- PTAB · Oct 12, 2023 · IPR2023-00614 · APJ Zhenyu Yang · IPR · Institution
The Board instituted review of claims 1–3, 6–18, 21–24, and 27–29 on all asserted grounds, finding a reasonable likelihood of obviousness over Ducharme, Ianiro, Katzir, and Hasnain.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Patent Owner has not persuaded us to exercise our discretion to deny institution. Accordingly, we institute an inter partes review of all challenged claims based on all grounds raised in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“consider “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, 8. We focus our analysis on Ducharme, one of the primary references asserted in the Petition. Although Ducharme was “not before the Office during examination of the [’]895 Patent,” Patent Owner asserts that it is cumulative to a reference that “was presented to the Office during examination by IDS.” Prelim. Resp. 42–43. Patent Owner does not point to, and we have not found, any evidence showing discussion or application of the previously presented reference by the Examiner during prosecution of the ’895 patent or its related patents. In other words, “the record of the Office’s previous consideration of the art is not well developed or silent.” Advanced Bionics, 10. In such situations, “a petitioner may show the Office erred by overlooking something persuasive.” Id.; see also id. at 8 n.9 (“An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.”). On this record, Petitioner has shown sufficiently that the Examiner overlooked Ducharme’s teachings of the limitations that were the basis for allowing the challenged claims. Indeed, the Examiner allowed the challenged claims, stating that the closest prior art references lack the teachings of the emitted light being suitable for the commercial image recording when the emitted light is simultaneously at least 1000 lumens when either the first or the second LEDs are lit, is broad-spectrum white light having a color deviation corresponding to less than 5 points of both green and magenta of color compensation, and has a color rendering index of light emitted from each of the first or the second LEDs (whichever is lit) that is greater than 90. Ex. 1002, 150. Petitioner’s evidence indicates that Ducharme teaches an LED light suitable for commercial image recording that includes a plurality of first white LEDs having a first spectrum and a plurality of second white LEDs having a second spectrum. See, e.g., Ex. 1005, 4:1–7. Petitioner’s evidence also indicates that a person of ordinary skill in the art would have had reason to select first white LEDs with a daylight spectrum and second white LEDs with a tungsten spectrum. See, e.g., Ex. 1003 ¶ 449; Ex. 1006 ¶ 53. Further, Petitioner’s evidence indicates that LEDs satisfying the light quality parameters recited in the challenged claims were known to those of ordinary skill in the art. See, e.g., Ex. 1003 ¶ 480; Ex. 1005, 25:36–43; Ex. 1007, 7:11–15; Ex. 1008, 4:1–3. Thus, the evidence cited in the Petition demonstrates that the Office” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties agree that, for purposes of this Decision, no claim term needs specific construction beyond its plain and ordinary meaning. Pet. 14; Prelim. Resp. 14. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to address the construction of any claim term.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a Bachelor of Science degree in electrical engineering, or a closely related field, along with at least two years of experience in the design of entertaining lighting systems, and the design and use of LEDs.” Pet. 14 (citing Ex. 1003 ¶ 32). Patent Owner does not dispute Petitioner’s definition of the skill level at this stage of the proceeding. Prelim. Resp. 13. For purposes of this Decision, we adopt Petitioner’s definition of the skill level because it is consistent with the prior art’s demonstration of the skill level at the time of the invention.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,566,895 - PTAB · Oct 10, 2023 · IPR2023-00611 · APJ Christopher L Crumbley · IPR · Institution
The Board instituted IPR on claims 1, 3, 4, 7–13, 23, 25, 26, 28, 29–39, and 41–45 on all asserted grounds, finding a reasonable likelihood of success over Mueller, Ansems, and Simon.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2022). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that 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.”” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“whether the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, Paper 6 at 8. Central to this analysis is factor (c) of Becton, Dickinson, which “focuses on the record developed by the Office in previously reviewing the art or arguments.” Id. at 10. In cases where the Office raised a specific teaching of a reference during prosecution, and the petitioner disagrees with that specific finding of record, “then ordinarily the petitioner’s required showing of material error must overcome persuasively that specific finding of record.” Id. On the other hand, we are often presented with circumstances such as those found in the present case, where the prior art that was previously presented to the Office was not substantively remarked upon or applied in a rejection of the claims. This often occurs in the context of art submitted on an IDS, which is the manner in which the majority of the references identified by Colt in this case were incorporated into the file history. Ex. 1002, 216 (Kit, Ducharme ’261, Mueller ’029), 217 (Katzir). Only Simon” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Skill Quasar asserts that a person of ordinary skill in the art at the time of the invention would have had “at least a Bachelor of Science degree in electrical engineering, or a closely related field, along with at least two years of experience in the design of entertaining lighting systems, and the design and use of LED lights.” Pet. 16 (citing Ex. 1003 ¶¶ 32–33). Colt does not dispute Quasar’s characterization of the level of skill, arguing that “the proposed level of ordinary skill does not affect the ultimate analysis.” Prelim. Resp. 15. At this stage of the proceeding, we adopt Quasar’s definition of the level of skill in the art, which is consistent with the disclosure of the ’224 patent and asserted prior art of record. If the parties disagree with our preliminary finding, they are invited to further brief the issue of level of ordinary skill in the art and, in particular, which disputed issues material to patentability turn on the definition adopted by the Board.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“35 U.S.C. § 282(b), as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. See 37 C.F.R. § 42.100(b) (2022). Under this standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. See Phillips, 415 F.3d at 1312–13. Both parties agree that the terms of the claims of the ’224 patent should be given their ordinary and customary meaning, but neither party further elaborates on what those meanings are for any particular claim term. Pet. 16–17; Prelim. Resp. 15. We interpret the parties’ positions to be that no claim term of the ’224 patent requires express construction for purposes of deciding whether to institute trial. Upon review of the record and the parties’ arguments, we agree. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,197,224 - PTAB · Oct 10, 2023 · IPR2023-00613 · APJ Robert J Weinschenk · IPR · Institution
Instituted IPR on claims 1–3, 6–14, 16–19, 21–24, and 26–31 on all petitioned grounds; petitioner showed a reasonable likelihood of prevailing on obviousness over Ducharme, Ianiro, Katzir, and Hasnain.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“would have been obvious over Ducharme, Ianiro, Katzir, and Hasnain. Pet. 47–75. For the reasons discussed below, Petitioner demonstrates a reasonable likelihood of prevailing in showing that claims 1–3, 6–14, 16–19, 21–24, and 26–31 would have been obvious over Ducharme, Ianiro, Katzir, and Hasnain.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a Bachelor of Science degree in electrical engineering, or a closely related field, along with at least two years of experience in the design of entertaining lighting systems, and the design and use of LED lights.” Pet. 13 (citing Ex. 1003 ¶ 32). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Mr. Fred Holmes. Ex. 1003 ¶ 32. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 12. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms at this stage of the proceeding. Pet. 13; Prelim. Resp. 12–14. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,411,582 - Cisco Systems, Inc. v. Ramot At Tel Aviv University, Ltd.No claims unpatentablePTAB · Oct 3, 2023 · IPR2022-00576 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 13, 14, and 23–29 were not shown unpatentable as obvious over Roberts and Taraschuk, with or without Wright, because the asserted combinations did not teach or suggest the claimed delta features.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not discern a substantial difference between the parties’ definitions for the level of ordinary skill in the art. Instead, we determine that the parties’ definitions are substantially similar. We adopt Petitioner’s definition of the level of skill in the art, which is consistent with the disclosure of the ’872 patent and asserted prior art of record. The findings and conclusions rendered in this Decision would not change had we adopted Patent Owner’s definition.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We need not construe any claim term in our Decision in order to resolve the issues before us. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“for a LUT having the recited deltas except for Dr. Blumenthal’s analysis. Although Wright generally teaches compensating for mismatches, Dr. Blumenthal’s analysis fills in limitations 13.8 and 13.9––Petitioner does not set forth a sufficiently supported reason for using the specific values recited in limitations 13.8 and 13.9. At best, Petitioner presents an “obvious to try rationale”: In addition to the reasons mentioned above, a POSITA would have found it obvious to try a mapping scheme in which entries in the look-up table as taught by Taraschuk are selected such that successively decreasing inputs correspond to digital output entries with either decreasing, increasing, or similar deltas between their values. . . . Doing so would have involved choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. In that regard, the deltas between values of the corresponding digital outputs can either increase, decrease, or stay the same. Accordingly, there are only three possible relationships between deltas of successive digital outputs. With so few possibilities, a POSITA would have found it obvious to try each of them. Pet. 59 (citing Ex. 1003 ¶ 265). The analysis for 13.8 is incorporated by reference in 13.9. See Pet. 60. Although there are three possible relationships between two, consecutive deltas, there are many possible sequences of deltas––Petitioner does not sufficiently show a finite number of solutions in its challenge.” slip op. at 30
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner’s argument that the portions of Taraschuk in column 7, lines 61–67 and column 8, lines 13–15 cited by Petitioner in its challenge to claim 13 teach “an end-to-end approach” “because that calculation involves predistortion of the input M-bit word by subtracting a digitized analog sample of the ultimate output,” and as such, teach “[a]n approach that necessarily does one combined correction for all of the nonlinearities that occur in-between those ends—whether bit mismatches in the digital logic or non-linearities in the Mach-Zehnder modulator.” PO Sur-reply 18 (citing PO Resp. 30–36; Ex. 2018 ¶¶ 48, 49, 85–87, 89, 103; Ex. 1006, 7:34–39, 7:61–67). We further agree with Patent Owner’s assertion that [Patent Owner] and Prof. Dallesasse are not suggesting that Dr. Blumenthal should model the logic-level mismatches. But rather pointing out that calculating an idealized sinusoidal response in isolation is not obvious (or flowing naturally) from a reference that can only deal with compensating the combined response of the modulator and digital logic mismatches together—via real-time pre-distortion fed back from the ultimate output and subtracted from the input. Dallesasse testifies that Dr. Blumenthal starts with the premise that all that is required is deriving a complementary function to the sinusoidal response. . . . But this ignores that the disclosure of Taraschuk describes compensating “the sinusoidal response of the modulator” and “logic level mismatches through the D/A converter” together. . . . Dr. Blumenthal’s complementary sinusoidal correction curve won’t do that. The combined non-linearity from the multiple sources likely won’t simply be evenly sinusoidal. Taraschuk does not disclose, or in my opinion render obvious, any pre-calculation solution. (Taraschuk mentions a real-time analog feedback loop to pre-distort, which would not involve pre-calculation.) And it certainly does not suggest one that could deal with the combined and likely complex non-linearities described.” slip op. at 28
Patent outcomesUS 11,133,872 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,133,872 - Cisco Systems, Inc. v. Ramot At Tel Aviv University, Ltd.No claims unpatentablePTAB · Sep 29, 2023 · IPR2022-00575 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1–12, 15–22, and 30 were not shown unpatentable under § 103 over Roberts and Taraschuk because the combination did not teach or suggest the claimed mapping.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Inst. Dec. 25–26 (citing Ex. 1006, 8:2, 8:8, 6:61–65; Ex. 1003 ¶ 147; Prelim. Resp. 46). Based on our review of the complete record developed during trial, we are persuaded to modify our preliminary determinations. For the reasons discussed below, we are persuaded that the scope of claim 1 does not encompass linear compensation methods effected by analog pre-distortion because the ’872 patent specification distinguishes analog pre-distortion (see Ex. 1001, 1:55–2:34) and the prosecution history specifically distinguishes analog pre-distortion from the claimed approach (see Ex. 1002, 172). We find persuasive Dr. Dallesasse’s testimony that “a person of ordinary skill in the art reading the [’872] patent would understand that th[e] [claimed] approach differs from pre-distortion based on real-time measured analog modulator output.” Ex. 2018 ¶ 33 (citing-in-part Ex. 1001, 2:3–7 (’872 patent disclosing common, prior art solutions such as “an analog predistortion circuit to feed the modulator”)); see also Ex. 1001, (the ’872 patent describing the need for a “digital to analog converter” that would “improve[] linearity of response without sacrificing efficiency or dynamic range” as in the common, prior art solutions). Dr. Dallesasse explains how “the prosecution history of the ’872 patent [illustrates] that when [Patent Owner] changed ‘correct for non-linearities’ to the more specific language ‘determined based on a pattern for actuating drive voltages that alters the linearity of an optical response of the modulator,’” “the Examiner then allowed the claims over a rejection based on Roberts, which “suggests that there are ways to ‘correct for non-linearities’ that do not meet the amended Ex. 2009, 2; Ex. 2003). During prosecution, Patent Owner argued: Roberts does not disclose a “digital-to-digital mapping,” where, “for a given plurality of N digital input data bits, the mapping to the corresponding M digital output data bits is determined based on a pattern for actuating drive voltages that alters the linearity of an optical response of the modulator,” as recited in amended claim 1. Instead, the linear compensation in Roberts is performed pursuant to a compensation function c(t) when the Vx(n) multi-bit sample streams are generated. Importantly, this linear compensation in Roberts occurs before the mapping of Vx(n) to Sx(n). As a result, the mapping between Vx(n) to Sx(n) in Roberts, such as the mapping shown in Table 1 of Roberts, is not a part of the linear compensation operation performed in Roberts. Ex. 1002, 172 (emphasis added). We interpret the quoted passage to exclude analog pre-distortion because we interpret the argument distinguishing Robert’s compensation as happening “before the mapping” to refer to pre-distortion techniques––in particular, those accomplished by analog compensation function, c(t). Id. Both the ’872 patent and Patent Owner’s arguments during prosecution support Dr. Dallesasse’s testimony and Patent Owner’s position that the scope of claim 1 does not encompass linear compensation methods effected by analog pre-distortion.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“mapping is based on an analog feedback loop, by . . . quoting from the reference and leaving out the very next sentence” has merit. Sur-Reply 8 (citing Pet. Reply 23). Petitioner does not sufficiently address the cited teachings and in particular, Taraschuk’s teachings of calculating a difference between a “sampled analog output signal (S) and corresponding M-bit word” to a calculate a mapping “required to obtain the desired output analog signal level.” Ex. 1006, 7:34–39. We are persuaded Petitioner does not sufficiently rebut Patent Owner’s contention that Roberts’ and Taraschuk’s teachings of linear compensation are implemented by analog pre-distortion. Petitioner cannot ignore these teachings of Taraschuk and consider only the portions that support its challenge. See Pet. Reply 17 (citing Pet. 43–45; Ex.1006, 7:56–60) (“Patent Owner’s emphasis on Taraschuk’s digital feedback loop is also misplaced because the Petition simply relied on Taraschuk’s linearizer 44 as a discrete, known device for performing non-linear compensation of a Mach-Zehnder modulator.” (emphasis added)). Petitioner cannot set forth the teachings of Taraschuk in such a piecemeal sufficiently explain why the converter of Taraschuk relies on analog pre-distortion, or explain why analog pre-distortion is encompassed by the invention recited in independent claim 1, Petitioner does not sufficiently carry its burden.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable
“Second, Petitioner concludes that “a POSITA would have found it obvious to map input bits to output bits within the look-up table such that the output bits correspond to voltage values to be transmitted to electrodes of an optical modulator,” but offers no support other than Robert’s teaching that the DSP’s output is a multi-bit parallel binary signal. See id. at 51 (citing Ex. 1005, 6:40–42). That is, the sole basis for Petitioner’s conclusion that it would have been obvious to perform the claimed method is that the output is the same. Id. This is impermissible hindsight. Third, Petitioner essentially argues that a person would have found it obvious to perform the mapping because Taraschuk teaches a look-up table and non-linear compensation. Id. at 51–52. Yet the claim recites how the mapping is performed, which is left unaddressed by Petitioner. Id. That is, Petitioner has not shown where Taraschuck teaches mapping a given number look-up table, so that the output bits compensate for the non-linear effects of the optical modulator. Id. at 52. Rather, Petitioner provides a piecemeal analysis that uses the ’872 patent’s specification as a blueprint to pull together a look-up table, non-linear compensation, and a modulator to arrive at the claimed invention. See id. Thus, all three rationales for limitation 1.9 are deficient. See PO Resp. 27.” slip op. at 30
- Skill levelSkill level petitioner adoptedOther
“We do not discern a substantial difference between the parties’ definitions for the level of ordinary skill in the art. Instead, we determine that the parties’ definitions are substantially similar. We adopt Petitioner’s definition of the level of skill in the art, which is consistent with the disclosure of the ’872 patent and asserted prior art of record. The findings and conclusions rendered in this Decision would not change had we adopted Patent Owner’s definition.” slip op. at 8
Patent outcomesUS 11,133,872 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,133,872 - Chongqing HKC Optoelectronics Technology Co., Ltd. v. 138 East LCD Advancements LimitedInstitution deniedPTAB · Aug 28, 2023 · IPR2023-00476 · APJ Wesley B Derrick · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–11 unpatentable, principally failing to establish distinct lead wiring lines.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). To institute an inter partes review, we must determine that 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.” 35 U.S.C. § 314(a). We deny inter partes review, for example, where a petition fails to identify “with particularity” the challenges or evidence supporting them. Harmonic Inc. v. Avid Tech., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) as “requiring [inter partes review] petitions to identify ‘with particularity . . . the evidence that supports the grounds for the challenge to each claim’”); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). For the reasons discussed below, we deny institution of inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“display electrodes” and “a plurality of lead wiring lines provided on the extending portion and that are led from one of the sides of the wiring lines to the extending portion.” Ex. 1001, 16:40‒44. Separately listing “wiring lines” and “a plurality of lead wiring lines” clearly implies that wiring lines Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (internal quotation omitted) (“Where a claim lists elements separately, the clear implication of the claim language is that those elements are distinct component[s] of the patented invention.”); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404‒05 (Fed. Cir. 1996) (concluding that two separately recited elements could not be the same element because it would contradict the plain language of the patent and “they logically cannot be one and the same”). Here, the claim language identifies wiring lines and lead wiring lines as separate elements in that the “lead wiring lines . . . are led from one of the sides of the wiring lines to the extending portion.” Ex. 1001, 16:42‒ 44. Here also, the ’913 patent’s specification separately identifies and describes both lead wiring lines 103a and wiring lines 105 in a single embodiment. See, e.g., id. at Fig. 1, 7:42‒46 (“In FIG. 1, . . . [t]he wiring lines 105 are relayed on the upper side of the frame light-shielding film 53 so as to connect the two scanning line driving circuits 104.”), 8:26‒29 (“the data line driving circuit 101a is connected to the plurality of external connecting terminals 102a through the lead wiring lines 103a at both ends of the extending portion 201” (referring to the embodiment depicted in Figure 1)).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“display electrodes” and “a plurality of lead wiring lines provided on the extending portion and that are led from one of the sides of the wiring lines to the extending portion.” Ex. 1001, 16:40‒44. Separately listing “wiring lines” and “a plurality of lead wiring lines” clearly implies that wiring lines Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (internal quotation omitted) (“Where a claim lists elements separately, the clear implication of the claim language is that those elements are distinct component[s] of the patented invention.”); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404‒05 (Fed. Cir. 1996) (concluding that two separately recited elements could not be the same element because it would contradict the plain language of the patent and “they logically cannot be one and the same”). Here, the claim language identifies wiring lines and lead wiring lines as separate elements in that the “lead wiring lines . . . are led from one of the sides of the wiring lines to the extending portion.” Ex. 1001, 16:42‒ 44. Here also, the ’913 patent’s specification separately identifies and describes both lead wiring lines 103a and wiring lines 105 in a single embodiment. See, e.g., id. at Fig. 1, 7:42‒46 (“In FIG. 1, . . . [t]he wiring lines 105 are relayed on the upper side of the frame light-shielding film 53 so as to connect the two scanning line driving circuits 104.”), 8:26‒29 (“the data line driving circuit 101a is connected to the plurality of external connecting terminals 102a through the lead wiring lines 103a at both ends of the extending portion 201” (referring to the embodiment depicted in Figure 1)).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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. See Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). 7 Yoneda, JP2000267590A, published Mar. 19, 1999. Ex. 1011. 8 Tanaka, JP2004094020A, published Mar. 25, 2004, with exhibit including certified English language translation. Ex. 1012. 9 Hirosue, US 2003/0189686 A1, published Oct. 9, 2003. Ex. 1013. have either a bachelor’s degree in electrical or computer engineering with three years of experience in the field of display technology or a master’s degree with one year of experience in the field of display technology.” Pet. 5 (citing Ex. 1002 ¶¶ 41‒44). Patent Owner, “[f]or purposes of th[e] Preliminary Response . . . does not dispute the level of skill for a person of ordinary skill in the art.” Prelim. Resp. 7. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,335,913 - Chongqing HKC Optoelectronics Technology Co., Ltd. v. 138 East LCD Advancements LimitedInstitution deniedPTAB · Aug 28, 2023 · IPR2023-00475 · APJ Wesley B Derrick · IPR · Institution
Institution was denied because the petition did not sufficiently show that the counter-electrode potential line was one of the claimed main wiring lines coupled to peripheral driving circuits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as the evidence that supports the grounds for the challenge to each claim’”). When challenging claims based on obviousness, the Petitioner must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (citations omitted). The burden of persuasion, whether for anticipation or for unpatentability for obviousness, never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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. See Custom Accessories, Inc. v. Jeffrey-Allan Industries, 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 “would have either a bachelor’s degree in electrical or computer engineering with three years of experience in the field of display technology or a master’s degree with one year of experience in the field of display technology.” Pet. 8 (citing Ex. 1002 ¶¶ 38‒41). Patent Owner, “[f]or purposes of th[e]” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“5. Analysis Claim 1 recites “in a peripheral region of the image display region on the element substrate, a plurality of external circuit connection terminals, a plurality of main wiring lines . . . and peripheral driving circuits.” Ex. 1001, 21:55‒60. The plain and ordinary meaning of this phrase includes that the plurality of main wiring lines and peripheral driving circuits are formed on the element substrate. Claim 1 further recites, for the main wiring lines, “each having one end coupled to each of the plurality of external circuit connection terminals, and peripheral driving circuits coupled to the other ends of the main wiring lines.” Id. at 21:57‒59. The plain and ordinary meaning of this phrase is that each main wiring line is connected at one end to an external circuit connection terminal and, at the other end, to the peripheral driving circuits; this is how Petitioner addresses “a plurality of main wiring lines” as to this portion of claim 1 in accordance with the plain and ordinary meaning. Pet. 15 (“Figure 4 shows wiring lines coupled to the external connection terminals 102 at one end and coupled to peripheral circuits, including data line driving circuit 101, and scanning line driving circuit 104, at the other.”); see also Ex. 1002 ¶ 59. Petitioner and its driving circuit 104 as peripheral circuits. Pet. 15‒16 (citing Ex. 1005 ¶¶ 1, 78‒80, Fig. 4; reproducing Fig. 4 without annotation); Ex. 1002 ¶¶ 56‒59.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner fails, however, to address the clause, “which is at least one of the plurality of main wiring lines,” and the implication that follows from the plain language of the claim. Id. Specifically, as set forth above, the “plurality of main wiring lines” are coupled at one end to peripheral circuits, and Petitioner provides no basis for the wiring 400 (LCCOM) to be coupled to any element identified by Petitioner as a peripheral circuit. Id. at 15‒17 (identifying data line driving circuit 101 and scanning line driving circuit 104 as peripheral circuits). Rather, Petitioner sets forth that wiring 400 (LCCOM) “supplies potential from the external input terminal 102 to the vertical conduction terminal 106 and then to the counter electrode 21 on the counter substrate 20.” Id. at 17 (citing Ex. 1005 ¶ 85, Figs. 3, 4; Ex. 1002 ¶¶ 63‒65). Further, to the extent Petitioner states that Muraide “discloses a counter electrode provided in the peripheral region on a counter substrate that is arranged to face the element substrate” (id. at 16 (citing Ex. 1005 ¶ 41; Ex. 1002 ¶¶ 60‒62)), Petitioner does not clearly identify the counter electrode as a peripheral circuit (id.) and, further, the counter electrode on the counter substrate is not a peripheral driving circuit on the element (“in a peripheral region of the image display region on the element substrate, . . . peripheral driving circuits” (emphasis added))). Accordingly, on this record, we determine that Petitioner fails to sufficiently establish “a counter electrode potential line that supplies counter electrode potential to the counter electrode, which is at least one of the plurality of main wiring lines.” Although Patent Owner did not clearly raise this particular issue, “[i]n an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3)). The burden of persuasion, whether for anticipation or for unpatentability for obviousness, never shifts to Patent Owner. See Dynamic Drinkware, 800 F.3d at 1378. Further, our role is not to remedy the deficiencies in Petitions that fall short. Sirona Dental Sys. GMBH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (quoting SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356–57 (2018)) (explaining that because “‘the petitioner’s contentions, not the Director’s discretion, define the scope . . . [,]’ [i]t would thus not be proper for the Board to deviate from the grounds in the petition and raise its own obviousness theory” “institut[ing] a different inter partes review”); cf. Magnum Oil Tools, 829 F.3d at 1380–81 (rejecting an argument that the Board properly “ma[de] an obviousness argument on behalf of [petitioner]” that “could have been included in a properly-drafted petition,” because “petitioner . . . bears the burden of proof”).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,116,390 - Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution deniedPTAB · May 12, 2023 · IPR2023-00122 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 were unpatentable on the proposed obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We are not persuaded, on this record, that Petitioner adequately establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries: A cell casing for a primary dry cell battery of the button type is disclosed which includes a case with a first elongated electrically conductive member affixed centrally to its exterior surface, and a cover with a second elongated electrically conductive hollow member affixed centrally to its interior surface in communication with an aperture. Both a single and a multi-cell battery are described which include the above battery casing.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries: A cell casing for a primary dry cell battery of the button type is disclosed which includes a case with a first elongated electrically conductive member affixed centrally to its exterior surface, and a cover with a second elongated electrically conductive hollow member affixed centrally to its interior surface in communication with an aperture. Both a single and a multi-cell battery are described which include the above battery casing. Ex. 1016, 1:11–18 (emphasis added). Consistent with this teaching, Brown’s Example I describes a cell casing “formed generally in accordance” mechanism, in particular a screw (member 14) welded to the outside center of case 11. Id. at 2:58–81. In Example II, Brown teaches using the “cell casing of Example I,” which includes the stacking mechanism, in a single-cell battery. Id. at 3:1–18. Brown explicitly states that the aperture in the cover is sealed when the cell is used in a single cell battery, but provides for no other modifications to the casing. Id. at 3:13–16 (“The aperture was then sealed by means of a short #2-56 round-head machine screw and a 10-mil thick polytetrafluoroethylene polymer gasket.”). In Example III, Brown similarly teaches a battery with fifteen stacked cell casings wherein, after each casing member of each cell was threaded into the hollow member of the cover of the adjacent, the aperture on the last cover was “sealed with a threaded screw as in Example II.” Id. at 3:19–29. These teachings demonstrate that Brown contemplated using the casing with the stacking mechanism in a single cell battery, and accounted for that by sealing the aperture in the cover. In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1003 ¶¶ 159–160); see Ex. 1016, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person having ordinary skill in the art (“POSITA”) would have had “a bachelor’s degree in engineering (mechanical, electrical or chemical), general science, materials science or the equivalent and 3-4 years of work experience with electrochemical cell packaging systems.” Pet. 5 (citing Ex. 1003 ¶¶ 39–41). Petitioner further 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), revised 35 U.S.C. §§ 102 and 103 effective March 16, 2013. Petitioner argues, and Patent Owner does not contest, that the pre- AIA statutory provisions apply to this case. See Pet. 5 n.1. Neither party indicates the result would change based on which version of the statute the Board applies for purposes of deciding whether to institute review. 2 Brown, US 3,748,182, issued July 24, 1973 (Ex. 1016). 3 Higuchi, Chinese Patent App. Pub. CN101286572 A, published October 15, 2008 (Exs. 1009 (English translation), 1010 (original Chinese)). 4 Okochi, EP 0829105 B1, published May 21, 2003 (Ex. 1013). 5 Brenner, DE 102005058132 A1, published June 6, 2007 (Ex. 1014, with English translation). 6 Kubota, US 5,654,114, issued August 5, 1997 (Ex. 1015). of education, such as a master’s or doctorate degree,” and “less education may be compensated by more work experience.” Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 11. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 5
- Expert testimonyPetitioner expert discountedOther
“In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1003 ¶¶ 159–160); see Ex. 1016, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential).” slip op. at 12
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,258,092 - PTAB · May 12, 2023 · IPR2023-00121 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted IPR of claims 1–22 on all asserted grounds, finding a reasonable likelihood that the Higuchi, Kobayashi, and Okochi combination renders at least one claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . 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.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’092 patent, and we do not exercise discretion to deny the Petition. Accordingly, we institute an inter partes review of claims 1–22 of the ’092 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Prelim. Resp. 11–19. Petitioner asserts (Prelim. Reply 1) that it stipulated that “if the IPRs of [the ’092 patent] are instituted, it will not assert invalidity in the parallel district court proceedings based on grounds that were raised or reasonably could have been raised in the instituted IPRs.” Ex. 1018. We are bound by the guidance in the Memorandum, which states that the Board “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Memorandum, 7.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). In applying this framework, we consider the Becton, Dickinson9 factors that address discretion to deny when a petition presents the same or substantially the same prior art or arguments previously presented to the Office, including:” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art (“POSITA”) would have had “a bachelor’s degree in engineering (mechanical, electrical or chemical), general science, materials science or the equivalent and 3-4 years of work experience with electrochemical cell packaging systems.” Pet. 5. Petitioner further contends that “[l]ess work experience may be compensated by a higher level of education, such as a master’s or doctorate degree,” and “less education may be compensated by more work experience.” Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail even under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 10. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). the uncontested assessment offered by Petitioner.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,258,092 - Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution deniedPTAB · May 12, 2023 · IPR2023-00161 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–30 would have been obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . 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.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We are not persuaded, on this record, that Petitioner adequately establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries:” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 23 (citing Ex. 1003 ¶ 67–68); see Ex. 1010, 1:17–18, 2:38–46, 3:2–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Compare Ex. 1003 ¶¶ 67–68, with Pet. 22–23. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential).” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“(‘POSITA’) would have had at least a bachelor’s degree in mechanical engineering, electrical engineering, materials or chemical engineering, physics, chemistry or a related discipline.” Pet. 19. In addition, Petitioner argues that a person of ordinary skill in the art would have had “at least five years of experience in the design of lithium-ion button cell battery structures.” Id. Petitioner further contends that “[l]ess work experience may be compensated by a higher level of education, such as a master’s or doctorate degree,” and vice-versa. Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 12. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. at 11–12 (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 6
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,024,869
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.