- Infineon Technologies AG v. Arigna Technology Ltd.No claims unpatentablePTAB · Feb 15, 2023 · IPR2021-01382 · APJ Garth D Baer · IPR · Final written decision
Claims 8 and 9 were not shown unpatentable because Fujii did not disclose the claimed range, and the claimed range was critical over Inagawa and Hebert.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“person with a master’s degree in electrical engineering (or a related degree) and at least three to five years of experience in the area of miniaturization, optimization, and fabrication processes of semiconductor devices used in integrated circuits.” Pet. 8. Further, “[a] person with less education, but more relevant practical experience, is also a person of ordinary skill in the art.” Id. Patent Owner does not provide a description of the person of ordinary skill. See PO Resp. 18. Petitioner’s description is consistent with the prior art and patent specification before us and is 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). We adopt Petitioner’s description.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. CLAIM CONSTRUCTION We determine we need not explicitly construe any terms to determine unpatentability. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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 5
- Obviousness (§103) › KSR rationalesNot shown unpatentableNot shown unpatentable
“As the court in E.I. DuPont recognized, an overlapping range in the prior art is sufficient for obviousness “in the absence of evidence indicating that there is something special or critical about the claimed range.” E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1008 (Fed. Cir. 2018). Petitioner asserts Patent Owner “failed to present such [criticality] evidence.” Pet. Reply 1–2. We disagree. Instead, we agree with Patent Owner that the claimed 10–40 nm range is critical (and thus not obvious) because it “provide[s] an optimal balance between cell size and short circuit defect rate.” PO. Resp. 63. This criticality is reflected in the ’867 patent’s Figure 8, which shows that dimensions below 10 nm result in significant increases in short-circuit defect rate, while dimensions above 40 nm undesirably increase size without further reducing short-circuit defect rate. Ex. 1001, 11:20–32, Fig. 8.” slip op. at 9
- Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsObjective indicia with nexusDecided for patent owner
“prior art is sufficient for obviousness “in the absence of evidence indicating that there is something special or critical about the claimed range.” E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1008 (Fed. Cir. 2018). Petitioner asserts Patent Owner “failed to present such [criticality] evidence.” Pet. Reply 1–2. We disagree. Instead, we agree with Patent Owner that the claimed 10–40 nm range is critical (and thus not obvious) because it “provide[s] an optimal balance between cell size and short circuit defect rate.” PO. Resp. 63. This criticality is reflected in the ’867 patent’s Figure 8, which shows that dimensions below 10 nm result in significant increases in short-circuit defect rate, while dimensions above 40 nm undesirably increase size without further reducing short-circuit defect rate. Ex. 1001, 11:20–32, Fig. 8.” slip op. at 9
Patent outcomesUS 8,247,867 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,247,867 - Netflix, Inc. v. Realtime Adaptive Streaming LLCNo claims unpatentablePTAB · Jan 14, 2020 · IPR2018-01227 · APJ Gregg I Anderson · IPR · Final written decision
Claims 1–19 were not determined unpatentable because Netflix failed to prove anticipation by Tian or obviousness over the asserted combinations.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“multiple embodiments Petitioner cites to support the Petition or to find that they are combinable. Kennametal and Blue Calypso reach a different result from Net MoneyIN on distinguishable facts. Blue Calypso relied on “key factors” absent from Net MoneyIn, including expert testimony that a person of ordinary skill would have understood the reference to disclose “the ability to combine the tools to arrive at the invention recited.” Blue Calypso, 815 F.3d at 1343. No such expert testimony is present here. Kennametal held that a reference must be “sufficiently clear in disclosing the combinability” of elements “such that a skilled artisan would ‘at once envisage’ the claimed combination.” Chamberlain Grp., Inc. v. Techtronic Indus. Co., 935 F.3d 1341, 1350 (Fed. Cir. 2019). We find that Tian is not sufficiently clear that the artisan would at once envisage the combinability of the embodiments disclosed. Indeed, Tian is lengthy and unclear in its description of the various “embodiments,” “applications,” and “implementations.” We credit the Zeger Declaration testimony that Tian discloses multiple different systems “often in a very confusing and complicated manner.” See Ex. 2001 ¶¶ 75– embodiments disclosed in Tian is indeterminate but is a “large number.” Id. ¶ 74; see also Ex. 2002, 42:2–15 (Storer Deposition testimony that “Tian uses the word ‘embodiment’ in many places, in many different ways”). The Zeger testimony is not countered by any testimony from Dr. Storer from either of his declarations or in his deposition. Neither the First nor Second Storer Declaration discusses the embodiment issue at all. The Second Storer Declaration, submitted after the Zeger Declaration, makes no mention of Tian. There is no expert testimony supporting Petitioner’s position that the teachings are combinable. See Blue Calypso, 815 F.3d at 1343 (distinguishing over Net MoneyIn because of expert testimony). Petitioner’s showing requires combining multiple embodiments of Tian without any showing that they would have been combinable or that a person of ordinary skill would immediately envisage they would have been combinable. In sum, in light of Petitioner’s reliance on multiple embodiments of Tian, Petitioner has not established, by a preponderance of the evidence, that Tian anticipates claim 1. 3. “decoding only that part of the composite frame (FC) which contains” slip op. at 16
- Skill levelSkill level petitioner adoptedOther
“Petitioner alleges a person of ordinary skill in the art would have a bachelor’s degree in electrical engineering, computer science, or a similar field with at least two years of experience in data compression or a person with a master’s degree in electrical engineering, computer science, or a similar field with a specialization in data compression. Ex. 1003 at ¶60. A POSITA would also have had experience with video reproduction systems. Id. A person with less education but more relevant practical experience may also meet this standard. Id. Pet. 11. Patent Owner adopts Petitioner’s proposed level of ordinary skill. PO Resp. 10 (citing Ex. 2001 ¶ 29). We find Petitioner’s proposed level of ordinary skill is applicable to the ’298 patent.” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Neither party’s arguments require us to deviate from the plain and ordinary meaning of “determining the area.” We find that the plain and ordinary meaning of “determining the area” requires identifying one of two frames, the recited “said one image” of limitation 1.e. Once an image is identified, the Specification describes how to determine “the region occupied by one of the two stereoscopic images” and that metadata is used to “determine such areas.” Ex. 1001, 4:17–30; see also PO Resp. 52–53 (citing Ex. 2001 ¶¶ 129–130 (citing the Specification)).” slip op. at 25
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“multiple embodiments Petitioner cites to support the Petition or to find that they are combinable. Kennametal and Blue Calypso reach a different result from Net MoneyIN on distinguishable facts. Blue Calypso relied on “key factors” absent from Net MoneyIn, including expert testimony that a person of ordinary skill would have understood the reference to disclose “the ability to combine the tools to arrive at the invention recited.” Blue Calypso, 815 F.3d at 1343. No such expert testimony is present here. Kennametal held that a reference must be “sufficiently clear in disclosing the combinability” of elements “such that a skilled artisan would ‘at once envisage’ the claimed combination.” Chamberlain Grp., Inc. v. Techtronic Indus. Co., 935 F.3d 1341, 1350 (Fed. Cir. 2019). We find that Tian is not sufficiently clear that the artisan would at once envisage the combinability of the embodiments disclosed. Indeed, Tian is lengthy and unclear in its description of the various “embodiments,” “applications,” and “implementations.” We credit the Zeger Declaration testimony that Tian discloses multiple different systems “often in a very confusing and complicated manner.” See Ex. 2001 ¶¶ 75– embodiments disclosed in Tian is indeterminate but is a “large number.” Id. ¶ 74; see also Ex. 2002, 42:2–15 (Storer Deposition testimony that “Tian uses the word ‘embodiment’ in many places, in many different ways”). The Zeger testimony is not countered by any testimony from Dr. Storer from either of his declarations or in his deposition. Neither the First nor Second Storer Declaration discusses the embodiment issue at all. The Second Storer Declaration, submitted after the Zeger Declaration, makes no mention of Tian. There is no expert testimony supporting Petitioner’s position that the teachings are combinable. See Blue Calypso, 815 F.3d at 1343 (distinguishing over Net MoneyIn because of expert testimony). Petitioner’s showing requires combining multiple embodiments of Tian without any showing that they would have been combinable or that a person of ordinary skill would immediately envisage they would have been combinable. In sum, in light of Petitioner’s reliance on multiple embodiments of Tian, Petitioner has not established, by a preponderance of the evidence, that Tian anticipates claim 1. 3. “decoding only that part of the composite frame (FC) which contains” slip op. at 16
Patent outcomesUS 9,578,298 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 9,578,298 - Xactware Solutions, Inc. v. Pictometry International Corp.No claims unpatentablePTAB · Aug 28, 2017 · IPR2016-00593 · APJ Garth D Baer · IPR · Final written decision
The Board held that claims 12–15, 21–23, 25–27, 33–38, 44, and 45 were not shown unpatentable because Pictometry was not established as a publicly accessible printed publication.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Version 2.7 (“EFS 2.7 User Guide,” “Pictometry,” or “User Guide”) and, as the name suggests, is a user guide for the Pictometry software product. See Ex. 1004, xiii. Patent Owner argues that Petitioner does not demonstrate that Pictometry is prior art. PO Resp. 5–10. In our Final Written Decision in IPR2016-00594, we considered substantively the same arguments and evidence Patent Owner and Petitioner raise in this case. See IPR2016-00594 FWD 17–29; compare IPR2016-00594 Paper 31, 13–20 with PO Resp. 6– 13; and compare IPR2016-00594 Paper 33, 3–9 with Reply 4–11. In IPR2016-00594, we found Pictometry’s limited dissemination to some governmental entities subject to licensing restrictions was not sufficient to show public dissemination or public accessibility. IPR2016-00594 FWD 17–29. We adopt that same finding here. For the reasons explained in IPR2016-00594, we find that Petitioner has not established by a preponderance of the evidence that Pictometry was publicly accessible so as to render it a printed publication under 35 U.S.C. §§ 102(b) and 311(b).” slip op. at 6
- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“substantively the same as the arguments made in IPR2016-00594. In IPR2016-00594, we denied Patent Owner’s motion to exclude Exhibit 1004 (Pictometry), Exhibit 1011 (a Merriam-Webster Dictionary Definition “database” copied from a web page), Exhibit 2010 (Cohasset Town Report 2008), 2011 (LARIAC1 Pictometry Training), Exhibit 2012 (LAR-IAC2 Product Guide), Exhibit 2020 (“GIS: Pictometry: Oblique Imagery training), Exhibit 2021 (“Pictometry License Guidelines”), and Exhibit 2022 (“Pictometry – April 19, 2007”). IPR2016-00594 FWD 5–17. We granted Patent Owner’s motion to exclude Exhibit 2013 (article titled “Los Angeles County Extends its License Agreement with Pictometry for New Oblique Aerial Photos”), Exhibit 2014 (“Pictometry Administrative Training”), Exhibit 2015 (“Information about TXWILM Administrative Training”), Exhibit 2016 (“Pictometry Administrative Training”), Exhibit 2019 (“GIS Working Group Meeting Minutes”), Exhibit 2023 (“Welcome to Your End User Training”), Exhibit 2024 (“Electronic Field Study Getting Started Guide”), Exhibit 2025 (“Pictometry Announces Technical Advancements for GIS Professionals1”), and Exhibit 2026 (“Pictometry Announces Technical Advancements for GIS Professionals2”). Id. We adopt the same findings and conclusions here. For the reasons explained in IPR2016-00594, we deny the motion to exclude Exhibits 1004, 1011, 2010, 2011, 2020, 2021, and 2022, but grant the motion to exclude Exhibits 2013, 2014, 2015, 2016, 2019, 2023, 2024, 2025, and 2026. See id.” slip op. at 5
Patent outcomesUS 8,823,732 not shown unpatentable§ 102 anticipationPatents in suitUS 8,823,732 - Xactware Solutions, Inc. v. Pictometry International Corp.No claims unpatentablePTAB · Aug 24, 2017 · IPR2016-00594 · APJ Bryan F Moore · IPR · Final written decision
Petitioner did not prove claims 1–10 and 13–20 unpatentable because it failed to establish that Pictometry was a publicly accessible printed publication.
RulingsFinal written decision- ExcludeMixed
“Mot. Reply 3. Given the sequence of events, there is no prejudice to Petitioner, who introduced these documents and was served objections at an early stage. Patent Owner apparently cited to the documents in its Patent Owner Response to preserve the right to substantively respond to these documents rather than wait to see if they were presented in Petitioner’s Reply. Pursuant to our discretion under 37 C.F.R. § 42.5(c)(3), we do not dismiss Patent Owner’s Motion to Exclude due to allegedly untimely filed objections.” slip op. at 6
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“are also prohibited. Id. The MAPC Agreement states under “Confidentiality of Licensed Products” that the Licensed Products are commercially valuable, proprietary products owned by Pictometry and are treated by Pictometry as confidential and contain substantial trade secrets of Pictometry. Ex. 2009, 16, Article 8.4. The licensee agrees that it will not disclose, provide a copy of, or disseminate the Licensed Products and that its personnel will protect the Licensed Products from unauthorized use, disclosure, copying, and dissemination, and that access to the Licensed Products and each part thereof will be strictly limited. Id. We acknowledge that these represent significant limitations on the dissemination of the User Guide.” slip op. at 21
- BurdenDecided for patent owner
“involving the EFS software and provides no evidence that the EFS software and the EFS 2.7 User Guide were actually maintained confidential by the parties of the MAPC Agreement, or that the EFS software and the EFS 2.7 User Guide were inaccessible to those of ordinary skill in the art.” Reply 9. However, this improperly puts the burden to disprove public accessibility on Patent Owner. Although Patent Owner challenges whether Pictometry is a printed publication, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in an inter partes review). Petitioner must demonstrate by a preponderance of the evidence that the challenged claims are unpatentable, and one aspect of such a showing is that the references relied upon are patents or printed publications. See 35 U.S.C. §§ 311(b) 316(e).” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“preponderance of the evidence that Pictometry was publicly accessible so as to render it a printed publication under 35 U.S.C. § 102(b). C. Anticipation of Claims by Pictometry Petitioner asserts that claims 1–10 and 13–20 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Pictometry. Pet. 16. As noted above, we determine that Petitioner has not shown that Pictometry is a printed publication under 35 U.S.C. § 102(b). Thus, Petitioner has not established by a preponderance of the evidence that that claims 1–10 and 13–20 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Pictometry.” slip op. at 29
Patent outcomesUS 8,542,880 not shown unpatentable§ 102 anticipationPatents in suitUS 8,542,880
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.