• NHK Seating Of America, Inc. v. Lear CorporationSome claims unpatentable
  PTAB · Dec 30, 2015 · IPR2014-01026 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 11, 14, and 17–21 are unpatentable; claim 15 was not shown unpatentable because Wiklund does not disclose its required sequential contact portions.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “Ex. 1001, 5:9–22 (emphasis added). This passage is consistent with interpreting “first manner and second manner” as meaning “any two different ways.” As described in this quoted passage, if either the forward velocity or the trajectory of the headrest, or both changes, then movement in a first and second manner has occurred. For example, if the headrest were to move forward at one velocity and then merely slow down (or speed up) on the same trajectory, then movement would occur in a first and second manner.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Id. at 8:58–9:5 (emphasis added). The emphasized portion of the quotation establishes that Kage’s headrest moves differently at the beginning and end of its path S2'. Namely, Kage’s headrest moves quickly toward the occupant’s head at the beginning of path S2' and more slowly toward the occupant’s head at the end of path S2'.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “claims 12, 17, 18, and 21 obvious and sets forth the evidence from Wiklund and Humer to support its contentions in detailed claim charts. Pet. 43–46. NHK also proffers Dr. Kent’s testimony to explain the manner in which Wiklund describes the requirements recited in these claims. Ex. 1010¶¶ 60– 69. Claims 12 and 21 depend from claims 10 and 20, respectively, and further recite a “damper connected between the headrest arrangement and the seatback.” Ex. 1001, 13:15–16 (claim 12), 14:26–27 (claim 21). NHK relies upon Humer for its disclosure of a damper as recited in these claims. Pet. 44–46. More specifically, NHK contends that Humer teaches using a damper 118 to improve “energy absorptions” of the Saab SAHR headrest. Pet. 43 (citing Ex. 1007, 7:27–8:4). NHK also contends that Wiklund is directed to the same Saab SAHR headrest. Pet. 43 (citing Ex. 1010 ¶ 60). NHK therefore concludes that an ordinary artisan would have found it obvious to improve Wiklund by adding Humer’s damper between the headrest arrangement and the seatback. Pet. 43–44. NHK contends that an ordinary artisan would have found it obvious to add a damper to Wiklund to “provide ‘some energy absorption to cause more even and controlled contact with the head during impact’ because without the damper 118 ‘the head tends to oscillate after impacting a headrest cushion.’” Id. at 44 (citing Ex. 1007, page 8:1–4; Ex. 1010 ¶¶ 60, 61, and 63).” slip op. at 34

  • ExcludeMotion to exclude, deniedDenied

    “IV. LEAR’S MOTION TO EXCLUDE We have reviewed Lear’s Motion to Exclude, NHK’s Opposition to the Motion, and Lear’s Reply in support of the Motion. Based on our review, we deny the Motion in all respects for one or both of the following reasons: (1) the Motion is moot because it seeks to exclude evidence not considered or relied upon in rendering this Decision or (2) the Motion addresses issues more appropriate to determining the weight ascribed to the evidence rather than the admissibility of evidence. In rendering this Decision, we determine and ascribe the appropriate weight to all proffered evidence and, when appropriate, comment upon the weight ascribed.” slip op. at 39

  Patent outcomesUS 6,655,733 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,655,733
• Emnos USA Corp. v. Dunnhumby LimitedInstitution denied
  PTAB · Dec 30, 2015 · CBM2015-00162 · APJ Timothy J Goodson · CBM · Institution

  The Board denied institution on all challenged claims because the Petition did not establish that the ’246 patent qualifies as a covered business method patent.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We have jurisdiction under 35 U.S.C. § 324. Pursuant to 35 U.S.C. § 324(a), the Director may not authorize a covered business method patent review unless the information in the petition, if unrebutted, “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” As explained below, we do not institute a covered business method patent review because the Petition does not establish that the ’246 patent qualifies as a covered business method patent.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “remains deficient. The Petition relies on the Oracle Pro*C reference as disclosing the script template limitations of the independent claims, but as Patent Owner points out, the Petition does not present evidence establishing that Oracle Pro*C qualifies as a prior art printed publication. See Pet. 32– 34; Prelim. Resp. 50–53. Petitioner asserts that Oracle Pro*C “was published in 2002” but does not point to any specific evidence of its publication or public availability in 2002. Id. at 33. If Petitioner’s assertion is based on the “March 2002” statement that appears on the cover of the Oracle Pro*C reference, that statement is hearsay, and Petitioner does not argue that any hearsay exception or exclusion applies. See Ex. 1041, 1; see also ServiceNow, Inc. v. Hewlett-Packard Co., Case IPR2015-00716, slip op. at 16 (PTAB Aug. 26, 2015) (Paper 13) (“To the extent that Petitioner relies on the date on the face of each exhibit and the indications of availability of these references for download . . . for the truth of that information, and considering that Petitioner has not established that any hearsay exception or exclusion applies, we agree [that the statements are inadmissible hearsay].”). Petitioner also argues, with citation to the testimony of Dr. Smyth, that Oracle Pro*C is a reference used by programmers who develop applications in Oracle database environments. Pet. 33 (citing Ex. 1030 ¶ 57). However, neither the Petition nor Dr. Smyth explains how or when the specific Programmer’s Guide, Release 9.2 that Petitioner relies on as the Oracle Pro*C reference (Ex. 1041) was made available to skilled artisans. Because the Petition does not establish that Oracle Pro*C qualifies as prior art, Section VIII.B. of the Petition does not remedy the deficient showing in Section III.D. of the Petition on the first consideration of the technological” slip op. at 11

  § 102 anticipationDiscretionary denial
  Patents in suitUS 8,214,246
• HTC Corporation / HTC America, Inc. v. Advanced Audio Devices, LLCAll claims unpatentable
  PTAB · Dec 29, 2015 · IPR2014-01154 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1, 3, 6, 7, 11, 12, 16, 22, 24, 27, 29, 30, 35–37, 43, and 45–47 are unpatentable under § 103; proposed substitute claims 49–65 were denied.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “AAD misunderstands our prior claim construction ruling. We cited the above-quoted portions of the specification to demonstrate that, when the ’403 patentee wished to refer to ordering sound tracks, the terms rearranging or customizing were used—as opposed to the term organizable. Dec. 9. By contrast, we noted that the specification of the ’403 patent does not use the word organizable outside the claims. Id. The claim language itself, therefore, is the best guide to the meaning of the term. As we noted in our Decision, claim 1 requires that the music library is “organizable into a 10 master song list and at least one group of sound tracks.” Ex. 1001, 21:32–33 (emphasis added); Dec. 9. This usage implies that the user must be able to, at the very least, add songs from the music library into groups such as the master song list and the group of sound tracks. We note that AAD’s expert, Mr. McAlexander, agreed with our construction of the term, with a minor caveat discussed below. Ex. 1016, 31:6–32:16 (“The actual context of an arrangement ordering and grouping, I have no problem with that. I think they’re right.”). AAD’s proposed construction, which limits organizable to only the ordering of songs, is not the broadest reasonable interpretation of the claim term.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “b. Analysis of Anticipation by Nathan ’259 Anticipation requires not only that all elements of a claim are disclosed within the four corners of a single prior art reference, but that the elements are “arranged as in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). For the following reasons, we determine that Petitioner has not proven by a preponderance of the evidence that Nathan ’259 teaches all elements of claim 1, and by extension, any of the challenged dependent claims.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “In our view, HTC’s proposed analysis better comports with the “expansive and flexible approach” to obviousness set forth by the Supreme Court in KSR. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Our inquiry is, therefore, not “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the 37 teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Based on the combination of references proposed by HTC, Mr. Schmandt testifies that a person of ordinary skill in the art would have recognized the advantages of Sound Blaster’s functionality, and sought to incorporate those features into Lucente. Ex. 1007 ¶ 168 (“a person of ordinary skill in the art would be motivated to combine a system with the flexibility, portability, and ease of use of Lucente with the audio management capabilities of Sound Blaster”); id. at ¶ 170 (“it would be obvious to design a system with physical (e.g. push-button) controls to carry out the various functions designed by Sound Blaster, particularly in view of Lucente and Ozawa”) (emphasis added). The record reflects that such a modification would not have been outside the level of ordinary skill, which both experts define similarly. Ex. 1007 ¶ 25 (Schmandt: at least a bachelor’s degree in electrical engineering, computer science, or equivalent, and 1–3 years of experience in designing and programming consumer electronic devices); Ex. 2003 ¶ 8 (McAlexander: bachelor’s degree in electrical engineering or computer engineering, and at least two years of experience in the design of audio systems). This level of skill is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). AAD’s focus on whether the Sound Blaster hardware sound card could be installed on the Lucente device, or whether the Sound Blaster software could run on Lucente’s operating system, ignores that a person of 38 ordinary skill is a “person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.” slip op. at 37

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “In cases in which the proffered evidence of commercial success is licenses, rather than sales of products embodying the invention, there is a danger that the licenses may have been taken only because they were cheaper than defending an infringement suit. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 908 (Fed. Cir. 1985). In such situations, nexus between the commercial success and the patent cannot be inferred; rather, “affirmative evidence of nexus” is required. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004). In other words, a patent owner must demonstrate “a nexus between the merits of the invention and the licenses of record”; otherwise, the licenses are to be accorded little weight. In re GPAC Inc., 57 F.3d at 1580 (emphasis added). HTC notes that each of the licenses listed by Mr. Keller includes at least two patents that explicitly claim a compact disc recorder, an element not present in the claims of the ’403 patent. Pet. Reply 24. HTC also contends that AAD fails to demonstrate any link between the invention of the ’403 patent and the taking of the license; for example, AAD provides no 27 apportionment of revenues to show the amount attributable to the ’403 patent, as opposed to the other members of the licensed family. Id. We agree with HTC that the evidence provided by AAD does not establish a sufficient link between the merits of the invention claimed in the ’403 patent and the taking of the licenses. Although Mr. Keller notes that some of the provided licenses were taken in situations where there was no pending litigation against the licensee (Ex. 2004 ¶ 9), he does not address whether litigation had been threatened against those parties. We, therefore, cannot determine whether the licenses reflect the commercial value of the invention claimed in the ’403 patent, or whether they were taken merely to avoid the cost of litigation, either pending or threatened. Absent a persuasive showing of nexus, AAD’s evidence of licensing fails to establish commercial success. We conclude that the evidence of objective indicia of nonobviousness is insufficient to overcome the evidence of obviousness over the combined Nathan references.” slip op. at 27

  Patent outcomesUS 6,587,403 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 6,587,403
• Toshiba Corporation / Funai Electric Co., Ltd. et al. v. Gold Charm LimitedInstitution denied
  PTAB · Dec 28, 2015 · IPR2015-01479 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on any asserted ground.

  RulingsInstitution decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner that “[t]he use of the term ‘backlight’ rather than simply ‘light’ indicates that something is being illuminated from behind.” Id. at 28. Petitioner’s proposed constructions (Pet. 13–16) are unreasonably broad insofar as they do not account for the use of the term “backlight.” We also agree with Patent Owner (see id.) that it is clear in the context of the ’833 patent that the recited backlights are in a liquid crystal display apparatus. See Toro Co. v. White Consol. Indus. Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999) (words used in a claim are not construed in a “lexicographic vacuum, but in the context of the specification and drawings”); In re Marosi, 710 F.2d 799, 802 (Fed. Cir. 1983) (“[C]laims are not to be read in a vacuum, and limitations therein are to be interpreted in light of the specification in giving them their ‘broadest reasonable interpretation.’” (emphasis omitted) (quoting In re Okuzawa, 537 F.2d 545, 548 (CCPA 1976)). Petitioner, and its expert Dr. Silzars, recognize in their statements regarding the level of ordinary skill in the art that the relevant art here is “display technologies.” See Pet. 12; Ex. 1002 ¶ 13. Notably, however, despite Petitioner’s assertions and Dr. Silzars’ opinions that “[t]he alleged invention boils down to a method for minimizing the electrical noise generated when simultaneously driving multiple lights,” that the “‘liquid crystal display’ modifier” in the preambles of the challenged claims “merely states a purpose or intended use of the invention” (Pet. 20–22; Ex. 1002 ¶¶ 58–59), and that “there is no structure that is specific to LCDs recited in the body of any of the claims,” neither Petitioner nor Dr. Silzars identifies any context in which backlights would be employed by those of ordinary skill in the art of display technologies, other than in an LCD. Accordingly, on this record and for purposes of this Decision, we determine that the broadest reasonable interpretation of the term “backlight” is “a lamp or set of lamps that illuminates a liquid crystal display from behind.” Because the claims already explicitly define the relationship between the “first backlight” and the “second backlight”—for example, claim 1 recites, in relevant part, that the second backlight is “driven simultaneously with said first backlight” and “ha[s] an oscillation wave whose phase is inverted with respect to an oscillation wave of the first backlight”—we discern no need to provide separate interpretations of “first backlight” and “second backlight.” We also decline to adopt Patent Owner’s proposal to limit the “second backlight” to include “all remaining lamps of the . . . apparatus that are not in the first backlight.” Because independent claims 1 and 16 use the open-ended transitional phrase “comprising,” those claims do not exclude additional, unrecited elements and method steps, respectively. See Manual of Patent Examining Procedure § 2111.03 (9th ed., Rev. 07.2015 Nov. 2015). 2. Other Claim Terms For purposes of this Decision, no other claim terms require express interpretation. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be construed ‘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 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)

    “B. Anticipation and Obviousness “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). [U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed[,] and thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008); accord In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Moreover, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)

    “A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are “such that the subject matter[,] as a whole[,] would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze the asserted grounds with the principles identified above in mind.” slip op. at 13

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “D. Remaining Contentions The above determination makes it unnecessary to resolve any other disputes, including Patent Owner’s assertion that Petitioner failed to list all of the real parties in interest. See Prelim. Resp. 4–14; Petitioners’ Reply to Patent Owner’s Preliminary Response, Paper 9; Patent Owner’s Sur-Reply to Petitioners’ Reply, Paper 10.” slip op. at 33

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,417,833
• Microsoft Corporation v. Bradium Technologies LLCInstitution denied
  PTAB · Dec 23, 2015 · IPR2015-01434 · APJ Brian J Mcnamara · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “to institute an inter partes review of claims 1–20 (the “challenged claims”) of U.S. Patent No. 7,908,343 B2 (“the ’343 Patent”). 35 U.S.C. § 311. Bradium Technologies LLC (“Patent Owner”) timely filed a Preliminary Response, Paper 12 (“Prelim. Resp.”), contending that the Petition should be denied as to all challenged claims. We have jurisdiction under 37 C.F.R. § 42.4(a) and 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

  • BurdenOther

    “map each claim element to a particular teaching of an asserted reference. In particular, Patent Owner notes that, rather than state the claim language in the Petition, Petitioner provides Exhibit 1013, which breaks the claims into specific phrases and assigns each phrase a designation, e.g., 1.A, 1.B. Prelim. Resp. 32. Patent Owner argues that Petitioner’s approach improperly incorporates the claims by reference and that no relief can be granted unless the arguments in the Petition itself, of which the claims are an essential part, support granting the relief. Id. at 33. We agree that Petitioner’s use of an Exhibit to specify the claim elements and its failure to include the claim language anywhere in the Petition is an improper incorporation by reference. Nevertheless, although the claim language is not repeated in the Petition, the Petition contains a paragraph for most, if not all the claim element designations. Therefore, we do not dismiss the Petition on this basis alone.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “specification, neither “data parcel” nor “update data parcel” is defined explicitly in the ’343 Patent. The ’343 Patent refers to “source image data” being processed to obtain a series of K1-N derivative images of progressively lower image resolution. Ex. 1001, col. 6, ll. 6–6. The ’343 Patent also discloses the source image data corresponding to the series image K0 being subdivided into a regular array such that each resulting “image parcel” of the array has, for example, 64 by 64 pixel resolution, where the “image data” has a color or bit per pixel depth of 16 bits, which represents a “data parcel” size of 8 K bytes. Ex. 1001, col. 6, ll. 6–11. Thus, an image parcel is an element of a source image array that defines a source image and a data parcel is data that corresponds to an image parcel. In view of this disclosure, we construe “data parcel” to mean data that corresponds to an element of a source image array. We agree that no other specific claim construction is required and we accord the claim terms their ordinary meaning as used in the ’343 Patent specification.” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artReference not prior artMixed

    “REFERENCES ARGUED AS NOT APPLICABLE PRIOR ART Patent Owner contends that Petitioner has failed to demonstrate that Potmesil (Ex. 1002) and Lindstrom (Ex. 1004) constitute applicable prior art references. Prelim. Resp. 3–12. We addressed the same arguments as those advanced by Patent Owner in this proceeding in our Decision to Institute in related proceeding Microsoft Corp. v. Bradium Technologies LLC, Case IPP2015-01432, slip op. at 10–14 (PTAB Dec. 23, 2015)(Decision to Institute)3 and Microsoft corp. v. Bradium Technologies LLC, Case IPR2015-01435, slip op. at 8–16 (PTAB Dec. XX, 2015)4. We arrive at the same result in this proceeding and find that, although Petitioner has established that Potmesil is applicable as prior art, Petitioner has not established Lindstrom is prior art that may be applied in Petitioner’s challenge.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,908,343
• Microsoft Corporation v. Bradium Technologies LLCInstitution denied
  PTAB · Dec 23, 2015 · IPR2015-01435 · APJ Minn Chung · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving any claim unpatentable on the asserted grounds.

  RulingsInstitution decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “Whether a reference qualifies as a “printed publication” involves a case-by-case 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). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (quoting In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)). 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) (citation and internal quotation marks omitted). Often, the determination of public accessibility turns on whether a reference is indexed and catalogued in a meaningful way. For example, an uncatalogued and unshelved thesis in a university library, notwithstanding its accessibility to a graduate committee, was not sufficiently accessible to the public to constitute a printed publication within the meaning of 35 U.S.C. § 102(b) because the “thesis could have been located in the university library only by one having been informed of its existence by the faculty committee, and not by means of the customary research aids available in the library.” In re Bayer, 568 F.2d 1357, 1361–62 (CCPA 1978). In contrast, a dissertation shelved in the stacks and indexed in the catalog at a university library was found to be a printed publication. In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). However, indexing and cataloging must be prepared in a “meaningful” way, e.g., in relationship to the subject matter of the references, to allow an interested researcher exercising reasonable diligence to locate the prior art. See Cronyn, 890 F.2d at 1161.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Ex. 1001, col. 12, ll. 47–52; col. 13, ll. 55–60; col. 14, ll. 57–62. For claim 1, Petitioner identifies this limitation as elements 1.H, 1.I, and 1.J.8 Ex. 1012, 1. Petitioner treats these elements separately as if they are three distinct limitations, each describing or capturing a discrete feature or concept. See Pet. 44–45. As discussed below, Petitioner’s analysis is fundamentally flawed because the common limitation set forth above must be considered as a whole. The reason is that the limitation captures a single concept described in the Specification—a concept that can be understood only when the limitation is considered as a whole. Petitioner’s omission of the actual claim language in its analysis and using the labels (e.g., claim elements 1.H, 1.I, or 1.J) in place of the claim language obscures the problem underlying Petitioner’s approach and reinforces the erroneous impression that the Petitioner-identified elements are separate and distinct limitations.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Petitioner does not explain adequately the reasons to combine the references to teach elements 1.H, 1.I, and 1.J. An invention “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Petitioner must also show that there was a reason to combine those elements to achieve the claimed invention with a reasonable expectation of success. See PAR Pharm., Inc. v. TWi Pharms., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). First, we note that not all combinations elements 1.H and 1.I satisfy element 1.J, “such that each image parcel being of a fixed byte size.” For example, if the resolution increased by a factor of two while the array subdivision decreased by a factor of two from one image to the next in the series of images, the byte size of the image parcels would increase by a factor of four. In another example, reducing the resolution by a factor of four while reducing the array subdivision by a factor of eight would increase the byte size of the image parcels by a factor of two. In both examples, elements 1.H and 1.I would be satisfied but not element 1.J because each image parcel of the two successive images would not be of a fixed size as required by the claim. Hence, in order to show that the combination of Rutledge, Ligtenberg, and Cooper teaches the claimed feature of elements 1.H, 1.I, and 1.J, Petitioner must show how a person of ordinary skill would be motivated to combine the references to teach varying the resolution and array subdivision in a specific way, e.g., both decreasing by a factor of four, “such that each image parcel [is] of a fixed byte size.”” slip op. at 23

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “testifies that “[s]ince each tile in a layer has the same size (‘fTileSize’) . . . it would be obvious that each image parcel could have the same fixed byte size.” Ex. 1009 ¶ 218. However, the cited portion in column 13 of Ligtenberg appears to be a listing of C language source code, which shows that “fTileSize” is a variable for storing 16-bit integer values. See Ex. 1005, col. 13, ll. 30–37 (“UInt16 fTileSize;”). Dr. Michalson does not cite any disclosure in Ligtenberg that requires this value to remain constant for all layers of resolution. Instead, Dr. Michalson asserts that “it would be obvious that each image parcel could have the same fixed byte size” because “using a fixed size . . . could improve predictability of the system” by making “the caching process more straightforward.” Ex. 1009 ¶ 218 (emphases added). However, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. Nov. 5, 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Dr. Michalson justifies his “could have” reasoning by making an analogy to stacking cubic boxes of the same size in a room. Ex. 1009 ¶ 218. We are not persuaded by Dr. Michalson’s testimony because it is conclusory and provides insufficient explanation why a person of ordinary skill would have modified Ligtenberg to teach the claimed feature, i.e., each image parcel having the same byte size for any resolution layer or across all resolution layers. The lack of adequate reasoning in Dr. Michalson’s testimony indicates that Dr. Michalson relies on impermissible hindsight. See KSR, 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (“Where, as here, the necessary reasoning is absent, we cannot simply assume that ‘an ordinary artisan would be awakened to modify prior art in such a way as to lead to an obviousness rejection.’ It is in such circumstances, moreover, that it is especially important to guard against the dangers of hindsight bias.” (citation omitted)); ActiveVideo Networks, Inc. v. Verizon Communications, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012) (“[T]he expert’s testimony on obviousness was essentially a conclusory statement that a person of ordinary skill in the art would have known, based on the ‘modular’ nature of the claimed components, how to combine any of a number of references to achieve the claimed inventions. This is not sufficient and is fraught with hindsight bias.”). Therefore, we are not persuaded that Petitioner has demonstrated Ligtenberg teaches element 1.J, “such that each image parcel being of a fixed byte size,” as recited in claim 1.” slip op. at 22

  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,924,506
• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · Dec 21, 2015 · IPR2015-01426 · APJ Robert J Weinschenk · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 37, 41, 43, and 45–48 were unpatentable under the asserted § 103 grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Pet.”) requesting inter partes review of claims 37, 41, 43, and 45–48 of U.S. Patent No. 8,692,659 B2 (Ex. 1002, “the ’659 patent”). Magna Electronics Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the Petition. An inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 37, 41, 43, and 45–48 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. slip op. at 2

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner

    “written description of an attachment member attached to a vehicle windshield and local to a mirror mounting button, as recited in the challenged claims. Pet. 12–15 (citing Ex. 1213 ¶¶ 31–33, 40, 44–46). Petitioner’s argument is not persuasive. The ’287 patent discloses the” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “We also are not persuaded, on this record, that it would have been obvious to combine the cited teachings of Schofield and Klappenbach. Petitioner argues that it would have been obvious to use the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach because the vehicle headlight dimming control in Schofield provides more functionality. Id. at 48 (citing Ex. 1213 ¶ 56). Petitioner’s argument explains why one of ordinary skill in the art would select the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach, but does not explain why it would have been obvious to mount the vehicle headlight dimming control in Schofield using the fastening device and housing in Klappenbach. Petitioner argues that the housing in Klappenbach would advantageously seal the components of the camera in Schofield to prevent intrusion of elements from the environment. Pet. 48 (citing Ex. 1213 ¶ 58). Petitioner’s argument is not persuasive because Schofield teaches that the imaging sensor module disclosed therein already is protected from such intrusions. Ex. 1007, col. 3, l. 67–col. 4, l. 4. Further, the housing in Klappenbach is not just a protective housing for sensor components, but, rather, a structure designed specifically to accommodate transmitter 10 and receiver 11, as shown in Figure 1. Ex. 1010, col. 3, ll. 46–67, Fig. 1. Petitioner also argues that the fastening device in Klappenbach can be preinstalled. Pet. 48–49 (citing Ex. 1213 ¶ 58). Petitioner does not explain, though, why that would have made it obvious to use the fastening device and housing in Klappenbach with the vehicle headlight dimming control in Schofield. Moreover, Petitioner does not provide a specific explanation or identify specific evidence showing that it would have been obvious to one of ordinary skill in the art that the housing in Figures 1 and 2 of Klappenbach is, or can be, configured to accommodate a forward facing camera generally or the vehicle headlight dimming control in Figure 1 of Schofield particularly. Pet. 45–49. Therefore, on this record, Petitioner has not shown sufficiently that it would have been obvious to one of ordinary skill in the art to combine the cited teachings of Blank, Schofield, and Klappenbach in the manner proposed by Petitioner.” slip op. at 12

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,692,659
• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · Dec 21, 2015 · IPR2015-01431 · APJ Phillip J Kauffman · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 62–66 and 69 were unpatentable under § 103.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 62–66 and 69 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. B.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “§ 112, first paragraph, does not require the description to be literally the same as the claim language at issue. In re Wertheim, 541 F.2d 257, 265 (CCPA 1976); In re Lukach, 442 F.2d 967, 969 (CCPA 1971). Rather, by whatever language, the specification only must convey with reasonable clarity to those skilled in the art that, as of the filing date of the application, the inventor was in possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991); see also Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citing with approval the standard in Vas Cath, and stating “the test for sufficiency is 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.”). Petitioner contends that pursuant to the holding in Lockwood, the specific combination found in each of the challenged claims of the ’659 patent must be disclosed in the ’287 patent in order to meet the written description standard. See Pet. 10–17 (citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997)). To the extent that Petitioner suggests that the combination must be disclosed in a single embodiment, we disagree. Rather, in Lockwood, the court relied upon the written description standard found in Vas-Cath, and held that because one of the continuations in the chain of five applications did not describe the claim features, the later patent could not claim priority to the earlier patent. Lockwood, 107 F3d at 1571–72 (citing Vas-Cath Inc., 935 F.2d at 1563–64). Consequently, we agree with Patent Owner that the written description requirement does not compel that a single embodiment fully describe the invention. See Prelim. Resp. 9–12. With this standard in mind we analyze Petitioner’s contentions.” slip op. at 7

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner

    “We have reviewed the parties’ assertions and supporting evidence, and, for the reasons discussed below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that the ’287 patent is prior art.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “b) Rationale Petitioner’s rationale for the proposed modification is not persuasive. First, Petitioner contends that it would have been obvious to utilize Klappenbach’s housing 2 in Blank’s device to provide rain sensor functionality. Pet. 37. Then Petitioner reasons it would have been obvious to replace Klappenbach’s rain sensor with the improved functionality of Schofield’s camera that includes rain sensing capability. See id. at 43. Petitioner’s argument explains why one of ordinary skill in the art would select Schofield’s camera, rather than the Klappenbach’s rain sensor, but does not explain why it would have been obvious to mount Schofield’s camera in Klappenbach’s housing. See Prelim. Resp. 32–33. Second, Petitioner reasons that Klappenbach’s housing would advantageously seal the components of Schofield’s camera to prevent intrusion of elements from the environment. Pet. 38, 43–44 (citing Ex. 1713 ¶ 59). However, Schofield’s camera already is protected from such intrusions. See Ex. 1007, 3:67–4:4; Prelim. Resp. 32, 34. Third, Petitioner reasons that Klappenbach’s technique of attaching the fastening device during windshield manufacture is a manufacturing advantage because the sensor is not mounted until after the motor vehicle is built. Pet. 37–38 (citing Ex. 1010, 2:11–16; Ex. 1713 ¶ 58). As discussed above, Klappenbach’s device is mounted pressed against and at the angle of the windshield, while Schofield’s is mounted spaced from the windshield and horizontal. Petitioner does not explain persuasively how Klappenbach’s technique provides a manufacturing advantage for a device such as Schofield’s camera that is mounted in a different manner. See Prelim. Resp. 32 (noting this advantage is particular to a refractive rain sensor). Further, Petitioner’s reasoning is contradictory in that it touts that Schofield’s camera “advantageously eliminates the requirement for optical coupling,” yet relies upon Klappenbach’s mounting technique for optical coupling. See Ex. 1713 ¶ 59. 5. Conclusion For at least the foregoing reasons, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claims 62, 63, 65, 66, and 69 would have been obvious over Blank, Schofield, Klappenbach, and Batavia. C. OBVIOUSNESS OVER BLANK, SCHOFIELD, KLAPPENBACH, BATAVIA, CARTER, AND ADMITTED PRIOR ART” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 8,692,659
• Valeo North America, Inc. / Valeo S.A. et al. v. Magna Electronics, Inc.Some claims unpatentable
  PTAB · Dec 21, 2015 · IPR2014-01208 · APJ Phillip J Kauffman · IPR · Final written decision

  Claims 2, 3, 5, 7, 11, 12, 18, 19, 21–23, 25, 26, 28, 32–35, 37, 40, and 44–46 are unpatentable; claim 24 was not shown unpatentable.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “§ 42.64(c). Patent Owner seeks to expunge (vice exclude) the Broggi Declaration (Ex. 1033) because it was not timely served in response to Patent Owner’s first set of objections. See id. at 12; Opp. Reply 1–2.; Ex. 1036, 2; Ex. 2015; 37 C.F.R. § 42.64(b)(2). As the moving party, Patent Owner bears the burden of proof. See 37 C.F.R. § 42.20(c). We address first Exhibit 1033 and then the remaining exhibits in reverse chronological order of their filing. 1. Broggi Declaration (Ex. 1033) As explained above, the Broggi Declaration is not supplemental evidence because the objection to which it was served in response was not proper. Because the Broggi Declaration is not evidence, supplemental evidence, or supplemental information, we expunge it.” slip op. at 15

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner

    “4. Summary Broggi is a printed article titled “Multi-Resolution Vehicle Detection using Artificial Vision.” The first page makes reference to the 2004 IEEE Intelligent Vehicles Symposium held at the University of Parma in Parma Italy on June 14–17, 2004, and includes a copyright date of 2004 that is consistent with this information. Broggi is not marked with any limitations regarding dissemination. Dr. Frahm, as a person who has chaired an IEEE conference and regularly attended IEEE conferences, states that it is his experience that IEEE papers, such as Broggi, that are presented are made publically available at that conference as is indicated on the face of the paper. Although he did not attend the Symposium, the Senior Director of Publishing Technologies for IEEE, Mr. Grenier, states that IEEE records indicate that Broggi was published and presented as part of the proceedings on the date of the Symposium. The Office Manager of the Internet Archive, Mr. Butler, provides records that indicate that Broggi was posted to a public website no later than October 12, 2004.” slip op. at 34

  • Skill levelDecided for patent owner

    “Petitioner’s expert, Dr. Frahm, provided testimony regarding the level of skill in the art. See Ex. 1010 ¶¶ 43–48. Although the level of skill in the art is not discussed in the Petition, Dr. Frahm acknowledged that obviousness is viewed from the perspective of a person of ordinary skill in the art, and applied that standard to his evaluations. Id. ¶¶ 28–29. That is, Dr. Frahm’s evaluations of the grounds of unpatentability based on obviousness is based on the perspective of a person of ordinary skill in the art at the time of the claimed invention, and this analysis is cited and explained in the Petition. address the merits of the level of skill in the art provided. The significance of the level of ordinary skill in the art is the role it plays in an obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). Patent Owner’s assertion fails to address how the level of skill in the art impacted the obviousness analysis.” slip op. at 35

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “Patent Owner’s Preliminary Response argued that we should deny the Petition based on 35 U.S.C. § 325(d). See Prelim. Resp. 2, 7–12. We considered this argument and declined to exercise our discretion to deny the Petition. See Dec. 12–15. Patent Owner’s current argument adds nothing to 30 We presume the second citation, which is to “§ 315(d)” is a typographical error and “§ 325(d)” was intended. the Petition on that basis.” slip op. at 36

  Patent outcomesUS 7,991,522 mixed
  § 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,991,522
• Coleman Cable, LLC / Jiawei Technology (HK) Ltd. et al. v. Simon Nicholas RichmondAll claims unpatentable
  PTAB · Dec 21, 2015 · IPR2014-00935 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–7, 9, 10, 14, 17–20, 23, 28, 43, 45, and 48–50 are unpatentable under the instituted anticipation and obviousness grounds.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “Notwithstanding a “reasonably comprehensive search of U.S. patents and published patent applications on the USPTO website to look for the term ‘surround frame’” by Dr. Ducharme (id. ¶ 81), there is no evidence that the term “surround frame” is a term that has a single recognized meaning to a person of ordinary skill in the technology relevant to the claimed invention of the ’370 patent, or is otherwise considered a term of art. See Tr. 67, ll. 15–23 (“We don’t have anything like that in the record, Your Honor.”). Dr. Ducharme was not able to identify a single patent that used the term “surround frame” in a technology analogous to the claimed invention. Patent Owner maintains, however, that the term “surround frame” has “a uniform, well accepted and consistently used meaning to persons in the art . . . . That is our position.” Id. at 51, ll. 2–6. The evidence of patents and published patent applications directed to doors and window frames, eyeglass frames, and other technologies on which Patent Owner relies, is not persuasive that the detailed construction of the term “surround frame,” advocated by Patent Owner and quoted above, is the broadest reasonable construction of that term based on the intrinsic and extrinsic evidence. The patents and published patent applications have different specifications, use the term in different contexts, and do not show that the term has a common meaning across technology areas.” slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, a court may consider various factors, including “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir.1986)). The ’370 patent, Ouyang, and Chliwnyj include circuit diagrams, and Norton and Kuelbs address circuitry for lighting assemblies. The parties seem to agree that a person of ordinary skill in the art would be capable of reading the circuit diagrams and understanding what function(s) they perform, at least at some level. PO Resp. 3 (arguing that “[t]he primary area of expertise of a [person of ordinary skill in the art] is that of a person having knowledge of electrical engineering, in particular the ability to recognize how a pre-designed circuit may operate”); Pet. Reply 2–5. Patent Owner in its Response, however, asserts that a person of ordinary skill in the art would have had a “basic knowledge of . . . electrical circuits” and related components in solar garden lights, but he or she would be unable to make any modifications to those circuits and would only be capable of taking them whole cloth and inserting them into another device. See PO Resp. 4–5; see also Ex. 2022 ¶ 39 (Patent Owner’s declarant Dr. Ducharme testifying that a person of ordinary skill would be capable of “making only simplistic changes to the exterior aesthetic of the product to make the product appealing to consumers. But a person of ordinary skill and creativity in the art does not have the ability to re-design the aesthetic effect of a solar garden light by either mechanical or electrical means.”). Patent Owner would seemingly limit the person of ordinary skill in the art to ornamental design changes only. We reject the notion that a person of ordinary skill in the art would only be capable of making ornamental design variations. Under Patent Owner’s proposed level of skill, any functional modification would be beyond the level of ordinary skill in the art and render the modified device patentable (so long as it was not anticipated); this proposed level of skill is so low it eviscerates the notion of obviousness. Instead, upon review of the record before us, we find that a person of ordinary skill in the art is able to comprehend what is being shown in the prior art and has some ordinary level of creativity with respect to their modification. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Based on our review of the factors above in the current record, we agree” slip op. at 34

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “1. Dr. Shackle’s Declaration Petitioner cites and relies on the Declaration of Dr. Shackle, which is Exhibit 1002, for evidentiary support. Patent Owner objects to Dr. Shackle’s qualifications as an expert because “Dr. Shackle has never designed a solar light.” PO Resp. 10. Patent Owner also objects to Dr. Shackle’s qualifications because he conducted a “retrospective review” of the prior art. Id. at 11. Dr. Shackle has a Ph.D. in Physics. Ex. 1002 ¶ 2. Physics is “the branch of science concerned with the properties of matter and energy and the relationships between them. It is based on mathematics and traditionally includes mechanics, optics, electricity and magnetism, acoustics, and heat.”6 In addition to his academic credentials, Dr. Shackle has over twenty years of experience in the field of lighting electronics, with particular emphasis on LED drivers and electronic ballasts. Ex. 1002 ¶ 3. This experience includes, but is not limited to: President and Founder of Photolume, a consulting company in the field of lighting electronics products; Director of Power Supply Products at Light Based Technologies; Chief Technologist at Lightech Electronics North America, Inc.; and Director of Engineering and later V.P. of Advanced Technology at Universal Lighting Technologies, Inc. Id. In these positions, Dr. Shackle was responsible for developing a number of LED circuits and products. Id., App’x A (CV of Dr. Shackle). The ’370 patent refers very generally to LEDs, solar panels, and related circuits. See, e.g., Ex. 1001, col. 6, ll. 25–53. Considering the well-known basic technology of solar cells and solar circuits, and the type and sophistication of the 6 physics. Dictionary.com. Collins English Dictionary - Complete & Unabridged 10th Edition. HarperCollins Publishers. http://dictionary.reference.com/browse/physics (accessed: December 16, 2015) (Ex. 3002). solar cell technology disclosed and claimed in the ’370 patent, Dr. Shackle appears qualified by knowledge, experience, training, and education to testify in the form of an opinion in this proceeding. Patent Owner was entitled to, and did, cross-examine Dr. Shackle based on his Declaration testimony as part of routine discovery. See 37 C.F.R. § 42.51(b)(1)(ii). We discussed the issue of Dr. Shackle’s “retrospective review” above in the” slip op. at 32

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “a. General Legal Principles [U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008); see also Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987) (“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”). “The identical invention must be shown in as complete detail as is contained in the . . . claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989).” slip op. at 36

  Patent outcomesUS 8,089,370 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,089,370

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.