- Apple Inc. v. Aire Technology LimitedAll claims unpatentablePTAB · Dec 15, 2023 · IPR2023-00188 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–3, 11, 12, 16, 18, and 20 are unpatentable under the stated obviousness grounds; the motion to amend with substitute claims 23–26 is denied.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“We do not accord the testimony of Dr. Phinney little or no weight simply because it matches what Petitioner states in the Petition. The Xerox case cited by Patent Owner does not require or indicate otherwise. See Xerox at 1517 (noting that the deficiencies with expert testimony are that they are conclusory and lacking supporting evidence or technical reasoning.). Dr. Phinney’s testimony apprises us of why one of ordinary skill in the art would have understood the assertions made in the Petition, and his testimony is supported by evidence. We find that the declarations of Dr. Phinney are based on specific factual disclosures in the evidence of record. Therefore, we credit Dr. Phinney’s declaration testimony for the matters asserted based on the evidence and technical reasoning provided therein. Having considered the arguments and evidence of record, we” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“knowledgeable and familiar with the smart card and Radio Frequency Identifier (RFID) arts. Pet. 13. Petitioner states that such a “person would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the electrical engineering field. Lack of work experience can be remedied by additional education, and vice versa.” Id. at 13. Patent Owner does not address the level of ordinary skill. See generally, PO Resp. 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’249 patent has an effective filing date prior to the effective date of the applicable AIA amendment, we refer to the pre-AIA version of § 103. 2 U.S. Patent No. 6,824,064 (Ex. 1005) 3 Japanese Paten Application No. 2000-163539A (Ex. 1006) 4 RFID Handbook: Radio-Frequency Identification Fundamentals and Applications, Klause Finkenzeller, 1999 (Ex. 1007) 5 Smart Card Handbook: Third Edition, Wolfgang Rankl, 2003 (Ex. 1008) references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Further, although Patent Owner is correct in stating that Guthery discloses an embodiment of a request-to-send packet that includes size information, we do not agree that Guthery requires this information to be included in the request-to-send packet. Rather, we agree with Petitioner, that Guthery’s description of a request-to-send packet as shown in Figure 8, which does not include information about the size of the message, indicates that the size information is not required by the request-to-send packet in at least some embodiments of Guthery. Ex. 1005, 8:65–9:12, Fig. 8; see id. at 8:25–29 (The “present invention is not limited to the packet types discussed and in fact assumes that new types can and will be defined in the future as needed.”); 7:43–50 (“In one particular embodiment,” packets have a fixed number of bytes, but “in other embodiments, packet types may have different sizes.”). We agree with Petitioner, that Guthery discloses multiple embodiments, and the combination made by Petitioner relies on the embodiments shown in Figures 14 and 15, where the requested application only needs two buffers and therefore would know, without receiving information from the request-to-send packet, to ask for two buffers. Ex. 1005, 12:19–59. We find that a person of ordinary skill, in combining the teachings in Guthery with Nozawa to identify and initialize an application most likely to be selected by the smart card reader, would rely on (a) information about the size of a message as shown in Figure 8, (b) Guthery’s teaching of an application programmed to determine its own memory requirements (Ex. 1005, 9:25–31), and (c) Guthery’s teaching of an application that only needs two buffers as shown in Figures 15A-15D, to preemptively transmit a permission-to-send packet from the application to the reader without waiting to receive the request-to-send packet from the reader, to yield the benefit of improving efficiency and reducing latency as taught by Nozawa. See Phinney Decl. ¶¶ 55 (testifying that Guthery’s system would preemptively prepare the buffers and transmit the permissionto-send packet without waiting to receive the request-to-send packet).” slip op. at 17
- 112 supportMotion to amend, deniedDenied
“In light of the full record before us, including Patent Owner’s arguments at the Oral Hearing, we now consider whether the proposed amended claim properly encompasses a device other than the reader performing the claimed selection. We agree with Petitioner’s contention, that the “claim doesn’t tell us . . . which element performs the selection,” and that “[t]his difference . . . divorces the claim from the functionality described in the specification.” Opp. 3–4 (citing Ex. 1002, 290 (Spec. ¶ 21)). Dr. Phinney’s testimony supports this contention. Ex. 1026 ¶ 12. We do not give weight to the arguments by Patent Owner’s attorney at the Oral Hearing, because attorney argument cannot take the place of objective evidence. Gemtron Corp., 572 F.3d at 1380. This is especially true here, where the specification discloses that the reader makes the selection, but does not disclose that any other device makes or would be capable of performing the selection. Patent Owner has not shown, nor do we find, support in the disclosure of the ’706 patent for a device other than the reader performing or capable of performing a selection. Thus, based on Patent Owner’s position that the proposed claim amendment would encompass non-reader devices making the selection, the proposed amendment adds new matter and is impermissible. See Gentry Gallery Inc. v. Berkline Corp., 134 supporting disclosure, and therefore . . . a narrow disclosure will limit claim breadth.”). Accordingly, Patent Owner has not shown, nor do we find, support for “wherein after selection of one of the plurality of applications, subsequent communication between the reading device and the selected application takes place without requiring any further steps” as recited in independent proposed substitute claims 23, 25, and 26. Due to the lack of support in the original disclosure of the ’706 patent for this limitation, proposed substitute claims 23, 25, and 26, and claim 24 by virtue of its dependency from claim 23, seek to introduce new subject matter.” slip op. at 40
Patent outcomesUS 8,581,706 unpatentable§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,581,706 - Apple Inc. v. Aire Technology LimitedAll claims unpatentablePTAB · Dec 15, 2023 · IPR2022-01137 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–3, 11, 12, 16, 18, and 20 are unpatentable as obvious; the motion to amend with proposed substitute claims 23–26 is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“knowledgeable and familiar with the smart card and Radio Frequency Identifier (RFID) arts. Pet. 13. Petitioner states that such a “person would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the electrical engineering field. Lack of work experience can be remedied by additional education, and vice versa.” Id. at 13. Patent Owner does not address the level of ordinary skill. See generally, PO Resp. 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’249 patent has an effective filing date prior to the effective date of the applicable AIA amendment, we refer to the pre-AIA version of § 103. 2 U.S. Patent No. 6,824,064 (Ex. 1005) 3 Japanese Paten Application No. 2000-163539A (Ex. 1006) 4 RFID Handbook: Radio-Frequency Identification Fundamentals and Applications, Klause Finkenzeller, 1999 (Ex. 1007) 5 Smart Card Handbook: Third Edition, Wolfgang Rankl, 2003 (Ex. 1008) references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Any special definition for a claim term must be set forth in the specification with reasonable clarity, 1994). Petitioner submits that the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction. Pet. 13–14. Although we may discuss the scope of the claim language during our analysis, we agree that no specific construction is necessary for us to reach our decision.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We do not accord the testimony of Dr. Phinney little or no weight simply because it matches what Petitioner states in the Petition. The Xerox case cited by Patent Owner does not require or indicate otherwise. See Xerox at 1517 (noting that the deficiencies with expert testimony are that they are conclusory and lacking supporting evidence or technical reasoning.). Dr. Phinney’s testimony apprises us of why one of ordinary skill in the art would have understood the assertions made in the Petition, and his testimony is supported by evidence. We find that the declarations of Dr. Phinney are based on specific factual disclosures in the evidence of record. Therefore, we credit Dr. Phinney’s declaration testimony for the matters asserted based on the evidence and technical reasoning provided therein.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“discloses an embodiment of a request-to-send packet that includes size information, we do not agree that Guthery requires this information to be included in the request-to-send packet. Rather, we agree with Petitioner, that Guthery’s description of a request-to-send packet as shown in Figure 8, which does not include information about the size of the message, indicates that the size information is not required by the request-to-send packet in at least some embodiments of Guthery. Ex. 1005, 8:65–9:12, Fig. 8; see id. at 8:25–29 (The “present invention is not limited to the packet types discussed and in fact assumes that new types can and will be defined in the future as needed.”); 7:43–50 (“In one particular embodiment,” packets have a fixed number of bytes, but “in other embodiments, packet types may have different sizes.”). We agree with Petitioner, that Guthery discloses multiple embodiments, and the combination made by Petitioner relies on the embodiments shown in Figures 14 and 15, where the requested application only needs two buffers and therefore would know, without receiving information from the request-to-send packet, to ask for two buffers. Ex. 1005, 12:19–59. We find that a person of ordinary skill, in combining the teachings in Guthery with Nozawa to identify and initialize an application most likely to be selected by the smart card reader, would rely on (a) information about the size of a message as shown in Figure 8, (b) Guthery’s teaching of an application programmed to determine its own memory requirements (Ex. 1005, 9:25–31), and (c) Guthery’s teaching of an application that only needs two buffers as shown in Figures 15A-15D, to preemptively transmit a permission-to-send packet from the application to the reader without waiting to receive the request-to-send packet from the reader, to yield the benefit of improving efficiency and reducing latency as taught by Nozawa. See Phinney Decl. ¶¶ 55 (testifying that Guthery’s system would preemptively prepare the buffers and transmit the permissionto-send packet without waiting to receive the request-to-send packet).” slip op. at 17
Patent outcomesUS 8,581,706 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,581,706 - Maxlite, Inc. v. Jiaxing Super Lighting Electric Appliance Co., Ltd.All claims unpatentablePTAB · 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 unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites PhillipsPatents in suitUS 9,807,826 - Samsung Electroncis Co. Ltd. v. Acorn Semi, LLCAll claims unpatentablePTAB · Feb 9, 2022 · IPR2020-01183 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–3, 17–18, and 21–24 are unpatentable: claims 1–3 and 17–18 are obvious over Jammy, and claims 21–24 are anticipated by Grupp ’483 and Jammy.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“mental steps that an ordinarily skilled artisan theoretically might have taken after reviewing the minimal disclosure in the ’423 patent. The ’423 patent does not discuss any properties of metal oxides (other than the lower barrier of the metal oxide TiO2) or design considerations concerning the selection of particular oxides to use in the claimed structure, particularly in the context of MIGS separation. Dr. Kuhn cites very little, if any, evidence to support her testimony regarding the knowledge of an ordinarily skilled artisan. Thus, we do not credit this analysis as showing that an ordinarily skilled artisan would have found that the inventors of the pre-2011 priority applications possessed the recited genus. See Ariad, 593 F.3d at 1352 (a description that merely renders the invention obvious does not satisfy the written description requirement); PowerOasis Inc. v. T-Mobile USA, 522 F.3d 1299, 1306 (Fed. Cir. 2008) (“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.”) (quoting In re Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002),” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“As discussed above, Petitioner has demonstrated Grupp ’483 is prior art to challenged claims 1–3, 17–18, and 21–24 of the ’261 patent. It is undisputed that the priority applications disclose at least some group IV semiconductors. Thus, claims reciting the metal oxide interface layer and Group IV semiconductor are anticipated under In re Slayter, 276 F.2d 408, 411 (CCPA 1960) (“It is well settled that a generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus; in other words, whatever would infringe if subsequent will anticipate if prior.”) and In re Gosteli, 872 F. 2d 1008, 1010 (Fed. Cir. 1989). The additional limitations of the challenged dependent claims are also disclosed in Grupp ’483. See Pet. 25–26. For the reasons discussed above, we conclude that Petitioner has demonstrated by a preponderance of the evidence that claims 1–3, 17–18, and 21–24 are anticipated by Grupp ’483.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“On this record Patent Owner has not provided sufficient evidence of a nexus between the long felt and the specific limitations recited in claims 1–3 and 17–18, e.g., the structure recited in independent claim 1, in which a metal oxide interface layer interposed between a metal and a group IV semiconductor comprising the source or drain of a transistor has a thickness between 0.1 nm and 5 nm.” slip op. at 39
Patent outcomesUS 9,209,261 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,209,261 - Samsung Electronics Co., Ltd. v. Acorn Semi, LLCAll claims unpatentablePTAB · Jan 12, 2022 · IPR2020-01205 · APJ John R Kenny · IPR · Final written decision
Claims 1–3, 6, 8–12, and 14–16 are unpatentable as anticipated by Grupp ’483; the priority applications do not support or enable the claims’ full scope.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateEntitled to earlier dateMixed
“To support a claim to a genus, a specification must disclose “either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010) (en banc). Here, the recited genus is an interface layer comprising a metal oxide, where the interface layer is configured to provide a specific contact resistivity between a contact metal and a semiconductor of than 1 Ω- μm2. Ex. 1001, 18:37–43. It is undisputed that the only species the pre- 2011 priority applications disclose is TiO2, as set forth in the following passage: Two other properties of the dielectric deserve mention. First is the property of the height of the barrier compared to the semiconductor conduction band (for electrons). In making the barrier thinner than a silicide barrier, the tradeoff may be a higher tunnel barrier (e.g., 2 eV for nitride, compared with about half the gap of 0.6 eV for silicide). Spacer layers may be used with lower barriers (e.g., TiO2 has a barrier of less than 1 eV). Nevertheless, even with the higher barrier to electrons, the present inventors have determined that the resistance can still be one hundred times lower than a contact to silicon with a silicide barrier. Id. at 17:59–18:2 (emphasis added).” slip op. at 18
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledNot entitled to earlier dateDecided for petitioner
“evidence shows, that the disclosure does not enable specific contact resistance down to zero. Ex. 1016, Schubert Decl. ¶¶ 87–90. Instead, Patent Owner argues that one of skill in the art would have understood there to be an “inherent lower limit” and that the claims are enabled because one of skill in the art could achieve that lower limit through experimentation based on the disclosure of patent. We are not persuaded by Patent Owner’s argument, for two main reasons. First, we do not agree that the cases cited by Patent Owner establish that the enablement requirement is satisfied if one of skill in the art could experiment in accordance with the disclosure to find a practical end of an open ended range recited in a claim. Patent Owner principally relies on Andersen Corp. v. Fiber Composites, but the Federal Circuit in that case affirmed the jury verdict of enablement because “the upper limit of the Young’s modulus of the structural member would lie somewhere between the Young’s modulus of the wood fiber and that of the polymer used in the composition.” 474 F.3d at 1377. In other words, there were two known quantities that provided a fixed range. That is not the case here, where Patent Owner does not point to any such predefined limits. Patent Owner also cites a district court case, PerkinElmer Health Scis., Inc. v. Agilent Techs., Inc., 962 F. Supp. 2d 304, 310 (D. Mass. 2013). That case is not directly on point, because it was considering claim construction and not enablement, but that court also found an existing practical upper limit to the” slip op. at 36
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Neither party asks for a construction of the subject claim language, and we determine that the plain meaning of “a specific contact resistivity . . . of less than 1Ω μm2” would encompass all specific contact resistances below 1 Ω-μm2 and down to zero.” slip op. at 35
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableReference is prior artUnpatentable
“reference for purposes of anticipation under section 102 [] differs from the enablement standard under section 112.” Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318, 1325 (Fed. Cir. 2005). Enablement under section 112, which is required for priority under section 120, requires enablement of the full breadth of a claim. Wyeth and Cordis Corp. v. Abbott Laboratories, 720 F.3d 1380, 1384 (Fed. Cir. 2013); MagSil, 687 F.3d at 1384; 35 U.S.C. § 120. Enablement for anticipation does not; rather it requires only enablement of an embodiment or embodiments that fall within the scope of the claim. Chester v. Miller, 906 F.2d 1574, 1577 (Fed. Cir. 1990) (“a CIP's claim for a genus might not be enabled by a parent's disclosure, but that parent may enable a species that anticipates the CIP's claim for a genus . . . . the Court of Custom and Patent Appeals [] made clear the differences between the requirements for claim-anticipating disclosures and for claim-supporting disclosures”) (citing In re Lukach, 442, F.2d 967, 969–970 (CCPA 1971)). Here, the enablement challenge for priority is for a lack of enablement of the full breadth of the recited range, and in particular, a lack of enablement of the lower part of the recited range (that which is at or near zero). No party has argued that the upper part of the recited range (just below 1 Ω-μm2) is not enabled by either the priority applications or Grupp ’483. See, e.g., Pet. 20; PO Resp. 1–2; Pet. Reply 27–28; PO Sur-reply 17– 18. And enablement by a prior art patent is presumed. In re Antor Media Pharm., Inc., 545 F.3d 1312, 1316 (Fed. Cir. 2008); Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003). Thus, the record does not reflect an inconsistency in holding the priority applications as not enabling the breadth of the recited range while treating Grupp ’483 as enabling the upper part of the range for anticipation. As set forth below, we find that Petitioner has proven that Grupp ’483 anticipates every challenged claim.” slip op. at 42
Patent outcomesUS 9,461,167 unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites PhillipsPatents in suitUS 9,461,167 - Samsung Electronics Co., Ltd. v. Acorn Semi, LLCAll claims unpatentablePTAB · Jan 12, 2022 · IPR2020-01204 · APJ Aaron W Moore · IPR · Final written decision
Claims 1–8, 13–16, and 77–80 are unpatentable as anticipated by Grupp ’483; the challenged claims are not entitled to the earlier priority date.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that “[a]ny of the following combinations of education and experience would have qualified someone as an ordinarily skilled artisan in the field of the ’336 Patent”: (a) “a Ph.D. in electrical engineering, physics, materials science”; (b) “chemical engineering, with two years of practical experience with semiconductor research and design”; (c) “a Master’s degree in electrical engineering, physics, materials science, or chemical engineering, with four years of practical experience with semiconductor research and design”; or (d) “a Bachelor’s degree in electrical engineering, physics, materials science, or chemical engineering, with six to eight years of practical experience with semiconductor research and design.” Pet. 13 (citing Ex. 1016 ¶¶ 70–71). Petitioner further asserts that “[m]ore education could compensate for less practical experience, and vice versa” and that “[t]he same level of ordinary skill would have been applicable in August 2002, February 2011, or November 2012.” Id. Patent Owner does not address the level of skill in the art. Because Petitioner’s proposal is consistent the disclosures of the ’336 patent and the cited art, we apply it in this Decision.” slip op. at 10
- ExcludeOther
“We dismiss Patent Owner’s Motion to Exclude as moot because, unlike other cases in this family, this case does not include any claims that recite an “oxide of titanium.”” slip op. at 53
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“III. CLAIM CONSTRUCTION Neither party seeks any claim constructions, and we see no terms that need to be expressly construed to resolve the issues before us, so we do not engage in any formal claim construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot entitled to earlier dateNot shown unpatentable
“We agree with Petitioner that the pre-2011 priority applications do not describe the recited genus. To support a claim to a genus, a specification must disclose “either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010). Here, the recited genus is an interface layer comprising a metal oxide, where the interface layer is configured to provide a specific contact resistivity between a contact metal and a semiconductor of less than or equal to approximately” slip op. at 15
Patent outcomesUS 8,766,336 unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites GrahamPatents in suitUS 8,766,336 - Autoliv Asp, Inc. / Nihon Plast Co., Ltd. et al. v. American Vehicular Sciences, LLCAll claims unpatentablePTAB · Mar 22, 2018 · IPR2016-01794 · APJ Jennifer Meyer Chagnon · IPR · Final written decision
Claims 1–44 are unpatentable as obvious under §103 over the combinations and references listed in the decision.
RulingsFinal written decision- Skill levelSkill level board ownOther
“a degree in a related field of science including physics, mechanical or electrical engineering, or equivalent coursework, and at least two years of experience in the area of automotive safety systems with the equivalent of a post-graduate education, such as a master’s degree or equivalent knowledge obtained through work experience, and several years of experience in the design of vehicle occupant protection systems.” Pet. 21 (citing Ex. 1003 ¶ 37). Patent Owner does not address the level of ordinary skill in its Patent Owner Response, but Mr. Nranian testifies that such a person “would have at least a Bachelor’s degree in electrical, electronic, mechanical, or automotive engineering, and at least three years of experience in the integration of airbag, safety, and vehicle occupant protection devices in automotive vehicles, or equivalent knowledge obtained through work experience in the relevant field.” Ex. 2018 ¶ 36. We do not discern a difference between these formulations as applied to the issues in dispute in this proceeding, and the parties do not identify any issue in dispute that allegedly turns on such a difference. For purposes of this Final Written Decision, and based on the parties’ proposed definitions and the complete record now before us, we maintain our previously adopted definition of one of ordinary skill in the art: a person having at least a Bachelor’s degree in physics, or electrical, electronic, mechanical, or automotive engineering, or equivalent coursework, and having several years of experience in the design of vehicle occupant protection systems in automotive vehicles, or equivalent knowledge obtained through work experience in the relevant field. See Inst. Dec. 15–16. The level of ordinary skill in the art in this case further is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties’ dispute does not require express construction of any claim term. See, e.g., See 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 12
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“specifically how the claimed airbag (with or without compartments) is inflated. The generic description in the Specification that the term “airbag” includes, among other distinct possibilities, “a single airbag having a plurality of compartments which deploy in concert to protect an occupant,” coupled with silence in the claims as to the specifics of how the claimed airbags are inflated is insufficient to support a conclusion that the original claims of the ’247 application actually disclose the claimed flow communication limitation. See Huston, 308 F.3d at 1277 (“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.”); see also Ex. 1027, 31:5–11 (Mr. Nranian admitting during cross-examination that an airbag with a plurality of compartments, “could have plurality of compartments in flow communication with each other or could have a plurality of compartments that are not in flow communication with each other.” (emphasis added)); Reply 8.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“airbag extending across front and back seats limitation. See Pet. 32–34, 38; Ex. 1003 ¶¶ 103–104. Petitioner asserts that “HÅland teaches a single airbag extending across two seating positions that are longitudinally displaced along a lateral side of the vehicle.” Pet. 32 (citing Ex. 1008, 5:47– 51, Figs. 5, 6). Petitioner further asserts that “Stütz . . . also discloses the claimed single airbag extending across two seating positions that are longitudinally displaced along a lateral side of the vehicle.” Id. at 33–34 (citing Ex. 1009, 1:25–32, 1:50–55, 2:52–55, Figs. 1, 3). We agree with Petitioner, and find that HÅland and Stütz each teaches or suggests the single airbag extending across front and back seats limitation.” slip op. at 30
Patent outcomesUS 9,043,093 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,043,093 - General Electric Co. v. University Of Virginia Patent FoundationRehearing deniedPTAB · Sep 19, 2017 · IPR2016-00357 · APJ J John Lee · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving in place the final written decision holding all challenged claims unpatentable under § 102(b) and/or § 103(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“DISCUSSION A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it contends were misapprehended or overlooked by the Board. Id.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner
“The Final Written Decision acknowledged the disclosure in the ’182 Application of the objective of lengthening usable echo train durations while achieving desired image contrast characteristics. Final Dec. 22 (citing Ex. 1014, 4). We concluded this disclosure was similar to the disclosure of the key feature in Purdue Pharma. Id. (citing Purdue Pharma, 230 F.3d at 1327). UVAPF disputes that conclusion, arguing that the comparison with Purdue Pharma is not “meaningful,” because we purportedly overlooked the importance of lengthening the usable echo train duration while achieving comparable image contrast, and the relationship between this “primary objective” and the echo time ratio. Req. Reh’g 8–9. The Final Written Decision, however, specifically considered this “primary objective” described in the ’182 Application—including both the echo train duration and image contrast aspects. Final Dec. 22. We further concluded the alleged relationship between that key feature and the echo time ratio, which is not described in the ’182 Application, was insufficient to direct a skilled artisan to the recited echo time ratio limitations. Id. As we explained, the patent in Purdue Pharma similarly described a key feature and claimed a particular ratio related to that feature, but the court held the written description was inadequate because it failed to describe that ratio or ascribe any particular importance to that ratio. Id. at 20–22 (citing Purdue Pharma, 230 F.3d at 1326–28). The same is true of the claimed echo time ratio and the disclosure of the ’182 Application, which does not identify any such ratio much less describe its significance. Id. UVAPF has not identified any argument or evidence we have overlooked, nor has UVAPF shown our application of Purdue Pharma was erroneous.” slip op. at 5
- Strike new argumentNew argument consideredDecided for petitioner
“not have been considered because they were untimely. Req. Reh’g 9–11. GE did not cite the Purdue Pharma case until the Petitioner Reply. See Paper 27, 13–14. We disagree that GE’s arguments were untimely, however, because Purdue Pharma was cited to rebut arguments made by UVAPF in its Patent Owner Response. In the Patent Owner Response, UVAPF argued that a person of ordinary skill would have been able to derive the full range recited for the echo time ratio limitations based on an example provided in the ’182 Application. Paper 21, 55–58. GE argued in the Petitioner Reply that UVAPF’s position is precluded by Purdue Pharma, which held that whether a claimed ratio can be derived from the written description is immaterial if the disclosure does not describe the ratio or direct a person of ordinary skill to the ratio as a part of the invention. Paper 27, 13–14 (citing Purdue Pharma, 230 F.3d at 1328). Thus, Purdue Pharma was cited to respond directly to arguments made by UVAPF in its Patent Owner Response, and GE’s arguments based on Purdue Pharma were not untimely. In addition, UVAPF also contends GE untimely raised its arguments that the ’182 Application does not provide sufficient support for the “at least twice” aspect of the echo time ratio limitations. Req. Reh’g 11–13. To the contrary, GE argued in the Petition that the ’182 Application failed to adequately support the “at least twice” limitation. Pet. 11–12 (“[N]owhere does the ’182 application make a comparison of the [effective echo time] of a pulse sequence derived according to the disclosed method, much less delineate a range with a boundary of ‘at least twice’ that of any other echo time.”). Thus, GE’s arguments regarding the “at least twice” limitation were not untimely.” slip op. at 6
§ 112 disclosure - Apple Inc. v. California Institute Of TechnologyInstitution deniedPTAB · Sep 12, 2017 · IPR2017-00703 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on claims 1–14, exercising § 325(d) discretion and finding no reasonable likelihood that the ’710 patent and MacKinnon rendered them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In determining whether to institute an inter partes review, we, acting on behalf of the Director, may take into account whether, and reject a petition to institute on a particular ground because, the same or substantially the same prior art or arguments previously were presented to the Office. 35 U.S.C. § 325(d).” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the ultimate burden of proving unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this stage, we assess, based on the information presented in the Petition and Patent Owner’s Preliminary Response, whether Petitioner has demonstrated a reasonable likelihood of eventually satisfying that burden. 35 U.S.C. § 314(a). To be entitled to the benefit of the filing date of an earlier application, the claims at issue must have written description support in that earlier application. See 35 U.S.C. § 120. “[T]he test for sufficiency [of the written description] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citations omitted).” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for patent owner
“To be entitled to the benefit of the filing date of an earlier application, the claims at issue must have written description support in that earlier application. See 35 U.S.C. § 120. “[T]he test for sufficiency [of the written description] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citations omitted).” slip op. at 10
§ 112 disclosureDiscretionary denialPatents in suitUS 8,284,833 - Interactive Brokers LLC / CQG, Inc. et al. v. Chart Trading Development, LLCAll claims unpatentablePTAB · Aug 18, 2017 · CBM2016-00039 · APJ Brian J Mcnamara · CBM · Final written decision
Claims 1–22 are unpatentable under § 101 and § 103 over Friesen, Jones, and Kirwin; Patent Owner’s motion to amend with substitute claims 23–44 is denied.
RulingsFinal written decision- Skill levelSkill level board ownOther
“ORDINARY SKILL IN THE ART Petitioner contends that one of ordinary skill in the art includes someone who, through education or practical experience, possesses the equivalent of a bachelor’s degree in computer science, information science, or a related field and has at least two years of work experience developing or implementing user interfaces for electronic trading systems. Pet. 13 (citing Ex. 1002, Declaration of Bernard S. Donefer (“Donefer Decl.”) ¶ 45). Patent Owner contends that a person of ordinary skill would have a bachelor’s degree in computer science or equivalent experience, and at least three years of experience in designing and/or developing user interfaces, including experience designing and/or developing graphical user interfaces for electronic trading. PO Resp. 13 (citing Ex. 2027, Declaration of Nazaar Molokhia in Support of Patent Owner Response (“Molokhia Resp. Decl.”) ¶¶ 14–15). Notwithstanding their one year difference in experience level, we find the parties’ assessments of the level of ordinary skill not to be materially different.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“At his level of professional responsibility Mr. Donefer works on system architecture to accommodate trader needs—he acknowledges that he does not code programs and in the college courses he teaches Mr. Donefer does not teach programming. Donefer Tr., 30:10–33:18, 36:19–22. Nevertheless, Mr. Donefer takes courses in programming languages, such as C++, R and Python, to keep up with languages that his students are using. Id. at 54:4–56:5. The college level courses Mr. Donefer teaches in IT in financial markets and financial information systems address order management systems, and Mr. Donefer occasionally invites order management vendors to demonstrate such systems to students. Id. at 35:10– 36:13. Mr. Donefer teaches prospective business analysts about business processes and business problems in order to design solutions, focusing on turning requirements into documentation a coder can use to implement a business process, rather than on coding itself. See id. at 38:10–41:8 There is no requirement imposed by the Federal Rules of Evidence that an expert’s qualifications perfectly match the field of the patent at issue. See SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). The patent claims before us concern a method and an apparatus for providing an interactive graphical representation of a market. Independent method claim 1 recites displaying a graph and a trading dialog box on a display of a workstation. Dependent claims recite the elements of the displayed trading dialog box and user selection options. Independent apparatus claim 9 recites a processor programmed to cause a computer to display a graph and trading dialog box. In the independent and dependent apparatus claims, the programmed processor carries out steps similar to those recited in the method claims. None of the claims in this proceeding recites technical details that require an extensive knowledge of programming or computer design. Mr. Donefer’s background in electronic trading system architectures and supervising the development of graphical user interfaces, along with his many years of experience, are sufficient for him to render opinions as to the subject matter of the claims before us. In addition, the Board can has accord proper weight to the testimony of each party’s expert witness. Therefore, in the context of this covered business method patent review, we are persuaded that we can properly weigh Mr. Donefer’s testimony.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Trading Dialog Box We construed “trading dialog box” to mean “a display on a display terminal through which the user can view values for trading and selected information.” Id. at 13. Patent Owner proposes that we construe this term to mean “an interface that appears as an overlay and enables exchange of input and output between a user and a computer.” PO Resp. 24–29. Petitioner contends that Patent Owner’s construction does present a material dispute, noting that Patent Owner’s testifying expert, Mr. Molokhia states that a popup window, such as that Friesen is an example of an overlay. Pet. Reply 4 (citing Ex. 1024, Transcript of Deposition of Nazaar Molokhia (“Molokhia Tr.”) 54:19–24). Upon review, we agree with Patent Owner that the specification of the ’611 Patent refers to the trading dialog box as an overlay and that the dialog box is used for exchanging information with the computer. PO Resp. 27–28. For purposes of this Decision, we apply Patent Owner’s proposed construction and construe “trading dialog box” to mean “an interface that appears as overlay and enables exchange of input and output between a user and a computer.”” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Workstation Neither party previously sought a construction of “workstation” and in our Decision to Institute, we accorded this term its ordinary meaning. Patent Owner now proposes that we construe “workstation” to mean “a display terminal.” PO Resp. 29–37. Our analysis of the construction of “trading dialog box” in our Decision to Institute we noted that claims 1 and 12 recite that the display is displayed on “the workstation,” a term for which there is no antecedent basis. Dec. to Inst. 13. Method claim 1 recites “displaying a trading dialog box on the display of the workstation.” Patent Owner’s proposed construction effectively amend the claim by substituting “display terminal,” which has an antecedent basis for the term “workstation,” which has no antecedent basis. However, the antecedent in the claim recites “a display terminal of an electronic trading system,” not a display terminal of a workstation. Nevertheless, according to Patent Owner the meaning of the claim would be understood by persons of ordinary skill and Petitioner did not argue that the claim was indefinite under 35 U.S.C. § 112. PO Resp. 31. Patent Owner correctly points out that indefiniteness under 35 U.S.C. § 112 was not presented as an issue in this proceeding and is not an issue we considered. Neither our Decision to Institute nor this Final Decision is based on indefiniteness. In view of Patent Owner’s positon that meaning of the claim would be understood by persons of ordinary skill, that Petitioner has not argued indefiniteness, and that none of our decisions in this covered business method patent review are based on indefiniteness, we need not further construe the term “workstation.”” slip op. at 6
Patent outcomesUS 8,380,611 unpatentableClaim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Alice · Mayo · Enfish · Electric Power · KSR · GrahamPatents in suitUS 8,380,611
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.