- Tesla, Inc. v. Iqar Inc.All claims unpatentablePTAB · Sep 18, 2025 · IPR2024-00630 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–16 are unpatentable as anticipated by Koebler and obvious over Koebler alone and in combination with other references.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995) (citing 35 U.S.C. § 120). Section 112 requires, inter alia, that the specification contain a written description of the claimed invention. 35 U.S.C. § 112(a). In determining whether the written description requirement is met, we consider “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). This analysis requires “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. Thus, “the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. For example, the analysis must consider “the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, [and] the predictability of the aspect at issue.” Id. (alteration in original) (quoting Capon v. Eshhar, 418 F.3d 1349, 1359 (Fed. Cir. 2005)). “While a prior application need not contain precisely the same words as are found in the asserted claims, the prior application must indicate to a person skilled in the art that the inventor was ‘in possession’ of the invention as later claimed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (citations omitted); see also Purdue Pharma LP v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (“In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.”). However, “it is the specification itself that must demonstrate possession. And while the description requirement does not demand any particular form of disclosure . . . , a description that merely renders the invention obvious does not satisfy the requirement.” Ariad, 598 F.3d at 1352 (citations omitted); see also Lockwood v. Am. Airlines, 107 F.3d 1565, 1572 (Fed. Cir. 1997) (“While the meaning of terms, phrases, or diagrams in a disclosure is to be explained or interpreted from the vantage point of one skilled in the art, all the limitations must appear in the specification. The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.”).” slip op. at 7
- Skill levelSkill level board ownDecided for petitioner
“The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quoting Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)). “The patent’s purpose can also be informative.” Id.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Initially, we note that, although Petitioner presents a definition for “traction” in its Reply (see Pet. Reply 10), Dr. Morellas agreed with Patent Owner’s proposed interpretation during his deposition: Q. What would a person having ordinary skill in the art understand the word “traction” to mean? A. It would mean the grip that the -- that the tire has with the road. Q. So when the tire is gripping the road, the vehicle will have traction; correct? A. Correct. Q. But if the wheels are spinning freely and not gripping the road, the vehicle has no traction; correct? A.· Correct. Ex. 2031, 36:8–17. Accordingly, we adopt Patent Owner’s interpretation of “traction” to be a measure “of the friction between the vehicle’s drive wheels and the road surface” such that “a vehicle’s wheels have ‘traction’ when wheel rotation acts to propel the vehicle along the roadway” and “[t]he vehicle’s wheels lose ‘traction’ when they spin freely relative to the road and thus are no longer acting to propel the vehicle along the roadway.” See PO Resp. 27; see also Tr. 18:4–5 (Petitioner’s counsel stating that “the ultimate disposition doesn’t matter which definition [of ‘traction’ the Board] adopt[s]”).” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“2. Anticipation “Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every limitation is found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). A reference inherently discloses an element of a claim “if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citing Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, 593 F.3d at 1332 (quoting Cont’l Can, 948 F.2d at 1269).” slip op. at 28
Patent outcomesUS 10,850,616 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,850,616 - LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Multimedia Technologies Pte. Ltd.Some claims unpatentablePTAB · May 19, 2025 · IPR2024-00699 · APJ St John Courtenay III · IPR · Final written decision
Claims 1, 2, 6–11, and 14–18 are unpatentable under § 103; claims 3–5, 12, and 13 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that an ordinarily skilled artisan for the ’805 patent “would have been someone knowledgeable about and familiar with the television display technology that is pertinent to the ’805 patent. A POSITA would have had a bachelor’s degree in Electrical Engineering, Software Engineering, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television systems and networking, human-computer interaction, or related technologies. Lack of work experience can be remedied by additional education, and vice versa.” Pet. 9 (citing Ex. 1003 ¶¶ 18–20). In its Preliminary Response Patent Owner indicated it “adopts Petitioner’s definition of a person of ordinary skill in the art (‘POSITA’) for the purposes of [its] Preliminary Response.” Prelim. Resp. 28. We note Patent Owner does not dispute or otherwise disavow Petitioner’s definition of a POSITA in its Response or Sur-reply. See generally PO Resp.; PO Surreply. level of ordinary skill in the art. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’805 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect appropriate level of ordinary skill in art).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Patent Owner. Id. We see nothing in the preamble 1.0, or “receiving” step 1.1.1, or “wherein” clause 1.1.2 that defines a data format prior to organizing step 1.2.1, and we decline to read limitations from the specification into the claim, i.e., a “pre-defined format” being defined prior to organizing step 1.2.1, as argued by Patent Owner. 5 PO Resp. 20. Preamble 1.0 is silent regarding any mention of a data format: “A method of providing content for a television (TV), the method comprising: . . . .” Although step 1.1.1 requires “receiving, by a processor, data relevant to one or more scheduled events from one of a corresponding subservice of a plurality of subservices,” at best this merely requires a type of data that is “relevant to one or more scheduled events” and does not require a particular data format to be used for “data relevant to one or more scheduled events,” nor the “pre-defined” format argued by Patent Owner. PO Resp. 20–21. (emphases added). Nor do we read step 1.1.2 as defining a particular data format used by the three recited types of subservices: “[1.1.2] wherein the plurality of subservices comprises a video-on-demand (VOD) subservice, electronic programming guide (EPG) subservice, and a media subservice.” 5 We emphasize that patentability is based upon the claims. “It is the claims that measure the invention.” SRI Int’l v. Matsushita Elec. Corp. of America, 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). A basic canon of claim construction is that one may not read a limitation into a claim from the written description. Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). according to a pre-defined format corresponding to each of the plurality of subservices.” (emphases added). However, we find Patent Owner’s contention unavailing that the term “pre-defined format” recited in step 1.2.1 requires three different data model pre-defined formats because claim 1 is silent regarding the argued term “different.” See PO Sur-reply 9 (regarding Patent Owner’s response to the question of “whether element [1.2.1] and the term ‘pre-defined format’ requires three different data models.” Patent Owner responds: “For the above reasons, they do.”). Moreover, we note the term “data model” is not introduced until subsequent “wherein” clause 1.2.2, which merely requires that “the predefined format comprises one of a VOD data model, an EPG data model and a media data model.” (emphasis added).” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Regarding the claim 1 term “uniform format” Petitioner replies that Patent Owner “does not dispute that the prior art teaches a ‘uniform format’” in step 1.2.4. Pet. Reply 8 (citing generally PO Resp.). Therefore, Petitioner argues “for the purposes of this proceeding, the term “uniform format” does not require express construction.” Pet. Reply 8 (citing Nidec (Fed. Cir. 2017)). Nevertheless, at the Board’s request (Dec. 29), Petitioner proceeds to address the scope of the claim 1 term “uniform format.” Pet. Reply 8. Petitioner notes that the ’805 patent uses the term “uniform format” in column 33: “The data models provide uniform formats for the respective subservices (i.e., VOD subservice 1420, EPG subservice 1424, and media subservice 1428) and/or the internal content provider modules 1416 which interface with applications 416.” Pet. Reply 8 (quoting Ex.1001, 33:25–30). Petitioner further notes that Dr. Lippmann explains, “the ’805 patent does not appear to ascribe any specific meaning to the term ‘uniform format’ and the passage does not limit the scope of this term to require a plurality of uniform formats.” Pet. Reply (quoting Ex. 1020 ¶ 13).” slip op. at 22
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artDecided for petitioner
“Patent Owner’s arguments are not persuasive because on January 14, 2025, the Federal Circuit in Lynk Labs Inc. v. Samsung Electronics Co. Ltd., (125 F.4th 1120, 1132 (Fed. Cir. 2025)) held that Title 35 U.S.C. sections “311(b) and 102(e)(1) permit IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date.” (emphasis added). Accordingly, we conclude both Melnychenko and Choi are prior art for the purpose of this IPR pursuant to 35 U.S.C. § 311(b) under the holding of Lynk Labs.” slip op. at 6
Patent outcomesUS 10,419,805 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,419,805 - LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Multimedia Technologies Pte. Ltd.Some claims unpatentablePTAB · May 19, 2025 · IPR2024-00354 · APJ St John Courtenay III · IPR · Final written decision
Claims 1, 2, 6–11, and 14–18 are unpatentable as obvious; claims 3–5, 12, and 13 were not shown unpatentable.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artDecided for petitioner
“Patent Owner’s arguments are not persuasive because on January 14, 2025, the Federal Circuit in Lynk Labs Inc. v. Samsung Electronics Co. Ltd., (125 F.4th 1120, 1132 (Fed. Cir. 2025)) held that Title 35 U.S.C. sections “311(b) and 102(e)(1) permit IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date.” (emphasis added). Accordingly, we conclude both Melnychenko and Choi are prior art for the purpose of this IPR pursuant to 35 U.S.C. § 311(b) under the holding of Lynk Labs.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for patent owner
“Relying upon the declaration testimony of Dr. Lippman, Petitioner contends that an ordinarily skilled artisan for the ’805 patent “would have been someone knowledgeable about and familiar with the television display technology that is pertinent to the ’805 patent. A POSITA would have had a bachelor’s degree in Electrical Engineering, Software Engineering, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television systems and networking, human-computer interaction, or related technologies. Lack of work experience can be remedied by additional education, and vice versa.” Pet. 9 (citing Ex. 1003 ¶¶ 18–20). In its Preliminary Response Patent Owner indicated it “adopts Petitioner’s definition of a person of ordinary skill in the art (‘POSITA’) for the purposes of [its] Preliminary Response.” Prelim. Resp. 28. We note Patent Owner does not dispute or otherwise disavow Petitioner’s definition of a POSITA in its Response or Sur-reply. See generally PO Resp.; PO Surreply. level of ordinary skill in the art. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’805 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect appropriate level of ordinary skill in art).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Patent Owner. Id. We see nothing in the preamble 1.0, or “receiving” step 1.1.1, or “wherein” clause 1.1.2 that defines a data format prior to organizing step 1.2.1, and we decline to read limitations from the specification into the claim, i.e., a “pre-defined format” being defined prior to organizing step 1.2.1, as argued by Patent Owner. 5 PO Resp. 20. Preamble 1.0 is silent regarding any mention of a data format: “A method of providing content for a television (TV), the method comprising: . . . .” Although step 1.1.1 requires “receiving, by a processor, data relevant to one or more scheduled events from one of a corresponding subservice of a plurality of subservices,” at best this merely requires a type of data that is “relevant to one or more scheduled events” and does not require a particular data format to be used for “data relevant to one or more scheduled events,” nor the “pre-defined” format argued by Patent Owner. PO Resp. 20–21. (emphases added). Nor do we read step 1.1.2 as defining a particular data format used by the three recited types of subservices: “[1.1.2] wherein the plurality of subservices comprises a video-on-demand (VOD) subservice, electronic programming guide (EPG) subservice, and a media subservice.” 5 We emphasize that patentability is based upon the claims. “It is the claims that measure the invention.” SRI Int’l v. Matsushita Elec. Corp. of America, 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). A basic canon of claim construction is that one may not read a limitation into a claim from the written description. Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). according to a pre-defined format corresponding to each of the plurality of subservices.” (emphases added). However, we find Patent Owner’s contention unavailing that the term “pre-defined format” recited in step 1.2.1 requires three different data model pre-defined formats because claim 1 is silent regarding the argued term “different.” See PO Sur-reply 9 (regarding Patent Owner’s response to the question of “whether element [1.2.1] and the term ‘pre-defined format’ requires three different data models.” Patent Owner responds: “For the above reasons, they do.”). Moreover, we note the term “data model” is not introduced until subsequent “wherein” clause 1.2.2, which merely requires that “the predefined format comprises one of a VOD data model, an EPG data model and a media data model.” (emphasis added).” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Regarding the claim 1 term “uniform format” Petitioner replies that Patent Owner “does not dispute that the prior art teaches a ‘uniform format’” in step 1.2.4. Pet. Reply 8 (citing generally PO Resp.). Therefore, Petitioner argues “for the purposes of this proceeding, the term “uniform format” does not require express construction.” Pet. Reply 8 (citing Nidec (Fed. Cir. 2017)). Nevertheless, at the Board’s request (Dec. 29), Petitioner proceeds to address the scope of the claim 1 term “uniform format.” Pet. Reply 8. Petitioner notes that the ’805 patent uses the term “uniform format” in column 33: “The data models provide uniform formats for the respective subservices (i.e., VOD subservice 1420, EPG subservice 1424, and media subservice 1428) and/or the internal content provider modules 1416 which interface with applications 416.” Pet. Reply 8 (quoting Ex.1001, 33:25–30). Petitioner further notes that Dr. Lippmann explains, “the ’805 patent does not appear to ascribe any specific meaning to the term ‘uniform format’ and the passage does not limit the scope of this term to require a plurality of uniform formats.” Pet. Reply (quoting Ex. 1020 ¶ 13). In its Sur-reply, Patent Owner notes that “Petitioners do not appear to” slip op. at 22
Patent outcomesUS 10,419,805 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,419,805 - Alivecor, Inc. v. Apple Inc.Some claims unpatentablePTAB · Jan 7, 2025 · IPR2023-00949 · APJ Scott A Daniels · IPR · Final written decision
Claims 11–14 and 16–20 are unpatentable over Kim; claim 15 was not shown unpatentable over Chang.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s asserted level of ordinary skill in the art is essentially the same as Petitioner’s, for example requiring a bachelor’s degree in science or engineering and “at least two years of relevant work experience with capture and processing of data or information, including but not limited to physiological information.” Id.; Pet. 9. In view of the similarity, our record now before us, and as we did in our Institution Decision, we rely on Petitioner’s proposed level of ordinary skill in the art as it is essentially the same as that proposed by Patent Owner. Petitioner’s asserted level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’619 patent and the asserted prior art references. Okajima, 261 F.3d at 1355.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“C. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2020). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Furthermore, “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither Patent Owner nor Petitioner indicate that any claim terms require construction. See generally Petition; PO Resp. For purposes of this Decision where no claim terms are in dispute, we need not explicitly construe any claim terms.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“What these cases and examples clearly articulate, is that whether there is sufficient description in an anticipation reference for linking different disclosures, elements, and embodiments, is particularly case and fact dependent. Moreover, a finding of anticipation resting upon a reference’s disclosures of elements in different embodiments turns on whether an ordinarily skilled artisan would understand that the reference suggests arranging the elements of the embodiments to one another in the same way as the challenged claims. For the reasons that follow, we determine that there is sufficient description and teaching in Kim such that the “combined button” disclosed by Kim, for example in Figure 10(b), can be the same “combined button” as discussed in the embodiment of Figure 18.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“As to Patent Owner’s first and second arguments, as we discussed in detail above with respect to anticipation, we find that there is sufficient evidence in Kim itself of contextual and even express links between the various combined button embodiments and Figure 18. Section II.D.2.b)(1)– (4). We have already determined “that one of ordinary skill in the art would understand Kim to disclose the ‘combined button’ structure and function that could be implemented on the face or sidewall of a device.” Id. We likewise determine, based on the same evidence, that a person of ordinary skill in the art would have understood Kim to suggest that the combined button structure and function, for example in the embodiment of Figure 10(b), could be implemented in an opening on the face or sidewall of a device. Obviousness does not require an instruction manual on how to physically incorporate or combine the disclosures of two embodiments in a reference. As KSR informs us, “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 420. Moreover, in this case we have only one prior art patent, Kim, so at least the pieces of the puzzle are all in the same box. The persuasive testimony of Dr. Berger that “a person of ordinary skill in the art would have been familiar with electronic devices with sealed and/or insulated button assemblies, and would understand that those assemblies were not limited to the front face of a device,” is unrebutted in this case. Ex. 1003 ¶ 110. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Given the background knowledge of a person of ordinary skill in the art in conjunction with the motivation and teachings in Kim itself for placing sufficient motivation to support the combination of Kim’s Figure 10(b) embodiment with the sidewall placement of the combined button taught in Figure 18 for obviousness purposes. It is well-settled that a single prior art obviousness reference itself can provide motivation for the combination. See General Elec. Co. v. Raytheon Techs. Corp., 983 F.3d 1334, 1352 (Fed. Cir. 2020) (Reversing the Board’s finding of nonobviousness over a single prior art reference, the Court explained that “the Board’s approach would require a motivation to combine each element of the claim—even those present together in a reference. This analysis unduly dissects prior art references into collections of individual elements, requiring a party showing obviousness to re-do the work already done in the prior art reference.”). Patent Owner’s third argument is unavailing because although Dr. Anthony testifies that “implementing the fingerprint sensor assembly of Kim’s Figure 10 embodiment in the ‘lateral surface’ of Kim’s Figure 18 embodiment would have complicated the manufacturing process for the resulting mobile device,” Dr. Anthony does not provide testimony or evidence that implementing the combined button on the sidewall would have been difficult or beyond the level of ordinary skill in the art. Ex. 2009 ¶ 73. We credit Dr. Berger who explains persuasively that “[p]rior to the ’619 patent’s earliest alleged priority date of June 19, 2017, a person of ordinary skill in the art would have known that a mobile electronic device could include one or more button assemblies in a sidewall.” Ex. 1003 ¶ 47 (citing Ex. 1013, 4:40, 19:42–20:4, Figs. 13B, 17, 19A, 19B). It is well-settled that a person of ordinary skill can use his or her ordinary skill, creativity, and common sense to make the necessary adjustments and further modifications to result in a properly functioning device. See KSR, 550 U.S. at 418 (“the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”).” slip op. at 43
Patent outcomesUS 10,866,619 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,866,619 - Alivecor, Inc. v. Apple Inc.All claims unpatentablePTAB · Jan 7, 2025 · IPR2023-00948 · APJ Scott A Daniels · IPR · Final written decision
Claims 1–10 are unpatentable: claim 1 is anticipated by Kim and claims 1–10 are obvious over Kim; the Board did not reach the Jung and Meyers or Chang grounds.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“one hand that “[a] ‘biometric characteristic’ or a ‘biometric identifier,’ as used herein, may refer to a human characteristic that is so distinctive and measureable that a particular human individual may be identified.” Ex. 1001, 5:9–14 (emphasis added). On the other hand, the ’619 patent also explains that “[t]he sensed human physical characteristic may vary widely, but may include fingerprint, palm veins, DNA, heart rate, and blood pressure.” Ex. 1001, 4:57–59. And, according to Patent Owner’s declarant, Dr. Anthony, heart rate and blood pressure, for instance, are biometric characteristics that do not necessarily “identify” a particular human being. See Ex. 2009 ¶ 28 (Dr. Anthony testifying that “[i]n my opinion, ‘heart rate’ and ‘blood pressure’ are embodiments of biometric characteristics that . . . are not sufficiently distinctive to enable identification of a particular human individual.”). Considering the written description as a whole, along with Patent Owner’s argument and Dr. Anthony’s testimony, we agree that “biometric characteristic” does not need a specific construction in this proceeding. We disagree with Petitioner that there is an actual dispute as to this term because, apart from an express construction, Kim discloses a fingerprint sensor. Pet. Reply 2. Regardless, our Decision does not turn on a specific construction of “biometric characteristic.” At least Kim discloses a fingerprint sensor which satisfies the biometric characteristic limitation in the challenged claims under either a plain and ordinary meaning of this term or under Petitioner’s proposed construction. See, e.g., Ex. 1004, 14:22–24” slip op. at 12
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner’s asserted level of ordinary skill in the art is essentially the same as Petitioner’s, for example requiring a bachelor’s degree in science or engineering and “at least two years of relevant work experience with capture and processing of data or information, including but not limited to physiological information.” Id.; Pet. 9. In view of the similarity, our analysis is not affected by choosing one over the other. On the complete record now before us, and as we did in our Institution Decision, we rely on same as that proposed by Patent Owner. Petitioner’s asserted level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’619 patent and the asserted prior art references. Okajima 261 F.3d at 1355 (Fed. Cir. 2001).” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We credit Petitioner’s declarant, Dr. Berger, in this case. Dr. Berger testifies that “a person of ordinary skill in the art would understand that a sealed and/or insulated button assembly from one location on a device can be constructed equally on a rear or sidewall of the device, as taught by at least Polany (Ex-1013).” Id. ¶ 110 (citing U.S. Patent No. 7,535,799 to further that “[p]rior to the ’619 patent’s earliest alleged priority date of June 19, 2017, a person of ordinary skill in the art would also have known that button assemblies in mobile electronic devices should be sealed in order to prevent ingress of potentially damaging moisture and dust.” Id. ¶ 48. Dr. Berger points to U.S. Patent No. 10,133,910 to Chang, explaining that “Chang discloses that ‘as users’ needs for portable terminals have been gradually diversified, a [home] key [button] used in the portable terminals includes a waterproof structure in order to prevent a fluid from infiltrating into the interior of the portable terminals.’” Id. (quoting Ex. 1015, 1:32–35). Dr. Berger maintains that sealing and attaching buttons to an electronic device was a common technique, testifying that Polany discloses that “[o]ne skilled the art would recognize many different methods of fastening a control feature into the housing, such as, but not limited to, screw, bolts, snap fit components, adhesives, press fits, co-molded components, overmolded components, ultrasonically welded components, rotational fits, wedge fits, and other manufacturing means of effecting the assembly of components” Id. ¶ 52 (quoting Ex. 1013, 21:5–11, 21:31–37). The fact that there would be certain design and structural differences between a combined button on the face of the electronic device, and a combined button on the side wall of the electronic device does not undermine Dr. Berger’s testimony that a person of ordinary skill in the art would have understood how to implement a button in a sidewall of an electronic device. See id. ¶ 47 (testifying “[f]or example, Polany discloses that the buttons (1315-1318) along the sidewall of the device included structures and surfaces that could be manually pressed by a user” and citing Ex. 1013, 4:40, 19:42–20:4, Figs. 13B, 17, 19A, 19B).” slip op. at 38
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“What these cases and examples clearly articulate is that whether there is sufficient description in an anticipation reference for linking different disclosures, elements, and embodiments, is particularly case and fact dependent. Moreover, a finding of anticipation resting upon a reference’s disclosures of elements in different embodiments turns on whether an ordinarily skilled artisan would understand that the reference suggests arranging the elements of the embodiments to one another in the same way as the challenged claims.. For the reasons that follow, we determine that there is sufficient description and teaching in Kim such a person of ordinary skill in the art would have understood that the “combined button” disclosed by Kim, for example in Figure 10(b), can be the same “combined button” as discussed in the embodiment of Figure 18.” slip op. at 28
Patent outcomesUS 10,866,619 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,866,619 - Microchip Technology Inc. v. HD Silicon Solutions LLCSome claims unpatentablePTAB · Dec 13, 2022 · IPR2021-01042 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–11, 13–27, and 29–32 are unpatentable as anticipated by Haswell or obvious over Haswell and Itou; claims 12 and 28 were not shown unpatentable over Haswell and Lempel.
RulingsFinal written decision- Skill levelDecided for petitioner
“III. LEVEL OF ORDINARY SKILL IN THE ART In determining the level of skill in the art, we consider the “type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field.” Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’619 patent would have had the following education and experience: at least (1) a master’s degree in electrical engineering, computer science, or a related degree, and at least 3-5 years of experience in computer architecture and cache memory design; or (2) a bachelor’s degree in electrical engineering, computer science, or a related degree, and at least 5-6 years of experience in computer architecture and cache memory design. Pet. 5 (citing Ex. 1002 ¶ 27). Patent Owner does not dispute this level of skill. See generally PO Resp. Based on the final record before us, including the prior art of record, we adopt Petitioner’s proposal, which is also supported by Dr. Sechen’s testimony. See Ex. 1002 ¶ 28.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“A. “instruction cache” Each of claims 1, 21, and 29, specifically require a method or system for instruction error correction that uses “an instruction cache.” In its Petition, Petitioner does not specifically advocate for an interpretation of “instruction cache.” In our Institution Decision, we noted the importance of the meaning of the term because “Patent Owner challenges two of the prior art references (Haswell and Itou) as not disclosing an instruction cache, as claimed, arguing instead that each reference uses a main storage memory or similar.” Dec. on Inst. 21–22. In the Institution Decision, we preliminarily found that the instruction cache is a memory for the storage of instructions that are accessed and executed by the processor. Id. (citing Ex. 1001, 1:62– 64, code (57)). We also noted that lack of argument and evidence at that phase of the proceeding. Id. The parties responded by including additional argument, testimony, and evidence in the final record, which we now consider. Patent Owner argues that an “instruction cache” is distinct from main memory. PO Resp. 31–32. Patent Owner first relies on the cross-examination testimony of Dr. Sechen (Exhibit 2005), Petitioner’s expert. Id. Dr. Sechen testified during questioning that the main memory is not an instruction cache in that “it wouldn’t satisfy the normal definition of an instruction cache, which has certain features.” Id. (quoting Ex. 2005, 61:20– 62:7, 98:3–101:10). Patent Owner further argues that Dr. Sechen “also explained that the retrieval of data from an instruction cache is faster than from main memory due in part to its proximity to the processor.” Id. at 32 (quoting Ex. 2005, 166:8–18). Patent Owner further relies on the description of an “instruction cache” found in the Specification of the ’619 patent, that “[t]he instruction cache 103 is a memory for the storage of instructions 109 that are accessed and executed by the processor 106.” Id. (quoting Ex. 1001, 1:62–64). Patent Owner also relies on the testimony of its own expert, Dr. Przybylski, who testifies that “the retrieval of data from a cache is faster (and thus takes fewer instruction cycles) than retrieval from main memory,” and “[b]ecause an instruction cache only holds a subset of the contents of main memory at any given time, a cache requires tags, a tag storage, and hit/miss logic in order to autonomously determine whether the fetch of an instruction can be satisfied from the cache.” Ex. 2003 ¶¶ 65, 66; Ex. 1001, 3:19–21.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther
“B. “means for detecting an error” Independent claim 29 recites “means for detecting an error in each of the instructions concurrently with the fetching of a respective one of the instructions.” Ex. 1001, 12:51–53. Petitioner contends, and we agree, that “[t]his element is interpreted under pre-AIA 35 U.S.C. §112, ¶6 because it claims ‘means for’ and then recites the function of ‘detecting an error in each of the instructions concurrently with the fetching of a respective one of the instructions.’” Pet. 38. Petitioner identifies the corresponding structure as the error correction circuitry 129. Id. (citing Ex. 1001, 7:53–55 (“error detection of the same instruction 109 is performed by the error correction circuitry 129 (FIG. 1)”). Patent Owner does not challenge this interpretation. We find Petitioner’s showing persuasive as to the interpretation of the “means for detecting an error” limitation. C. “means for generating a corrected instruction” Claim 30 recites “means for generating a corrected instruction if the error is detected in the instruction, the corrected instruction being a corrected version of the instruction.” Ex. 1001, 12:55–56. Petitioner contends, and we agree, that this element “is interpreted under pre-AIA 35 U.S.C. §112, ¶6 because it claims ‘means for’ and then recites the function of “generating a corrected instruction if the error is detected in the instruction, the corrected instruction being a corrected version of the instruction.” Pet. 40–41. Petitioner identifies the corresponding structure as the error correction logic 143 or circuit 129. Pet. 41. Petitioner relies on the ’619 patent’s disclosure of “when an error is detected ‘in either the instruction 109 or the error correction code 113, then the error correction logic 143 proceeds to generate a corrected version of the instruction 109 and its associated error correction code 113.’” Id. (citing Ex. 1001, 6:7–11; Ex. 1002 ¶ 134). Additionally, Petitioner notes that “the ’619 patent discloses that the error correction circuitry 129 (e.g., collectively) generates a corrected version of the instruction 109 and its corresponding error correction code 113. Pet. 41–42 (citing Ex. 1001, 10:1– 3; Ex. 1002 ¶ 134) (footnote omitted). Thus, according to Petitioner, “a [person of ordinary skill in the art] POSITA would understand that either the error correction logic 1292 or the error correction logic 143, which belongs to the error correction logic 129, generates the corrected instruction.” Pet. 42 (citing Ex. 1002 ¶ 134). Patent Owner does not challenge this interpretation. We find Petitioner’s showing persuasive as to the interpretation of the” slip op. at 20
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“transfer of instructions from memory to a computer processor.” Id. at 1:7–11; see id. at 2:13–15 (“a method and system for detecting error during transfer of data signals from a data memory that permits correction of the error”). Accordingly, Petitioner has shown by a preponderance of the evidence that Haswell discloses “error correction” as required by the preamble of claim 1.” slip op. at 28
Patent outcomesUS 7,302,619 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,302,619 - Glux Visual Effects Tech (Shenzhen) Co. / Leyard Optoelectronic Co. et al. v. Ultravision Technologies, LLCAll claims unpatentablePTAB · Nov 30, 2021 · IPR2020-01050 · APJ Scott A Daniels · IPR · Final written decision
Claims 1, 2, 9, 13, and 20 are unpatentable as anticipated by Guoshi; claims 7, 18, 22–24, 26–28, and 30 are unpatentable as obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not set forth an ordinary artisan’s skill level. See generally PO Resp. Rather, Mr. Credelle, Patent Owner’s expert, states that he “do[es] not disagree with Mr. Flasck’s proposed level of ordinary skill in the art.” Ex. 2002 ¶ 29. In our Institution Decision, we preliminarily adopted Petitioner’s explanation and assessment of the ordinary skill level, determining the position was consistent with the ’294 patent and the asserted prior art. Inst. Dec. 12–13. As neither party challenges our preliminary finding regarding Accordingly, we reaffirm that one of ordinary skill in the art at the time of the invention would have: (i) a bachelor’s degree in mechanical engineering, electrical engineering, or physics, or undergraduate training in an equivalent field, and (ii) at least two years of experience in the design and/or implementation of LED panels. Additional graduate education could substitute for professional experience, and significant work experience could substitute for formal education. See id. at 12 (setting forth and adopting Petitioner’s unopposed position as to the level of ordinary skill in the art) (citing Ex. 1005 ¶¶ 43–49).” slip op. at 11
- Prior constructionPrior construction adoptedDecided for patent owner
“be construed so as to not include a cabinet. PO Resp. 18. Patent Owner points out that “[t]he District Court construed the term ‘modular display panel’ to mean ‘interchangeable display panel for a multi-panel modular display configured for use without a cabinet.’” Id. (citing Ex. 1019, 18). And, that “[t]he District Court further construed ‘cabinet’ to mean ‘enclosure separate from the LED panel(s) to protect the LED panel(s) from the environment, including water.’” Id. at 18 (citing Ex. 1021). Patent Owner further contends that Petitioner has agreed to this construction in the District Court proceeding. Id. at 18 n.1 (citing Exs. 2007, 2008). Petitioner does not dispute this construction. During oral hearing Petitioner’s Counsel stated “I think that the parties agree that the display module of the challenged claims do not employ a cabinet.” Tr. 13:33–23. Based on the parties’ apparent agreement, and considering the record before us and the District Court’s Claim Construction Memorandum (Ex. 1019), we see no reason not to apply the District Court’s claim construction. See 37 CFR § 42.100(b) (Providing that any claim construction determination in a related civil action must be considered by the Board.). Accordingly, “modular display panel” means “interchangeable display panel for a multi-panel modular display configured for use without a cabinet.” Ex. 1019, 18.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“relevant to the claim construction analysis” and “is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (citation omitted). The ’294 patent Specification reveals that the electronic display panels are intended to be used in interior and also exterior weather dependent environments, and without a cabinet. See Ex. 1001, 5:36–43, 58– 60 (The detailed description explaining that “[t]hese displays are designed to protect against weather, without a heavy cabinet,” and that, “weather is the number one culprit for damage to LED displays.”). The ’294 patent further describes LED panels where “the display is IP 67 rated and therefore waterproof and corrosion resistant, . . . in other embodiments, equipment can be designed with an IP 68 rating to operate completely underwater.” Id at 5:48–55. The ’294 patent describes further that, “where weatherproofing is not as significant, the panels can have an IP 65 or IP 66 rating.” Id. at 5:56– 57. 7 Exhibit 2010 replaces Exhibit 2004 which was a “rough draft transcript” that was uncertified. Ex. 2004, 1:9. During the hearing, the panel requested a certified transcript of the deposition record. See Tr. 5:22–6:16. We refer to the certified transcript, Ex. 2010, in this opinion. See Ex. 2010, 161. waterproofing where the higher the IP rating the more waterproof the device becomes. Id. at 5:48–57. Thus, the term “waterproof,” on its face, can cover a range of environmental conditions and IP ratings including “normal weather,” such as snow, rain, and fog as Mr. Flask confirmed during his deposition. Ex. 2010, 31:24–25, 33:10–13. In his Declaration, Mr. Flask also testifies that there are a range of waterproof enclosures, “IP 65 indicates a dust tight enclosure that is waterproof against jets of water[,] and IP 68 indicates a dust tight enclosure that is waterproof against continuous immersion in water.” Ex. 1005 ¶ 58 (citing Ex. 1016, 3). Considered as a whole, Mr. Flask’s testimony is consistent with the ’294 patent Specification—namely that a “waterproof” display can include protection from normal weather conditions as well as when “operat[ing] completely underwater.” Ex. 1001, 5:55.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Guoshi fairly explains that the LEDs are attached on one side, and the power and control modules are attached on the other, i.e. first and second, sides of the printed circuit board. Ex. 1008 ¶ 27. Guoshi states that “[t]he LED light emitting units (21) and the power module (22) are separately situated on the two opposite surfaces of the circuit board (20).” Id. Guoshi describes further that “[t]he LED light emitting units (21) are situated on the first surface (28), and the power module (22) and control module are both situated above this second surface (29) and fit with the main body (12).” Reading this description as a whole, we find Guoshi’s description straightforward. Given a plain and ordinary reading of this description we understand that Guoshi’s LEDs are “attached to a first side of the printed circuit board,” and on the opposite side that the power and control module are also “attached to the printed circuit board,” and within “a recess” of the casing as recited in claim 1. Also, there is no dispute that Guoshi teaches the” slip op. at 38
Patent outcomesUS 9,978,294 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,978,294 - Machinex Industries, Inc. v. JJG IP Holdings, LLCAll claims unpatentablePTAB · Oct 4, 2021 · IPR2020-00899 · APJ Michael L Woods · IPR · Final written decision
Claims 1–16 are unpatentable under the asserted §103 grounds, including combinations based on Carlsohn and Arleth.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966). citations will be to the exhibits’ page numbers, rather than the native page numbers. 4 By e-mail communication from the Board on June 25, 2020, we authorized Petitioner to file a corrected Exhibit 1008. Our reference to Exhibit 1008 is to the corrected, second-filed exhibit, filed on July 7, 2020. Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field. Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. Moreover, these factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determining a level of ordinary skill, we also may look to the prior art, which may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In the Institution Decision, we determined that a person having” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“plain and ordinary meaning, and determined that the plain and ordinary meaning of “proximate” is “nearby. Inst. Dec. 18. Accordingly, we construed “disposed proximate to a visible or infrared source,” as recited in Limitation 1(c), to mean “disposed nearby” the visible or infrared source. See id. We further note that during prosecution of the ’346 patent, the applicant acknowledged that the term “‘proximate’ is broad in its scope.” See Ex. 1020, 70 (emphasis added).” slip op. at 20
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“1. Relevant Law Petitioner bears the burden of establishing by a preponderance of the” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“3. Independent Claim 1 We address the claim limitations using Petitioner’s nomenclature as” slip op. at 41
Patent outcomesUS 9,950,346 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,950,346 - Intel Corporation v. Hera Wireless S.A.All claims unpatentablePTAB · Mar 18, 2020 · IPR2018-01657 · APJ Robert L Kinder · IPR · Final written decision
The Board cancelled claims 1, 5, 6, 12, 16, and 17, and denied substitute claims 21 and 22 because Wallace anticipated them and rendered them obvious.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 and IPR2018-01130, Paper 14 (PTAB Feb. 25, 2019) (precedential) (“Lectrosonics”). We then consider the patentability of proposed substitute claims.” slip op. at 9
- 112 supportDecided for patent owner
“Based on the disclosures in the ’095 application, the ’655 application, and the ’375 application, we find that there is at least one embodiment where a terminal transmits antenna number information in a link channel request. Specifically, in the First Embodiment discussed supra in relation to Figure 3, the antenna number information is transmitted to the base station from terminal 1000 as control information in requesting establishment of a link channel (LCH allocation request). Ex. 1001, 9:59–64. We further find that this amounts to transmitting “information on the maximum number of spatial signals that can be processed” in “a request to establish a link channel,” as recited in proposed substitute claims 21 and 22. So, too, does the description of the first variation of the Figure 7 Second Embodiment described supra. This showing discharges Patent Owner’s burden on this issue. However, because we also conclude, infra, that Wallace anticipates and renders obvious proposed substitute claims proposed claims 21 and 22, we do not find it necessary to further address Petitioner’s specific written description arguments.” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“3. Person of Ordinary Skill Relying on the testimony of Dr. Sharony, Patent Owner contends that a person of ordinary skill in the art at the time of the invention of the ’024 patent would have possessed a working knowledge of multi-input multi-output (MIMO) wireless communications. The person would have gained this knowledge through a Bachelor of Science degree in Electrical Engineering or an equivalent degree, and three to five years of experience working in the field of wireless communications. Additional education or experience may serve as a substitute for these requirements. Motion 4 (citing Ex. 2018 ¶ 28).” slip op. at 17
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“Claim 21 first requires a “storage means for storing prior to any request to establish a link channel being sent to the another radio apparatus information on the maximum number of spatial signals that can be processed by the signal processing unit for multiplex communication.” Motion, Claims App. We construe this claim language pursuant to 35 U.S.C. § 112 ¶ 6. The stated function of “storing prior to any request to establish a link channel being sent to the another radio apparatus information on the maximum number of spatial signals that can be processed by the signal processing unit for multiplex communication,” is carried out by a memory. See Institution Dec. 14. Claim 21 next requires “control means for controlling a process of transmitting the information on the maximum number of spatial signals.” We construe this language pursuant to 35 U.S.C. § 112 ¶ 6. The stated function of “controlling a process of transmitting the information on the maximum number of spatial signals,” is carried out by a controller or processor. See Institution Dec. 14–15. The ’024 patent discloses this function being performed by a “control circuit” or “a digital signal processor executing a software algorithm.” Id. (citing Ex. 1001, 7:61–62, 8:44–48, 8:51–55, 8:64–9:4, 17:21–38, 19:36–41). Further, “[a] control circuit is simply another name for a controller or processor.” Id. (citing Ex. 1002 ¶¶ 165, 175). Claim 22 requires “a storage unit” and “a control unit.” We determine that these terms should not be construed pursuant to § 112 ¶ 6, and also that their scope is clear from the context of the Specification. Patent Owner made a deliberate choice to employ the word “unit” instead of “means.” See Institution Dec. 14. Thus, based on the final record, we determine that Patent Owner intended to invoke § 112 ¶ 6 for the “means” terms (claim 21) but did not so intend for the “unit” terms (claim 22) in the ’024 patent.” slip op. at 19
Patent outcomesUS 9,270,024 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,270,024 - Intel Corporation v. Hera Wireless S.A.All claims unpatentablePTAB · Feb 25, 2020 · IPR2018-01371 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–6 are cancelled; proposed substitute claims 7 and 8 are unpatentable as anticipated by and obvious over Wallace, so the motion to amend is denied as to those claims.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“the level of skill in the art. The Petition, however, provides the following description: “As of 2002 or 2003, a skilled person in the ’103 patent’s field would have a Master’s degree in Electrical Engineering and at least 2-4 years of academic or industry experience in designing and implementing digital wireless communication systems.” Pet. 13 (citing Wicker Decl. ¶ 54). The parties’ formulations differ mainly in the level of education (Bachelor’s degree for Patent Owner, Master’s degree for Petitioner) and amount of experience in wireless communications (three to five years for Patent Owner, two to four years for Petitioner). We regard any differences in the two formulations as insignificant. For the purpose of this Final Written Decision, we adopt Patent Owner’s proposal as consistent with the prior art before us. However, we would reach the same result with regard to this decision under either formulation.” slip op. at 17
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“In light of the foregoing, we credit Petitioner’s evidence on this limitation, supported by the testimony of Dr. Wicker, and find that the limitation is met by Wallace. Wicker Supp. Decl. ¶¶ 22–27.” slip op. at 30
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“Motion 11–12 (alterations in original). Patent Owner contends “[n]one of Petitioner’s references teaches or suggests systems having this new combination of limitations.” Id. at 12. We determine that the amended language in the proposed substitute claims, which will be discussed in more detail infra, is responsive to the ground of unpatentability involved in this trial under 37 C.F.R. § 42.121(a)(2)(i). 3. Scope of the Proposed Substitute Claims A motion to amend “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). Patent Owner contends that the substitute claims are “narrower than the original, now-cancelled claims and introduce no new matter.” Motion 3. We have reviewed the limitations added in the proposed substitute claims (see supra) and determine that they do not enlarge the scope of the original cancelled claims.” slip op. at 10
- 112 supportDecided for patent owner
“Based on the disclosures in the ’657 application, the ’655 application, and the ’375 application, we find that there is sufficient written description support for this limitation. The ’103 patent and its previously-filed supporting applications describe at least one embodiment where a terminal transmits antenna number information in a link channel request. Specifically, in the First Embodiment discussed supra in relation to Figure 3, the antenna number information is transmitted to the base station from terminal 1000 as control information in requesting establishment of a link channel (LCH allocation request). Ex. 1001, 9:62–65. We further find that this amounts to transmitting a “value indicating the maximum number of spatial paths formable” in “a request to establish a link channel,” as recited in the proposed substitute claims. See discussion infra. So, too, does the description of the first variation of the Figure 7 Second Embodiment, described supra. This showing discharges Patent Owner’s burden on this issue. However, because we also conclude, infra, that proposed substitute claims 7 and 8 are anticipated by and would have been obvious in light of Wallace, and in view of counsel’s concession at the oral hearing, we do not find it necessary to further address Petitioner’s specific written description” slip op. at 14
Patent outcomesUS 7,962,103 unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,962,103
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.