- Savant Technologies LLC D/B/A GE Lighting / Ledvance LLC et al. v. Feit Electric Company, Inc.All claims unpatentablePTAB · Aug 31, 2026 · IPR2025-00260 · APJ Kevin W Cherry · IPR · Final written decision
The Board held all challenged claims 1–3, 6, 7, 9–14, 16–21, 25, 26, and 29 unpatentable as obvious and granted the motion to amend for substitute claims 30–49.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“E. Credibility of Dr. Doolittle Patent Owner argues that we should give no weight to Dr. Doolittle’s testimony because, “[o]n cross examination, Prof. Doolittle repeatedly contradicted himself, dodged questions, and tried to shoehorn new and nonresponsive opinions into his answers to Patent Owner’s questions.” PO Resp. 25. Patent Owner raises two major complaints about Dr. Doolittle. First, Patent Owner argues that he took inconsistent positions by asserting in these IPR proceedings that the claims were entitled to their plain and ordinary meaning, while in the parallel district court proceeding, asserting that certain claim terms were indefinite. Id. at 26–28. Second, Patent Owner argues that Dr. Doolittle “repeatedly dodged questions and tried to shoehorn new and nonresponsive opinions into his answers to Patent Owner’s questions,” and that “[d]uring cross examination Patent Owner was forced to object to Prof. Doolittle’s nonresponsive answers no less than eighteen times.” Id. at 28. We strongly disagree with Patent Owner’s characterization of Dr. Doolittle’s testimony. We have reviewed the entirety of both of Dr. Doolittle’s depositions. We are impressed with his forthrightness, candor, and good humor in the face of Patent Owner’s counsel’s aggressive questioning. Contrary to Patent Owner’s assertions, we find that his testimony was well-reasoned, forthright, honest, and entitled to significant weight. Dr. Doolittle explained the different claim construction positions We also strongly disagree that Dr. Doolittle’s answers were nonresponsive or “evasive” as Patent Owner argues. Patent Owner’s numerous attempts to “strike” portions of his testimony belie Dr. Doolittle’s efforts to honestly and in good faith respond to Patent Owner’s counsel’s questions. Ex. 2025, 22:10–23:15, 25:9–26:14, 30:14–22, 40:3-9, 58:12–59:1, 60:18–61:13, 65:1–10, 83:15–84:16, 92:15–95:20, 96:18–99:9, 102:22–106:16, 135:3–136:22. An answer is not “non-responsive” simply because it does not conform to the conclusion you want or undermines the logic underlying your questioning. Dr. Doolittle explained his answers and addressed the issues Patent Owner asked about. Accordingly, we decline Patent Owner’s invitation to give Dr. Doolittle’s testimony no weight. Instead, we assess Dr. Doolittle’s testimony on a case-by-case basis as discussed below.” slip op. at 21
- Skill levelOther
“B. Level of Ordinary Skill in the Art We consider the asserted ground of unpatentability in view of the understanding of a person of ordinary skill in the art (“POSITA” or “POSA”). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d Relying on the declaration testimony of its expert, Dr. Doolittle, Petitioner contends that an ordinarily skilled artisan for the ’678 patent “would have had an undergraduate degree (i.e., B.S., B.S.E. or the equivalent) in electrical engineering, materials science, physics, or a similar discipline” and “would also have one to two years of experience in the field of LED packaging design.” Pet. 5–6. Petitioner additionally contends that “[m]ore education could substitute for experience, and vice versa.” Id. Petitioner further contends that “[t]his person would have been capable of understanding and applying the teachings of the ’678 patent and the prior-art references discussed herein,” and “[m]oreover, the prior art reflects the level of skill at the time of the claimed invention.” Id. (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); Ex. 1102 ¶¶ 38–42). Patent Owner states that “solely for the purposes of this proceeding, Patent Owner and its technical expert employ the same level of skill in the art as Petitioners.” PO Resp. 24–25. Thus, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’678 patent and the asserted prior art, and we apply it in our obviousness analysis below.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“lower wavelength might offer, there were other drawbacks that a person of ordinary skill would have to balance. But “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Indeed, Petitioner has shown several references—including, Basin-2005, Shimizu, and Stokes—that made this tradeoff. Moreover, “[o]bviousness does not require absolute predictability of success. . . . [A]ll that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988). We find that the prior art of record demonstrates that a person of ordinary skill in the art at the time of the invention would have such an expectation in making the combination of Basin-2007 and Basin-2005. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that there would have been motivation to combine Basin-2007 and Basin-2005 with a reasonable expectation of success. 4. Summary We have reviewed Petitioner’s contentions regarding claims 1–3, 6, 9, 10, 16–21, and 25 (Pet. 19–53), and find that Petitioner has shown by a preponderance of the evidence that Basin-2007 and Basin-2005 teach the limitations of those claims, and that there would have been a motivation to combine the references in the manner suggested with a reasonable considerations does not outweigh the strong showing of obviousness. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that claims 1–3, 6, 9, 10, 16–21, and 25 would have been obvious over Basin-2007 and Basin-2005.” slip op. at 41
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“1. Nexus In order for secondary considerations to be awarded “substantial” slip op. at 22
Patent outcomesUS 8,604,678 unpatentable§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 8,604,678 - Grit Energy Solutions, LLC v. Oren Technologies, LLCNo claims unpatentablePTAB · Jun 13, 2018 · IPR2017-00768 · APJ Michael L Woods · IPR · Final written decision
Claims 1–3 and 5 were not shown unpatentable over Eng Soon and Constantin; claims 4, 6, and 7 were not shown unpatentable over Eng Soon, Constantin, and Olson because the asserted combinations were not adequately …
RulingsFinal written decision- Expert testimonyPatent owner expert creditedDecided for patent owner
“Mr. Smith, on the other hand, testifies that Constantin does not disclose an actuator having a receptacle and “Petitioner and Dr. Wooley’s argument that Constantin teaches that one could switch the location of stud 15 and orifice 16 is not supported.” Ex. 2040 ¶¶ 65–66. Mr. Smith further testifies that “Constantin does not describe the location of stud 15 and orifice 16 as a ‘preferred embodiment.’ . . . Constantin’s disclosure does not disclose or suggest that stud 15 could be switched for orifice 16 on the other shutter blade.” Id. ¶ 68. Having considered Petitioner’s and Patent Owner’s competing evidence and argument, we agree with Patent Owner and credit Mr. Smith’s testimony. Specifically, we find that Petitioner has not shown that Constantin teaches, discloses, or suggests its orifice as being attached to its actuator, as Petitioner asserts. See Pet. 49. Petitioner’s assertion is premised on a misapprehension of Constantin’s claim 5.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Having established that Constantin does not teach, disclose, or suggest an orifice attached to its actuator, we also find unpersuasive Petitioner’s argument that a POSITA would have modified Eng Soon’s structure so as “to fix the pin on the bottom of the gate as taught by Constantin.” Pet. 54 (emphasis added). Because Petitioner has not shown Constantin teaches or suggests such structure and has failed to provide adequate explanation for why one would have modified Constantin, Petitioner’s reasoning is insufficient.” slip op. at 22
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The Board may, for good cause, issue an order to protect a party or person from disclosing confidential information.” 37 C.F.R. § 42.54(a). Upon considering the content of the Exhibits, including those redacted versions, and Petitioner’s representations as to the confidentiality of the information, we determine that Petitioner has shown good cause for sealing Exhibit 1016 in its entirety and the redacted portions of the Exhibits 2010, 2012, 2013, 2020–2024, 2029, 2032, 2033, 2039, and 2044, which redacted versions have been submitted as Exhibits 1025–1037. Id. at ii. slip op. at 27
Patent outcomesUS 8,585,341 not shown unpatentable§ 103 obviousnessPatents in suitUS 8,585,341 - Micron Technology, Inc. v. Innovative Memory Systems, Inc.Rehearing grantedPTAB · Jul 1, 2016 · IPR2016-00326 · APJ Kevin W Cherry · IPR · Rehearing
On rehearing, the Board instituted IPR on claims 1, 2, and 13 based on anticipation by Anderl and obviousness over Anderl or Anderl and Hendry.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“On June 17, 2016, Patent Owner filed a Request for Rehearing (Paper 13, “Request” or “Reh’g Req.”) of our Decision to Institute (Paper 10, “Decision”) an inter partes review in this case. We have reviewed Patent Owner’s Request, and we agree that we overlooked the matters identified in the Request. See Reh’g Req. 2–4. Thus, for the reasons stated in the Request, we grant Patent Owner’s Request for Rehearing. On rehearing, we withdraw our previous Decision and reconsider our Decision in light of the full record, as Patent Owner requests. Id. at 4. Pursuant to this reconsideration, we issue the instant Amended Decision to Institute.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine that the information presented shows there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of claims 1, 2, and 13 (“the challenged claims”) of the ’537 patent.” slip op. at 2
- BurdenOther
“limitation, we are persuaded that Petitioner has shown adequately that Anderl discloses “said appended information featuring said at least one associated type of permission for accessing the stored data,” as recited in claim 1. Patent Owner focuses narrowly on the value of the data included in protection bytes 43 to 45 of Anderl. See Prelim. Resp. 13–15. Yet the claim does not focus only on the data alone, but instead recites “appended information.” As the Petition explains, Anderl discloses that the information is appended based on location in file as the value at the particular location. See Pet. 23–24. In particular, Anderl discloses that each file includes prefix section 41 that is located in the first record of each file and contains file identification number 42 and protection bytes 43, 44, and 45. Ex. 1005, 6:57–60. Anderl states that “[t]he protection bytes 43 through 45 specify the file permissions.” Id. at 6:65–66 (emphasis added). As Anderl discloses,” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“not persuaded that “type of permission” is limited to only the type of action that can be performed, e.g., reading or writing, with respect to the data. Instead, the Specification repeatedly refers to the “types of permissions” as “for determining access to the stored data, such that if an attempt is made to access particular data which does not have a suitable permission type, access is denied.” See, e.g., Ex. 1001, Abstract (“The device, method and system enable various types of permissions to be set for determining access to the stored data, such that if an attempt is made to access particular data which does not have a suitable permission type, access is denied.”); 2:32–36 (“The present invention enables various types of permissions to be set for determining access to the stored data, such that if an attempt is made to access particular data which does not have a suitable permission type, access is denied.”); 3:4:26–30 (same). Given this broader usage in the Specification, for purposes of this decision, the “type of permission” is for determining access to the stored data, such that if an attempt is made to access particular data that does not have a suitable permission type, access is denied. The access, if not denied, may include reading from or writing to the stored data. As for “featuring,” we are not persuaded that “featuring,” as used in claim 1 of the ’537 patent is synonymous with “represent,” as Patent Owner contends. A relevant meaning of “featuring” is “to be an important part or aspect of something.” See Ex. 3001. This meaning only requires that the thing that is featured be an important part or aspect, not that it correspond to or represent the thing. Patent Owner does not point us to any disclaimer or definition that would limit this meaning. See Prelim. Resp. 13–15. Instead, the Specification appears to use the related term “feature” in this ordinary sense. See, e.g., Ex. 1001, 4:54–56 (“As another option, the device may feature a single chip with a microprocessor and firmware for operating the data access features ….”); 5:25– 27 (“A system 10 features a CPU 12 for executing instructions….”); 8:15–19 (“For example, an access control code could be implemented with a combination of different types of data, each of which could again feature a separately selected and assigned data access permission, which optionally and preferably is different for each portion of the data.”). Moreover, the portion of Specification cited by Patent Owner (Prelim. Resp. 12–13 (citing Ex. 1001, 6:34–61)) makes clear that it only refers to a preferred embodiment and the permissions do not need to be stored as a “code,” i.e., specific information or data representing the permission. See id. at 6:35–36 (“According to preferred embodiments…”), 6:43–47 (“If such a permission is to be stored in an abbreviated code, the code for this particular type of permission could be given as ‘R/W/WP’, for example. Such a code could optionally be stored in the non-volatile 16, for example.” (emphases added)). Such optional language is not sufficient to limit the claimed “appended information” to only something that “represents” the permission, such as a code. See Prolitec Inc. v. Scentair Techs., Inc., 807 F.3d 1353, 1358 (Fed. Cir. 2015) (“[T]he use of ‘may’ signifies that the inventors did not intend to limit [the claim]. . . .”); Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 735 (Fed. Cir. 2014) (noting that non-limiting examples are not sufficient to redefine a term).” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,324,537 - Google Inc. / Motorola Mobility LLC et al. v. Arendi S.A.R.L.All claims unpatentablePTAB · Aug 18, 2015 · IPR2014-00452 · APJ Neil T Powell · IPR · Final written decision
Claims 1–79 are unpatentable as obvious: claims 1–9, 11, 13–29, 38–45, 57–64, 66, 68–75, 77, and 79 over Goodhand; the remaining challenged claims over Goodhand and Padwick.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Samsung Electronics Co., Ltd. (“Samsung”) filed a second Petition for inter partes review of claims 1–79 of the ’853 patent. IPR2014-01518, Paper 1. The second Petition challenged claims 1–79 on the same grounds as those for which we instituted trial in IPR2014-00452. Concurrent with the second Petition, Samsung filed a motion to join IPR2014-01518 with IPR2014-00452. IPR2014-01518, Paper 3. On March 18, 2015, we instituted an inter partes review with respect to all challenges raised in the second Petition, joined IPR2014-01518 with IPR2014-00452, and terminated IPR2014-01518. IPR2014-01518, Paper 10; IPR2014-00452, Paper 26.2” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with Patent Owner insofar as the disputed claim language requires that the recited “analyzing” ensues when “a single entry of the execute command” occurs. This follows from the plain meaning of the claim language, and no evidence to the contrary has been cited. We do not agree, however, with Patent Owner’s argument that claim 1 “rule[s] out action by the user, such as selection of text in the document to be analyzed, as a condition for the analyzing to take place.” PO Resp. 17 (citing Ex. 2008 ¶ 25). According to the plain meaning of “upon a single entry of the execute command . . . analyzing the document,” the word “single” does modify entry, thereby excluding multiple entries of the execute command. Additionally, claim 1’s use of the transitional term “comprising” indicates that the method may include other actions prior to the recited “single entry of the execute command.” Furthermore, contrary to Patent Owner’s assertion, the claim language “an execute command which initiates a record retrieval from an information source,” by itself, does not convey clearly that the record retrieval necessarily occurs because of one entry of the execute command. Moreover, the portion of Dr. Levy’s deposition testimony cited by Petitioners persuades us that the system disclosed by the ’853 patent would require user actions prior to entering the execute command to trigger the analyzing process. See Ex. 1016, 75, l. 21–79, l. 18; Pet. Reply 11–12. Additionally, as noted by Petitioners, Patent Owner’s argument is contradicted by the Specification’s disclosure that:” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“Reply, the Federal Circuit has admonished that “[t]he PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). Accordingly, we consider the cited portions of the prosecution history and the parties’ arguments about them. Patent Owner cites a number of documents from the prosecution history of U.S. Patent Application No. 09/189,626 (“the ’626 application”), which issued as the ’853 patent. Patent Owner cites an Office Action (Ex. 2001) in which the pending claims of the ’626 application were rejected based on U.S. Patent No. 6,085,201 to Tso (Ex. 2003, “Tso”). PO Resp. 36. Patent Owner also cites a subsequent Interview Summary (Ex. 2002), Amendment (Ex. 2004), and Notice of Allowance (Ex. 2005). Id. at 37–39. We have considered all of these documents, as well as Patent Owner’s arguments regarding them. We find that the cited prosecution history does not demonstrate a clear disavowal of text selection. The Remarks section of the Amendment addresses a number of different subjects. See Ex. 2004, 2–4. The first four paragraphs of the Remarks section present background information, including a request for reconsideration, a summary of the status of the claims, a summary of the Office Action, and a summary of an interview between the applicant and examiner (“the examiner interview”). Id. at 2–3. The paragraph summarizing the examiner interview bridges pages 2 and 3. Id. This paragraph describes an exploratory discussion between the applicant and the examiner about distinguishing Tso, a discussion in which “[n]o agreement was reached.” Id. at 3. In the following paragraph, the Amendment addresses the scope of the claims, explaining that: Claim 8 has been amended to clarify that according to Applicants’ invention, upon a single entry of an execute command by means of an input device, a document is analyzed to determine if first information is contained therein, and if the first information is contained in the document, an information source is searched for second information associated with the first information using a record retrieval program. Id. (emphasis added). We find that this latter paragraph contains the only clear statement from the applicant regarding the scope of the claims, and, in our view, it says nothing about whether the claims preclude or encompass text selection. See id.” slip op. at 17
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We are persuaded by Petitioners that a person of ordinary skill in the art would have understood from Goodhand that its system performs analysis to determine if address field 600 contains any information, and its system is capable of breaking down the information contained in address field 600 to isolate display names, which constitute first information. Mr. Allison provides credible, persuasive testimony supporting Petitioners’ arguments. See, e.g., Ex. 1002 ¶¶ 101–103, 122. Mr. Allison correctly asserts that Goodhand’s system resolves individual display names and can search for each display name individually. Id. at ¶ 103 (citing Ex. 1003, col. 19, ll. 40– 42); see also Ex. 1003, col. 17, ll. 33–36 (“Thus, in this example, the e-mail program will attempt to match ‘billb,’ ‘sm henry,” and ‘patterson’ with specific address book entries belonging to registered users.”). Given this and Goodhand’s disclosure that a user may enter multiple display names and other information (e.g., punctuation) (see e.g., Ex. 1003, col. 17, ll. 12–20; Fig. 6a), we find credible and persuasive Mr. Allison’s testimony that Goodhand’s system “must first check to determine whether there is any text at all in the relevant address field,” and “must then separate and identify display names that it will use in follow-on searches” (Ex. 1002 ¶ 122; see Ex. 1016, 109, l. 22–110, l. 9). Because we are persuaded that Goodhand’s system must determine if” slip op. at 25
Patent outcomesUS 6,323,853 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,323,853
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.