• Platinum Optics Technology, Inc. v. Viavi Solutions Inc.All claims unpatentable
  PTAB · Apr 11, 2024 · IPR2022-01489 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–19 are unpatentable: Hendrix anticipates them, and the listed combinations also render their respective claims obvious.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “In the Decision on Institution, we adopted a slightly modified version of this definition in which we removed the open-ended term “at least.” Inst. Dec. 10–11. Patent Owner does not address the definition of a POSA. See generally PO Resp. Patent Owner’s declarant Dr. Clemens applies Petitioner’s definition, but does not opine on whether it is correct. Ex. 2001 ¶¶ 22–23. As in the Decision on Institution (Inst. Dec. 10), we apply the same slightly modified version of Petitioner’s definition of the level of ordinary skill in the art that removes the open-ended term “at least.” We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ794 patent and the” slip op. at 11

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

    “filter comprises “a third set of layers on the second side, whether the third set of layers includes oxygen.” Ex. 1001, 10:41–49. Petitioner argues that the proper construction of this limitation “means that there is a third set of layers on the opposite side of the substrate, whether or not [the layers] include oxygen” – i.e., that the third set of layers do not need to include oxygen. Pet. 7–8. Patent Owner agrees that this is the “literal” reading of the language, but contends that one of ordinary skill in the art “would have appreciated that this language was intended to read ‘wherein’ rather than ‘whether’” and that the claim requires that this set of layers must include oxygen. PO Resp. 24–26 (citing Ex. 2001 ¶¶ 53–55). We agree with Petitioner’s representation that each of the challenges presented either anticipates or renders obvious a third set of layers with oxygen on a second side of a substrate (Pet. 8) and therefore, no claim construction is necessary for this term. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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

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

    “415 F.3d at 1314): “a first set of layers on the first side, wherein the first set of layers includes silicon and hydrogen” (claim 1) and “a first set of layers including silicon and hydrogen” (claims 9 and 15). Ex. 1001, 10:41–49, 10:65–11:4, 11:17–12:5. As the parties agree, these recitations are broadly worded. See Pet. 14 (describing the recitations of the claims as “broad” and directed to “layers of any material that has both ‘silicon and hydrogen’”); PO Resp. 42 (describing the claims as “simply specifying physical layers including silicon and hydrogen in them”), 44 (describing the disputed terms as “open-ended claiming of layers including hydrogen and silicon”). Despite this broad language, Patent Owner contends that we must read “layers including silicon and hydrogen” in conjunction with other limitations in the claims reciting a “near infrared bandpass filter.” PO Resp. 35–37 (citing Ex. 2001 ¶¶ 65–66). For purposes of our analysis, we limit “layers including silicon and hydrogen” to only materials suitable for NIR bandpass filters, as suggested by Patent Owner. We next examine the rest of the intrinsic evidence. The specification of the ’794 patent does not contain language that generally describes “layers including silicon and hydrogen.” Instead, the specification describes only layers of hydrogenated silicon: its abstract is directed to an “optical filter” that “includes a filter stack formed of hydrogenated silicon layers” (Ex. 1001, code (57)); the technical field of the invention is described as “relat[ing] to optical filters including hydrogenated silicon layers and to sensor systems comprising such optical filters” (id. at 1:20–23); the summary of the invention describes “the present invention” as an optical filter or sensor system “comprising” “a plurality of hydrogenated silicon layers” (id. at 2:57–3:19); and the detailed description begins with a hydrogenated silicon (Si:H) layers” (id. at 4:19–20). The specification only mentions silicon and hydrogen separately with respect to the disclosed sputter-deposition system “used to produce the hydrogenated silicon material.” Id. at 4:35–5:61, 7:10–19. In particular, the specification describes how “cathode 430 includes a silicon target 431, which is sputtered in the presence of hydrogen (H2), as well as an inert gas such as argon, to deposit the hydrogenated silicon material as a layer on the substrate 420.” Id. at 4:44–47. The specification also describes how altering the hydrogen flow rate in the deposition process affects the optical properties of hydrogenated silicon produced by the deposition system. See id. at 5:1–61. But the only end product described from the sputter-deposition process using silicon and hydrogen is hydrogenated silicon. See id. at 4:35–5:61, 7:10–19. As such, the specification does not provide any indication of materials beyond hydrogenated silicon that are within the scope of “layers including silicon and hydrogen.”” slip op. at 15

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

    “hydrogen” defines a genus. The test for providing a written description that supports a genus claim is whether the description provides “either a representative number of species falling within the scope of the genus or in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010) (en banc). “Regarding whether common structural features must exist between a claim and a putative priority disclosure, those features must constitute the near-entirety of the structures being compared.” Regents of the Univ. of Minnesota v. Gilead Scis., Inc., 61 F.4th 1350, 1358 (Fed. Cir. 2023). Yet the patentees only disclosed hydrogenated silicon as a possible species. Indeed, the specification focuses on a singular example of a sputterdeposition system that is used to produce an improved hydrogenated silicon material. See Ex. 1017 ¶¶ 36–38. Patent Owner cites this deposition process as written description support for “the claimed layers containing silicon and hydrogen.” See PO Resp. 44. But this example supports only how to make hydrogenated silicon and does not include any indication about what other materials would be within the scope of the claimed genus. Under these circumstances, the specification’s disclosure of a single species is not an adequate number to show possession of the entire genus of “layers including silicon and hydrogen.” Beyond the disclosure of the sputter-deposition process for producing hydrogenated silicon, Patent Owner does not identify—and we cannot discern—any other examples of a “structure, formula, chemical name, physical properties, or other properties, of species falling within the genus sufficient to distinguish the genus from other materials.” Ariad, 598 F.3d at 1350. This is particularly noteworthy given that undisputed record evidence shows numerous other potential filter materials “including silicon and hydrogen.” See supra § II.D.1.a. In the absence of structural description supporting “layers including silicon and hydrogen,” we determine that an” slip op. at 19

  Patent outcomesUS 11,131,794 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 11,131,794
• Apple Inc. v. Aire Technology LimitedAll claims unpatentable
  PTAB · 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 · Graham
  Patents in suitUS 8,581,706
• Apple Inc. v. Aire Technology LimitedAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,581,706
• Platinum Optics Technology, Inc. v. Viavi Solutions Inc.Instituted
  PTAB · Apr 14, 2023 · IPR2022-01489 · APJ Sharon Fenick · IPR · Institution

  The Board instituted IPR on claims 1–19 on all asserted grounds, finding a reasonable likelihood of success on at least one claim.

  RulingsInstitution decision

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

    “(4) Claim 1 – Conclusion For these reasons, Petitioner has demonstrated a reasonable likelihood of proving that claim 1 would have been obvious over the proposed combination of Lairson and Erdogan, and over the proposed combination of Lairson and Tsai-133.” slip op. at 23

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

    “set of layers includes oxygen.” Ex. 1001, 10:41–49. Petitioner argues that the proper construction of this limitation “means that there is a third set of layers on the opposite side of the substrate, whether or not [the layers] include oxygen” – i.e., that the third set of layers do not need to include oxygen. Pet. 7–8. Patent Owner contends that this is a typographical error and “wherein” was intended. Prelim. Resp. 8 n.2. Petitioner asserts that “each of the challenges presented in this Petition” addresses “adding a third set of layers with oxygen on a second side of a substrate.” Pet. 8. Because we find Petitioner’s contentions to be sufficient for institution even under Patent Owner’s proposed construction, we need not address Patent Owner’s proposed construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We also conclude that no express claim construction is necessary for any other claim terms. See id.” slip op. at 12

  • Skill levelSkill level board ownOther

    “Patent Owner does not oppose or comment on Petitioner’s definition of a POSITA. See generally Prelim. Resp. Based on the present record including the disclosure in the ʼ794 patent, we apply a slightly modified 4 In the present record, neither party presents arguments or evidence relating to secondary considerations. version of Petitioner’s definition of the level of ordinary skill in the art that removes the open-ended term “at least.”. On this record and for the purposes of institution, we determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ794 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “However, Patent Owner’s arguments regarding the combination are directed towards a bodily incorporation of structures described in the references, rather than the combination of their teachings proposed by Petitioner. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981). Given the teachings in each reference and our direction that an ordinarily skilled artisan is a person of ordinary creativity, we find, on this preliminary record, that Petitioner has adequately shown that an ordinarily skilled artisan would have applied Lairson’s teachings regarding a short-pass filter with Erdogan or Tsai-133’s teachings concerning filter layers on both sides of a substrate used to form a bandpass filter. KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Petitioner’s proposed combination does not involve adding the exact layers taught in Erdogan and Tsai-133 on the second side of the substrate to Lairson’s short-pass filter on the first side of the substrate. Pet. 33–34, 36– 39. Rather, Petitioner proposes, in one example, using the same materials for filter stacks on both sides of the substrate. Id. at 37–38. Thus, Patent Owner’s arguments that adding the second-side layers disclosed in Erdogan and Tsai-133 to the first-side layers of Lairson is not responsive to Petitioner’s proposed combination. Additionally, on the present record, we credit Petitioner’s declarant’s uncontroverted testimony that Lairson does not explicitly describe a bandpass filter with a long pass filter, and thus that one of ordinary skill would have looked to Erdogan and Tsai-133 for the technique of using a long-pass filter on the other side of the substrate. Id. at 34–37 (citing Ex. 1002 ¶¶ 152, 158). On the present record, and for the purposes of institution, Petitioner sufficiently shows that the combination of Lairson and either Erdogan and Tsai-133 teaches a near infrared band pass filter comprising a first set of layers on the first side, wherein the first set of layers includes silicon and hydrogen, and a second set of layers on the first side, wherein the second set of layers includes oxygen. Additionally, on the present record and for the purposes of institution, Petitioner sufficiently sets forth its showing with respect to the motivation to combine the teachings of Lairson with those of Erdogan or Tsai-133 as it proposes.” slip op. at 21

  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,131,794
• Dell Technologies Inc. / Dell Inc. v. Videolabs, Inc.Institution denied
  PTAB · Oct 4, 2022 · IPR2022-00701 · APJ Jeffrey S Smith · IPR · Institution

  The Board denied institution because JP029 supports claims 1–4 as of April 26, 2002, making the June 2002 Draft H.264 Standard unavailable as prior art for the asserted obviousness ground.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “the information presented in the petition and . . . any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The dispositive issue here is whether Patent Owner shows that the effective filing date of the ’059 patent extends to the filing date of its foreign application, thereby antedating two of Petitioner’s asserted prior art references. For the reasons set forth below, we determine that Petitioner does not show that there is a reasonable likelihood that Petitioner will prevail with respect to the sole challenged claim. Accordingly, we deny inter partes review of the ’059 patent.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “Ex. 2001 ¶ 46 (emphasis added) (citing Ex. 1004 (H.324, 1998), Fig. 1, 1–2). In other words, according to the testimony of Dr. Richardson, which the record supports and Petitioner does not dispute, the applicable standards, known to artisans of ordinary skill prior to the filing date of JP029, show multiplexing and demultiplexing the coded audio and video, thereby satisfying claim 1’s limitations for multiplexing and demultiplexing coded audio data, contrary to Patent Owner’s arguments. See Pet. 25.” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for patent owner

    “argument, Petitioner has not shown that such a disclaimer exists in the prosecution history. The purported disavowal of claim scope with respect to the plain meaning of a claim term must be unambiguous, clear, and unmistakable to one of ordinary skill in the art. Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007) (citations omitted). Petitioner has not made such a showing. Rather, Petitioner points to language that was added to the claim during prosecution, namely, “performing arithmetic coding on a first bit of the binary data corresponding to each absolute value of the coefficients,” and concludes that this language requires coding a first bit separately from the remaining bits, using separate probability tables. Pet. Reply 10 (citing Ex. 1012, 656). We agree with Patent Owner, that the plain meaning of this claim language does not require coding a first bit separately from the remaining bits, using separate probability tables. Prelim. Resp. 57–58. Turning to the prosecution history, Petitioner does not explain how the applicant’s remarks to the Examiner in the prosecution history show a clear and unmistakable disavowal of claim scope. See Pet. Reply 9–10. Further, the applicant did not state to the Examiner that the claim requires coding a first bit separately from the remaining bits, using separate probability tables. See Ex. 1012, 662–664. On this limited record, it is not clear how the applicant’s arguments in the prosecution history persuasively show that the applicant made a clear and unmistakable disavowal of claim scope. Therefore, we construe the claim according to its plain and ordinary meaning, which does not require coding a first bit separately from the remaining bits using separate probability tables as alleged by Petitioner.” slip op. at 25

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner. Petitioner’s claim construction regarding prosecution history disclaimer does not address “unanticipated and incorrect statements” made by Patent Owner “regarding the law with respect to written description and the disclosure of the subject patent and priority applications, to which Petitioners need to respond.” Ex. 1041. Specifically, Petitioner does not allege an incorrect statement in Patent Owner’s contention that “Petitioner admits that JP029 discloses performing the encoding on all bits of binary data, including the ‘first bit’ of data.” Prelim. Resp. 55 (citing Pet. 29). Nor does Petitioner allege an incorrect statement in Patent Owner’s contention that “Petitioner’s expert opines – with no explanation or citation – that the claims require ‘separately arithmetically encoding/decoding a first bit of binary data using a separate probability table from the probability table (or tables) used to encode/decode the remaining bits of binary data.’ Nothing in the claims require this.” Id. at 57 (citing Ex. 1003 ¶ 52). Instead, Petitioner, for the first time in its Reply, proposes construing the claim beyond its plain and ordinary meaning in order to rebut Patent Owner’s contention that the plain and ordinary meaning of the claim does not require coding a first bit separately from the remaining bits, using separate probability tables. Petitioner has not explained how Patent Owner made an incorrect statement, nor has Petitioner explained why Patent Owner’s construction of the claim based on the claim’s plain and ordinary meaning was unanticipated. See Pet. 7 (“[T]he Petition does not present any controversy over claim meaning and the Board need not construe any terms.”); see id. at 8 (“Petitioner maintains that the Challenged Claims would have been obvious under any reasonable construction.”). Petitioner’s new claim construction alleging prosecution history disclaimer, and Petitioner’s corresponding new argument based on the alleged disclaimer, are untimely.” slip op. at 24

  Claim construction§ 112 disclosurecites Graham
  Patents in suitUS 7,970,059
• Dell Technologies Inc. / Dell Inc. v. Videolabs, Inc.Institution denied
  PTAB · Oct 4, 2022 · IPR2022-00629 · APJ Jeffrey S Smith · IPR · Institution

  The Board denied institution because Patent Owner established claim 1’s priority to JP665, antedating the references relied on in both obviousness grounds.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “the information presented in the petition and . . . any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The dispositive issue here is whether Patent Owner shows that the effective filing date of the ’878 patent extends to the filing date of its foreign application, thereby antedating two of Petitioner’s asserted prior art references. For the reasons set forth below, we determine that Petitioner does not show that there is a reasonable likelihood that Petitioner will prevail with respect to the sole challenged claim. Accordingly, we deny inter partes review of the ’878 patent.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “. . . each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. §112.” Lockwood, 107 F.3d at 1571. To satisfy this written description requirement, a priority application must “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., 598 F.3d at 1351. “It is the specification itself that must demonstrate possession,” and “a description that merely renders the invention obvious does not satisfy the requirement.” Id. at 1352.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on its expert, Dr. Schonfeld, Petitioner contends as follows: A POSITA at the time would have had at least an undergraduate degree in Electrical Engineering, Computer Science, Computer Engineering, or a related field (or equivalent work experience in the that field), and two or more years of experience with audio, image, or video coding. Ex. 1003, ¶ 24. The relevant experience would include a working understanding of the then-existing audio and video coding standards, including ongoing work on emerging standards. Id. Pet. 15 (citing Ex. 1003 ¶ 24). Dr. Schonfeld adds that “a POSITA would have a working understanding of the then existing audio and video encoding standards (e.g., H.263), as well as ongoing work on emerging standards (e.g., H.26L/H.264).” 1003 ¶ 24. Dr. Richardson, Patent Owner’s expert, agrees with, and applies, Dr. Schonfeld’s proposed level of ordinary skill. Ex. 2001 ¶ 30 (citing Ex. 1003 ¶ 24). Based on a review of the preliminary record, for purposes of the Institution Decision, we adopt Petitioner’s proposed level of ordinary skill in the art, as agreed upon by Dr. Schonfeld and Dr. Richardson, because it is consistent with the evidence of record, including the asserted prior art and ’878 patent specification.” slip op. at 9

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

    “As Petitioner argues, it is not necessary to explicitly construe any claim terms. See Pet. 7. Any construction would have no effect in the analysis of the dispositive priority issue here. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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 10

  Claim construction§ 112 disclosurecites Graham
  Patents in suitUS 8,139,878
• Dell Technologies Inc. / Dell Inc. v. Videolabs, Inc.Institution denied
  PTAB · Oct 4, 2022 · IPR2022-00628 · APJ Karl D Easthom · IPR · Institution

  The Board denied institution because Patent Owner established priority to JP665, antedating the references asserted against sole challenged claim 1.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “the information presented in the petition and . . . any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The dispositive issue here is whether Patent Owner shows that the effective filing date of the ’238 patent extends to the filing date of its foreign application, thereby antedating two of Petitioner’s asserted prior art references. For the reasons set forth below, we determine that Petitioner does not show that there is a reasonable likelihood that Petitioner will prevail with respect to the sole challenged claim. Accordingly, we deny inter partes review of the ’238 patent.” slip op. at 2

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “In summary, contrary to Petitioner’s arguments, an artisan of ordinary skill would not have read JP665’s disclosed video improvements to H.26L as limited only to a coded video system (i.e., without audio) in the face of known related audio/video coding standards specifically contemplating video coding standards including H.26L and its predecessor H.263. Moreover, the parties agree that an artisan of ordinary skill would have known of the existing audio and video encoding standards. Ex. 1003 ¶ 24; Ex. 2001 ¶ 30; supra § IIIB. Therefore, Patent Owner shows that JP665 conveys possession of a component (video) used in a known system as defined by known standards (coded audio and video in multiplexing and demultiplexing systems) as required by claim 1’s preamble, element 1a, and element 1b. Based on the full record as generally summarized above, Patent Owner establishes priority of the ’238 patent to JP665, thereby antedating Bjontegaard and JVT-C167, which the Petition relies upon to allege obviousness in Grounds 1 and 2, respectively. This priority showing is fatal to the Petition’s obviousness showing.” slip op. at 22

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “In summary, contrary to Petitioner’s arguments, an artisan of ordinary skill would not have read JP665’s disclosed video improvements to H.26L as limited only to a coded video system (i.e., without audio) in the face of known related audio/video coding standards specifically contemplating video coding standards including H.26L and its predecessor H.263. Moreover, the parties agree that an artisan of ordinary skill would have known of the existing audio and video encoding standards. Ex. 1003 ¶ 24; Ex. 2001 ¶ 30; supra § IIIB. Therefore, Patent Owner shows that JP665 conveys possession of a component (video) used in a known system as defined by known standards (coded audio and video in multiplexing and demultiplexing systems) as required by claim 1’s preamble, element 1a, and element 1b. Based on the full record as generally summarized above, Patent Owner establishes priority of the ’238 patent to JP665, thereby antedating Bjontegaard and JVT-C167, which the Petition relies upon to allege obviousness in Grounds 1 and 2, respectively. This priority showing is fatal to the Petition’s obviousness showing.” slip op. at 22

  § 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 7,769,238
• 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
• Samsung Electroncis Co. Ltd. v. Acorn Semi, LLCAll claims unpatentable
  PTAB · 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 · Graham
  Patents in suitUS 9,209,261
• Intel Corporation v. Acqis LLCInstitution denied
  PTAB · Jan 18, 2022 · IPR2021-01114 · APJ Thu A Dang · IPR · Institution

  The Board denied institution of IPR challenging claims 17–19, 26–31, 35, and 36 because substantially the same arguments were previously presented and Petitioner did not show material Office error.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 10

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “For the foregoing reasons, the ’882 application identified the ’886 provisional with particularity and would have directly led an ordinarily skilled artisan to the document intended to be incorporated. Accordingly, we determine that Petitioner fails to show that the Examiner erred in determining that the ’882 application (Chu ’330) incorporated the ’886 provisional by reference.” slip op. at 23

  • Skill levelOther
  § 112 disclosureDiscretionary denial

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.