• Chongqing Yanmei Technology Co., Ltd. v. Terves, LLCSome claims unpatentable
  PTAB · Aug 27, 2024 · IPR2023-00521 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 19–61, 63–77, and 79 are unpatentable as anticipated by Doud; claims 78, 80, and 81 are not shown unpatentable. The contingent motion to amend is granted in part and denied in part.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have at least a Ph.D. in chemistry, metallurgy, or material science or material engineering” or, in the alternative, “would have a Bachelor of Science or Master of Science degree in one of these disciplines plus experience involving the use and design of dissolvable metal alloys for use in creating tools and other downhole parts for well drilling or completion activities.” Pet. 13–14. Patent Owner does not oppose Petitioner’s contentions regarding the level of ordinary skill in the art. PO Resp. 12 n.4. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the ordinarily skilled artisan as it is consistent with the prior art of record.” slip op. at 7

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

    “With respect to claim 19, Petitioner proposes constructions for the terms “in situ precipitate” and “a plurality of particles of said in situ precipitate having a size of no more than 50 µm.” Pet. 11–12. With respect to claims 76–81, Petitioner proposes a construction for the term “wherein said additive material includes one or more metal materials selected from the group consisting of 0.1–35 wt. % copper, 0.1–24.5 wt. % nickel and 0.1–20 wt. % cobalt.” Id. at 13. Patent Owner contends no claims require construction for purposes of this Decision. PO Resp. 12 n.4, 17–18; Mot. 16–17. Upon review of the prior art of record, we determine that no claim terms require express construction for purposes of this Final Written Decision. See 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 8

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateWritten description adequateMixed

    “Ex. 2027, 20:25–21:5 (emphasis added). The disclosure that the “magnesium composite” of “[t]he present invention” “includes at least 50 wt% magnesium” is unambiguous and constitutes strong evidence that the inventors were not in possession of a magnesium composite with less than 50 wt. % magnesium, or additive concentrations above 50 wt. %. See SciMed Life Systems, Inc. v. Advanced Cardiovasular Systems, Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) (noting that a description of the “present invention” as having a particular structure “is strong evidence that the claims should not be read to encompass the opposite structure”). Consistent with this conclusion, the original claims of the ’295 application all limited the additive material in the composite to 0.05 wt %–45 wt %. Ex. 2027, 26:1– 13, 29:9–15. Likewise, in each example where copper, nickel, or cobalt additives are used in the range recited in the proposed substitute claims, the magnesium composite is “over 50 wt% magnesium,” and any claims that do not require this range of magnesium are limited to an additive range of “about 0.05 wt%–45 wt% of said mixture.”8 Ex. 2027, 6:13–7:4, 7:16–19, 8 Written description support is considered from the view point of the ordinarily skilled artisan. Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Patent Owner, bearing the burden to show written description support in any priority application for which it seeks the benefit of its filing date, provides no testimony from an ordinarily skilled artisan regarding written description support in the ’295 application, or any evidence to show what such an artisan would conclude from the express disclosures of the ’295 application. Lectrosonics, Paper 15 at 7; In re NTP, 654 F.3d 1268, 1276 (Fed. Cir. 2011) (noting that “a patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority . . . Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120”). Where there is any ambiguity in the disclosures of the ’295 application, the absence of supporting testimony tends to cut against 26:2–31:2; see Ex. 1005 ¶¶ 12, 13, 18, 19, 16–21, 26, 28, claims 16–21, 26– 28. In view of the foregoing, we are not persuaded that Patent Owner has demonstrated that the inventors of the priority applications were in possession of a magnesium cast composite that included less than 50 wt. % magnesium, or greater than 50 wt. % additives. As proposed substitute claim 104 encompasses a magnesium cast composite with up to 90 wt. % additives, and therefore as little as 10 wt. % magnesium, Patent Owner has not demonstrated that the full scope of this claim finds written description support in any application prior to the ’915 application, filed on October 12, 2018.” slip op. at 17

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteIndefiniteMixed

    “The definiteness requirement of § 112(a) is satisfied when “a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable clarity.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014); see 37 C.F.R. § 42.100(b) (changing the claim construction standard used to review a claim proposed in a motion to amend from the broadest reasonable construction to the “same construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b)”). Proposed substitute claim 104 generically requires “in situ precipitate” and also a specific type of in situ precipitate: “in situ galvanically-active intermetallic precipitate.” Mot. Appendix A. Although this claim would have best been clarified by Patent Owner after seeking preliminary guidance on its Motion to Amend, upon review of the written description, claims, and figures of the ’740 patent, as well as Patent Owner’s clarification in its Reply to the Opposition, we agree with Patent Owner that one of ordinary skill in the art would have understood that the “in situ galvanically-active intermetallic precipitate” is merely a more complete description of the “in situ precipitate” mentioned earlier in the sentence. Mot. Reply 4. As such, we do not find that this part of proposed substitute claim renders claim 104 indefinite.” slip op. at 22

  Patent outcomesUS 10,689,740 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham · Nautilus
  Patents in suitUS 10,689,740
• Home Depot U.S.A., Inc. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · May 22, 2023 · PGR2022-00009 · APJ Monica S Ullagaddi · PGR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

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

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

  Patent outcomesUS 10,932,341 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,932,341
• Nintendo Of America Inc. / Nintendo Co., Ltd. v. Ilife TechnologiesAll claims unpatentable
  PTAB · Apr 28, 2016 · IPR2015-00106 · APJ Michelle R Osinski · IPR · Final written decision

  Claims 1–3, 21, and 22 are unpatentable: claims 2–3 as obvious over Yasushi and claims 1–3, 21, and 22 as obvious over Unuma.

  RulingsFinal written decision

  • Skill levelOther
  • Obviousness (§103) › Analogous artNot reached
  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateNot entitled to earlier dateMixed

    “[of Figure 1] also senses along a third axis.” Pet. Reply 5. We do not find this argument persuasive for the reasons discussed above in relation to claim construction. In view of how we have construed the claims at issue, Patent Owner does not need to show written description support in its priority documents for a system that measures acceleration along all three axes, but rather must show support for a sensor that senses accelerative phenomena with regard to a system of axes (in three dimensions) in relation to which position or motion can be defined. As discussed above, in certain embodiments, such sensing can be accomplished by measuring acceleration along two axes. Petitioner also argues that “a third sensor would need to be added to a two axis accelerometer in order to sense relative to a 3D frame of reference.” Pet. Reply 5 (citing Ex. 1010, 9:25–10:22; 26:20–27:8). Although Dr. Sturges indicates that he “would have had to add another accelerometer orthogonal to the other two” in order “to establish a three-dimensional coordinate system” (Ex. 1010, 10:18–22), we do not find this testimony persuasive to support that a third sensor would be needed in order to sense relative to a three dimensional frame of reference. This portion of testimony relates to how three accelerometers can establish a three-dimensional coordinate system, not whether acceleration measurements in two dimensions provides information regarding a body relative to a 3D frame of reference. See id. at 9:25–10:22. As discussed above, the ’939 patent describes a system that specifically contemplates a fall detection application for a body, which contemplates the up/down (z axis), i.e., measures acceleration along two axes to obtain information about (sense acceleration phenomena of) a body relative to a 3D frame of reference. Ex. 1001, 8:21– 27. As to Dr. Sturges’ further testimony that a dual-axis accelerometer would not establish a three-dimensional coordinate system (Ex. 1010, 27:4– 8), we do not find this testimony persuasive to support a finding that a third sensor is needed in order to sense relative to a three dimensional frame of reference. A dual axis accelerometer alone, without additional information regarding the system/environment in which it will be operating, is different from a dual axis accelerometer defined to be in a particular orientation. For example, consistent with our discussion above regarding disclosures in the Specification, Dr. Sturges has testified that a third axis could be defined even if there was no sensing along that axis. See, e.g., Ex. 1010, 45:15–21 (“Q. So how is that Z axis—so it’s drawn in there as a third dimension, but what is defining that Z axis? A. That those axes are relative to the space in which the instrument exists, and the axes are attached so that we can see the – the frame of reference clearly in that figure.”). Accordingly, we determine that Patent Owner has shown sufficiently how the parent application (filed on September 15, 1999) describes sensing acceleration phenomena of a body relative to a 3D frame of reference, as recited in the challenged claims. Petitioner also argues that two inventors of the ’939 patent “confirmed that sensing acceleration relative to a 3D frame of reference requires sensing along three axes (‘up and down, front to back, and side to side’).” Pet. Reply 5 (citing Ex. 2007, 11; Ex. 2008, 19). We also are not persuaded by this argument, which essentially contends that disclosure of three acceleration measuring devices is required to establish written description support here. As discussed above, a sensor that comprises two acceleration” slip op. at 24

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedPriority date, deniedMixed

    “For the foregoing reasons, we determine that Patent Owner has shown sufficiently that the written description of the parent application filed on September 15, 1999, conveyed with reasonable clarity that the inventors were in possession of a sensor that sensed accelerative phenomena of a body with regard to a system of axes (in three dimensions) in relation to which position or motion could be defined in the environment, in accordance with the construction of the claim as set forth above. Accordingly, we determine that claim 1 is entitled to a priority date of September 15, 1999. In the Decision on Institution, we also noted that “entitlement to priority is decided on a claim-by-claim basis, and various claims may be entitled to different priority dates.” Dec. Inst. 15 (quoting X2Y Attenuators, LLC v. Int’l Trade Comm’n, 757 F.3d 1358, 1366 (Fed. Cir. 2014)). Petitioner’s basis for asserting that dependent claims 2 and 3 lack written description support in the parent application filed on September 15, 1999 appears to be their dependence on independent claims 1 and 11. Pet. Reply 5 (citing Ex. 1011 ¶¶ 11–23). Patent Owner asserts that dependent claim 2 is also entitled to a priority date of at least September 15, 1999. Prelim. Resp. 13. Patent Owner makes no such assertion regarding dependent claim 3 being entitled to the September 15, 1999 priority date. See id. Petitioner bears the burden of going forward with evidence that there is art prior to the application date of the ’939 patent that either anticipates or renders obvious the claims of the ’939 patent, which it has. Patent Owner then has the burden of going forward with evidence (i) that the prior art does not actually anticipate or render obvious the claims, or (ii) that the alleged prior art is not actually prior art because the challenged claim is entitled to the benefit of a filing date prior to the date of the alleged prior art. The second item requires Patent Owner to show why the written description in the earlier application supports the claim. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008). Dependent claim 2 recites “wherein one of said plurality of different” slip op. at 28

  Patent outcomesUS 6,703,939 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 6,703,939
• Nintendo Of America, Inc. / Nintendo Co., Ltd. v. Ilife Technologies, Inc.All claims unpatentable
  PTAB · Apr 28, 2016 · IPR2015-00112 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1, 2, 11, and 12 are unpatentable: claims 2 and 12 as obvious over Yasushi, and claims 1, 2, 11, and 12 as obvious over Unuma.

  RulingsFinal written decision

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

    “For the foregoing reasons, we construe “a sensor . . . that senses accelerative phenomena of said body relative to a three dimensional frame of reference in said environment” as “a sensor that senses accelerative phenomena of a body with regard to a system of axes (in three dimensions) in relation to which position or motion can be defined in the environment.” The recited “sensor” comprises a plurality of acceleration devices, i.e., at least two devices, that measure acceleration along at least two axes.” slip op. at 17

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

    “There is nothing in the Specification that indicates a deviation from this ordinary meaning. Accordingly, the plain language of the claim means that the sensor senses accelerative phenomena of said body with regard to a three dimensional frame of reference. We also interpret “three dimensional frame of reference” to refer to “a system of axes (in three dimensions) in relation to which position or motion can be defined.” (see The Oxford English Dictionary, available at http://www.oed.com/view/Entry/317084?redirectedFrom=frame+of+referen ce#eid (last visited Apr. 26, 2016) (Ex. 3006) (defining “frame of reference” as “[a] system of coordinate axes in relation to which size, position, or motion, can be defined;” see also Ex. 1001, 2:25–27 (“the present invention introduces systems, as well as methods of operating such systems, for evaluating movement of a body relative to an environment”), 2:53–56 (“the sensor may be a plural-axis sensor that senses accelerative phenomena and generates an output signal to the processor indicative of measurements of both dynamic and static acceleration of the body in plural axes”). In other words, the plain language of the claim refers to a sensor that senses accelerative phenomena of said body with regard to a system of axes (in three dimensions) in relation to which position or motion can be defined.” slip op. at 12

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateNot entitled to earlier dateMixed

    “For the foregoing reasons, we determine that Patent Owner has shown sufficiently that the written description of the grandparent application filed on September 15, 1999, conveyed with reasonable clarity that the inventors were in possession of a sensor that sensed accelerative phenomena of a body with regard to a system of axes (in three dimensions) in relation to which position or motion could be defined in the environment, in accordance with the construction of the claim as set forth above. Accordingly, we determine that claims 1 and 11 are entitled to a priority date of September 15, 1999. In the Decision on Institution, we also noted that “entitlement to priority is decided on a claim-by-claim basis, and various claims may be entitled to different priority dates.” Dec. on Inst. 16 (quoting X2Y Attenuators, LLC v. Int’l Trade Comm’n, 757 F.3d 1358, 1366 (Fed. Cir. 2014)). Petitioner’s basis for asserting that dependent claims 2 and 12 lack written description support in the parent application filed on September 15, 1999 appears to be their dependence on independent claims 1 and 11. Reply 6 (citing Ex. 1012 ¶¶ 13–25). Patent Owner makes no assertion that dependent claims 2 and 12 are entitled to the September 15, 1999 priority date. Prelim. Resp. 12–14. Petitioner bears the burden of going forward with evidence that there is art prior to the application date of the ’331 patent that either anticipates or renders obvious the claims of the ’331 patent, which it has. Patent Owner then has the burden of going forward with evidence (i) that the prior art does not actually anticipate or render obvious the claims, or (ii) that the alleged prior art is not actually prior art because the challenged claim is entitled to the benefit of a filing date prior to the date of the alleged prior art. The second item requires Patent Owner to show why the written description in the earlier application supports the claim. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008). Dependent claims 2 and 12 recite “wherein one of said plurality of” slip op. at 28

  Patent outcomesUS 7,095,331 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 7,095,331
• JDS Uniphase Corporation v. Fiber, LLCSome claims unpatentable
  PTAB · Dec 5, 2014 · IPR2013-00336 · APJ Jacqueline Wright Bonilla · IPR · Final written decision

  Claims 112, 123, 124, 127, 129, 131, 133, and 134 are unpatentable as obvious over Chande; the remaining challenged claims were not shown unpatentable, and the motion to amend was denied.

  RulingsFinal written decision

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

    “of the phrase “servo control” refers to a “control” element, as opposed to a “servo control” or “data gathering and transmission” element, as recited in challenged claims, where the “servo control” in the provisional application controls movement of a mirror using a “push+pull magnetic force,” for example. Ex. 2006, 7. Consistently, the provisional application states that “[i]t may be desirable to add damping mechanism for better servo control,” i.e., to control movement of the mirrors, and that “resulting push+pull magnetic force is more linear and also larger than the pull only design, and allows for better servo control,” i.e., control of the position of the mirrors. Id. at 5, 7; see also PO Resp. 18. Patent Owner’s position relies on an inherency argument in relation to one sentence in the provisional application, as discussed above, which indicates that after velocity of the mirror is “zeroed,” “currents are adjusted to hold it in place.” Ex. 2006, 7. We are not persuaded that this one sentence describing the adjustment of currents to hold a mirror in place necessarily describes a closed-loop, feedback system, or “an error signal” that is “used in order to correct the angular changes so as to reduce that error signal,” as stated by Dr. Smith. PO Resp. 19–12 (citing Ex. 2017, 44). We do not see how this sentence, expressly or inherently, describes a separate “servo control element” or “data gathering and transmission element” as recited in claims 112 and 123, respectively (i.e., something different from the “control” element of each of those claims, which corresponds to the “servo control” in the provisional application), where each element provides a feedback signal regarding current orientation of the mirror or current location of the optical beam.” slip op. at 15

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

    “We are not persuaded that Chande and Buchin are non-analogous art to each other because, as Petitioner points out, both references are directed to optical switching and coupling of laser light to receptors with rotational reflective elements. Id. at 22. We still address, however, whether one of ordinary skill in the art would have had reason to combine the elements disclosed in Chande and Buchin when making the optical switch of claims 130 and 132.” slip op. at 34

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMixed

    “As an initial matter, we note that Petitioner cites no evidence, such as a declaration from an expert witness, in support of those contentions. Id. In any event, Petitioner does not explain sufficiently how, or show by a preponderance of the evidence why, one would have added a stationary mirror or focusing lens “disposed between a source and one of the first movable mirrors,” as Petitioner contends is disclosed in Buchin, to the system described in Chande. Petitioner’s assertion that “inclusion of additional sources” would have been predictable or accomplished does not explain, nor provide evidence, as to why one would have included an additional stationary mirror or a focusing lens in a different location, i.e., elements that differ from “additional sources,” in the optical switch of Chande. Id.; see also Reply 12 (stating only that Chande and Buchin are both in the field of optical switching, and Patent Owner’s “attempts to read limitations from the specification into the claims is improper”). Thus, we are not persuaded that Petitioner shows by a preponderance of the evidence that an ordinary artisan would have included a stationary mirror, or focusing lens “disposed between a source and one of the first movable mirrors,” as recited in challenged claims 130 and 132 and Petitioner contends are disclosed in Buchin, in the optical switch disclosed in Chande.” slip op. at 35

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

    “Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1339 (Fed. Cir. 2003). Thus, a motion to amend claims must identify how the proposed substitute claims are to be construed, especially when the proposed substitute claims introduce new claim terms. See Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 7 (PTAB June 11, 2013) (Paper 26). In its Motion to Amend, Patent Owner introduces three new claim terms— i.e., “communications,” “fiber,” and “fiber optical”—in its proposed substitute claims. Patent Owner argues that those claim features distinguish the proposed substitute claims from the prior art. See, e.g., Motion 11–14. Patent Owner does not provide, however, adequate claim constructions or explanations for how the new claim terms should be construed. For example, in relation to the term “communications,” Patent Owner offers, at most, that the addition of this term means that the recited subject matter “involve[s] switches only in the fiber optic communications field of endeavor,” and that the term identifies claimed components as “related to a fiber optic switching device that switches optical beams containing communications signals.” Id. at 5, 11–12. Simply referring to the terms “communications,” “fiber,” and “fiber optic” in the Motion to Amend does not define adequately an ordinary and customary meaning of “communications,” as would be understood by one of ordinary skill in the art in the context of the Specification (which itself does not define “communications”). Ex. 1001, 1:11–14 (presenting the one time the term “communication” is used in the ’332 patent Specification). During the oral hearing, Patent Owner’s counsel, upon questioning, proposed that “communication” means “a beam of light, with a frequency around approximately 1500 nanometers.” Paper 39, 47:4–13. The Motion to Amend, however, does not suggest such a claim construction, nor refer to any evidence, e.g., a dictionary or scientific definition, in support. Moreover, as discussed during the oral hearing, it is not clear from the record if “communication” might mean simply “transmission of information,” a definition not limited to a beam of light at 1500 nm. Id. at 53:14–55:18. Without a reasonable construction of the new claim features added by the proposed substitute claims, Patent Owner’s Motion does not provide adequate information for us to determine whether its proposed substitute claims are patentable over the prior art generally. Thus, we are not persuaded that Patent Owner has met its burden to demonstrate patentability of the proposed substitute claims under 37 C.F.R. § 42.20(c). 2. Written Description Support A motion to amend claims must identify clearly the written description support for each proposed substitute claim. 37 C.F.R. § 42.121(b). The written description test is whether the original disclosure of the application relied upon reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Thus, the motion should account for the claimed subject matter as a whole, i.e., the entire proposed substitute claim, when showing where there is sufficient written description support for each claim feature. See Nichia Corp. v. Emcore Corp., Case IPR2012-00005, slip op. at 4 (PTAB June 3, 2013) (Paper 27).” slip op. at 50

  Patent outcomesUS 6,430,332 mixed
  § 103 obviousness§ 112 disclosure
  Patents in suitUS 6,430,332

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.