- LG Electronics, Inc. v. Constellation Designs, LLCInstitution deniedPTAB · Jul 18, 2023 · IPR2023-00320 · APJ Michael T Cygan · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 6–7, 16–17, or 27–28 were unpatentable; disclaimed claims were excluded.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). For purposes of institution, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 5
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“Patent Owner disagrees, arguing that Barsoum describes determining optimized constellations for each operating SNR. Prelim. Resp. 74 (citing Ex. 1027, 4:62–5:11, 7:26–29, 8:47–56). Patent Owner further argues that the teachings related to optimizing a constellation for capacity at a first SNR also teach that other constellations optimized for a different SNR will not provide the same benefits at the first SNR. Id. We agree. Patent Owner correctly points to the specific examples of Figures 11b, 13b, 15b, and 17b as each showing a plurality of constellations, each optimized for a particular SNR that provide a greater parallel decoding capacity at that specific SNR than the other symbol constellations in the plurality. Id. at 75. More specifically, Figure 13b shows five constellations (i.e. a plurality), each optimized for a particular identified SNR that will perform better at that particular SNR than the other constellations which have not been optimized at that particular SNR. Id. at 76–77. For these reasons, we determine that Petitioner has not shown that claims 6, 16, and 27 lack written description support in Barsoum. Petitioner does not assert that claims 7, 17, and 28 lack written description support in Barsoum for any reason separate than provided by its assertions against parent claims 6, 16, and 27. Therefore, Petitioner has not shown a lack of written description in claims 7, 17, and 28.” slip op. at 8
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“unequally spaced symbol constellations to a second group of unequally space[d] symbol constellations when the two groups are operated at the same SNR.” Pet. 15 (emphasis omitted). Petitioner argues that Barsoum “only describes determining a relative relationship between a geometrically shaped (i.e., unequally spaced) constellation and a constellation optimized for dmin.” Id. (citing Ex. 1027, 6:14–20, 2:56–63; Ex. 1003 ¶ 86). Petitioner points to a statement in Barsoum as “specifying that not all geometrically shaped constellations have a greater capacity than that of a constellation maximized for dmin.” Id. at 17 (citing Ex. 1027, 6:13–22). Petitioner asserts that Barsoum’s non-uniform constellations are capable of providing such greater parallel decoding capacity only after having been optimized for that purpose. Id. at 19 (citing Ex. 1027, 6:13–22, Ex. 1003 ¶ 92). Patent Owner disagrees, arguing that Barsoum describes determining optimized constellations for each operating SNR. Prelim. Resp. 74 (citing Ex. 1027, 4:62–5:11, 7:26–29, 8:47–56). Patent Owner further argues that the teachings related to optimizing a constellation for capacity at a first SNR also teach that other constellations optimized for a different SNR will not provide the same benefits at the first SNR. Id. We agree. Patent Owner correctly points to the specific examples of Figures 11b, 13b, 15b, and 17b as each showing a plurality of constellations, each optimized for a particular SNR that provide a greater parallel decoding capacity at that specific SNR than the other symbol constellations in the plurality. Id. at 75. More specifically, Figure 13b shows five constellations (i.e. a plurality), each optimized for a particular identified SNR that will perform better at that particular SNR than the other constellations which have not been optimized at that particular SNR. Id. at 76–77.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“16–17, and 27–28 are obvious over the combination of Barsoum and ATSC327. Pet. 26. Each of the Petition’s grounds relies entirely on Barsoum to teach or suggest each limitation of independent claims 1, 11, and 21 upon which the challenged claims depend. Pet. 39–71, 96–98, 101–102. Apart from the written description support arguments above, Patent Owner does not contest Petitioner’s obviousness analysis of the challenged claims. See Prelim. Resp. As we have determined that Barsoum is not prior art to claims 6, 7, 16, 17, 27, and 28, the Petition does not establish a reasonable likelihood that those claims are obvious over the combination of Barsoum and ATSC327.” slip op. at 9
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,019,509 - 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 - 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.