• Motorola Mobility LLC v. Largan Precision Co., Ltd.All claims unpatentable
  PTAB · Jan 3, 2024 · IPR2022-01156 · APJ John D Hamann · IPR · Final written decision

  Claims 1–4, 6–16, 18–24, 28, and 29 are unpatentable as anticipated by Chen-069, which is prior art because the 2012 application lacks written-description support for their full scope.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art at the time of the invention of the ’948 patent would have had “(i) a Bachelor’s degree in Physics, Optical Sciences, or equivalent education or training, as well as (ii) approximately three years of experience in designing multi-lens optical systems.” Id. at 12 (quoting Pet. 13–14 (citing Ex. 1003 ¶ 28)). We also found that “[l]ack of work experience could have been offset by additional education, and vice versa,” and that one of ordinary skill in the art “would have understood the fundamentals of optical aberration theory, and understood and used standard techniques for making lenses cheaper and more effective, especially for lens systems used in mobile devices.” Id. (quoting Pet. 14; Ex. 1003 ¶¶ 28, 30). We also agreed with Petitioner and found that one of ordinary skill in the art “would have known how to use lens design software such as Code V, Oslo, and ZEMAX, and would have taken a lens design course or had equivalent training.” Id. (quoting Pet. 14; Ex. 1003 ¶ 29). We also agreed with Petitioner and found that one of ordinary skill in the art “would have regularly used such software to create new lens designs, often using pre-existing lens designs as a starting point and then performing routine optimizations to reach a desired design.” Id. at 12–13 (quoting Pet. 14; Ex. 1003 ¶ 29). Patent Owner does not identify a level of skill in the art that one would have had at the time of the invention of the ’948 patent or identify any shortcoming in Petitioner’s formulation. See PO Resp. 16–17. Because Petitioner’s definition of the level of skill in the art is consistent with the ’948 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 8

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

    “Patent Owner argues that construing the challenged “claims to include first and second lens elements having the same refractive power . . . is improper.” PO Resp. 21. According to Patent Owner, one of ordinary skill in the art “would construe the [’]948 [p]atent claims to include first and second lens elements in the form of a ‘doublet,’ which requires the respective lens elements to have opposite refractive power, and thus includes only configurations” of “positive-negative” and “negative-positive” for the first and second lens elements, respectively. Id. at 20–21. In other words, “[t]he proper construction of the ’948 [p]atent claims is that the first and second lens elements may have positive-negative or negative-po[sitive] refractive powers, but would not include first and second lens elements having the same refractive polarity,” according to Patent Owner. Id. at 26. Thus, the parties agree that the challenged claims should be construed to encompass at least a lens system having a first lens element with a negative refractive power and a second lens element with a positive refractive power. See, e.g., Pet. 33; PO Resp. 21. We conclude that such a lens system is consistent with the plain language of the challenged claims. See, e.g., Ex. 1001, 12:8–26, 13:14–38, 14:16–46 (reciting first and second lens elements without reciting a specific refractive power polarity for the independent claims). And we determine that no claim terms require further construction in light of our findings below. See, e.g., 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)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 10

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

    “In sum, we determine that the 2012 application does not provide written description support for an imaging lens system with a negative refractive power first lens and a positive refractive power second lens. And the agreed scope of the challenged claims includes such a configuration, and thus, the written description of the 2012 application does not support the full breadth of the challenged claims. We therefore determine that the challenged claims of the ʼ948 patent do not benefit from the priority date of the 2012 application. Therefore, we determine that Chen-069 is prior art to the challenged claims of the ʼ948 patent.” slip op. at 23

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

    “After reviewing Petitioner’s arguments and evidence, which are not addressed by Patent Owner (see generally PO Resp.), we determine that Petitioner demonstrates by a preponderance of the evidence that Chen-069 anticipates claim 1. D. Remaining Challenged Claims Petitioner argues that Chen-069 discloses the limitations recited in claims 2–4, 6–16, 18–24, 28, and 29. Pet. 48–65. Patent Owner does not address Petitioner’s arguments directed to these claims. See generally PO Resp. 32–34. Based on the evidence and arguments of record, we find that Petitioner demonstrates by a preponderance of the evidence that Chen-069 anticipates claims 2–4, 6–16, 18–24, 28, and 29.” slip op. at 24

  Patent outcomesUS 9,784,948 unpatentable
  Claim construction§ 102 anticipation§ 112 disclosurecites Phillips · Graham
  Patents in suitUS 9,784,948
• Cradlepoint, Inc. / Honeywell International, Inc. et al. v. 3g Licensing SAAll claims unpatentable
  PTAB · Sep 15, 2022 · IPR2021-00639 · APJ Juliet Mitchell Dirba · IPR · Final written decision

  Claims 1–25 are unpatentable as obvious; the Board denied the motion to amend because proposed substitute claims 26–50 would have been obvious over Oksala or Oksala and Yoshioka.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “B. The Level of Ordinary Skill in the Art Our reviewing court has explained that “the level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (citing Al-Site Corp. v. VSI International, Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999)). “This reference point prevents these factfinders from using their own insight or, worse yet, hindsight, to gauge obviousness.” Id.” slip op. at 10

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

    “e. Conclusion For the reasons provided above, we are persuaded that each limitation of independent claim 1 is either taught or suggested by Oksala. We are also persuaded that Oksala’s disclosure would have motivated a person of ordinary skill in the art to modify Oksala, as Petitioner contends, to yield the subject matter of claim 1. Accordingly, we conclude that Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 1 would have been obvious over Oksala.” slip op. at 52

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “Accordingly, we determine that Petitioner has shown, by a preponderance of the evidence, that the subject matter of proposed substitute claims 35 and 43 would have been obvious over Oksala.” slip op. at 78

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteNot shown unpatentable

    “2. Indefiniteness In its Opposition, Petitioner contends the limitations “wherein each established data connection is a packet-switched connection; and wherein each requested data connection is a packet-switched connection,” as recited in substitute claim 26, and similarly recited in substitute claims 35 and 43, render the proposed substitute claims indefinite. MTA Opp. 12 (emphases added). First, according to Petitioner, the term “packet-switched connection” does not have a claim construction, which means that it can refer to two different types of packet-switched data (i.e., Layer 1 and packet network). Id. at 12. Second, Petitioner contends that there are two recitations of “a packet-switched connection,” making it “unclear if they are the same packet-switched connection or a different one.” Id. at 12–13. Third, Petitioner contends that the claims include “another antecedent issue” because “a wireless network” appears twice in the claim. Id. at 13.” slip op. at 81

  Patent outcomesUS 8,189,611 unpatentable
  § 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,189,611
• Maxlite, Inc. v. Jiaxing Super Lighting Electric Appliance Co., Ltd.All claims unpatentable
  PTAB · Apr 29, 2022 · IPR2020-00208 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 7, and 12–18 are unpatentable as anticipated by Duan under § 102(a)(1).

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a B.S. degree in electrical engineering, or an equivalent field, as well as at least 2-4 years of academic or industry experience in lighting design, including knowledge of LEDs and related technology for driving LEDs. A person of ordinary skill in the art with a higher level of education may have fewer years of academic or industry experience, or vice versa. Pet. 22 (citing Ex. 1002 ¶ 10). Patent Owner does not contest Petitioner’s articulation of the level of skill in the art. PO Resp. 4–5. We regard Petitioner’s definition as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, we adopt Petitioner’s proposal.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “embodiments that operate with a low frequency driving signal in a double-ended configuration, Patent Owner did not recite “low frequency” or “double-ended” in its claims and instead chose the broader term “first driving mode.” See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). The fact that a limitation in the specification may define over the prior art does not justify importing that limitation into the claims unless a term is expressly defined such that the patentee becomes his own lexicographer or there is an express disavowal of claim scope. See GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1308–09 (Fed. Cir. 2014). There is no evidence of an express disavowal here. As to lexicography, we disagree with Patent Owner’s contention that the Specification defines the phrase “first driving mode.” Patent Owner relies on the mere fact that the specification describes an embodiment with a first driving mode that has a low frequency driving signal and is in a “double-ended” configuration, but this is not sufficient to define the term. The specification does not require that a low frequency driving signal must necessarily be used. In fact the specification, although not entirely clear, suggests that the driving signal may be from a high frequency ballast. Ex. 1001, 51:8–14. Thus, the fact that the patent here discloses a low frequency driving signal does not mean that all the claims are directed to such a driving signal. See E-Pass Tech., Inc. v. 3Com Corp., 343 F.3d 1364, 1368–69 (Fed. Cir. 2003). Indeed, dependent claim 15 recites “the first driving mode is performed when the external driving signal is a relatively low frequency or voltage signal,” while the independent claims were directed to a more general driving signal. The doctrine of claim differentiation suggests that the independent claims here should not include explicit limitations of a dependent claim. See Phillips, 415 F.3d at 1315 (“[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.”); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004).” slip op. at 7

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

    “We determine that Patent Owner has not shown sufficiently that the Chinese priority patent applications it relies on—the ’636 Chinese Application and the ’586 Application—provide written description support for the limitation of “a mode determination circuit, configured to generate a first determined result signal based on the external driving signal” and “a mode switching circuit, coupled to the filter circuit and the driving circuit, configured to determine whether to perform a first driving mode or a second driving mode based on the first determined result signal,” recited in claim 1. PO Resp. 31–34, 60–67. Specifically, Patent Owner relies on structures in the ’636 Chinese Application and the ’586 Application that are not sufficiently similar to structures in the ’826 patent i.e., DR Circuit 140, excluding diodes D5 and D6, as shown in Figs. 24i-j and 29b. Id. at 27 (citing Ex. 2001, 23–24, 29, and 33, Fig. 24i–j and 29b).” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “For the reasons above, Patent Owner has not established that claim 1 of the ’826 patent is entitled to the effective filing date of the ’636 Chinese Application (i.e., June 10, 2015) or the ’586 Application (i.e., March 26, 2015). Because the remaining asserted claims are dependent claims, Patent Owner has also not established that claims 7 and 12–18 of the ’826 patent are entitled to the effective filing date of the ’636 Chinese Application or the ’586 Application. The application that led to the ’826 patent was filed on March 25, 2016. The ’826 patent claims it is a continuation-in-part of application No. 15/055,630 (“the ’630 Application”), filed on February 28, 2016. So, even if the challenged claims were entitled to the earlier February 28, 2016 filing date, Duan issued on July 1, 2015, and is, thus, prior art to the challenged claims of the ’826 patent under 35 U.S.C. § 102(a)(1).” slip op. at 18

  Patent outcomesUS 9,807,826 unpatentable
  Claim construction§ 102 anticipation§ 112 disclosurecites Phillips
  Patents in suitUS 9,807,826
• Apple Inc. v. LBT IP I LLCAll claims unpatentable
  PTAB · Mar 2, 2022 · IPR2020-01191 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 8–10 are unpatentable as obvious; the contingent motion to amend is denied because proposed substitute claims 11–13 are unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Institution Decision, we considered the subject matter of the ’256 patent, the background technical field, and the prior art, and we agreed with Petitioner’s proposed qualifications; however, we deleted the use of the qualifier of “at least” because it introduces vagueness. Inst. Dec. 8–9. Accordingly, we determined that one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or an equivalent degree, with two years of experience in GPS navigation, dead reckoning, portable tracking devices, or related technologies, and that additional education may substitute for lesser work experience and vice-versa. Id. Patent Owner adopted the qualifications identified in the Institution Decision. PO Resp. 3. In view of the relevant technology and claims of the ’256 patent, as well as the technology of the asserted prior art, and we adopt the same qualifications as those identified in the Institution Decision.” slip op. at 10

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

    “Petitioner asserts that no express claim construction is required in order to assess the grounds presented. Pet. 9; see generally Pet. Reply. Patent Owner does not present any proposed construction for any claim terms. See generally PO Resp.; PO Sur-reply. In the Institution Decision, we determined that it was not necessary to provide express interpretations of any claim terms. Inst. Dec. 9–10. On the full record, we likewise determine that it is not necessary to provide an express interpretation of any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); 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 11

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

    “incorrect regarding Sakamoto’s teaching on reactivation based on detected signal levels, and instead contends that Sakamoto teaches manual reactivation after it was put in stop-position mode. PO Resp. 14–16 (citing Ex. 1004 ¶ 20). Although Sakamoto may teach manual reactivation from stop-position mode, this does not undermine Petitioner’s persuasive showing that a person of ordinary skill in the art considering Sakamoto would have known to activate GPS receiver 10 from stop-position mode based on a sufficient signal level. More specifically, Petitioner relies upon the disclosures of paragraphs 38 and 39 to support its assertion that in Sakamoto the satellite signal level detection unit monitors the signal level from the GPS satellite on a preset periodic cycle, and based on the measured signal level, the positioning mode is set. See Pet. 31, 33–36; Ex. 1003 ¶¶ 146–155.” slip op. at 27

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “checking of signal levels is performed at a cycle set in advance, with the comparison of the detected signal level value to predetermined threshold values then used to set positioning modes.10 Ex. 1004 ¶¶ 37, 38. This disclosure provides support for Mr. Andrews’ testimony that a person of skill would have understood that, based on the detected signal level checked in a cycle, the operational mode is determined. Ex. 1003 ¶ 152. More specifically, Sakamoto’s disclosures support Mr. Andrews’ testimony that in resetting an operation mode, the mode could be changed to a stop-position mode from a normal mode or high mode and to a normal mode or high mode from a stop-position mode, depending on signal level. See id. ¶ 154. The testimony directed to moving from a stop-position mode to a positioning mode is further explained by Mr. Andrews’ rationale that a person of 10 Petitioner asserts, and we agree, that Sakamoto’s teachings on the periodic checking of GPS signals align with similar disclosures in the ’256 patent. See Ex. 1001, 6:63–66, 9:41–49; Pet. Reply 12. ordinary skill in the art would have understood that signal conditions can change based on location and environmental conditions, so it would not have not made sense or have been useful for Sakamoto to set a mode once and then never change it. Ex. 1003 ¶¶ 152, 155; Ex. 2003, 23:21–24:10. Although Sakamoto may not explicitly identify moving out of the stop-position mode as a result of the cyclic signal level checking, the issue is not whether there is express disclosure in the reference—it is whether the claimed invention as a whole would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains. See 35 U.S.C. § 103. Thus, we accord significant weight to Mr. Andrews’ understanding of Sakamoto’s teachings in the view of one of skill of the art regarding its disclosure of periodic checking of signal levels that is used to set positioning modes. We further credit the additional rationale provided by Mr. Andrews as to why one of skill in the art would have not set a stop-position mode and not moved out of it, that is, signal conditions can change based on environmental conditions. See Ex. 1003 ¶ 152; KSR, 550 U.S. at 418 (“a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”); accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Moreover, Patent Owner’s arguments disputing Mr. Andrews’ testimony on an ordinarily skilled artisan’s understanding of Sakamoto are attorney argument only and are unsupported by any record evidence. These attorney arguments are entitled to little, if any, weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value). Accordingly, Petitioner has provided persuasive evidentiary support that, in the view of a person of ordinary skill in the art, Sakamoto teaches activating GPS receiver 10 from stop-position searching mode when a subsequently detected signal level is above a threshold value.” slip op. at 28

  Patent outcomesUS 8,102,256 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,102,256
• Apple Inc. v. LBT IP I LLCAll claims unpatentable
  PTAB · Mar 2, 2022 · IPR2020-01189 · APJ John A Hudalla · IPR · Final written decision

  Claims 1, 4–6, 8, 10, 13, and 15 are unpatentable as obvious over Sakamoto; the Board denied the motion to amend because the proposed substitute claims were also obvious over Sakamoto.

  RulingsFinal written decision

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

    “We do not agree with Patent Owner that the Specification’s statement about tradeoffs between “optimal battery life” and “optimal update rate” necessarily requires a spectrum of at least three threshold values (i.e., two endpoints and at least one value between them). If anything, this statement supports the view that such tradeoffs can be made between as few as two points: an endpoint where less updates are traded for better battery life, and an endpoint where worse battery life is traded for more updates. See Ex. 1001, Fig. 4 (slider 432). We also do not ascribe any significance to the plural “tradeoffs” in Patent Owner’s cited statement, because every point in such a spectrum would involve its own tradeoffs between battery life and update frequency. Thus, we agree with Petitioner that the Specification does not support Patent Owner’s interpretation of a multitude as necessarily being three or more. We also consider the Specification’s statement about “obtain[ing] optimal battery life, obtain[ing] optimal update rate, [and the] tradeoffs between them” (Ex. 1001, 11:58–63) to at least be consistent with the notion that “multitude” means two or more in the context of the ’774 patent.” slip op. at 14

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

    “switching among Sakamoto’s positioning modes for teaching the updated sets. Pet. 31 (citing Ex. 1004 ¶¶ 5–10, 28). Mr. Andrews testifies that an ordinarily skilled artisan “would have appreciated that switching the positioning modes (responsive to a low-power condition or to user command) changes the frequency with which Sakamoto’s terminal transmits and receives data (i.e., updates the communication signaling protocol of the terminal).” Ex. 1003 ¶ 89. Petitioner also explains how changing Sakamoto’s modes changes the associated listen rate and request rate. See Pet. 31–34. And, as acknowledged by Patent Owner at the oral hearing, the “updated set based on the claim language would include either/or both a refresh rate and a listen rate.” Tr. 39:17–18. Thus, Petitioner persuasively shows that Sakamoto teaches the recited “updated set of network communication signaling protocols.” We also are persuaded that Sakamoto’s modes switch “in substantially real-time” based on Sakamoto’s teaching of an “automatic shift” from high sensitivity mode to normal mode based on the battery falling below a threshold and based on Sakamoto’s aim of reducing power consumption. Pet. 29–30 (quoting Ex. 1004 ¶¶ 29, 46); Ex. 1003 ¶ 88. Mr. Andrews testifies that an ordinarily skilled artisan “would have appreciated that switching the positioning modes (responsive to a low-power condition or to user command) changes the frequency with which Sakamoto’s terminal transmits and receives data (i.e., updates the communication signaling protocol of the terminal).” Ex. 1003 ¶ 89. Against this showing, Patent Owner has not put forth any evidence to support its contention that “generat[ing] . . . an updated set” requires the generation of entirely new parameters or that such parameters cannot be taken from predetermined sets. As such, Patent Owner’s position amounts to unsupported attorney argument; it does not undermine Petitioner’s persuasive showing that Sakamoto teaches real-time updating of network signaling protocol sets in order to reduce power consumption via Sakamoto’s mode switching. See, e.g., Ex. 1003 ¶¶ 88–89; Ex. 1004 ¶¶ 28, 29, 46.” slip op. at 30

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “Having considered Petitioner’s contentions and evidence and Patent Owner’s arguments, we find that Sakamoto teaches every limitation of proposed substitute claim 20 in light of the knowledge of a person of ordinary skill in the art. Thus, we determine Petitioner has shown by a preponderance of the evidence that the subject matter of proposed substitute claim 20 would have been obvious over Sakamoto. 2. Proposed Substitute Claims 23–25 Proposed substitute claims 23–25 depend directly or indirectly from proposed substitute claim 20 and are the same as original claims 4–6 except that the claim dependencies have been updated. We have analyzed all limitations of proposed substitute claims 23–25 above. See supra §§ II.D.3– 5. Thus, for the same reasons, we determine Petitioner has shown, by a preponderance of the evidence, that the subject matter of proposed substitute claims 23–25 would have been obvious over Sakamoto.” slip op. at 65

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “Based on our understanding of this limitation (see infra § III.C), we do not agree with Petitioner’s arguments. Regarding the request rate and listen rate, the ’451 application discloses that the “updated set of network communication signaling protocols . . . includes an update rate (e.g., refresh rate) of location coordinate packets 446.” Ex. 2017, 17:14–16. In turn, “the update rate of location coordinate packets 446 includes request rate 420 of location coordinate packets 422 by target host 452 . . . and/or listen rate 425 of location coordinate packets 422 by portable electronic tracking device 402.” Id. at 17:16–19. Regarding the repeating time interval, the ’451 application discloses that “[i]n response to receipt of updated set of network communication signaling protocols, portable location tracking device 402 adjusts settings (an internal time schedule)” and “[p]ortable location tracking device 402 checks internal time schedule to determine if it should listen for (perform a location lookup of) location coordinates 422 from satellite navigation system 403.” Id. at 18:7–15. Further, the ’451 application describes examples of update rate intervals (in minutes) for tracking a dog, a car, and rented construction equipment that constitute the repeating time intervals for the request rate and/or listen rate. See id. at 21:8–22:16. In light of these disclosures, we determine that the ’451 application adequately supports “a request rate representing a repeating time interval for of location coordination packets to be communicated to a target host and a listen rate representing a repeating time interval for receipt of the location coordinate packets from a satellite navigation system,” as recited in proposed substitute claim 20 and similarly recited in proposed substitute claim 27. For these reasons, and considering Patent Owner’s evidence of support in the ’807 publication and the ’451 application, we determine that Patent Owner has shown adequate written description support for proposed substitute claims 20, 23–25, 27, 29, 32, and 34.” slip op. at 54

  Patent outcomesUS 8,497,774 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,497,774
• Apple Inc. v. LBT IP I LLCAll claims unpatentable
  PTAB · Mar 2, 2022 · IPR2020-01190 · APJ John A Hudalla · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Sakamoto, Gotoh, and Levi; the revised motion to amend proposing claims 21–40 is denied as those claims are also unpatentable.

  RulingsFinal written decision

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

    “an inter partes review of claims 1–20 (“the challenged claims”) of U.S. Patent No. 8,542,113 B2 (Ex. 1001, “the ’113 patent”). LBT IP I LLC (“Patent Owner”) filed a Preliminary Response (Paper 8). Taking into account the arguments presented in Patent Owner’s Preliminary Response, we determined that the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail with respect to its unpatentability challenges. Pursuant to 35 U.S.C. § 314, we instituted this proceeding on March 4, 2021, as to all challenged claims and all grounds of unpatentability. Paper 9 (“Dec. on Inst.”).” slip op. at 1

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art (or “POSITA”) “would have had a bachelor’s degree in Electrical Engineering, Mechanical Engineering, Computer Engineering, Computer Science, or an equivalent degree, with at least two years of experience in GPS navigation, dead reckoning, portable tracking devices, or related technologies.” Pet. 5 (citing Ex. 1003 ¶ 30). For purposes of our Decision on Institution, we adopted Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least.” Dec. on Inst. 7. Patent Owner states that it adopts this definition. PO Resp. 3; MTA 17; RMTA 17–18. Thus, we discern no reason to change the level of ordinary skill in the art applied in this Final Written Decision. Accordingly, a person 4 The trial record does not include any evidence of secondary considerations of nonobviousness. of ordinary skill in the art would have had a bachelor’s degree in Electrical Engineering, Mechanical Engineering, Computer Engineering, Computer Science, or an equivalent degree, with two years of experience in GPS navigation, dead reckoning, portable tracking devices, or related technologies. We determine that this definition comports with the level of skill necessary to understand and implement the teachings of the ’113 patent and the asserted prior art.” slip op. at 8

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

    “Neither party puts forth any terms for construction. See Pet. 8. We determine that no terms require explicit construction. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

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

    “combination. We are persuaded that an ordinarily skilled artisan would have modified Sakamoto’s terminal to include Gotoh’s accelerometer, which is used to record acceleration data when the terminal is unable to receive GPS signals. See, e.g., Ex. 1003 ¶¶ 112–118; Ex. 1005 ¶ 81. We are further persuaded that an ordinarily skilled artisan would have implemented Levi’s dead reckoning techniques in the combined system to determine differential position coordinates based on accelerometer data. See, e.g., Ex. 1003 ¶¶ 201–202. We note that the secondary references themselves provide reasons for the combination insofar as Gotoh and Levi both teach the use of an accelerometer to supplement GPS positioning when a GPS signal is lost. See Ex. 1005 ¶ 66; Ex. 1006, 2:10–14. We are also persuaded by Mr. Andrews’s uncontested testimony that an ordinarily skilled artisan would have reasonably expected success in making the combination. See, e.g., Ex. 1003 ¶¶ 117, 202. For these reasons, Petitioner has established that an ordinarily skilled artisan would have had reasons to combine Gotoh and Levi with Sakamoto. c. Conclusion Regarding Claim 1 Petitioner has persuasively shown that the combination of Sakamoto, Gotoh, and Levi teaches all limitations of claim 1. Petitioner also has put forth persuasive reasons for combining these references and has established that an ordinarily skilled artisan would have expected success in making the combination. On the entire trial record, we determine Petitioner has shown by a preponderance of the evidence that the subject matter of claim 1 would have been obvious over the combination of Sakamoto, Gotoh, and Levi.” slip op. at 23

  Patent outcomesUS 8,542,113 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,542,113
• Propel Orthodontics, LLC v. Orthoaccel Technologies, Inc.All claims unpatentable
  PTAB · Jun 10, 2019 · IPR2018-00296 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–27 are unpatentable: claims 1–8, 10–16, and 19–26 are anticipated by Lowe; claims 9, 17, 18, 26, and 27 are obvious over Lowe and Ting.

  RulingsFinal written decision

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

    “the orthodontic device for the range 1 to 20 minutes daily in either the ’807 Provisional Application or the ’849 Parent Application to Lowe. Compare Ex. 1004, 7, with Ex. 1006, 7. Consequently, the question is whether one of ordinary skill in the art would have derived, i.e., recognized, the claimed range of “1 to 20 minutes” from the context of the disclosure in these prior applications. See Lockwood, at 1572 (“[A] prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.”). As discussed below, we determine that one of ordinary skill in the art would not have concluded that the inventor was in possession of the claimed “1 to 20 minute daily” range based on the disclosure in the prior provisional and parent applications.” slip op. at 19

  • Skill levelSkill level board ownOther

    “We determined in our Decision on Institution that the level of ordinary skill in the art includes a person with a degree in orthodontics and several years of experience as a working orthodontist, and also a person with an education and several years of experience in osteogenesis and bone remodeling, or an equivalent field, in the context of tooth movement. Inst. Dec. 8. On the complete record now before us we find this level of ordinary skill in the art to be consistent with our review of the evidence before us, including the prior art. Neither party proposes any further changes or objects to such a level of skill.9 See generally PO Resp.; Pet. Reply. Therefore, we determine that the level of ordinary skill in the art includes a person with a degree in orthodontics and several years of experience as a working orthodontist, and also a person with an education and several years of experience in osteogenesis and bone remodeling, or an equivalent field, in the context of tooth movement.” slip op. at 12

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “procedures, such as for teeth cleaning, are used for periods of time shorter than 20 minutes is not persuasive because no evidence or explanation is provided of any functional or temporal relationship between the objectives of teeth cleaning and teeth realignment through bone remodeling. PO Resp. 23–24 (citing Ex. 2010 ¶ 28). Dr. Ricupito testifies that because the recommended time for tooth brushing is 2 minutes, “one of ordinary skill would have read the disclosure of a range of times for use of a vibratory device to include times similar to those for other devices in the field at the time (e.g., 30 seconds to 2 minutes).”10 Ex. 2010 ¶ 28. Dr. Ricupito, however, does not support this comparison with any evidence that a person of ordinary skill in the art would have understood a causal relationship between teeth cleaning and teeth realignment from the orthodontic and dental fields. See id. Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. 37 C.F.R. § 42.65(a). Dr. Ricupito’s testimony does not provide any facts, data, or analysis to support the opinion stated. Merely repeating an argument from the Petition in the declaration of a proposed expert does not 10 If we were to give Dr. Ricupito’s statement weight, then we would also have to consider giving weight to evidence of other times; for instance, there are certainly orthodontic devices, such as conventional braces, that require significantly more than 20 minutes of application. Ex. 1001, 1:41–43 (the ’184 patent explains that “this widely accepted approach takes about twenty four months on average to achieve success”). give that argument enhanced probative value. Accordingly, we give the cited evidence on this point in Dr. Ricupito’s declaration little, if any, probative weight.” slip op. at 22

  • ExcludeMotion to exclude, deniedDenied

    “R. Evid. 702.7 Mot. Exclude, 1. We disagree. Dr. Ricupito’s declaration may have some deficiencies, which we discuss in the following sections of this Decision in our substantive discussion of the evidence. The Board, however, acts as both the gatekeeper of evidence and as the weigher of evidence. Rather than excluding evidence that is allegedly confusing, misleading, untimely, and/or irrelevant, we will simply not rely on it or give it little or no probative weight, as appropriate, in our analysis. Similar to a district court in a bench trial, the Board, sitting as a non-jury tribunal with administrative expertise, is well positioned to determine and assign appropriate weight to evidence presented, including giving it no weight. See, e.g., Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received . . . .”). Thus, in this inter partes review, the better course is to have a complete record of the evidence to facilitate public access as well as appellate review. Accordingly, we deny Petitioner’s Motion to Exclude Exhibit 2010.” slip op. at 8

  Patent outcomesUS 9,662,184 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,662,184

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.