• Samsung Electronics Co., Ltd. v. Lynk Labs, Inc.Some claims unpatentable
  PTAB · Apr 19, 2023 · IPR2021-01576 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1–12 are unpatentable as obvious; claims 13–18 are not shown unpatentable because the asserted combinations fail to teach or suggest multiple LED packages connected in series.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “PO Resp. 8 (citing Ex. 2001 ¶¶ 41–42). Patent Owner argues that its definition is superior because Petitioner’s “and/or” qualifier “might be read as considering a person who has ‘related circuit design’ experience but no experience with ‘LED devices’ to be a POSITA.” Id. at 9. Patent Owner further views Petitioner’s “or a related field” phrasing as potentially including a person who has no experience with LED devices. Id. We agree with Patent Owner on both points. We agree with Patent Owner that Patent Owner’s proposal is more consistent with the problems and solutions in the ’979 patent and prior art of record. We adopt Patent Owner’s definition of the level of skill but note that had we adopted Petitioner’s level of skill, we would not have reached a different outcome here.” slip op. at 6

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

    “specification support its construction of “formed or mounted to” as encompassing indirect attachment to the substrate. Neither the plain claim language nor the specification requires the phosphor coating to be directly attached to the substrate. Limitation 1(c) recites, wherein the LED chips comprise a phosphor coating to produce a change in a color or a quality of light emitted from the LED chips, wherein the LED chips, the power connection leads, and the phosphor coating are formed or mounted to a flexible substrate that is sufficiently flexible to be formed into a cylindrical shape[.] Ex. 1001, 22:7–12 (emphasis added). The claim is inartfully written, as it requires the LEDs to comprise a phosphor coating but then separately recites that the LED chips and the phosphor coating are formed or mounted to the substrate. But Petitioner correctly explains that the plain meaning requires that “the LED chips comprise a phosphor coating” and that “the [same] phosphor coating” (included in the LED chips) is “formed or mounted to a flexible substrate.” Reply 2. In other words, the use of the term “the” before “phosphor coating” indicates reliance on the antecedent basis of “LED chips comprise a phosphor coating,” and thus the same coating of the LED chips is formed or mounted to the substrate. Logically, by including a phosphor coating with the LED chips, which are formed or mounted to the substrate, the coating of these chips is also indirectly formed or mounted to the substrate. Conversely, it would be illogical to conclude that the claim recites two phosphor coatings, one attached to the LED chips and another attached directly to the substrate, because the structure of the claim refers to a single phosphor coating of the LED chips. Even Patent Owner concedes that the claim encompasses the phosphor coating indirectly being mounted or attached to the substrate (in addition to being directly attached). PO Resp. 11 (“The ordinary English reading of the claim language does not encompass the phosphor coating only being indirectly attached to the substrate, instead, the language indicates that the coating is directly applied to the substrate.” (emphasis changed)), 13 (“the phosphor coating . . . is not merely attached to the substrate indirectly”).” slip op. at 10

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

    “After considering Patent Owner’s arguments, which we address below, we agree with Petitioner that the combination of Wojnarowski and Martin discloses this limitation and that a person of ordinary skill in the art would have been motivated to combine the references’ teachings in the manner asserted by Petitioner. Briefly, we summarize our findings, and then we address the parties’ arguments in more detail. First, we agree with Petitioner, and Patent Owner does not dispute, that Wojnarowski’s AC input voltage would have been converted to DC voltage in light of the bridge rectifier and capacitor disclosed by Wojnarowski. Pet. 25; Ex. 1002 ¶¶ 119– 20 (citing, e.g., Ex. 1005, 7:59–62, Fig. 24); PO Resp. 35–36 (acknowledging Wojnarowski discloses converting an AC input to a DC voltage). Second, we further agree with Petitioner, and Patent Owner does not dispute, that excessive current due to too few LEDs would have harmed Wojnarowski’s LEDs, and too small a current due to too many LEDs would be insufficient to power Wojnarowski’s LEDs. Pet. 26; Ex. 1002 ¶ 134; PO Resp. 48 (discussing, but not disputing, these assertions).13 Third, we agree that a POSITA would have recognized in view of Martin’s teachings and the knowledge of a skilled artisan that when configuring Wojnarowski’s device, the total forward voltage drop of the series-connected LEDs should approximately match the DC voltage output 13 Petitioner explains the relationship between voltage and current for the LEDs as follows: “the total voltage drop of the circuit would dictate the current drawn by the LED circuitry, which would have been known to be inversely proportional to the voltage.” Pet. 26 (citing Ex. 1002 ¶ 134). of Wojnarowski’s circuit. Pet. 26–27 (citing Ex. 1002 ¶¶ 132–38; Ex. 1008, Abstract (LED voltage “must be matched to the input source voltage”), ¶ 60 (“For AC or any other regularly varying input voltage, there is an additional requirement to direct drive voltage matching”)). For example, Martin teaches that “[t]he number of LEDs in the monolithic array may be selected to achieve a particular voltage drop across each device.” Ex. 1006 ¶ 22. Martin further explains, “[t]he voltage across each of the individual LEDs in the array is the line voltage divided by the number of LEDs in series,” and “[t]he number of LEDs is chosen such that the maximum voltage across each individual LED during the peak in the alternating current cycle is low enough so as not to damage the LEDs.” Id. The forward voltage drop across Martin’s 38 LEDs is about 171 V, which matches Martin’s AC input voltage peak of about 169.71 V. See id. (“At 120 RMS volts, the peak voltage will be about 180V [correction: 169.71 V],” and if the LEDs “can tolerate a maximum forward voltage of 4.5V, at least 38 LEDs connected in series are required.” (38 LEDs x 4.5 V = 171 V)); PO Resp. 41–42 (“While Martin references ‘about 180V,’ both parties agree that the correct value of the peak voltage Vp is 169.71 V.” (citing Ex. 1002 ¶ 127)). Although Martin’s LED forward voltage drop (171 V) differs slightly from the peak input voltage (169.71 V), Patent Owner conceded at the hearing that the claimed “matches” does not require an exact equivalence. Tr. 38:9–11 (“Patent Owner agrees . . . that matching has a meaning that goes beyond exact equivalence.”).14” slip op. at 22

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

    “35 U.S.C. § 311(b). PO Resp. 22–25. This statute provides that “[a] petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” § 311(b) (emphasis added). Patent Owner contends that Martin is not available as prior art under 35 U.S.C. § 311(b) because it is not a patent or printed publication and is only prior art under 35 U.S.C. § 102(e). PO Resp. 22. Patent Owner argues that documents are “printed publications” as of the date they become available to the public, and Martin became public on its publication date of October 21, 2004, after the February 25, 2004 priority date of the ’979 patent. Id. at 23. Patent Owner raises a similar argument for the Soules-II reference in Ground 6. Id. at 25– 26. Petitioner responds that the AIA framework permits the use of § 102(e) prior art in IPR proceedings, unlike formerly available covered business method review (CBM) proceedings, which restricted challenges to § 102(a) prior art. Reply 29. We agree. The statute governing the formerlyavailable CBM proceeding explicitly limits challenges based on “prior art that is described by section 102(a).” AIA § 18(a)(1)(C). In contrast, § 311(b) more broadly permits challenges “on the basis of prior art consisting of patents or printed publications.” The broader language in § 311(b) implies that unlike CBMs, IPRs are not limited to challenges solely under § 102(a) prior art. The parties cite to no Federal Circuit decisions that squarely address this issue. However, the Federal Circuit has applied § 102(e) patent application publication prior art in appeals from IPR proceedings. See, e.g., Purdue Pharma L.P. v. Iancu, 767 Fed. App’x 918, 920–21, 926 (Fed. Cir. 2019) (nonprecedential) (determining that a § 102(e) patent application publication was available as prior art in an IPR). The Board has also long permitted challenges based on patent application publications under § 102(e). See, e.g., Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 14 at 27 (PTAB Jan. 31, 2013) (instituting trial over § 102(e) ground based on a patent application publication). We therefore find Patent Owner’s § 311(b) argument unpersuasive.” slip op. at 34

  Patent outcomesUS 10,652,979 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,652,979
• Home Depot USA, Inc. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · Mar 29, 2023 · IPR2021-01540 · APJ Scott Raevsky · IPR · Final written decision

  Claims 33, 34, 38, 39, and 43 are unpatentable as obvious over Teshima and SISE, or over Teshima, Butterworth, and SISE.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “[a] person of ordinary skill in the art (“POSITA”) . . . would have had a bachelor’s degree in electrical engineering, or similar technical field, with two years of relevant experience in the field of design and/or development of LEDs and circuits in the context of lighting control and networking systems. An increase in experience could compensate for less education. Pet. 10–11 (citing Ex. 1002 ¶ 34). Patent Owner states that it “adopts this definition of level of ordinary skill for purposes of this proceeding only.” PO Resp. 5. We are persuaded that Petitioner’s proposal is consistent with the problems and solutions in the ’842 patent and prior art of record. We adopt Petitioner’s definition of the level of skill.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We determine that no other terms require construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We find Petitioner’s arguments more persuasive. As a threshold matter, we disagree with Patent Owner that “coated” requires a “thin layer.” We note that Patent Owner did not construe “coated” in its Patent Owner Response, relying only on a single citation to its expert declaration for the proposition that “coated” refers to a “thin layer.” PO Resp. 27 (citing Ex. 2007 ¶ 80). There, Dr. Bretschneider merely cites a dictionary definition without analysis or discussion in support of his testimony that “[c]oating an LED is adding a thin layer or covering to something.” Ex. 2007 ¶ 79. When questioned about this, he testified, “I didn’t equate that [statement in the declaration] to an opinion equivalent to claim construction.” Ex. 1038, 132:2–14. Patent Owner also does not discuss the intrinsic record in support of its implicit claim construction position. Based on our review of the intrinsic record, we can find no special definition or disavowal associated with the term “coated.” We also find Patent Owner’s dictionary definition unhelpful, as the meaning of “thin” layer is unclear. See Ex. 2007 ¶ 79. Moreover, Leung refers to “coating an LED with a phosphor layer” and that “it is often difficult to control the phosphor layer’s geometry and thickness,” which undercuts Patent Owner’s position that a coated layer must be thin. See Ex. 1037 ¶ 8.” slip op. at 26

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “We agree with Petitioner that SISE is analogous art to the ’842 patent. The field of endeavor of the ’842 patent is LED lighting systems. The ’842 patent explains that “LED based lighting may be used for general lighting, specialty lighting, signs, and decoration such as for Christmas tree lighting.” Ex. 1001, 1:66–2:2; see also id. at code (54) (“AC Light Emitting Diode and AC LED Drive Methods and Apparatus”). This is a broad field of endeavor, and we discern no relevant distinction between LED lighting systems that are used to illuminate an area or object and those used to signal information, such as traffic signals. Further, Patent Owner’s arguments here are inconsistent with its arguments in a related proceeding, IPR2021-01369. There, Patent Owner argued that the field of endeavor in a continuation patent of the ’842 patent was “LED lighting systems.” Home Depot USA, Inc. v. Lynk Labs, Inc., IPR2021-01369, Paper 45 at 17 (PTAB Feb. 14, 2023). Here, Patent Owner contends that the ’842 patent’s field of endeavor is “LED lighting systems and specifically circuits for driving LED lighting systems.” PO Resp. 42. As both patents share a common specification and Patent Owner does not explain why it proposes a different field of endeavor, we determine that the field of endeavor here is also “LED lighting systems.”” slip op. at 15

  Patent outcomesUS 10,091,842 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,091,842
• Samsung Electronics Co., Ltd. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · Mar 15, 2023 · IPR2021-01346 · APJ Scott Raevsky · IPR · Final written decision

  Claims 3–16 are unpatentable as obvious under §103 over the seven combinations of prior art listed in the decision.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “These definitions are very similar, but we are persuaded that Patent Owner’s proposal is more consistent with the problems and solutions in the ’466 patent and prior art of record. Petitioner’s use of the term “and/or” is problematic because it makes experience with LED devices optional. In contrast, Patent Owner’s definition requires two or more years of experience with LED devices and related LED circuit design. We therefore adopt Patent Owner’s definition of the level of skill. Had we adopted Petitioner’s level of skill, however, the outcome here would not have changed.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Neither party proposes any claim constructions. Pet. 6; PO Resp. 8–9; Reply 1. We determine that no terms require construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7

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

    “We agree with Petitioner. Patent Owner indeed relies on an improper bodily incorporation argument. Petitioner does not propose bodily incorporating Siwinski and Srivastava together, but rather taking certain teachings from these references and applying them to Hack. Reply 11, 14. For example, Petitioner argues that a POSITA would have relied on Siwinski’s teachings “to configure Hack’s device to implement a circuit configured to detect touch via capacitive sensing.” Pet. 28 (citing Ex. 1002 ¶ 124). And Petitioner relies on Srivastava for the teaching that a POSITA would have configured Hack’s device with a lens doped with particles configured to receive and transmit light from a plurality of LEDs. Id. at 29– 30 (citing Ex. 1002 ¶¶ 126–32). Patent Owner’s argument that Srivastava’s shell is not combinable with Siwinski’s touch screen misdirects our attention to a combination that Petitioner did not propose, and is a bodily incorporation that fundamentally misapplies the law of obviousness. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Regardless, Petitioner’s arguments are not conclusory. The Reply persuasively argues that “Srivastava’s express applicability to OLEDs and display backlights is consistent with Hack’s OLED backlight features.” Reply 11 (citing, e.g., Ex. 1052, 1:10–12, 5:29–38). We are further persuaded by Petitioner’s evidence supporting that “the use of a lens with LED backlight configurations was known,” which undercuts Mr. Credelle’s testimony that Srivastava’s lens would be incompatible with a touch screen backlight. Id. (citing, e.g., Ex. 1090 (depicting a lens over multiple OLED color elements), Fig. 13; Ex. 1098, code (57) (“display back lighting system” with an “entrance lens” and a “reflecting lens”); Ex. 1099, code (57) (“backlight assembly” with “a closely packed array of hemispherical or spherical lenses”)); see Ex. 2001 ¶¶ 96–97. And contrary to Mr. Credelle’s testimony that “[i]t would be illogical to form Srivastava’s shell over Siwinski’s touch screen because the shell would prevent touching the touch screen, which is the function of the touch screen,” Petitioner persuasively argues that “Srivastava explains that it was known that LEDs are used as a backlight in liquid crystal displays.” Reply 11. In other words, Petitioner’s reliance on Srivastava’s backlight teachings would not prevent a user from touching a screen (in front of the backlight) in the modified device. Accordingly, we agree with Petitioner that one of ordinary skill in the art would have combined Hack, Siwinski, and Srivastava to achieve this limitation.” slip op. at 16

  • Strike new argumentNew argument disregardedDecided for petitioner

    “We start our analysis with the Sur-reply because it exposes several weaknesses in Patent Owner’s arguments. First, contrary to what the Sur-reply contends, the Patent Owner response did not argue that “Srivastava’s LED shell is incompatible with Hack’s touch screen because the hard shell would interfere with the functionality of the touchscreen.” Id. This is a new argument first made in the Sur-reply, and we do not consider it. See 37 C.F.R. § 42.23(b). What Patent Owner actually argued in its Response was that “[a] POSITA would not combine Srivastava’s LED shell for a single LED with Hack’s flexible display.” PO Resp. 24. There is no mention of a “hard shell” interfering with the functionality of the touch screen in the Patent Owner Response. See id. At most, Patent Owner contends that the shell would “prevent touching the screen,” and that the “curvature of the shell” would be incompatible, not that any hardness of the shell would present a problem. Id. at 25–26 (quoting Ex. 2001 ¶ 97). Regardless, even if we consider this argument, it is inapposite because as the Reply correctly notes, “Srivastava explains that it was known that LEDs are used as a backlight in liquid crystal displays,” and we accordingly find that a backlight with a hard shell would not interfere with a user touching a display. See Reply 11 (citing Pet. 30–33; Ex. 1052, 1:10–12).” slip op. at 28

  Patent outcomesUS 10,499,466 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,499,466
• Samsung Electronics Co., Ltd. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · Mar 15, 2023 · IPR2021-01345 · APJ Scott Raevsky · IPR · Final written decision

  Claims 4, 9–11, 13, 17, 18, and 20 are unpatentable as obvious over Hack and Garcia, Hack, Garcia, and Cordelli, or Hack and Porter.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner contends that a person of ordinary skill in the art (“POSITA”) would mean someone who, at the time of the invention in February 2004, had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and two or more years of experience with LED devices and related LED circuit design. PO Resp. 7 (citing Ex. 2001 ¶¶ 41–48). Petitioner contends that there is little difference between these definitions and that Patent Owner does not tie any of its arguments to the minor differences. Reply 1–2. We agree. However, we adopt Patent Owner’s definition of the level of skill because we are persuaded that it is consistent with the problems and solutions in the ’252 patent and prior art of record, except that we delete the phrase “or more” to avoid including ambiguity in the definition of the level of skill. The outcome of this decision would not have changed had we adopted Petitioner’s definition.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Because the intrinsic record7 does not assist us with interpreting the term “folded,” we turn to the extrinsic evidence, including Patent Owner’s proffered dictionary definitions and expert testimony. As mentioned above, Patent Owner supplied two dictionary definitions for “fold.” See Exs. 2006, 2007. But these definitions are from non-technical sources and are non-contemporaneous with the ’252 patent’s priority date, and are thus of limited relevance to our analysis. Reply 14 n.7. As for expert testimony, Patent Owner’s expert submits that “[a] POSITA would understand that folding a substrate requires bending the substrate so that one part of the substrate is in full contact with another part of the substrate.” Ex. 2001 ¶ 81. However, Patent Owner’s expert provides no evidence or explanation for this conclusory assertion, so we give it little weight. See id.; PO Resp. 18–19; 37 C.F.R. § 42.65(a). Further, as we will discuss in detail below, the prior art upon which 7 The parties do not address the prosecution history. Petitioner relies explicitly discloses a substrate that is flexible enough to be folded. See, e.g., Pet. 40; Ex. 1005 ¶ 76 (“[T]he display 106 could be thin and flexible enough to . . . fold into a housing 102[.]”). Thus, apart from explaining the errors in Patent Owner’s proposed construction, we determine that it is unnecessary for us to further analyze the proper scope of this term. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 11

  • Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for petitioner

    “Because the intrinsic record7 does not assist us with interpreting the term “folded,” we turn to the extrinsic evidence, including Patent Owner’s proffered dictionary definitions and expert testimony. As mentioned above, Patent Owner supplied two dictionary definitions for “fold.” See Exs. 2006, 2007. But these definitions are from non-technical sources and are non-contemporaneous with the ’252 patent’s priority date, and are thus of limited relevance to our analysis. Reply 14 n.7. As for expert testimony, Patent Owner’s expert submits that “[a] POSITA would understand that folding a substrate requires bending the substrate so that one part of the substrate is in full contact with another part of the substrate.” Ex. 2001 ¶ 81. However, Patent Owner’s expert provides no evidence or explanation for this conclusory assertion, so we give it little weight. See id.; PO Resp. 18–19; 37 C.F.R. § 42.65(a).” slip op. at 11

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

    “We agree with Petitioner that Garbuzov discloses stacked LEDs, with a coating on one of those LEDs, notwithstanding Patent Owner’s arguments to the contrary, which we discuss in detail below. To briefly summarize, first, we agree with Petitioner (and Patent Owner does not dispute) that Figure 39 (above) of the ’252 patent depicts an OLED. Second, we agree that each of the sets of layers Petitioner identifies in Garbuzov as an OLED has a similar structure as the OLED in Figure 39 of the ’252 patent, and is therefore an OLED. See, e.g., Ex. 1089, 48:3–6. Third, we agree with Petitioner that the phosphor layer 114 is applied to one of Garbuzov’s OLEDs within the stacked set of OLEDs, as shown in Garbuzov Figure 2, and therefore, that Garbuzov discloses coating an LED with a phosphor. Finally, we agree with Petitioner that phosphor layer 114 produces a change in color because Garbuzov describes phosphor layer 114 as “red downconversion phosphor layer 114.” See Ex. 1016, 3:32–33.” slip op. at 25

  Patent outcomesUS 10,492,252 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,492,252
• Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution denied
  PTAB · Mar 14, 2023 · IPR2022-01487 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 9–16 were obvious over either asserted ground.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). 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

  • BurdenNot shown unpatentable

    “crimping or beading-over process of closing a battery casing, Petitioner offers only attorney argument for the proposition that such a process creates a battery casing that is “held together by a force-fitting connection.” Id. But “[a]ttorney argument is not evidence.” Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (quoting Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017)).” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “27–28. Patent Owner responds that no term requires construction at this stage of the proceeding. Prelim. Resp. 20. For the reasons discussed below, we are able to determine whether to institute trial without construing “insulating means,” so we do not construe this term. 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
  Patents in suitUS 9,799,913
• Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution denied
  PTAB · Mar 14, 2023 · IPR2022-01484 · APJ Brian D Range · IPR · Institution

  The Board denied institution because Petitioner did not show that the asserted combinations taught or suggested the claimed force-fitting connection holding the housing cup and top together.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). 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

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “top” that “are held together by a force-fitting connection.” Ex. 3001, 1:28– 29 (claim 1), 2:51–52 (claim 23). The parties disagree about whether the references on which Petitioner relies teach or suggest this limitation. Pet. 28–32, 64–66; Prelim. Resp. 53–61. As discussed more completely below, we are able to determine whether to institute trial without deciding precisely what the ’835 patent means when it describes two parts as “held together by a force-fitting connection.” Accordingly, we need not, and do not, construe this term expressly. See Nidec, 868 F.3d at 1017 (quoting Vivid Techs., 200 F.3d at 803). Although we need not decide the precise meaning of “held together by a force-fitting connection” in order to decide whether to institute trial, we note (1) that, without some evidence to the contrary, a battery casing whose half-parts are “held together by” a particular condition must be a battery casing whose half-parts would no longer be held together if the condition were not present, and (2) that neither party has directed us to any evidence to the contrary. Accordingly, whatever a “force-fitting connection” is, a battery made in accordance with the teachings of the prior art is not a battery that is “held together by a force-fitting connection” unless that battery would cease to be held together in the absence of the “force-fitting connection.”” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable

    “Even if we accept Petitioner’s position that Kaun suggests radial forces around its seal, Petitioner has not presented sufficient evidence that such forces hold a housing cup and housing top together. With respect to the key “held together” recitation, Petitioner’s only argument or evidence in the Petition is a sole quote purportedly from Patent Owner’s expert, Dr. Peckerar:” slip op. at 19

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,153,835
• Samsung Electronics Co. Ltd. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · Mar 13, 2023 · IPR2021-01347 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–17 and 21–25 are unpatentable: claims 6 and 24 are anticipated by Birrell; the remaining challenged claims are obvious over the stated combinations.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner contends there are “several problems” with Petitioner’s proposed definition. PO Resp. 11. In particular, Patent Owner contends the “and/or” qualifier and addition of “or a related field” could be read to allow an individual with no experience with LED devices to be a person of ordinary skill in the art. Id. Upon review of the parties’ arguments, the prior art of record, and the ’298 patent, we agree with Patent Owner that one of ordinary skill in the art would have had experience working with LEDs and/or LED circuit design. Thus, we adopt Patent Owner’s definition of one of ordinary skill in the art. We note, however, that neither party asserts that the outcome of this case rests on resolving the small differences between the parties’ definitions of the ordinarily skilled artisan.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “C. Claim Construction In this proceeding, the claims of the ’298 patent are construed “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under that standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have had to a person of ordinary skill at the time of the invention in the context of the 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party contends any terms of the ’298 patent require construction. Pet. 5–6; PO Resp. 12. Upon review of the parties’ arguments and supporting evidence, we agree that no terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “By its express language, the claim term “wirelessly” is best understood as “without the use of a wire.” We are directed to no disclosure in the written description or prosecution history that would contradict this conclusion or otherwise shed light on the meaning of this claim term. There is no dispute that capacitive coupling does not use a wire or any other form of direct contact to transmit power. Thus, the plain meaning of “wirelessly” encompasses capacitive coupling. This conclusion is supported 6,336,031 states that “[c]onnectionless (i.e., wireless) transmission of analog and digital signals has previously been accomplished using . . . [c]apacitive coupling.” Ex. 1131, 1:10–18. Likewise, U.S. Patent No. 6,988,026 describes a “power receiving system which receive[s] power wirelessly (inductively, through radio frequency energy transfer and/or capacitively).” Ex. 1133, 113:64–114:2. Mr. Credelle’s counter-testimony is not persuasive because he does not explain in any detail why one of ordinary skill in the art would not understand a capacitive coupling that transfers power to be a wireless system. See Ex. 2001 ¶ 80.” slip op. at 50

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

    “KSR instructs that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. Here, Petitioner proposes to substitute one known method of transmitting power for another (an inductor in place of two capacitors), according to known methods (Logan), and Patent Owner does not dispute that the combination would yield a predictable result of wirelessly providing power from one device to another. This suggests that the proposed combination would have been obvious. Id. point to a specific problem discussed in Birrell for which Logan’s method of using inductive coupling would be a solution. See In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.”) (internal quotations omitted). What the Petition must demonstrate is that there was some reason why one of ordinary skill in the art would have sought to combine the elements in the manner proposed. KSR, 550 U.S. at 418. The Petition provides multiple, persuasive reasons (discussed above) as to why one of ordinary skill in the art would have sought to use inductors, as disclosed in Logan, to wirelessly transmit power to a lighting device, such as that disclosed in Birrell.13 (d) Conclusion For the reasons set forth above, we find that Petitioner presents multiple, persuasive reasons as to why one of ordinary skill in the art would have sought to implement the wireless power transmission system of Logan in the lighting device of Birrell.” slip op. at 19

  Patent outcomesUS 10,966,298 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,966,298
• Samsung Electronics Co. Ltd. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · Mar 13, 2023 · IPR2021-01300 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–22 are unpatentable as obvious under §103 over the asserted combinations of Oba and the additional references listed for each ground.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner provides a very similar definition of the ordinarily skilled artisan, but removes the “and/or” qualifier for experience with LED devices, as well as the allowance for individuals to have experience in an unspecified “related field.” PO Resp. 5. Patent Owner contends these modifications are appropriate because Petitioner’s proposed definition would allow an individual with no experience with LEDs to be a person of ordinary skill in the art. Id. art of record, we adopt Patent Owner’s definition of the ordinarily skilled artisan as it is consistent with the disclosures of the ’697 patent and with the prior art of record. We note, however, that neither party asserts that any arguments in this proceeding rise or fall based on the definition that is adopted.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Neither party contends any terms of the ’697 patent require construction. And, upon review of the parties’ arguments and supporting evidence, we determine that no terms require construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8

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

    “Petitioner provides uncontroverted testimony from Dr. Baker, which we credit, that: (1) Oba’s laptop computer necessarily has a battery ground (Ex. 1002 ¶ 102); (2) it was known in the art, for example as disclosed in Hara, that a capacitor could be coupled between a battery ground and the circuit elements powered by the device in order to serve as a filter for noise (id. ¶¶ 103, 108; Ex. 1090 ¶ 3 (asserting that AC power is a known source of noise)); and (3) capacitively coupling Oba’s battery ground to the conductor connecting the battery poles and the circuit components of the laptop computer would “smooth delivered power,” thereby “facilitating a steady supply of power” (Ex. 1002 ¶¶ 104–106). As argued by Patent Owner, Hara uses a capacitive coupling to battery ground in order to mitigate standing waves caused by the extended length of the conductors connecting the laptop battery to circuit components. PO Resp. 15. The capacitive-coupling to battery ground, however, need not be used in Oba to solve the same problem identified in Hara, and Dr. Baker persuasively explains why the system of Oba would benefit from a ¶¶ 103–104; Ex. 1090 ¶ 3–10 (asserting that AC power is a known source of noise). As such, Petitioner persuasively explains why one of ordinary skill in the art would have sought to combine Oba and Hara to arrive at a battery ground that is capacitively coupled to the circuit components of the laptop computer. c)” slip op. at 18

  Patent outcomesUS 11,019,697 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,019,697
• Samsung Electronics Co., Ltd. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · Mar 7, 2023 · IPR2021-01299 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1–11, 13, 14, 16, 17, 19, and 20 are unpatentable as obvious over the asserted combinations of Oba, Gillespie, and the respective additional references.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree that there is little or no material difference between these definitions. We are persuaded, on the present record, that Patent Owner’s proposal is consistent with the problems and solutions in the ’674 patent and prior art of record. We adopt Patent Owner’s definition of the level of skill. However, the outcome of this decision would not have changed had we adopted Petitioner’s definition.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “The parties propose no constructions. Pet. 5; PO Resp 9–10; Reply 3. Based on our review of the full record, we determine that no terms require construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms that are in controversy, and only to the extent necessary to resolve the controversy.”) (internal quotation omitted).” slip op. at 7

  • Strike new argumentNew argument consideredDecided for petitioner

    “We find that the Reply does not present improper new arguments. The Reply does not change the challenged ground; Petitioner maintains the obviousness of claims 1, 3–5, 8–14, 16–18, and 20 over Oba and Gillespie. Reply 3; Pet. 6. Petitioner also still proposes modifying Oba with the same touchscreen in Gillespie that it relies on in the Petition. Reply 4; Pet. 10. Rather than setting forth a new position, the Reply responds directly to Patent Owner’s argument that “Oba already provides robust user input capabilities and therefore would not introduce Gillespie’s complicated and expensive touchscreen.” PO Resp. 27; Reply 5–7. Specifically, the Reply provides responsive reasons why one of ordinary skill in the art would have introduced Gillespie’s touchscreen into Oba despite Oba already possessing other input capabilities. Reply 5–7. For example, Petitioner highlights Gillespie’s touchscreen functionality in Oba’s notebook, including displaying additional content to avoid obstructing or cluttering the main display, such as with auxiliary information and pop-ups. Id. at 7 (citing, e.g., Ex. 1071 ¶¶ 49, 53, 59, 77, 80–83, 85, 89, 91, 99–103; Ex. 1106 ¶¶ 5, 11). In so arguing, Petitioner’s Reply argument permissibly elaborates on the contention in the Petition that Gillespie’s touch screen “would have expanded Oba’s computer 51’s user input capabilities.” Pet. 11; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). As explained in the Petition, the combination “would have allowed the touch pad/panel to display information and provide mechanisms for a user of computer 51 to provide touch input to control functionalities of computer 51 and/or display 66.” Pet. 10 (citing Ex. 1002 ¶ 86). The Reply’s references to Gillespie’s touch pad functionality merely provide further examples of the “touch input to control functionalities of computer 51” discussed in the Petition. Reply 6. “It is unreasonable to hold petitioners to such a high standard that, if they choose to rely on one example . . ., they must either discuss all potential permutations . . . or risk waiving the opportunity to further discuss other relevant examples in their reply.” Apple Inc. v. Andrea Elec’s. Corp., 949 F.3d 697, 706 (Fed. Cir. 2020).” slip op. at 20

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

    “We have two general concerns with Patent Owner’s arguments. First, Patent Owner’s assertions are speculative. Although Patent Owner presents testimony that “implementing Gillespie’s touch screen 106 into Oba would (1) increase power consumption, (2) unnecessarily introduce complexity to Oba’s computer 51, (3) increase weight, (4) decrease reliability, and (5) would be very costly,” PO Resp. 32 (citing Ex. 2001 ¶ 104), Patent Owner does not quantify how much power consumption would increase, does not quantify vague qualities of increased “complexity” and “reliability,” does not quantify how much weight might increase, and presents no figures that would allow us to determine whether costs would increase. Such speculative arguments are therefore unpersuasive. Secondly, even if Patent Owner were correct that there are some disadvantages to adding Gillespie’s touch screen to Oba’ computer, we agree with Petitioner that there are tradeoffs or advantages in the proposed combination that would have led one of ordinary skill in the art to make it. Reply 10–14. We have discussed these advantages of adding Gillespie’s touchscreen to Oba at length above, including the ability to display additional content to avoid cluttering the main display, enhancing game controls, and including applications such as a calculator, magnification tool, and debugging tool. Ex. 1071 ¶¶ 89, 83, 85, 91, 99–100, 101–103; Ex. 1106 ¶¶ 5, 11. At the end of the day, Patent Owner does not argue that Gillespie teaches away from combining with Oba or that the combination would have rendered Oba inoperable. Patent Owner merely argues that Oba would be worse with Gillespie and disagrees that Gillespie provides any benefits. But weighing the benefits of the combination, both lost and gained, we determine that the advantages explained by Gillespie and Dr. Baker would have outweighed the (speculative) disadvantages described by Patent Owner and Mr. Credelle. See Winner Int’l Royalty, 202 F.3d at 1349 n.8; Ex. 1002 ¶¶ 20, 83–90, 99, 103; Ex. 1106 ¶¶ 5–10. Dr. Baker testifies that the advantages of having a second touchscreen display are numerous, such as providing an additional mechanism for a user to control computer functionalities, eliminating special dedicated LED status displays, displaying additional content to avoid obstructing or cluttering the main display, enhancing game controls, and including applications such as a calculator, magnification tool, and debugging tool. Ex. 1002 ¶ 86; Ex. 1106 ¶¶ 5, 11; Ex. 1071 ¶¶ 49, 53, 59, 77, 80–83, 85, 89, 91, 99–103. Weighing these advantages against the possible (but speculative) disadvantages of increased power consumption, increased complexity, increased weight, decreased reliability, and cost, we find that one of ordinary skill in the art would have viewed the advantages as motivating making the combination. Ultimately, we agree with Dr. Baker’s opinion that “a person of ordinary skill in the art would have been aware and had the skills and capabilities to design and implement a capacitive touchscreen for Oba’s touchpad using known and conventional configurations with form factors that minimized weight, power consumption, costs, complexity, and reliability issues.” Ex. 1106 ¶ 8. Dr. Baker testifies further testifies, and we agree, that these are “common design issues,” and one of ordinary skill in the art “certainly was capable of addressing them in the design when striving to achieve the benefits that would have been provided through enhanced functionalities like those Gillespie taught to such a person at the time.” Id.” slip op. at 28

  Patent outcomesUS 10,506,674 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,506,674
• Home Depot USA, Inc. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · Feb 14, 2023 · IPR2021-01369 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1, 11, and 13 are unpatentable as obvious over the respective combinations of Deese, Kuo, and Obeck; Deese and Kuo; and Okuno and Teshima.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986).” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “C. Claim Construction In this proceeding, the claims of the ’251 patent are construed “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b) (2001). Under that standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have had to a person of ordinary skill at the time of the invention in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc).” slip op. at 7

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “a) Analogous Art To resolve whether art is analogous we must determine “(1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).” slip op. at 16

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

    “c) Reason to Combine As noted above, Petitioner contends one of ordinary skill in the art would have sought to add data signal preemption capabilities in Deese and Kuo because (1) Deese, Kuo, and Obeck are analogous art to the ’251 patent (i.e., are all in the field of lighting systems), (2) “[t]he need for signal preemption was well-known in the art,” and (3) Obeck expressly teaches that its use of a data receiver solves the need for signal preemption in traffic lights. Pet. 15–16. Petitioner contends one of ordinary skill in the art would have had a reasonable expectation of success in implementing Obeck’s data receiver and signal preemption method in Deese because Deese’s signal controller 70 is a “conventional” controller for selectively energizing the red, yellow, and green traffic lights and this is “precisely the same type of ‘regular signal control 71’ that Obeck teaches should be supplemented with 5:45–63; 1006, 6:36–48; Ex. 1002 ¶ 51).” slip op. at 23

  Patent outcomesUS 10,492,251 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,492,251

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.