• Tokyo Ohka Kogyo., Ltd. v. Fujifilm Electronic Materials U.S.A., Inc.All claims unpatentable
  PTAB · May 31, 2023 · PGR2022-00010 · APJ Jo-Anne M Kokoski · PGR · Final written decision

  Claims 1–15 are unpatentable for lack of written description support under § 112(a); the Board did not reach either obviousness ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art (“POSA”) “would have had a Bachelor degree in materials science, engineering, chemistry or similar technical discipline, and had at least two years of experience relating to the design and development of semiconductor manufacturing processes.” Pet. 14. Petitioner further submits that, “[a]lternatively, such a person may have had additional graduate education as a substitute for professional experience, or significant work experience as a substitute for formal education.” Id. Patent Owner states that, “[w]ithout taking a position on the correctness of this definition, Patent Owner applies Petitioner’s POSA definition.” PO Resp. 11 (citing Pet. 14). 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), revised 35 U.S.C. § 103 effective March 16, 2013. Petitioner contends, and Patent Owner does not contest, that “the earliest priority date claimed by the ’329 patent” is December 6, 2013. Pet. 13; PO Resp. 6. Because the undisputed earliest claimed priority date of the ’329 patent is after March 16, 2013, we apply the AIA versions of §§ 102 and 103. record, and is consistent with the level of skill in the art at the time of the invention as reflected in the prior art in this proceeding.” slip op. at 5

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

    “We disagree. It is clear from the plain language of claim 1 that the claimed “cleaning composition” is a composition for cleaning that includes four named components and has a specified pH. Ex. 1001, 29:2–9. The ’329 patent specification unambiguously teaches that the cleaning composition is for removing residues from semiconductor substrates. Id. at 1:23–29, 2:10–12, 2:17–33, 15:52–55. Although the ’329 patent describes a cleaning composition that comprises a redox agent, a chelating agent, a metal corrosion inhibitor, an organic solvent, and water, we see no reason to construe the term “cleaning composition” itself to require these components. Claim 1 expressly recites expressly including or precluding a chelating agent or a metal corrosion inhibitor. Ex. 1001, 29:2–9. The Federal Circuit advises that the specification “is not a suitable substitute for, nor can it be used to rewrite, the chosen claim language. ‘Specifications teach. Claims claim.’” SuperGuide, 358 F.3d at 875 (quoting SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 n. 14 (Fed. Cir. 1985) (en banc)). The ’329 patent specification does teach a cleaning composition that includes a redox agent, a chelating agent, a metal corrosion inhibitor, an organic solvent, and water, but claim 1 is directed to a cleaning composition that expressly requires only a subset of those components. Patent Owner’s proposed construction would effectively rewrite the claim by adding unclaimed components, which we decline to do under the guise of claim construction. See id. (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”).” slip op. at 9

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable

    “that Petitioner establishes that the ’329 patent does not provide sufficient written description support for the challenged claims. Pet. 15–43; Ex. 1007 ¶¶ 56–82. More specifically, we find that the ’329 patent does not reasonably convey to a POSA that the inventor was in possession of cleaning compositions that do not include a chelating agent or a metal corrosion inhibitor. There is no dispute, on this record, that the ’329 patent specification explicitly teaches that a redox agent, a chelating agent, a metal corrosion inhibitor, an organic solvent, and water are mandatory components of the cleaning composition described therein. PO Resp. 15 (Patent Owner agreeing with Petitioner that “[t]he ’329 patent’s disclosure is unambiguously explicit regarding mandatory components of the cleaning compositions described therein.” (citing Pet. 17; Ex. 1007 ¶¶ 56–57) (emphasis omitted, alteration in original)); see Ex. 1001, 3:47–48, 3:62–64, 10:24–26, 10:66–11:2, 12:3–4; Ex. 1007 ¶¶ 56–67. Claim 1, however, does not require that the cleaning composition include a chelating agent or a metal corrosion inhibitor. Ex. 1001, 29:2–9. Therefore, establishing proper written description support for claim 1 requires more than showing that the inventor was in possession of a cleaning composition that includes a redox agent, a chelating agent, a metal corrosion inhibitor, an organic solvent, and water; the ’329 patent must also show that the inventor was in possession of a cleaning composition that includes only a redox agent (hydroxylamine), an organic solvent (an alkylene glycol), water, and an alkanolamine. Id.” slip op. at 13

  Patent outcomesUS 10,927,329 unpatentable
  Claim construction§ 112 disclosurecites Phillips
  Patents in suitUS 10,927,329
• Home Depot U.S.A., Inc. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · May 22, 2023 · PGR2022-00009 · APJ Monica S Ullagaddi · PGR · Final written decision

  Claims 1–5, 7–12, and 14–19 are unpatentable based on lack of written description, anticipation by Bruning, or obviousness over Bruning and Kabel.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “lighting device.” Accordingly, we determine that the level of ordinary skill in the art is “a bachelor’s degree in electrical engineering, or similar technical field, with two years of relevant experience in the field of design and/or development of LEDs and circuits,” as Petitioner proposes and that “the field of design and/or development” would be “in the context of lighting devices” as Patent Owner proposes, in which “[a]n increase in experience could compensate for less education.” Id.; Pet. 24 (citing Ex. 1002 ¶ 46).” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “theoretically fall under the “or greater” portion of the amended claim limitation “forward voltage of 6V or greater,” Applicant distinguished Colby on the basis that the 120V AC voltage from a wall outlet is not “the minimum voltage difference required between the anode and cathode of the LEDs in the claimed circuit to allow current to flow through the LEDs.” See Ex. 1023, 9 (emphasis added). Applicant’s argument specifically identifies the claim language at issue––“forward voltage of 6V or greater”––and specifically states that it is not disclosed because Colby does not disclose the minimum voltage and instead, discloses something else, something larger–– 120V AC voltage. Accordingly, we conclude that Applicant disclaimed any voltage that is more than “the minimum voltage difference required between the anode and cathode of the LEDs in the claimed circuit to allow current to flow through the LEDs” from the scope of “forward voltage.”” slip op. at 25

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable

    “4. 35 U.S.C. § 112(a) With respect to the written description requirement, we are persuaded” slip op. at 32

  • Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledUnpatentable

    “Basis § Unpatentable Unpatentable Lack of written description, 3, 10, 17 112(a) 3, 10, 17 Lack of enablement 3, 10, 17 112(b) Indefiniteness 3, 10, 17 Lack of written description, 4, 11, 18 112(a) 4, 11, 18 Lack of enablement 4, 11, 18 112(b) indefiniteness 4, 11, 18” slip op. at 77

  Patent outcomesUS 10,932,341 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,932,341
• Intel Corporation / Globalfoundries U.S., Inc. et al. v. Daniel L. FlammAll claims unpatentable
  PTAB · Sep 30, 2020 · IPR2017-00279 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 13–26, 64, and 65 are unpatentable as obvious under § 103 over the combinations of prior art listed in the decision.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “not entitled to claim priority to a filing date any earlier than the September 11, 1997 filing date of the ’650 provisional application, and, therefore, each of the asserted references qualify as prior art to the challenged claims. See Pet. 9. Specifically, Petitioner contends that the ’264 patent is not entitled to claim priority to the December 4, 1995 filing date of the ’224 application because the ’224 application fails to disclose a chuck having a “thermal mass” or selecting that thermal mass to” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “in the art at the relevant time would have had (i) a Bachelor’s degree in chemical engineering, materials science engineering, electrical engineering, physics, chemistry, or a similar field, and three or four years of work experience in semiconductor manufacturing or related fields; or (ii) a Master’s degree in chemical engineering, materials science engineering, electrical engineering, physics, chemistry, or a similar field, and two or three years of work experience in semiconductor manufacturing or related fields; or (iii) a Ph.D. in chemical engineering, materials science engineering, electrical engineering, physics, chemistry, or a similar field. Pet. 19–20 (citing Ex. 1006 ¶¶ 21). Patent Owner does not contest Petitioner’s description of the level of ordinary skill in its Response. Based on our review of the ’264 patent, the cited prior art, and the testimony of the parties’ declarants, we agree with Petitioner’s assessment of the level of ordinary skill in the art and apply it for purposes of this Decision. See Okajima, 261 F.3d at 1355 (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”).” slip op. at 12

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

    “terms appearing in the challenged claims. Dec. on Inst. 10–11. First, we construed selected thermal mass to mean “thermal mass selected by selecting the mass of the substrate holder, the material of the substrate holder, or both.” Id. at 10. Second, we adopted Petitioner’s proposed 13 Neither party disputes that the ’264 patent is expired. The earliest patent application referenced for the benefit of priority under 35 U.S.C. § 120 for the ’264 patent was filed on December 4, 1995, and the patent has no term extensions. The term of the ’264 patent, therefore, expired no later than December 4, 2015. See 35 U.S.C. § 154(a)(2) (2012 & Supp. III 2015) (stating that the term of a patent grant ends twenty (20) years from the date on which the application for the patent was filed in the United States, “or, if the application contains a specific reference to an earlier filed application or applications under section 120, 121, 365(c), or 386(c), from the date on which the earliest such application was filed”). 13 construction of thermal mass . . . selected for a predetermined temperature change within a specific interval of time as meaning “the material and/or mass of the substrate holder are chosen to effect a predetermined change in substrate holder temperature from a selected first temperature to a selected second temperature within a specific time period.” Id. at 11. During the instituted trial, neither party disagreed with these constructions; nor did either party ask that we construe additional claim terms. We, therefore, leave our prior constructions in place unaltered.” slip op. at 13

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

    “claimed invention. PO Resp. 15–19. As Patent Owner correctly notes, art is analogous if it is either: (1) from the same field of endeavor as the claimed invention; or (2) reasonably pertinent to the problem faced by the inventor. Id. at 15–16 (citing MPEP § 2141.01(a)). As we find below that Hinman satisfies the second prong of this test, we need not address Patent Owner’s arguments regarding field of endeavor. A reference is “reasonably pertinent” to a problem if it “logically would have commended itself to an inventor’s attention in considering his problem.” In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379–80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656, 658, 23 USPQ2 1058, 1061 (Fed. Cir. 1992)). Petitioner argues that Hinman and the ’264 patent address the same problem, namely “controlling temperature to increase throughput.” Reply 5; Ex. 1025 ¶¶ 45, 48. Patent Owner disagrees, alleging that the ’264 patent is “concerned with achieving or improving etch selectivity in a high throughput etch process for semiconductor processing,” 32 and that this is different than the problems addressed by the prior art. PO Resp. 18. In defining the problem addressed by the inventor, the specification of the challenged patent is often instructive. Here, the ’264 patent notes that prior art substrate etching processes used “batch” modes in which etching was done at a single temperature, and that the invention improves upon these processes by providing a multi-stage etching process using different temperatures. Ex. 1001, 1:65–2:11. As such, the invention allegedly overcame disadvantages of prior art processes, which required lowered throughput and etch rate in order to avoid excessive damage to a workpiece. Id. at 2:11–14. Despite Patent Owner’s arguments, we cannot agree that etch selectivity, as opposed to throughput, is the problem addressed by the ’264 patent. As Dr. Bravman points out, “[t]he specification of the ’264 patent is devoid, however, of description of improved or high selectivity processes or explanation of how the purported invention achieves both high selectivity and high etch rates.” Ex. 1025 ¶ 46. This is in contrast to the specification’s direct statement that the invention “overcomes serious disadvantages of prior art methods in which throughput and etching rate were lowered in order to avoid excessive device damage.” Ex. 1001, 2:11– 14 (emphasis added). It is clear to us that the problem faced by the ’264 patent is one of throughput and etching rate. The applicability of the cited prior art, including Hinman, to” slip op. at 32

  Patent outcomesUS RE40,264 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
• Tokyo Electron Limited v. Daniel L. FlammInstitution denied
  PTAB · Oct 4, 2017 · IPR2017-01072 · APJ Kimberly Mcgraw · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 13–26, 64, and 65 unpatentable.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in the Petition and Preliminary Response, we conclude that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of claims 13–26, 64, and 65. Accordingly, we do not institute an inter partes review on those claims.” slip op. at 2

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

    “Thus, the ordinary meaning of the claim language itself requires predetermining the temperature change (i.e., the change from the selected first substrate holder temperature to the selected second substrate holder temperature) within a specific interval of time (i.e., the time for changing from the selected first substrate holder temperature to the selected second substrate holder temperature), and based on that predetermination, selecting the thermal mass of the substrate holder. A construction that does not require selecting a thermal mass for a particular temperature change and a specified interval of time, as opposed to selecting a thermal mass that can facilitate or allow a temperature change, is not consistent with the plain and ordinary meaning of the claim. We recognize that the thermal mass of a substrate holder is not the only factor that controls the rate of temperature change of the substrate holder. See, e.g., Ex. 1001, 16:60–67 (stating that the “heat exchanger, fluid flow rate, coolant-side fluid temperature, heater power, chuck, etc. should be designed to bring the fluid to a setpoint temperature and bring the temperature of the chuck and wafer to predetermined temperatures within specified time intervals and within specified uniformity limits”). The plain language of the claim, however, still requires that the thermal mass of the substrate holder be selected for a predetermined temperature change within the specific interval of time.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for patent owner

    “We do not construe these limitations as requiring the involvement of a heat transfer fluid. “Heat transfer fluid” is not recited in the claims. Although the claims are interpreted in light of the specification, it is improper to read limitations from the specification into the claims. See, e.g., In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see also Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“It is likewise not enough that the only embodiments, or all of the embodiments, contain a particular limitation. We do not read limitations from the specification into claims; we do not redefine words.”). As such, we are not persuaded that that the phrases “substrate holder,” “heat transfer device,” and “selected thermal mass,” as recited in claim 13, should be construed as requiring the involvement of “heat transfer fluid.”” slip op. at 11

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

    “3. Remaining Claim Terms For purposes of this Decision, based on the record before us, we determine that none of the remaining claim terms require an explicit construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 16

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
• Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Affinity Labs Of Texas, LLCAll claims unpatentable
  PTAB · Jan 28, 2016 · IPR2014-01184 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–3 and 5–14 are unpatentable under § 103 as obvious over the prior art combinations addressed in the decision.

  RulingsFinal written decision

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

    “We agree with Patent Owner that the term “streaming” is often used in the context of the immediate processing and playback of audio information. -01181 Dec. on Inst. 7. The ordinary meaning of the term, however, does not require the immediate playback of streaming audio information, and the portions of the ’641 patent identified by Patent Owner do not demonstrate with reasonable clarity, deliberateness, and precision that a narrower claim definition should apply. For example, although the discussion in the ’641 patent of using high-speed communications for streaming an Internet radio station supports Patent Owner’s argument that “streaming audio” may be played immediately as it arrives, Ex. 1001, 7:3–7, the ’641 patent also discloses “downloading” “streaming audio” and “streaming Internet Broadcasts.” Id. at 3:67–4:1, 8:31–35, 17:1–2, 18:1–5. Thus, the disclosures of the ’641 patent are consistent with the dictionary definition of the term “streaming,” which contemplates the transfer of “streaming audio” as a constant stream of data for either immediate or delayed playback. Accordingly, we construe the term “streaming audio signal” as “an audio signal that is transferred in a continuous stream.”” slip op. at 10

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

    “3. remaining claim terms Patent Owner also proposes constructions for the terms wireless telephone device, a signal representing at least a portion of a song, while, and portable electronic device. PO Resp. 5–6, 8–10, 11–12. Upon review of Petitioner’s and Patent Owner’s arguments, we determine that construction of these additional claim terms is not required for purposes of this decision.” slip op. at 13

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

    “We agree with Petitioner that the addition of well-known rechargeable battery technology (as disclosed in Herrod) in the device of Abecassis would have been obvious, at a minimum, to eliminate the need to periodically replace the batteries in the Abecassis device. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Moreover, we are not persuaded by Patent Owner’s argument that Abecassis and Herrod are in different fields of endeavor, as both references relate to the communication of data using a cellular phone.8” slip op. at 17

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner

    “Ipsis verbis disclosure is not necessary, however, to satisfy the written description requirement of section 112. Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir. 1996). Thus, we must also determine whether, despite the lack of express disclosure, one of ordinary skill in the art would have understood that Patent Owner was in possession of the invention set forth in claim 8. Id. In conducting this analysis, we are cognizant that “a description which renders obvious a claimed invention is not sufficient to satisfy the written description requirement of that invention.” Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559, 1567 (Fed. Cir. 1997). Dr. Wolf recites the same disclosures as Patent Owner and concludes that one of ordinary skill in the art would understand that the ’812 application demonstrates possession of an invention wherein a radio dial transmitted to a recipient device could be used to cause the transmission of selected information to the recipient device. Ex. 2005 ¶¶ 287, 290. Dr. Wolf does not address, however, the specific configuration set forth in claim 8 of the ’641 patent. In particular, Dr. Wolf does not explain why one of ordinary skill in the art would understand from the recited disclosures that the patentee was possession of a method of streaming a song from a portable electronic device to a recipient device in response to the selection of a selectable menu item “presented on a recipient device display.” In contrast, Dr. Quackenbush analyzes the disclosures of the ’641 patent in detail and concludes that one of ordinary skill in the art, upon review of the priority disclosures as a whole, would not understand the patentee to be in possession of the invention set forth in claim 8. Ex. 1025 ¶¶ 189–207. Specifically, Dr. Quackenbush concludes that the disclosures of the ’812 application and the ’641 Specification focus on the transmission of data from a storage device and digital engine to an electronic device, and not from a portable electronic device to a recipient device, in response to a selection of a selectable menu item presented on a recipient device display. Ex. 1025 ¶¶ 193–203. Upon careful review of both Dr. Wolf’s and Dr. Quackenbush’s” slip op. at 52

  Patent outcomesUS 8,532,641 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 8,532,641
• Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Affinity Labs Of Texas, LLCAll claims unpatentable
  PTAB · Jan 28, 2016 · IPR2014-01182 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–3 and 5–14 are unpatentable under § 103 over the prior-art combinations addressed in the decision.

  RulingsFinal written decision

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

    “We agree with Patent Owner that the term “streaming” is often used in the context of the immediate processing and playback of audio information. -01181 Dec. on Inst. 7. The ordinary meaning of the term, however, does not require the immediate playback of streaming audio information, and the portions of the ’641 patent identified by Patent Owner do not demonstrate with reasonable clarity, deliberateness, and precision that a narrower claim definition should apply. For example, although the discussion in the ’641 patent of using high-speed communications for streaming an Internet radio station supports Patent Owner’s argument that “streaming audio” may be played immediately as it arrives, Ex. 1001, 7:3–7, the ’641 patent also discloses “downloading” “streaming audio” and “streaming Internet Broadcasts.” Id. at 3:67–4:1, 8:31–35, 17:1–2, 18:1–5. Thus, the disclosures of the ’641 patent are consistent with the dictionary definition of the term “streaming,” which contemplates the transfer of “streaming audio” as a constant stream of data for either immediate or delayed playback. Accordingly, we construe the term “streaming audio signal” as “an audio signal that is transferred in a continuous stream.”” slip op. at 10

  • Skill levelOther
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “We agree with Petitioner that the addition of well-known rechargeable battery technology (as disclosed in Herrod) in the device of Abecassis would have been obvious, at a minimum, to eliminate the need to periodically replace the batteries in the Abecassis device. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Moreover, we are not persuaded by Patent Owner’s argument that Abecassis and Herrod are in different fields of endeavor, as both references relate to the communication of data using a cellular phone.8” slip op. at 17

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Decided for patent owner

    “We agree with Patent Owner that Petitioner’s identification of corresponding structure and its argument that § 112 ¶ 6 does not apply to the term “means for recharging the internal battery” should have been in Petition, and not presented for the first time in reply. PO Resp. 69; Tr. 84:12–85:14; see 37 C.F.R. § 42.104(b)(3). Moreover, Petitioner does not provide adequate support for its broad identification of corresponding structure in the ’641 patent. For example, we are directed to no disclosure in the ’641 patent indicating that any “battery recharger” may recharge the battery of the device. Thus, we do not adopt Petitioner’s proposed constructions. Patent Owner does not propose a construction for the term “means for recharging the internal battery.” See PO Resp. 5–11, 69–70. The ’641 patent discloses, however, that interface 904 and mount 511 allow for recharging the electronic device using an interface that provides both recharging power and data communications. Ex. 1101, 13:15–32, 18:27–39, 20:52–57. As Petitioner provides persuasive evidence to explain why one of ordinary skill in the art would have sought to add both rechargeable batteries and a USB interface—which provides both recharging power and data connectivity—to the device of Abecassis, under either Petitioner’s proposed construction or the structure for recharging the internal battery set forth in the ’641 patent, the prior art discloses the limitations of claim 14. Thus, we are persuaded that claim 14 would have been obvious over Abecassis, Herrod, and Chennakeshu.” slip op. at 28

  Patent outcomesUS 8,532,641 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 8,532,641

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.