’s statistics (including start time, end time, number of bytes, and number of packets) “to determine if the flow appears to be legitimate traffic or possible suspicious activity” and computes a concern index for the flow if it appears suspicious. E.g., Ex. 1007, 3:31–35, 7:38–67, 16:36–17:5. We find that Copeland’s concern index qualifies as a “badness factor for the flow . . . [that] provides an indication of whether the flow is exhibiting undesirable behavior,” as required by claim 9. E.g., Ex. 1007, 3:31–40, 4:30–33, Fig. 1 (identifying “‘bad’ flow(s)”). As Dr. Jeffay explains, an ordinary artisan would have understood that suspicious activity (such as a probe or network attack) is undesirable behavior. Ex. 1003 ¶¶ 211–212. We also find that Copeland teaches computing a concern index “based at least partially upon the set of behavioral statistics” because, for example, it uses the number of packets to compute the concern index. Ex. 1007, 7:64–67, Fig. 6 (setting concern index to number of packets); see also Ex. 1003 ¶ 213.” slip op. at 22
Patent outcomesUS 8,243,593 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,243,593 - Xactware Solutions, Inc. v. Eagle View Technologies, Inc.Some claims unpatentablePTAB · Aug 14, 2017 · IPR2016-00591 · APJ Garth D Baer · IPR · Final written decision
Claims 1, 3, 6, 9, 12-14, 16, 19, 22, and 23 are unpatentable as anticipated by Avrahami; claims 10, 15, and 25 were not shown obvious.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. Avrahami describes its algorithm as providing “for semi-automatic 3D spatial polygon extraction from a pair of colored aerial images with a known external model solution.” Ex. 1004, 43 (emphasis added). Avrahami touts that one of the advantages of its system is that “the operator can identify at a glance which buildings can be mapped by this method so as to combine it with traditional manual extraction or other semi-automatic method.” Id. at 48 (emphasis added). Further to this point, Figure 1 shows a side-by-side comparison of the images in the pair. See id. at Fig. 1 (displaying left and right polygons going through Avrahami’s iterative matching process). Further, we credit the testimony from Petitioner’s Expert, Mr. Schuch, that one skilled in the art would understand Avrahami’s images to be what “you see . . . on a computer screen” as “part of the production.” Ex. 2017, 69:20–21; see also id. at 71:2–4 (explaining that “[t]his is an actual production image”). Therefore, we find that Petitioner has proffered sufficient evidence that Avrahami discloses the disputed limitation.” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner
“We are persuaded by Patent Owner’s extensive evidence of nexus between its Render House and Twister products and the challenged claims. Patent Owner steps through each challenged claim on an element-by-element basis and directs us to images and specific passages from its Render House and Twister user guides that it argues embody the limitations of each challenged claim. PO. Resp. 50–58. Patent Owner also supports its assertion of nexus with testimony in the form of a Declaration from Dr. Chandrajit L. Bajaj that includes a claim chart detailing where each limitation of the challenged claim is found in its Twister and Render House products. Ex. 2010, 44–91.5 The Federal Circuit has held that “if the marketed product embodies the claimed features, and is coextensive with them, then a nexus is presumed and the burden shifts to the party asserting obviousness to present evidence to rebut the presumed nexus.” Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). Patent Owner has put forth sufficient evidence to show that its Twister and Render House products embody the elements of the challenged claims and thus, we look to Petitioner to rebut this presumed nexus and acknowledge that the presumption “cannot be rebutted with mere argument; evidence must be put” slip op. at 17
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia with nexusDecided for patent owner
“with the purportedly unique characteristics of the claimed invention and that for which there is alleged commercial success.” Reply 23–24. Our reviewing court has held that for evidence of commercial success to be relevant, “the patentee must establish a nexus between the evidence of commercial success and the patented invention.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010). As noted above, however, Patent Owner has provided extensive evidence that the Twister and Render House products are coextensive with claims 10, 15, and 25 and that the reports sold were created using the Twister and Render House products. Thus, we are persuaded that nexus exists between the challenged claims and the commercially successful products at issue. Petitioner also asserts that “Patent Owner has failed to make any showing as to market share, thus rendering their sales figures irrelevant and not adequately defined.” Reply 24. Patent Owner provided unrebutted evidence that “approximately 96 percent of the top 25 insurance carriers rely on [Eagle View Technologies 3D aerial roof measurement reports] in their claims departments.” Ex. 2020, 1; see also Ex. 2029, 8 (Verisk Analytics presentation noting that 24 of top 25 insurance companies and 30,000 contractors are Eagle View customers). In addition, Patent Owner’s evidence shows that its products are used by “about one-fifth of the roofing contractor market, according to an estimate by market researcher IbisWorld.” Ex. 2024. Patent Owner’s financial reports show both that it sold a significant number of roofing reports and that its sales grew significantly between 2009 and 2015. See PO Resp. 60–61. We find that this information, taken together with statement from others in the industry (see Ex. 2029) gives us a view of Patent Owner’s place in the relevant market and persuades us that Patent Owner’s Twister and Render House products experienced significant commercial success and wide-spread use in the industry.” slip op. at 20
- Obviousness (§103) › Objective indicia / secondary considerations › Skepticism / industry praiseDecided for patent owner
“iii. Industry Praise Praise from industry participants, especially competitors, is probative as to obviousness because such participants “are not likely to praise an obvious advance over the known art. Thus, if there is evidence of industry praise of the claimed invention in the record, it weighs in favor of the non-obviousness of the claimed invention.” Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1053 (Fed. Cir. 2016). Petitioner described Patent Owner’s products as “[u]sing aerial photography and patent-pending software [to] accurately calculate[] measurements for the roof’s ridges, rafters, valleys, slopes and more.” Ex. 2021, 1. Petitioner further noted that the “process saves contractors and roofers hours of time spent measuring and scoping a roof.” Id.” slip op. at 23
Patent outcomesUS 8,209,152 mixed§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,209,152 - Advanced Micro Devices, Inc. v. LG Electronics Inc.Some claims unpatentablePTAB · Dec 27, 2016 · IPR2015-01409 · APJ Garth D Baer · IPR · Final written decision
Claims 4, 8, and 9 are unpatentable under § 103; claim 30 was not shown unpatentable because the prior art did not teach shutdown based on total processor use below a threshold.
RulingsFinal written decision- BurdenOther
“III. ANALYSIS A. PRINCIPLES OF LAW Petitioner bears the burden of proving unpatentability of the challenged claims, and that burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must establish the facts supporting its challenge by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).” slip op. at 7
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Public accessibility” is the touchstone in determining whether a reference is a “printed publication.” In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). A reference is publicly accessible upon a satisfactory showing that such document has been made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it. Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)). slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b). We presume a claim term carries its “ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question” at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We construe only those claim terms necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for patent owner
“We decline to disregard all of Mr. Gafford’s testimony. In light of Mr. Gafford’s education and experience (a Bachelor of Science Degree in Electrical Engineering and over 43 years working for corporations in the design, manufacturing, and support for computer systems and microprocessors, see Ex. 1011 ¶¶ 14–20), we see no reason why Mr. Gafford’s frequent participation in other cases—even to ultimately mixed results—makes his testimony here unhelpful in understanding the evidence in this case. See Fed. R. Evid. 702(a). In assessing the merits of this case, we have considered the proffered testimony from Mr. Gafford, as well as Patent Owner’s Declarant Dr. Friedman, and accorded weight based on the testimony’s substantive persuasiveness.” slip op. at 29
Patent outcomesUS 7,636,863 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,636,863
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.