- Costar Realty Information, Inc. / Duolingo, Inc. v. Clantech, Inc.All claims unpatentablePTAB · Nov 21, 2023 · IPR2022-00799 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 1–17 are unpatentable as obvious: claims 1–9 over Collins and Gautier, with or without Schaefer; claims 1–5 and 11–17 over Collins, Gautier, Schaefer, and Parthasarathy; and claim 10 over Collins, Gautier, Schaefer, and Miller.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“of unpatentability, Patent Owner has the initial burden of production to show that Schaefer is “not prior art because the asserted claims in the [’421 patent] are entitled to the benefit of a filing date (constructive or otherwise) prior to” Schaefer’s filing date. Dynamic Drinkware, 800 F.3d at 1380; see also Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365, 1371 (Fed. Cir. 2023) (“[W]hen a patent owner attempts to antedate an asserted prior art reference, the patent owner assumes a temporary burden of production.”). To meet that burden, Patent Owner is required to provide “a detailed explanation of the contention that the ’421 patent is entitled to the benefit of a priority date that pre-dates Schaefer.2 37 C.F.R. § 42.22(a)(2).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“To disavow claim scope, the specification must contain ‘expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.’” Retractable Techs., Inc. v. Becton, Dickinson and Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (quoting Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009)). “In general, statements about the difficulties and failures in the prior art, without more, do not act to disclaim claim scope.” Id. (citing Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1315 (Fed. Cir. 2010) (concluding that statement that a prior art two-piece implant was “particularly difficult” to achieve did not disclaim two-piece implants)). Although a disavowal must be clear, it need not be explicit. Techtronic Indus. v. Int’l Trade Comm’n, 944 F.3d 901, 907 (Fed. Cir. 2019); see also Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012) (Disavowal “may be inferred from clear limiting descriptions of the invention in the specification or prosecution history.”). slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Under a proper legal standard, a reference will teach away when it suggests that the developments flowing from its disclosure are unlikely to produce the objective of the [patented] invention.” Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). A reference does not teach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“otherwise dispute Petitioner’s evidence that the combined teachings of Collins and Gautier, with or without Schaefer, disclose the limitations of claim 1. See PO Resp. Having considered the complete trial record, and for the reasons set forth in Sections II.D.4–6.a supra, we determine that Petitioner has established by a preponderance of the evidence that the combined teachings of Collins and Gautier, with or without Schaefer, account for all of the limitations recited in claim 1. Pet. 16–38; Ex. 1003 ¶¶ 115–206. We also determine, for the reasons set forth in the Petition, that Petitioner establishes by a preponderance of the evidence that a POSITA would have been motivated to combine the teachings of Collins, Gautier, and Schaefer as proposed with a reasonable likelihood of success. Pet. 13– 16; Ex. 1003 ¶¶ 103–107.” slip op. at 48
Patent outcomesUS 9,886,421 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 9,886,421 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting v. Cao Lighting, Inc.Some claims unpatentablePTAB · Sep 28, 2023 · IPR2022-00848 · APJ Brian D Range · IPR · Final written decision
Claims 21, 22, 25, 26, 28–30, 32–36, 40, 42–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 are unpatentable under § 103; claim 41 is not shown …
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 18 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52, EPRC 1:32. One requirement of this apparatus is that it comprise “a semiconductor chip” (id. at 9:66) where “said semiconductor chip is a light emitting diode (LED) chip EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction (Resp. 14) of “said semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as referring to “a semiconductor LED chip capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor LED chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 53 (quoting Ex. 1008, 10). Notably, claim 18 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 9
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’770 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 16. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’770 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 15
- Prior constructionPrior construction adoptedTerm construed patent owner constructionDecided for patent owner
“Delaware held, with respect to related U.S. Patent 6,465,961, construed “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” Resp. 14 (citing Ex. 1024, 15–18). Petitioner responds that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1. We note that the language of claim 18 does not precisely match the language the District Court considered, it is substantively the same. The record supports a construction very similar to the construction the District Court adopts, and we reference the District Court’s reasoning. Ex. 1024, 15– 18. We, thus, construe claim 18’s recitation that “said semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as referring to “a semiconductor LED chip that is capable of emitting light greater than about 40 milliwatts.” It is unnecessary to construe any other claim terms in this Decision because none of the parties’ disputes turn on the meaning of other terms. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 17
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“The facts above are evidence of the Krames reference’s publication as of June 29, 2000, because the facts tend to make the Krames reference’s publication as of June 29, 2000, more probable than it would be without the evidence. See Fed. R. Evid. 401(a) (defining evidence as relevant “if it has any tendency to make a fact more or less probable than it would be without the evidence”). The evidence is sufficient to support publication. Meanwhile, no evidence of record suggests that Krames was not a printed publication as of June 29, 2000. Thus, a preponderance of the evidence supports Krames’s prior art status. Patent Owner argues that Ms. Watters “never establishes a firm date when Krames was purportedly available to the relevant public.” Resp. 21. Patent Owner bases this argument by taking a tortured reading of Ms. Watters’s statement that “[m]embers of the interested public could locate a copy of [the Proceedings] on or after June 29, 2000, the date it was catalogued.” Id. (quoting Ex. 1020, 3); see also Sur-Reply 12–13. The best understanding of Ms. Watters’s statement, in view of the context of Ms. Watters explaining the library’s cataloguing process, is that a member of the interested public had two options: the person could choose to locate the Proceedings on June 29, 2000, or the person could choose to locate the Proceedings after June 29, 2000. Thus, the statement supports public availability as of June 29, 2000.” slip op. at 21
Patent outcomesUS 6,634,770 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,634,770 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentablePTAB · Sep 28, 2023 · IPR2023-00129 · APJ Brian D Range · IPR · Final written decision
Claims 21–40, 42–44, 47–49, 52–53, 56–59, 62–63, 65–68, 71–73, 77–78, 81–82, 85–86, and 88–91 are unpatentable over Begemann, Krames, and Allen; claim 41 is not shown unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“In the Reply, Petitioner uses the Krames declaration (Ex. 1028) to argue, for example, that a person of ordinary skill in the art would have used a lower amperage than the 1.5 A dc that Patent Owner’s Response focuses on. Reply 8 (citing Ex. 1028 ¶ 22). This use of the Krames declaration is timely because it responds to an argument Patent Owner makes in the Patent Owner Response. 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in . . . patent owner response.”). As to relevancy and whether the Krames declaration is applicable to the facts of this case, the issues at hand are (1) whether or not a person having ordinary skill would have had reason to use the Krames LED with Begemann with a reasonable expectation of success and (2) whether or not the Krames LED is capable of outputting light at greater than about 40 milliwatts. Again, we emphasize that claim 21 does not recite a method where the LED within the recited semiconductor light source actually outputs greater than about 40 milliwatts. The Krames declaration is relevant to the facts of this case because the declaration has bearing on whether or not a person of ordinary skill in the art would have combined the Krames reference’s LED with Begemann’s lightbulb design. See, e.g., Ex. 1028 ¶ 22. Patent Owner argues that evidence must be relevant to motivation to combine “an LED chip from the Krames article (operating at 1.5 amps to produce 170 milliwatts of output)” but claim 21 has no “operating at 1.5 amps to produce 170 milliwatts of output” requirement. What is relevant is that Krames discloses a single chip that has the capability of outputting more or less light depending on operating conditions. Pet. Opp. 3; see also Ex. 1008, 8 (providing that Figure 12 of the Krames reference is described as illustrating “[l]ight output vs. current characteristic of a blue … 1x1 mm2 AlGaInN LED in a power package, compared to a conventional AlGaInN LED in a 5 mm lamp a package”). Because claim 21 does not require actually running the recited LED at any particular wattage or amperage, it is appropriate for the Krames declaration to rebut Patent Owner’s argument that a person of ordinary skill would not have considered using the Krames LED with Begemann at high amperage by explaining that a person of ordinary skill in the art would have considered using the exact same Krames LED with Begemann at a low amperage instead and that at this lower amperage the Krames LED would generate an amount of heat that would be easily dissipated by Begemann’s lamp while still providing an optical output of “greater than about 40 milliwatts” as recited by claim 21. Ex. 1028 ¶¶ 23–24 (citing Ex. 1008, 8). The fact that the Krames LED is configured to run at the high amperage if desired for a different application does not negate the rationale for combining the Krames LED to run at a lower amperage.” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20
- Prior constructionPrior construction adoptedDecided for patent owner
“Patent Owner’s claim construction is well-supported by the record including the reasoning provided by the California and Delaware district courts. Ex. 2002, 19–21 (California district court explaining why the “reflective layers” must be distinct layers based on how claim 8 is structured and also explaining why the amount of reflection must be non-negligible); Ex. 2003, 2, 13 (Delaware district court explaining why reflection has to be more than negligible but need not reflect more light than the light absorbed or transmitted). We, thus, agree that “first and a second reflective layers . . . 10 Patent Owner’s proposed claim construction combines various statements made by the district courts into one statement. Resp. 15 (citing Ex. 2002, 19–21; Ex. 2003, 2, 13). serving to reflect light emitted by said active layer” means that the “first and second reflective layers are distinct from each other and reflect more than negligible light.” We further note that the preponderance of the evidence supports that as little as one percent light reflectance is “non-negligible” in this context. Reply 4; also Ex. 1032, 188:7–14 (Patent Owner’s witness, Dr. Shealy, testifying that reflection “on the order of one percent” would be more than negligible); see also Tr. 53 (counsel for Patent Owner agreeing that Dr. Shealy opined that “three percent reflection is enough to be non-negligible”).” slip op. at 21
Patent outcomesUS 6,465,961 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,465,961 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentablePTAB · Sep 28, 2023 · IPR2023-00123 · APJ Brian D Range · IPR · Final written decision
Claims 21–40, 42–44, 47–49, 52–53, 56–59, 62–63, 65–68, 71–73, 77–78, 81–82, and 85–91 are unpatentable over Begemann, Krames, and Allen; claim 41 was not shown unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 21 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52. One requirement of this apparatus is that it comprise “at least one semiconductor chip” (id. at 10:1) where the “at least one semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts.” Id. at EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction of “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as meaning “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 54 (quoting Ex. 1008, 10). Notably, claim 21 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 12
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“The facts above are evidence of the Krames reference’s publication as of June 29, 2000, because the facts tend to make the Krames reference’s publication as of June 29, 2000, more probable than it would be without the facts. See Fed. R. Evid. 401(a) (defining evidence as relevant “if it has any tendency to make a fact more or less probable than it would be without the 13 We note that Dr. Lebby does not directly state when the Proceedings were widely available. See Sur-Reply 14. evidence”). The evidence is sufficient to support publication. Meanwhile, no evidence of record suggests that Krames was not a printed publication as of June 29, 2000. Thus, a preponderance of the evidence supports Krames’s prior art status. Patent Owner argues that Ms. Watters “never establishes a firm date when Krames was purportedly available to the relevant public.” Resp. 25. Patent Owner bases this argument by taking a tortured reading of Ms. Watters’s statement that “[m]embers of the interested public could locate a copy of [the Proceedings] on or after June 29, 2000, the date it was catalogued.” Id. (quoting Ex. 1020, 3); see also Sur-Reply 13–14. The best understanding of Ms. Watters’s statement, in view of the context of Ms. Watters explaining the library’s cataloguing process, is that a member of the interested public had two options: the person could choose to locate the Proceedings on June 29, 2000, or the person could choose to locate the Proceedings after June 29, 2000. Thus, the statement supports public availability as of June 29, 2000.” slip op. at 25
Patent outcomesUS 6,465,961 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,465,961 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentablePTAB · Sep 28, 2023 · IPR2022-00847 · APJ Brian D Range · IPR · Final written decision
Claims 21, 22, 25, 26, 28–30, 32–36, 40, 42–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 are unpatentable over Begemann, Krames, and Allen; claim 41 is …
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Patent Owner’s argument is unpersuasive because the Krames declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 21 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52. One requirement of this apparatus is that it comprise “at least one semiconductor chip” (id. at 10:1) where the “at least one semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts.” Id. at EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction of “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as meaning “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 54 (quoting Ex. 1008, 10). Notably, claim 21 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 12
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“It is unnecessary to construe any other claim terms in this Decision because none of the parties’ disputes turn on the meaning of other claim terms. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 22
Patent outcomesUS 6,465,961 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,465,961 - Nespresso USA, Inc. v. K-Fee System GmbHInstitutedPTAB · Sep 13, 2023 · IPR2023-00485 · APJ Jon B Tornquist · IPR · Institution
Instituted IPR of claims 1–10 on all petition grounds; Petitioner showed a reasonable likelihood that the claims would have been obvious over Yoakim, Jarisch, Rossi, and Castellani.
RulingsInstitution decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“second German priority application do not disclose every limitation of independent claims 1 and 7 of the ’430 patent. Figure 1 does not depict a barcode under the flange, but rather the use of raised areas on the side of the capsule that act as an identifier. Ex. 1047, Fig. 1. Figure 2, coupled with its associated description, might suggest that the barcode could be on the portion of the base element facing away from the membrane,9 but this figure does not disclose many of the other elements of the claim, including holding arms, a drop box, annular convexity and concavity, and a pump to supply water to the single-serve capsule. Pet. 41; Ex. 1047, 9:21–24, Fig. 2. We also determine that Patent Owner does not sufficiently demonstrate that Figures 16–18 of the second German priority application provide adequate disclosures showing that the inventors were in possession 9 We question whether the second German priority application supports placing a barcode under the flange. The application states that the barcode could “be provided on that side of the peripheral region of the basic element which is directed away from the membrane.” Ex. 1047, 9:21–24. This statement is rather ambiguous as to where the “peripheral region” is that is “directed away from the membrane.” The text goes on to explain, however, that “[t]his barcode,” i.e., the barcode that is “directed away from the membrane,” “is read by a detector 13,” which in Figure 2 is oriented to read a barcode on the top surface of the flange. Id. at 9:25–26, Fig. 2. This suggests that the barcode is not on the bottom side of the flange and that arrow 15 is pointing to the outer portion of the peripheral region that is not covered by the membrane, and not necessarily the bottom of the flange. First, the second German priority application describes the use of “an identifier” that is read by a “sensor/detection means” and then compared to a stored identifier. Ex. 1047, 2:29–31. In Figure 2 the identifier may be a barcode and the detection means is detector 13. Id. at 9:11–26. In Figures 16–18, however, element 2.4.2 is not an identifier, but rather a “a form-fitting and/or friction-fitting means and/or a detection means.” Id. at 12:22– 24 (emphasis added). As such, it is unclear how this disclosure would demonstrate possession of the disputed claim limitation, when combined with the other limitations of claims 1 and 7 as a whole. Second, it is not evident that the toothed rings of Figures 16–18 are on the underside of the flange, as asserted by Patent Owner. Prelim. Resp. 42 (asserting that a barcode “could be located on the bottom side of the flange instead of the toothed ring”); Prelim. Sur-reply 4. The second German priority application states that the “form-fitting and/or friction-fitting means and/or detection means 2.4.2” is located in the “outer region” of the peripheral region 2.4. Ex. 1047, 12:22–24. We are directed to no evidence that this “outer region” is on the bottom of the flange, and Figures 16–18 each appear to depict means 2.4.2 on, or forming, the outer circumference of the flange.11 Id. at Figs. 16–18, 6:8–11 (noting that the toothed ring is provided “on the outer circumference of the periphery”). 10 The parties dispute whether Figure 16 of the second German priority application discloses annular convexity and concavity. Pet. 42–43; Prelim. Resp. 45–46; Prelim. Reply 4–5; Prelim. Sur-reply 4. At most, the parties identify a material issue of fact with respect to these two claim elements that is best resolved on a full trial record. 11 At first blush, Figure 17A appears to show means 2.4.2 under a portion of element 27 of the capsule. Ex. 1047, Fig. 17A; Prelim. Sur-reply 4 depicted in Figures 16–18, which rely on toothed rings physically interacting with either the chamber, retaining arms, or a pinion. Ex. 1047, 12:22–31, 13:8–18. The second German priority application explains that means 2.4.2 physically interacts with retaining arms 30 (embodiments of Figures 16 and 17) or a pinon (embodiment of Figure 18), and if means 2.4.2 were not present in these embodiments, the capsule would either “drop through into a waste container” or could not be inserted through the insertion shaft. Id. at 12:22–27, 13:9–12, 13:16–35 (noting that in the embodiment disclosed in Figure 18 a pinon interacts with means 2.4.2 and only when means 2.4.2 “is formed complementary to the teeth of the means” can the capsule be inserted). Patent Owner does not sufficiently explain how a barcode could replace means 2.4.2 in these embodiments and still retain the capsule within the device or allow the capsule to enter the insertion shaft.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“First, Yoakim expressly states that the capsule may use a “barcode,” and the plain and ordinary meaning of this term is a code that satisfies the construction adopted by the district court. To the extent Patent Owner has reason to believe that Yoakim does not apply the plain and ordinary meaning of the term “barcode,” and that one of ordinary skill in the art would have understood this fact, it is encouraged to present such evidence during trial. Second, in this obviousness inquiry the question is not whether a person of ordinary skill in the art is more likely to adopt a barcode or a bitcode, but whether one of ordinary skill in the art would have seen a benefit to applying the “barcode” of Yoakim under the flange of the capsule. See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (“Our case law is clear. It’s not necessary to show that a combination is ‘the best option, only that it is a suitable option.’”). On that point, Jarisch expressly discloses the benefits of doing so. Ex. 1005 ¶ 22 (noting that applying the code at the bottom of the rim lowers the risk of the code becoming unreadable). As such, we determine that Petitioner sufficiently identifies where Yoakim discloses a barcode and explains why one of ordinary skill in the art would have placed such a “barcode” on the bottom of the capsule’s flange.” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Information Disclosure Statement (IDS) during prosecution of the ’430 patent and that Rossi and Castellani were mentioned in the inter partes reviews that were cited on the IDS. Pet. 19; Prelim. Resp. 23. We need not determine whether Part 1 of the Advanced Bionics framework is satisfied based on these disclosures, however, as Part 2 of the analysis, which we address below, is dispositive. a) Factor (c)—the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for a rejection The Examiner did not issue any rejections during prosecution of the ’430 patent. Ex. 1002, 232–234. As the reasons for allowance, the Examiner stated: [A]llowance of claims 1 and 21–29 is indicated as none of the cited prior art discloses or suggests the flange comprising a top side and an opposing bottom side; a cover that is fastened to the top side of the flange to close the cavity; and an identifier provided on the bottom side of the flange, the identifier being a barcode, wherein the beverage machine, by reading or detecting the identifier with the sensor/detector, is configured to determine if the single-serve capsule belongs to a group of single serve capsules operable for use with the beverage machine, and only if the beverage machine determines that the single-serve capsule belongs to the group of single serve capsules operable for use with the beverage machine is the pump controlled to push the water into the single-serve capsule. Id. at 233. In arriving at this conclusion, the Examiner did not cite or discuss the disclosures of Yoakim, Jarisch, Rossi, or Castellani. Id. at 232–234. Yet, these references appear, based on the current record, to expressly teach or allowance, including a “flange comprising a top side and an opposing bottom side” (Ex. 1004 ¶ 197, Fig. 6); “a cover that is fastened to the top side of the flange to close the cavity” (Ex. 1004 ¶¶ 128–129, 197, 414); “an identifier provided on the bottom side of the flange” (Ex. 1005 ¶ 22) that is “a barcode” (Ex. 1004 ¶¶ 496, 525); and “reading or detecting the identifier with the sensor/detector . . . to determine if the single-serve capsule belongs to a group of single serve capsules operable for use with the beverage machine” (Ex. 1004 ¶¶ 25, 192, 477, 494–496, 525; Ex. 1005 ¶ 82; Ex. 1041, 3, 11). As such, to the extent the asserted combination of prior art references was evaluated during prosecution of the application that matured into the ’430 patent, we determine that such evaluation was minimal.” slip op. at 37
- Other 314aDecided for petitioner
“B. 35 U.S.C. § 314(a) Patent Owner contends that “[t]he parties have been embroiled in disputes involving substantive claims for infringement for both the ’430 Patent and the Jarisch 929 reference,” and “it is unnecessary to open up yet another front in this dispute.” Prelim. Resp. 68–69. As such, Patent Owner requests that we deny institution under 35 U.S.C. § 314(a). Id. Patent Owner directs our attention to no case in which the Director has exercised discretion to deny a petition merely because the same patent was the subject of a co-pending district court infringement action. Indeed, 35 U.S.C. § 315(b) specifically contemplates such a scenario. Accordingly, we decline to exercise discretion to deny the Petition under 35 U.S.C. § 314(a).” slip op. at 40
§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 11,230,430 - Nespresso USA, Inc. v. K-Fee System GmbHInstitutedPTAB · Sep 13, 2023 · IPR2023-00502 · APJ Grace Karaffa Obermann · IPR · Institution
Instituted IPR on claims 1–16 because Petitioner showed a reasonable likelihood that the claims would have been obvious over Yoakim, Jarisch, and Rapparini.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to claims 1–16 of the ’923 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995). One may show support for the claims of a later application by showing that a single, earlier application provides written description support for the claims. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008); Studiengesellschaft Kohle, MBH v. Shell Oil Co., 112 F.3d 1561, 1564 (Fed. Cir. 1997) (noting that a patentee “cannot distinct previous applications”). Once Petitioner identifies a prior art reference with an effective filing date prior to that of the challenged patent, the burden of production to show entitlement to the benefit of the filing date of an earlier filed application shifts to Patent Owner. See In re NTP, 654 F.3d 1268, 1276 (Fed. Cir. 2011) (“a patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority . . . Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120”). Patent Owner may show possession of the invention through “such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). “Although the exact terms need not be used in haec verba, . . . the specification must contain an equivalent description of the claimed subject matter. A description which renders obvious the invention for which an earlier filing date is sought is not sufficient.” Id.” slip op. at 9
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner
“Once Petitioner identifies a prior art reference with an effective filing date prior to that of the challenged patent, the burden of production to show entitlement to the benefit of the filing date of an earlier filed application shifts to Patent Owner. See In re NTP, 654 F.3d 1268, 1276 (Fed. Cir. 2011) (“a patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority . . . Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120”). Patent Owner may show possession of the invention through “such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). “Although the exact terms need not be used in haec verba, . . . the specification must contain an equivalent description of the claimed subject matter. A description which renders obvious the invention for which an earlier filing date is sought is not sufficient.” Id.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“7. Analysis: Reasons to Combine the References Petitioner shows sufficiently that Yoakim, Jarisch and Rapparini are “analogous art in the field of portion capsule beverage extraction, each disclosing an invention that may be applied in automatic coffee/espresso machines.” Pet. 43. “Yoakim and Jarisch both improve the optimization of beverage parameters in a single-serve brewing system, and use optical codes read by the machine to achieve this.” Id. “Rapparini further improves the the wall of the capsule body like those used in Yoakim and Jarisch.” Id. at 43–44; see id. at 50–51, 53–54 (Petitioner’s further argument that Rapparini discloses “an optimized capsule structure that is stiffer and more stable” by virtue of radially spaced and vertically oriented ribs and grooves, where the vertically oriented grooves are free from extending entirely to the bottom region of the capsule). Petitioner directs us to additional evidence tending to establish that an ordinarily skilled artisan would have been prompted to modify Yoakim’s device, to include the code placement of Jarisch and the grooves and ribs of Rapparini, to arrive at the claimed invention with an expectation of success. Id. at 44–48.” slip op. at 27
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,994,923 - PTAB · Aug 30, 2023 · IPR2023-00521 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on claims 19–61 and 63–81 on all petitioned grounds, finding a reasonable likelihood that Doud anticipates claims 19–61 and 63–75.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one claim of the ’740 patent. Accordingly, we grant institution of an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“the application describe the claim limitations exactly,” the application must demonstrate to persons of ordinary skill in the art that the applicants invented a composition including those limitations. Wertheim, 541 F.2d at 262. On its face, the range of “at least 0.01 wt. %” encompasses a range that is broader than 0.01–35 wt. %, and Patent Owner does not sufficiently explain why a person of ordinary skill in the art would understand from merely a disclosure of 35 wt.% that the inventors were in possession of the entire claimed range for copper, cobalt, or nickel in the magnesium composition.” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedOther
“On this record, the term “at least 0.01 wt. %” in the ’740 patent encompasses values for nickel, copper, and cobalt that are higher than the 35 wt. % (nickel and copper) and 20 wt. % (cobalt) limits outlined in the parent and grandparent applications. Accordingly, we determine that there is a reasonable likelihood that claim 19 of the ’740 patent is not entitled to the benefit of the filing dates of its priority applications. Challenged claims 20–61 and 63–75 depend from claim 19 and there is no argument presented that these claims have independent written description support in Doud. For example, there is no evidence presented that any of these dependent claims narrow the ranges for each of copper, nickel, and cobalt recited in in the ’295 application for these claims.7 Accordingly, for purposes of this Decision, we apply Doud as prior art to challenged claims 19–61 and 63–75.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“as the ’740 patent. For example, Doud and the ’740 patent both disclose a method of forming a novel magnesium composite that includes melting an AZ91D magnesium alloy containing 90 wt. % magnesium, 9 wt. % aluminum, and 1 wt. % zinc. Ex. 1005 ¶¶ 45, 47; Ex. 1001, 21:43–51, 22:48–53, 33:32–43, 34:9–12. To this alloy is added either 7 wt. % nickel or 10 wt. % copper. Ex. 1005 ¶¶ 45, 47, 53, 57; Ex. 1001, 21:48–51, 22:53–56, 33:35–36, 34:12–13. These additives are mixed in the magnesium alloy at a temperature that is less than the melting point of copper or nickel, and the casting is then cooled. Ex. 1005 ¶¶ 45, 47, 53, 57; Ex. 1001, 21:51–54, 22:56–58, 33:35, 34:12-13. Doud reports that nickel and copper, when added to molten magnesium, will form Mg2Ni and CuMg2 intermetallic, galvanically-active, in situ precipitates. Ex. 1005 ¶¶ 12–13. Doud discloses that the dissolution rate of the resulting casting material is either 325 mg/cm2-hr (nickel) or 50 mg/cm2-hr (copper) in a 3% KCl solution at 90° C. Ex. 1005 ¶¶ 45, 47, 53, 57; Ex. 1001, 21:60–62, 22:61–63, 33:41–43, 34:15–17. Doud also discloses that the average particle diameter of the additives used in the invention is generally “at least about 0.1 microns” and “typically no more than about 500 microns.” Ex. 1005 ¶ 6. Petitioner explains how the identified disclosures of Doud anticipate independent claim 19. Pet. 39–40. Petitioner also identifies where the limitations of dependent claims 20–61 and 63–75 are disclosed in Doud. Id. at 41–45. Patent Owner does not address Petitioner’s anticipation arguments with respect to claims 19–61 and 63–75, apart from arguing that Doud is not prior art to these claims. Prelim. Resp. 27–39. demonstrates a reasonable likelihood that claims 19–61 and 63–75 are anticipated by Doud.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 10,689,740 - 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
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.