• Stingray Group Inc. / Stingray Music USA, Inc. v. Edwin A. Hernandez-MondragonSome claims unpatentable
  PTAB · Jun 10, 2026 · IPR2025-00350 · APJ Jason M Repko · IPR · Final written decision

  Claims 7–12 were held unpatentable over Wannamaker alone or with Avellan; claims 1–6 and 13 were not shown unpatentable because Avellan did not teach the claimed screen-capture sequence and assembly.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Patent Owner submits a similar definition and does not take issue with the Petition’s characterization of the level of ordinary skill in the art. PO Resp. 17. We determine that no express finding is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. Any perceived difference in how each party characterizes a POSITA’s education, knowledge, and work experience does not change our analysis or conclusions.” slip op. at 5

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

    “Neither party has offered any claim construction arguments, relying on ordinary and customary meaning. Pet. 19–20; PO Resp. 18. We determine that construction of claim terms is not necessary to resolve the disputes raised by the parties in this proceeding.” slip op. at 5

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Yet paragraph 122 of Mr. Lipoff’s declaration merely repeats the Petition’s argument almost verbatim. Compare Ex. 1007 ¶ 122, with Pet. 28. Mr. Lipoff does not add any citation to Avellan or any other source that supports his testimony. See Ex. 1007 ¶ 122. Nor does Mr. Lipoff offer any additional technical reasoning than what is stated in the Petition. Testimony may be entitled to little weight if it merely restates the petition’s unsupported, conclusory assertions without adding supporting evidence or technical reasoning. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). That is the case here.” slip op. at 8

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

    “We are persuaded by Patent Owner’s argument that claim 1 is not obvious over Avellan because it does not assemble a media stream of multimedia items using the recited screen captures. See PO Resp. 21–23. We agree with Patent Owner that the plain language of the claim requires more than transmitting individual media items. PO Sur-reply 20. To the extent that Avellan captures images, those images do not meet the claimed requirements for a “temporal sequence of screen captures” in the independent claims, which must (1) be of the web page rendered by a browser, (2) “define all the content of the web page at a given time,” (3) “illustrate a dynamic change of at least a portion of the content over time” when two of them are compared, and (4) used to assemble “the at least one media stream.” Rather, the record better supports Patent Owner’s argument that Avellan transmits the multimedia items separate from any media stream assembled from screen captures. PO Resp. 21–23; PO Sur-reply 20.” slip op. at 7

  Patent outcomesUS 10,524,002 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 10,524,002
• Stingray Group Inc. / Stingray Music USA, Inc. v. Edwin A. Hernandez-MondragonSome claims unpatentable
  PTAB · May 28, 2026 · IPR2025-00351 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–9 are unpatentable as obvious over the stated combinations; claims 10–26 were not shown unpatentable because Avellan does not teach limitations [10d]–[10f].

  RulingsFinal written decision

  • Skill levelOther

    “would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols.” Pet. 10 (citing Ex. 1002 ¶¶ 67–68). The Petition further states that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA.” Id. Patent Owner submits a similar definition and does not take issue with the Petition’s characterization of the level of ordinary skill in the art of delivering multimedia content. Resp. 18. We determine that no express finding is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Any perceived difference in how each party characterizes a POSITA’s education, knowledge, and work experience does not change our analysis or conclusions. slip op. at 7

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

    “Neither party has offered any claim construction arguments, relying on ordinary and customary meaning. Pet. 11; Resp. 18–19; Reply 5. We determine that construction of claim terms is not necessary to resolve the disputes raised by the parties in this proceeding. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentableNot shown unpatentable

    “To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). “‘Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’” Id. at 1269 (quoting In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981)). Reasonable inferences of a POSITA may suffice to establish inherent disclosure in a prior art reference such as Farber. See Eli Lilly v. Los Angeles Biomedical Research Institute, 849 F.3d 1073, 1074–1075 (Fed. Cir. 2017) (“[T]he dispositive question regarding anticipation is whether one skilled in the art would reasonably understand or infer from a prior art reference that every claim element is disclosed in that reference.”). Here, however, we find the Petition’s argument and evidence insufficient to establish by a preponderance of the evidence that Farber inherently discloses limitation [1b].” slip op. at 16

  Patent outcomesUS 11,140,441 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 11,140,441
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Maxell LtdSome claims unpatentable
  PTAB · Oct 30, 2025 · IPR2024-00735 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–6 and 9–13 are unpatentable as obvious; claims 7, 8, 14, and 15 were not shown unpatentable because WinTV was not established as a prior-art printed publication.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The Decision on Institution adopted Petitioner’s proposed level of ordinary skill in the art. Inst. Dec. 8–9. We find Patent Owner’s stated level to be less precise than that proposed by Petitioner in that the modifier “at least” used by Patent Owner imposes no upper bound on the amount of experience possessed by one of ordinary skill in the art. Also, Patent Owner states: “The difference between the Board’s definition and Patent Owner’s does not change the arguments set forth herein.” PO Resp. 5. Thus, we continue to adopt Petitioner’s stated level of ordinary skill in the art.10 C.” slip op. at 8

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

    “We agree with Patent Owner that the district court’s construction is better than Petitioner’s proposed construction, because for reasons indicated by Patent Owner, which are not disputed by Petitioner, settings in the computer, e.g., dedicated folders for each user, are the user profiles, rather than simply data alone of any kind. Further, when asked about the appropriateness of the district court’s construction, counsel for Petitioner expressed that Petitioner has no objection to the Board’s adopting the district court’s construction for “user profile”: JUDGE LEE: So, you’d be fine with just going with the District Court’s construction? MR. HEINTZ: Yes, Your Honor. Tr. 15:22–24. For the foregoing reasons, we adopt the district court’s construction for “user profile,” i.e., “a collection of settings and information associated with a user.”” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “2. “the first group of video information being configured to allow a user to edit” Petitioner asserts: “This limitation should be construed for the purposes of this proceeding as meaning at least that a user can modify which video information is a part of the first group of video information.” Pet. 21. Patent Owner neither proposed its own construction nor disagreed with Petitioner’s proposed construction. We adopt the meaning as proposed by Petitioner. D.” slip op. at 14

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

    “We do not reach a resolution on the issue of relative cost between a wired LAN versus a wireless LAN, because Petitioner’s assertion that wireless LANs “were often cheaper and easier to install” is nebulous by use of the imprecise word “often.” “Often” cheaper permits “often” not cheaper. Much depends on how many access points would exist in the wired LAN. Petitioner does not discuss that consideration in the context of Horn. Also, we are persuaded by Petitioner’s other stated reasons for implementing Horn’s LAN as a wireless LAN: (1) that a wireless LAN can be more convenient to users, and (2) Baumgartner provides adequate motivation by disclosing transmission of video from server 36 via communications network 34 such as the Internet over link 48 implemented wirelessly to user computer equipment 22 such as a personal computer. Pet. 29–32. We are persuaded that a wireless LAN provides more user convenience by enabling the user equipment accessing the external network to be flexibly located within the range of the LAN without need to have wires installed to run to those locations. That is true whether there is only one user equipment or there are multiple user equipment, one per user. In the case of only one user equipment, the user can access the external network from a wide range of locations and change that location flexibly. In the case of multiple user equipment, one per user, each user can access the external network from his or her own preferred location, and also change that preference at any time without regard to whether wires have been installed to the preferred location.” slip op. at 22

  Patent outcomesUS 11,017,815 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,017,815
• Samsung Electronics Co., Ltd. / Apple Inc. v. RJ Technology LLCSome claims unpatentable
  PTAB · Jan 17, 2025 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 2–4 and 6–18 are unpatentable as obvious over Abe and Guyomard, with claims 9–10 also obvious over Iwaizono; claims 1 and 5 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years of experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. (citing Ex. 1002 ¶¶ 50–51). Patent Owner “does not dispute Petitioner’s level of ordinary skill.” PO Resp. 17. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the disclosures of the ’641 patent and the prior art of record.” slip op. at 9

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

    “We also agree with Patent Owner that the charge cut-off voltage is not necessarily the applied voltage during charging. PO Resp. 20. Rather, depending on the charging protocol used and when in the charging cycle the voltage is applied, the applied voltage could be higher than the battery voltage. Ex. 2013; Ex. 2006 ¶ 91. For example, as discussed in more detail below with respect to the Uemura grounds, when fast charging using constant current is used and the charging rate is not slow, the applied voltage will be higher than the battery voltage when the constant current charging phase is stopped. Ex. 2006 ¶ 91; Ex. 2013. Likewise, during constant current/constant voltage charging, the applied voltage approximates the battery voltage only when the battery is nearly completely charged. Ex. 2013; Ex. 2006 ¶ 91. Thus, the applied voltage may be, but is not necessarily, the charge cut-off voltage. In view of the foregoing, we construe “charge cut-off voltage” in claims 1 and 5 as “the maximum value to which the battery is configured to be charged.” PO Resp. 18; Ex. 2008, 217:6–11; Pet. Reply 5. Contrary to Patent Owner’s arguments, however, we do not understand the phrase “configured to be charged” to necessarily represent a single voltage for the battery that is determined based on the structure and chemistry of the battery. Pet. Reply 4–5. Rather, the charge cut-off voltage is a selected potential, or voltage, of the battery or cell at the end of charging that is controlled by a circuit or device, such as a charger or control circuit within the battery. Ex. 1001, 9:50–55; Ex. 1048, 2, 7–8; Ex. 1008, 3:9–13. And, for the reasons discussed herein, the charge cut-off voltage may be, but is not necessarily, the same as the applied voltage during charging. PO Resp. 20.” slip op. at 15

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

    “charge cut-off voltage “greater than 4.2 V but less than 5.8 V” and calculating a specific or theoretic capacity “with a charge cut-off voltage limited to 4.2” (claim 1) or “with a charge cut-off voltage set at 4.2 V” (claim 5). Ex. 1001, 16:56–61, 17:6–11. Although the parties dispute the precise scope of these claim terms, the parties agree that the first use of “charge cut-off voltage” in claims 1 and 5 refers to the potential of the battery as a whole (between the cathode and the anode), and not a half-cell voltage using lithium metal as a counter electrode.10 Tr. 17:1–3 (agreeing 10 With respect to the phrase “as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V,” the parties in fact appear to be in that the first use of “charge cut-off voltage” in claim 5 refers to a full-cell voltage); Sur-reply 5; PO Resp. 22. We need not further construe the claims to resolve the disputes between the parties. 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 16

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Given Mr. Juzkow’s unambiguous testimony that Uemura uses constant current charging that would stop when the applied voltage reached 11 The chart is reproduced from SAFT, Charging your lithium-ion batteries: 5 expert tips for a longer lifespan, (https://www.saft.com/energizing-iot/charging-your-lithium-ion-batteries-5-expert-tips-longerlifespan#:~: text=When%20the%20battery%20provides%20current,This%20restore s%20the%20battery's%20capacity). 4.3 V, as well as Dr. Yao’s persuasive testimony that Uemura’s constant charging rate is not slow, we credit the testimony of Dr. Yao that one of ordinary skill in the art would have understood that the internal voltage to which the battery of Uemura was charged is less than 4.3 V. Ex. 2006 ¶ 119. In particular, Dr. Yao persuasively testifies that one of ordinary skill in the art would have believed that the charge cut-off voltage was no more than 4.2 V, and most likely equal to “about 4 V.” Id. ¶¶ 119–122.” slip op. at 21

  Patent outcomesUS 7,749,641 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,749,641
• Samsung Electronics Co., Ltd. / Apple Inc. v. RJ Technology LLCSome claims unpatentable
  PTAB · Jan 17, 2025 · IPR2023-01183 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 2–4 and 6–18 are unpatentable as obvious over Abe and Guyomard, with claims 9 and 10 also obvious over Iwaizono; claims 1 and 5 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years of experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. (citing Ex. 1002 ¶¶ 50–51). Patent Owner “does not dispute Petitioner’s level of ordinary skill.” PO Resp. 17. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the disclosures of the ’641 patent and the prior art of record.” slip op. at 9

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

    “constructions. First, we agree with Petitioner that the ’641 patent indicates that the charge cut-off voltage selected for a particular battery need not be a fixed property of the battery or something that is set by the design and chemistry of the battery. Consistent with this conclusion, the ’641 patent discloses that a “charging device controls the charge cut-off voltage of the single lithium-ion cell within a range from 4.3 V to 5.8 V.” Ex. 1001, 9:50– 55. This strongly suggests that the charge cut-off voltage is controlled by the charger and is not necessarily an inherent property of the battery. Patent Owner contends that this is merely an unclaimed embodiment, but the relevant disclosure states that the charging device for the “present invention” may be any type of device “with the proviso that said charging device controls the charge cut-off voltage.” Id. at 9:50–53.” slip op. at 12

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

    “charge cut-off voltage “greater than 4.2 V but less than 5.8 V” and calculating a specific or theoretic capacity “with a charge cut-off voltage limited to 4.2” (claim 1) or “with a charge cut-off voltage set at 4.2 V” (claim 5). Ex. 1001, 16:56–61, 17:6–11. Although the parties dispute the precise scope of these claim terms, the parties agree that the first use of “charge cut-off voltage” in claims 1 and 5 refers to the potential of the battery as a whole (between the cathode and the anode), and not a half-cell voltage using lithium metal as a counter electrode.10 Tr. 17:1–3 (agreeing 10 With respect to the phrase “as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V,” the parties in fact appear to be in that the first use of “charge cut-off voltage” in claim 5 refers to a full-cell voltage); Sur-reply 5; PO Resp. 22. We need not further construe the claims to resolve the disputes between the parties. 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 16

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Given Mr. Juzkow’s unambiguous testimony that Uemura uses constant current charging that would stop when the applied voltage reached 11 The chart is reproduced from SAFT, Charging your lithium-ion batteries: 5 expert tips for a longer lifespan, (https://www.saft.com/energizing-iot/charging-your-lithium-ion-batteries-5-expert-tips-longerlifespan#:~: text=When%20the%20battery%20provides%20current,This%20restore s%20the%20battery's%20capacity). 4.3 V, as well as Dr. Yao’s persuasive testimony that Uemura’s constant charging rate is not slow, we credit the testimony of Dr. Yao that one of ordinary skill in the art would have understood that the internal voltage to which the battery of Uemura was charged is less than 4.3 V. Ex. 2006 ¶ 119. In particular, Dr. Yao persuasively testifies that one of ordinary skill in the art would have believed that the charge cut-off voltage was no more than 4.2 V, and most likely equal to “about 4 V.” Id. ¶¶ 119–122. Petitioner argues that because the battery of Uemura is charged “to” a maximum voltage of 4.3 V, Uemura discloses the claimed charge cut-off voltage under either Petitioner’s or Patent Owner’s construction of the term. Pet. Reply 11–12 (citing Ex. 1009 ¶ 81; Ex. 1044 ¶¶ 56–59). This argument is not persuasive because Mr. Juzkow unambiguously testified that charging in Uemura stopped when the applied voltage reached 4.3 V, and Uemura discloses that the battery was charged “at” a voltage ranging from 4.3 V to 2.0 V, not “to” such a voltage. Ex. 1009 ¶ 81; Ex. 2008, 113:2–13; Ex. 2006 ¶ 119 n.64; Sur-reply 9. In view of the foregoing, we determine that Petitioner has not demonstrated by a preponderance of the evidence that Uemura anticipates independent claims 1 and 5 of the ’641 patent.” slip op. at 21

  Patent outcomesUS 7,749,641 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,749,641
• Samsung Display Co., Ltd / Samsung Electronics Co., Ltd et al. v. Polaris Powerled Technologies, LLCSome claims unpatentable
  PTAB · Oct 11, 2024 · IPR2023-00771 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1–4 and 7 are unpatentable over Kim and Steer; claim 5 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts a person of ordinary skill in the art “would have [had] a B.S. in Electrical Engineering or equivalent field, with 3–5 years of academic or industry experience in OLED display engineering or comparable industry.” Pet. 12 (citing Ex. 1002 ¶¶ 44–45). Petitioner further asserts that “[a]dditional education could compensate for less practical experience and vice versa.” Id. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art, and “applies Petitioner’s definition.” PO Resp. 7 (citing Pet. 12; Ex. 1002 ¶ 44). Because nothing in the record persuades us that our preliminary finding in the Institution Decision (Dec. 13) adopting Petitioner’s proposal was incorrect, and because the parties apply the same definition at trial, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art.” slip op. at 14

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

    “3. Analysis Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. 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))). Both parties have presented their understanding of the plain and ordinary meaning of the terms “referenced to” and “independent of.” In the Institution Decision, we requested that “[i]f there is a dispute over the plain and ordinary meaning of these terms, the parties should address those issues during trial.” Dec. 14–15 n.6. On this record, the parties do not dispute each other’s understanding of the plain and ordinary meaning of these terms, and, based upon the parties’ arguments, we determine that no express construction of the claim terms is necessary to resolve the controversy, but address the parties’ arguments in the context of the prior art below.6” slip op. at 16

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

    “(1) Whether Kim teaches a “video driver receiving the video signal and generating a video drive signal indicative of the video signal” We are persuaded that Petitioner has shown that the identified portion of Kim’s Figure 10 teaches the recited “video driver” and “generat[es] a video signal.” We find particularly persuasive Petitioner’s annotated comparison of Figure 4 of the ’521 patent as compared to Kim’s Figure 10 (both reproduced above), which illustrates the similarities between the ’521 patent and Kim. See Pet. 25–28. As set forth by Petitioner, Kim’s voltage at node A4 (video drive signal generated by the video driver identified in the dark green box) is supplied to the gate of transistor M31, driving the organic light emitting diode OLED by the video driver circuitry identified in the dark green box, similar to how voltage v(t) 322 (video drive signal) is supplied to the gate of transistor M1 driving the OLED 32 by video driver 32 in Figure 4 of the ’521 patent. Id. at 29.” slip op. at 27

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

    “such as that it is a “simpler design,” would be “an obvious design choice,” “would simplify material needs and cost,” was “well-known,” was a “trivial design change,” would “provide immunity to power source noise,” and “would allow rejection of other power supply noise, such as drift.” Pet. 68– 70. However, several of these reasons focus on what a person of ordinary skill in the art would have been able to do, rather than what a person of ordinary skill in the art would have been motivated to do at the time of the invention. See Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068– 69 (Fed. Cir. 2018) (finding problematic that “the Board focused on what a skilled artisan would have been able to do, rather than what a skilled artisan would have been motivated to do at the time of the invention”); InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014). We find Petitioner’s arguments unpersuasive because they amount to little more than an assertion that the recited limitations could have been easily achieved. We agree with Patent Owner that Petitioner’s proposed modification of Hayafuji is a redesign that appears to be the result of hindsight rather than based upon a persuasive reason for the modification. See Sur-reply 15–18. Petitioner’s argument that the modification involves adding to the functionality of Hayafuji by using an obvious variation of the circuitry Hayafuji already discloses that eliminates both the ripple component and the non-ripple component (see Reply 20–21) supports the conclusion that the proposed modifications were improperly informed by the requirements of the claim. For example, Dr. Kattamis’s testimony describes the proposed modifications, which include removing the ripple component extraction circuit and rewiring the existing circuit. Ex. 1015 ¶¶ 270–273, 321–331. We find that the extent of the proposed modifications is more suggestive of hindsight than obviousness. See Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”); InTouch, 751 F.3d at 1351 (Fed. Cir. 2014) (criticizing use of the challenged patent as a “roadmap” for putting what the expert referred to as “pieces of a ‘jigsaw puzzle’” together).” slip op. at 57

  Patent outcomesUS 7,259,521 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,259,521
• Chongqing Yanmei Technology Co., Ltd. v. Terves, LLCSome claims unpatentable
  PTAB · Aug 27, 2024 · IPR2023-00521 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 19–61, 63–77, and 79 are unpatentable as anticipated by Doud; claims 78, 80, and 81 are not shown unpatentable. The contingent motion to amend is granted in part and denied in part.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have at least a Ph.D. in chemistry, metallurgy, or material science or material engineering” or, in the alternative, “would have a Bachelor of Science or Master of Science degree in one of these disciplines plus experience involving the use and design of dissolvable metal alloys for use in creating tools and other downhole parts for well drilling or completion activities.” Pet. 13–14. Patent Owner does not oppose Petitioner’s contentions regarding the level of ordinary skill in the art. PO Resp. 12 n.4. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the ordinarily skilled artisan as it is consistent with the prior art of record.” slip op. at 7

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

    “With respect to claim 19, Petitioner proposes constructions for the terms “in situ precipitate” and “a plurality of particles of said in situ precipitate having a size of no more than 50 µm.” Pet. 11–12. With respect to claims 76–81, Petitioner proposes a construction for the term “wherein said additive material includes one or more metal materials selected from the group consisting of 0.1–35 wt. % copper, 0.1–24.5 wt. % nickel and 0.1–20 wt. % cobalt.” Id. at 13. Patent Owner contends no claims require construction for purposes of this Decision. PO Resp. 12 n.4, 17–18; Mot. 16–17. Upon review of the prior art of record, we determine that no claim terms require express construction for purposes of this Final Written Decision. 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 8

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateWritten description adequateMixed

    “Ex. 2027, 20:25–21:5 (emphasis added). The disclosure that the “magnesium composite” of “[t]he present invention” “includes at least 50 wt% magnesium” is unambiguous and constitutes strong evidence that the inventors were not in possession of a magnesium composite with less than 50 wt. % magnesium, or additive concentrations above 50 wt. %. See SciMed Life Systems, Inc. v. Advanced Cardiovasular Systems, Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) (noting that a description of the “present invention” as having a particular structure “is strong evidence that the claims should not be read to encompass the opposite structure”). Consistent with this conclusion, the original claims of the ’295 application all limited the additive material in the composite to 0.05 wt %–45 wt %. Ex. 2027, 26:1– 13, 29:9–15. Likewise, in each example where copper, nickel, or cobalt additives are used in the range recited in the proposed substitute claims, the magnesium composite is “over 50 wt% magnesium,” and any claims that do not require this range of magnesium are limited to an additive range of “about 0.05 wt%–45 wt% of said mixture.”8 Ex. 2027, 6:13–7:4, 7:16–19, 8 Written description support is considered from the view point of the ordinarily skilled artisan. Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Patent Owner, bearing the burden to show written description support in any priority application for which it seeks the benefit of its filing date, provides no testimony from an ordinarily skilled artisan regarding written description support in the ’295 application, or any evidence to show what such an artisan would conclude from the express disclosures of the ’295 application. Lectrosonics, Paper 15 at 7; In re NTP, 654 F.3d 1268, 1276 (Fed. Cir. 2011) (noting that “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”). Where there is any ambiguity in the disclosures of the ’295 application, the absence of supporting testimony tends to cut against 26:2–31:2; see Ex. 1005 ¶¶ 12, 13, 18, 19, 16–21, 26, 28, claims 16–21, 26– 28. In view of the foregoing, we are not persuaded that Patent Owner has demonstrated that the inventors of the priority applications were in possession of a magnesium cast composite that included less than 50 wt. % magnesium, or greater than 50 wt. % additives. As proposed substitute claim 104 encompasses a magnesium cast composite with up to 90 wt. % additives, and therefore as little as 10 wt. % magnesium, Patent Owner has not demonstrated that the full scope of this claim finds written description support in any application prior to the ’915 application, filed on October 12, 2018.” slip op. at 17

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteIndefiniteMixed

    “The definiteness requirement of § 112(a) is satisfied when “a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable clarity.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014); see 37 C.F.R. § 42.100(b) (changing the claim construction standard used to review a claim proposed in a motion to amend from the broadest reasonable construction to the “same construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b)”). Proposed substitute claim 104 generically requires “in situ precipitate” and also a specific type of in situ precipitate: “in situ galvanically-active intermetallic precipitate.” Mot. Appendix A. Although this claim would have best been clarified by Patent Owner after seeking preliminary guidance on its Motion to Amend, upon review of the written description, claims, and figures of the ’740 patent, as well as Patent Owner’s clarification in its Reply to the Opposition, we agree with Patent Owner that one of ordinary skill in the art would have understood that the “in situ galvanically-active intermetallic precipitate” is merely a more complete description of the “in situ precipitate” mentioned earlier in the sentence. Mot. Reply 4. As such, we do not find that this part of proposed substitute claim renders claim 104 indefinite.” slip op. at 22

  Patent outcomesUS 10,689,740 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham · Nautilus
  Patents in suitUS 10,689,740
• 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
• Cradlepoint, Inc. / Sierra Wireless, Inc. et al. v. Sisvel International S.A.Some claims unpatentable
  PTAB · Jan 18, 2022 · IPR2020-01102 · APJ Aaron W Moore · IPR · Final written decision

  Claims 1–5, 15–20, 30, and 31 are unpatentable as obvious over Qualcomm and TS25.322; claims 6–14 and 21–29 were not shown unpatentable. Substitute claims 32–35, 45–49, 59, and 60 were denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art at the time of the invention “would have a degree in electrical engineering or similar discipline, with at least three years of relevant industry or research experience in telecommunication, including familiarity with cellular communications technologies,” that this person “would also have familiarity with WCDMA,” and that “[t]his definition is approximate,” as “more education may substitute for industry experience or vice versa.” Pet. 12–13 (citing Ex. 1007 ¶¶ 30–34). We adopted Petitioner’s proposal at institution. See Decision 7–8. In its Response, Patent Owner “proposes that a person having ordinary skill at the time of invention—August 23, 2005—in the relevant art would be one with a bachelor’s degree in electrical engineering, computer sciences, or telecommunications, along with three to five or more years of practical experience in the field” and that “[a] combination of more experience in the field and less education or more education and less experience in the field would also suffice.” PO Resp. 8 (citing Ex. 2001 ¶ 27). Patent Owner asserts that “[a]lthough [its] proposed level of skill in the art is similar to Petitioners’ proposal, Patent Owner includes the qualification that a combination of more experience in the field and less education, or more education and less experience in the field would also suffice.” Id. The parties do not argue that the formulation of the level of skill in the art affects any issue in this case, and we maintain our adoption of Petitioner’s formulation, which we find to be generally consistent with the disclosures of the ’443 patent and the prior art, and which includes that “more education may substitute for industry experience or vice versa.”” slip op. at 9

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

    “length indicator” to mean “a single length indicator that provides two pieces of information: (1) that a first data octet of the protocol data unit is a first octet of a first service data unit; and (2) that at least one other octet of the protocol data unit is the last octet of another service data unit.” See Prelim. Resp. 9–10. We agreed with Patent Owner that the specification’s description of a single length indicator that conveys both types of information and the arguments made during prosecution that the claims required a “single LI” or “the same length indicator” to include both types of information were sufficient to support a construction that required a single length indicator to include both pieces of information. See Decision 9. Although it did not propose a construction in the Petition, Petitioner now argues that “the claim language uses the indefinite article ‘a’ to modify ‘length indicator’” and that “[p]recedent is well settled that ‘an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” Pet. Reply 5 (citing KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000)). While we agree with Petitioner that “a” may mean “one or more,” that simply means that the addition of more length indicators would not be excluded from the scope of the claim. Petitioner does not explain, and we do not see, how that affects the meaning of “length indicator” itself and, for the reasons argued by Patent Owner and adopted at institution, we maintain the earlier construction of “length indicator” as “a single length indicator that provides two pieces of information: (1) that a first data octet of the protocol data unit is a first octet of a first service data unit; and (2) that at least one other octet of the protocol data unit is the last octet of another service data unit.” See Decision 8; Prelim. Resp. 9–12; PO Resp. 10–13. slip op. at 11

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

    “We also observe that, although Patent Owner characterizes this issue as one based on “teaching away” (see, e.g., PO Resp. 3; PO Sur-Reply 15– 16), the argument is not about teaching away because Patent Owner is not pointing us to any specific teaching in the prior art, or elsewhere, that would counsel against the proposed modification. Patent Owner is not arguing that something in the prior art disparages or discourages the use of one bit of an LI as a flag. Instead, Patent Owner is arguing that one of skill in the art would not pursue the Qualcomm approach because to do so would mean accepting other drawbacks that would flow from the use of the flag. In any event, we credit Patent Owner’s evidence that dedicating a bit of the LI for use as a flag would reduce the length that could be represented by the remaining bits of the LI and cause SDUs to be divided into more PDUs. See, e.g., Ex. 2005 ¶¶ 30, 32. However, the record also shows that use of the flag would provide a specific advantage, as described in Qualcomm. See Ex. 1006, 3; Ex. 1007 ¶ 253. This is the motivation advanced by Petitioner which, notably, Patent Owner does not dispute. We conclude that, even if Patent Owner is correct that the proposal in Qualcomm would reduce the permitted PDU size from 128 octets to 64, the change would merely be something a skilled artisan would need to weigh against the advantages that the Qualcomm technique would provide. Patent Owner may be correct that the reduced lengths would, in the end, render the modified system unsuitable for certain applications or for adoption in a standard. That would not, however, make the modification nonobvious, particularly where the exact change proposed in the combination was suggested by individuals working in the field, as evidenced by Qualcomm itself.7 The record shows that at least some of those working in the field, at the time of the invention, believed that the advantages of Qualcomm’s approach would outweigh the reduced lengths.” slip op. at 20

  • BurdenMixed

    “In TS25.322, the value “0000000” is a predefined, special value used to indicate that “[t]he previous RLC PDU was exactly filled with the last segment of an RLC SDU and there is no ‘Length Indicator’ that indicates the end of the RLC SDU in the previous RLC PDU.” See Ex. 1005, 36–37. However, although Qualcomm specifically contemplates implementing its flag scheme by “[r]e-arrang[ing] special LI values as they are now coded on less number of bits” (Ex. 1006, 4), the Petition did not argue a combination that includes modification of the special LIs for the independent claims. Instead, Petitioner relied on Qualcomm’s proposal to modify ordinary LIs that indicate the end of SDUs. See, e.g., Pet. 71–72 (describing and illustrating modification of the LI that identified the end of SDU 1: “[t]he green modified LI indicates that a first data octet of PDU is a first octet of SDU1 and another octet of the PDU is the last octet of SDU1”); Ex. 1007 ¶¶ 261–262. Petitioner’s argument with respect to these claims is thus not consistent with the argument it advanced for the independent claims from which these claims depend. Petitioner cannot reasonably rely on one type of prior art LI as the “length indicator” of claim 1, but then shift to a different type of prior art LI when addressing the very same “length indicator” recited in a dependent claim. Moreover, Petitioner fails to explain how or why the special LI “0000000” that is used to indicate the layout of the previous PDU could reasonably be used to also indicate the layout of the current PDU in which the LI appears. For example, if the previous PDU did not meet the condition identified by the “0000000” special value, then the LI would not appear in the next PDU even if that next PDU had a first SDU that ended in that PDU. For these reasons, Petitioner has not provided sufficient explanation or argument to establish obviousness of claims 6 and 21.9” slip op. at 28

  Patent outcomesUS 7,894,443 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,894,443
• Fujifilm Corporation v. Sony CorporationSome claims unpatentable
  PTAB · Nov 7, 2018 · IPR2017-01268 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 15 and 17 are unpatentable as anticipated by Ishikawa; the petitioner did not show claims 1–11, 16, and 18–20 unpatentable over Aonuma or Aonuma and Abe.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) at the time of the ’774 patent would have had “a bachelor’s degree in materials science, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience” in industry or academic research relating to magnetic tape, or “a master’s degree or higher” in the same fields and at least three years of experience relating to magnetic tape. Pet. 13 (citing Ex. 1003 ¶ 65; Ex. 1018 ¶ 60). Patent Owner does not dispute Petitioner’s assessment in its Response, and Dr. Talke agrees that it “is reasonable.” Ex. 2026 ¶¶ 25–26. Petitioner’s assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). Accordingly, we adopt Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 8

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

    “the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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)). For the purposes of the Decision on Institution, we determined that, based on the record at that time, no claim term required express construction (Dec. on Inst. 7), and we see no reason to modify that determination in light of the record developed during trial. C.” slip op. at 9

  • Expert testimonyPetitioner expert creditedMixed

    “considerably greater than Ishikawa’s stylus load of 50–300 μN (Ex. 1015 ¶ 45). The Talke Declaration does not address this discrepancy, and Dr. Talke stated during his deposition that reducing the stylus load would reduce scratching of the magnetic tape surface. Ex. 1030, 108:14–19 (“Q: Would reducing the contact pressure for the stylus instrument reduce the scratching of the magnetic tape surface by the stylus? A: Yes, it would, but you have to remember the other problem is the diameter and size of the stylus.”). Moreover, Petitioner provides evidence that it was not uncommon to use stylus-type profilometers to measure the properties of magnetic tape, even after Bhushan was published in 1996. See Reply 6. In particular, Petitioner points to Saliba,6 which describes using a stylus-type profilometer, under identical conditions to those used in Ishikawa, to measure the surface characteristics (including peak-to-valley roughness) of the backcoating of magnetic tape. Ex. 1027, 7:28–40, 57–60. Petitioner further points to Ohno,7 which also describes using “a stylus type 3D profilometer in accordance with JIS B0601” to measure the surface roughness characteristics of magnetic tape. Ex. 1028 ¶ 36; see also Ex. 1015 ¶ 45 (Ishikawa explaining that surface roughness characteristics were measured “in accordance with JIS-B0601-1994”); Ex. 1027, 7:28–39 (Saliba explaining that surface roughness characteristics where measured “in accordance with JIS-B0601-1994”). Accordingly, we are persuaded that the 6 US Patent No. 6,558,774 B1, issued May 6, 2003 (Ex. 1027). 7 U.S. Patent App. Pub. No. US 2005/0175866 A1, published Aug. 11, 2005 (Ex. 1028). evidence establishes that a stylus-type profilometer is a suitable device for measuring the surface characteristics of magnetic tape.” slip op. at 19

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

    “We agree with Petitioner that Ishikawa teaches “peak-to-valley roughness less than about 325 nm” as recited in claim 15. Pet. 24–25; Reply 5–8; Ex. 1003 ¶ 216. In particular, Ishikawa teaches a backcoating layer of a magnetic tape that has a peak-to-valley roughness “Rz of 40 to 250 nm, particularly 50 to 200 nm.” Ex. 1015 ¶ 44. Ishikawa provides five example embodiments of its magnetic tape, and reports the measurements of a number of characteristics of the backcoat layer for each example, including peak-to-valley roughness Rz. Id. ¶¶ 120–134, Table 1. Ishikawa discloses that peak-to-valley roughness Rz was measured using a stylus-type profilometer under the following conditions: Stylus: diameter: 1.5 to 2.5 μm; curvature: 60º Contact pressure: 50 to 300 μN Cut-off length: 80 μm Sampling length: 80 μm Assessment length: 400 μm Id. ¶¶ 45, 49. The reported peak-to-valley roughness Rz values for the five examples ranged from 58 to 87 nm, as shown in the annotated portion of Ishikawa Table 1 from the Petition, reproduced below: Pet. 24 (citing Ex. 1015, Table 1). The annotated portion of Ishikawa Table 1 shows the results for the measured characteristics of the backcoat layer of Examples 1–5, with the peak-to-valley roughness Rz values highlighted by a red box. Id. Because Ishikawa teaches that the backcoating layer of its magnetic tape should have a peak-to-valley roughness “Rz of 40 to 250 nm, particularly 50 to 200 nm,” and because Ishikawa presents examples of magnetic tape with backside surfaces having a peak-to-valley roughness of 87 nm or less, Ishikawa discloses “a peak-to-valley roughness less than about 325 nm” as recited in claim 15.” slip op. at 16

  Patent outcomesUS 7,029,774 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,029,774

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.