• Nanofiber Solutions, LLC v. Acera Surgical, Inc.Some claims unpatentable
  PTAB · Dec 13, 2022 · IPR2021-01016 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1, 2, 4–7, and 13 are unpatentable: claims 1, 2, 4, 5, and 13 as anticipated by Johnson, and claims 6 and 7 as obvious over Johnson and Johnson–Liu, respectively.

  RulingsFinal written decision

  • Skill levelOther

    “Petitioner contends that: A person of ordinary skill in the art (“POSITA”) at the time of filing the ‘228 Patent would have been a person having a bachelor's degree in science or engineering, for example in the fields of chemistry, chemical engineering, or biomedical engineering, with undergraduate research experience, coupled with at least three years of industry experience, that linked the fabrication of fibrous polymeric materials to performance requirements for scaffolds for the promotion of proliferation of biological cells and the growth and/or reconstruction of biological tissues. Pet. 11–12 (citing Ex. 1002 ¶¶ 112–116). In response, Patent Owner notes that all challenged claims recite electrospun fibers but that Petitioner’s proposed level of skill “requires (1) no coursework, training or experience with electrospinning and (2) improperly focuses on scaffolds for the promotion of proliferation of biological cells and the growth and/or reconstruction of biological tissues.” PO Resp. 7 (citing Ex. 2001, ¶¶ 38–39). But Patent Owner then concedes that this “difference is immaterial to deciding the issues raised by the Petition.” Id. at 8.” slip op. at 9

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

    “construe claims “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b); see Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Furthermore, we expressly construe the claims only to the extent necessary to resolve the parties’ dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). The parties agree that the terms of the challenged claims should be given their “plain and ordinary meaning” and that no express claim construction is necessary to address Petitioner’s challenges. Pet. 12; PO Resp. 6. We agree that no claim terms require express construction for purposes of resolving the dispute between the parties.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Upon review, we are unpersuaded that Petitioner has improperly mixed and matched disclosures from Johnson to arrive at an anticipatory reference. Patent Owner is correct that Petitioner primarily relies on Example 1 as evidence for the method by which its scaffold is made. But the disclosure found in paragraph 98 is not a “distinct” teaching of the type described in Net MoneyIN; rather, it is a general description of the structures that may be created by Johnson’s method: “A scaffold may comprise any number of layers, including about 1 layer, about 2 layers, about 3 layers, about 4 layers, about 5 layers, and so on.” Ex. 1009 ¶ 98. Patent Owner has not directed us to anything in the disclosure of Johnson that indicates that this is a “distinct” teaching or embodiment, instead of a general description of the types of scaffolds that Johnson encompasses. We see no reason why the general disclosures regarding Johnson’s scaffolds should be limited to specific embodiments, or precluded from applying to the method of Example 1.” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableNot shown unpatentable

    “We are unconvinced by Petitioner’s arguments and evidence. While we recognize that the range of claim 3 is very broad, and it is possible that scaffolds having fiber diameters as set forth in Johnson could have a mean pore size falling within the range, inherency “may not be established by probabilities or possibilities.” Par Pharm., Inc. v. Twi Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014). Nor does Petitioner sufficiently explain why a person of ordinary skill in the art would have understood the process of Example 1 to necessarily result in the claimed mean pore size. We are also persuaded by Patent Owner’s argument that Boland 2005’s disclosure of a fiber diameter similar to Johnson’s that nevertheless falls outside the claimed mean pore size range. We note that Petitioner never addresses Boland 2005 in its Reply. 4. Conclusion as to Anticipation For these reasons, we find that Petitioner has met its burden of showing that claims 1, 2, 4, 5, and 13 are anticipated by Johnson, but has failed to meet its burden as to claim 3.” slip op. at 18

  Patent outcomesUS 10,632,228 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,632,228
• Apple Inc. v. Parus Holdings, Inc.Institution denied
  PTAB · Dec 6, 2022 · IPR2022-00950 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–4 unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner proposes that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, or equivalent training, and approximately two years of experience working in the field of retrieving information in response to a voice command.” Pet. 10. Petitioner adds that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. Dr. Yarowsky supports this articulation, and Patent Owner does not propose any different articulation. See Ex. 1003 ¶ 14. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Yarowsky, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). We also note that, although the specific language of Petitioner’s proposal differs somewhat from the expressions of the level of ordinary skill that we adopted in the related proceedings to determine whether to institute review, they are substantially equivalent. See Microsoft, IPR2022-00137, Paper 9 at 9–10; Google, IPR2022-00279, Paper 7 at 10–11.” slip op. at 11

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

    “used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner submits that for the purposes of this proceeding, the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction,” nor does Patent Owner propose any express construction of any claim term. See Pet. 10. On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “2. Combination of Brown and Shuster Patent Owner disputes Petitioner’s reasoning for combining Brown and Shuster (together with Myers) as “based solely on hindsight.” Prelim. Resp. 64 (citing ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998)). We agree with this assessment because, as Patent Owner observes, “Brown discloses a web-based [interactive voice response] system with no inherent search capability and [that is] used to navigate Internet sites,” while Shuster “discloses a system for searching a wide area network and then displaying optimized search results such that users can find information easily and quickly.” Id. at 61 (emphases omitted). This difference, between navigation and searching, is meaningful, as Patent Owner illustrates with what it calls “a more realistic scenario.” See id. at 62.” slip op. at 21

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,721,705
• Apple Inc. v. Parus Holdings, Inc.Institution denied
  PTAB · Dec 2, 2022 · IPR2022-00949 · APJ Thu A Dang · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 were unpatentable over the asserted Brown and Neal combinations, including the Shuster ground.

  RulingsInstitution decision

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

    “Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we deny Petitioner’s request and do not institute an inter partes review.” slip op. at 2

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

    “customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2020). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art (POSITA) at the time of the invention and in the context of the entire patent disclosure. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See, e.g., 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) (holding that “only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”))); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Skill in the Art The level of skill in the art is a factual determination that provides a primary guarantee of objectivity in an obviousness analysis. See Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383 U.S. at 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. See Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . while a higher level of skill favors the reverse.”). POSITA “would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of experience working in the field of retrieving information in response to a voice command or equivalent field,” wherein “[l]ack of work experience can be remedied by additional education, and vice versa.” Pet. 12 (citing Ex. 1003 ¶¶ 13–15). Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “search for a product that is offered by multiple suppliers, a hierarchy of cascading searchable data sets in a database system is searched until a match is found. Pet. 32; see also Ex. 1008, Abstract, 5:58–60, 7:9–12. And, as Patent Owner points out, Neal’s system manager configures the predetermined hierarchy of data sets in the database system in which to search. Prelim. Resp. 33; see Ex. 1008, 5:58–64. We are persuaded by Patent Owner’s contention that a POSITA would not have been motivated to combine Brown’s system in which the list of choices of full title descriptions is refined for user selection until the user converges on one choice (see Ex. 1007, 6:41–50), with “a database system such as Neal in which the realm of possible results is already predefined by a system manager.” Prelim. Resp. 34–35. As Patent Owner points out, “[Petitioner]’s basis for the Neal combination hinges on the Brown exception condition where multiple hyperlink URLs are retrieved due to an ambiguous speech command.” Id. at 35–36. But “[w]ith no knowledge of ‘desired information,’ Neal’s sequential search methodology is meaningless when applied to Brown’s set of ambiguous hyperlink URLs.” Id. at 36. Petitioner’s contention that a POSITA would have been motivated to modify the system of Brown with the teachings of Neal does not address the requirements set forth in KSR to provide articulated reasoning with rational underpinning to support the legal conclusion of obviousness. That is, Petitioner’s obviousness position does not sufficiently explain why a person which the list of choices of full title descriptions is refined for user selection until there is no ambiguity (see Ex. 1007, 6:41–50), using Neal’s search of a favored supplier in a hierarchy of cascading searchable data sets. See Ex. 1008, Abstract, 5:58–60, 7:9–12. Indeed, Petitioner does not direct us to persuasive evidence that applying Brown’s IVR system using Neal’s sequential searching technique (Pet. 36–37) would have been expected to provide any advantage, outside the teachings of the ’402 patent. Here, for these reasons discussed above, we conclude that Petitioner has not provided sufficient evidence from prior art references or Dr. Yarowsky’s declaration testimony to support its contention that one of ordinary skill in the art would have combined the teachings of Brown and Neal such that “[i]f the data supplier (e.g., a website in Brown) does not have the desired information, then the search continues to the second preferred supplier of information, and so on until a match is found or all the websites have been visited.” Pet. 36–37. Therefore, Petitioner has not demonstrated articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See In re Magnum Oil Tools, 829 F.3d at 1380. Instead, we conclude that Petitioner uses improper hindsight to reconstruct the claimed subject matter by using the claims as a guide to combine the prior art references. Grain Processing Corp. v. Am. Maize- Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” (citation omitted)).” slip op. at 24

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,185,402
• ROKU, Inc. v. Universal Electronics, Inc.Instituted
  PTAB · Nov 30, 2022 · IPR2022-00943 · APJ Sharon Fenick · IPR · Institution

  The Board instituted IPR on claims 1–16: claims 1–11 and 13–16 on obviousness over Hart-787, Fu, and Rosenberg, and claim 12 with Hart-286 added.

  RulingsInstitution decision

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

    “partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition “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.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’267 patent on all grounds of unpatentability presented.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Prelim. Resp. 16 (citing Ex. 2001 (declaration of Dr. Michael S. Scordilis) ¶¶ 21–28). Dr. Scordilis asserts that Petitioner’s definition “imports a number of specific and nuanced work-experience requirements that are not necessary to understand the invention of the ’276 patent,” but also notes that he performed his analysis from the point of view of a person of skill as defined by each party and “the differences between [the different levels of skill] did not affect my overall conclusions.” Ex. 2001 ¶¶ 25, 28. Based on the present record including the disclosure in the ’267 patent, for the purposes of institution, we preliminarily adopt Petitioner’s proposed definition of the level of ordinary skill in the art, which is consistent with the level of skill as reflected in the prior art. We find that this definition is consistent with the level of skill in the art as reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our decision here would not be different if we applied Patent Owner’s proposed definition, in which we would substitute “approximately” for “at least” to avoid ambiguity.” slip op. at 9

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

    “Petitioner, while arguing that no construction is necessary, asserts that the proper interpretation of “one or more commands” in claim 1 would include “conventional remote control commands.” Pet. 18–19. Patent dispute this assertion. Prelim. Resp. 16–17. We need not construe this claim term at this point in the proceeding for the purpose of institution. Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 10

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

    “On the present record and for the purpose of institution, we determine that Petitioner has adequately showed a proper combination of the prior art references. With respect to arguments regarding field of endeavor, we note that “[t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004), quoted in Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1359 (Fed. Cir. 2020) (applying the tests from In re Bigio in an inter partes context). Each of the prior art references is an “audio monitoring method[]” (Prelim. Resp. 28) in which information received by audio-receiving microphones is used to attenuate what is played by a device. Ex. 1004, code (57); Ex. 1005, code (57); Ex. 1006, code (57). are in the same field of endeavor. See Pet. 61 (citing Ex. 1003 ¶ 159). Additionally, based on the current record, we find Petitioner’s motivation to combine argument sufficient for institution. In particular, the distinction Patent Owner seeks to draw between the references does not undermine Petitioner’s argument and evidence that one of ordinary skill in the art would have, in order to effectuate Hart-787’s teaching of attenuating the audio output of a linked device if a user has indicated a command is to be issued, looked to Fu’s teaching of volume adjustment based on a predetermined threshold and Rosenberg’s teaching of a noise level threshold based on a measurement of environmental noise. Pet. 26–30. We additionally agree that Petitioner has, preliminarily and on this record, shown sufficiently that one of ordinary skill in the art would have been motivated to make the combination and that one of ordinary skill in the art would have had a reasonable expectation of success in doing so. Id. at 28– 31 (Ex. 1003 ¶¶ 89, 91, 93). Notably, we find particularly compelling Hart- 787’s express disclosure regarding the goal of improving SNR for spoken commands. Ex. 1004, 1:64–2:37 (cited at Pet. 28), 9:21–25 (describing attenuating the audio more if the ratio between the user’s utterance and the volume of the audio) (cited at Pet. 22, 27).” slip op. at 20

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,930,276
• Apple Inc. v. Parus Holdings, Inc.Institution denied
  PTAB · Nov 28, 2022 · IPR2022-00948 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Apple did not show a reasonable likelihood that claims 1–26 were unpatentable over Danner or Danner and Woods.

  RulingsInstitution decision

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

    “Because Petitioner does not sufficiently show that this aspect of the claim would have been obvious over Danner, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Danner.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of experience working in the field of retrieving information in response to voice commands, or equivalent field.” Pet. 13. Petitioner adds that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. Dr. Yarowsky supports this articulation, and Patent Owner does not propose any different articulation. See Ex. 1003 ¶ 14. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Yarowsky, we adopt it for purposes of this Decision.4 See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10

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

    “the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner submits that for the purposes of this proceeding, all terms of the Challenged Claims should be given their plain and ordinary meaning,” and Patent Owner does not propose any express construction of any claim term. See Pet. 14. On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “We agree with Patent Owner that Petitioner insufficiently supports its contention that Danner’s application document database is “associated” with the components Petitioner identifies as corresponding to the recited “media server.” At best, Petitioner appears implicitly to apply a broad understanding of the term “associated,” but has not proffered any explicit construction of the term that we might evaluate in the context of the ’314 patent. In this respect, we note that Danner’s proxy browser 62 (and other components Petitioner identifies as part of the recited “media server”) is separated from application server 66 and web server 64 by components that Petitioner identifies as corresponding to the “internet.” See Pet. 34 (Petitioner’s annotated version of Danner’s Figure 2 identifying the “internet” in green). Neither Petitioner nor Dr. Yarowsky provides sufficient explanation how a database can be “associated” with a “media server” in the context of the ’314 patent with such a separation. See Ex. 1003 ¶ 91. We recognize that Petitioner advances an obviousness challenge, not an anticipation challenge. But Petitioner has described no clear modification to Danner that would result in Danner’s application document database 96 being “associated” with proxy browser 62 and related components. We decline to speculate how such a modification might be accomplished to meet the required association. Such association is not achieved merely because proxy browser 62 sends an instruction “to cause the application server to perform instructions stored in its database.” See Pet. 46 (emphasis added).” slip op. at 19

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,769,314
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Equo IP LLCAll claims unpatentable
  PTAB · Nov 28, 2022 · IPR2021-00943 · APJ Jason M Repko · IPR · Final written decision

  Claims 1, 5–9, 11, 12, 16–20, and 22 are unpatentable as obvious over the 300 reference, the 321 reference, and Ericsson.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “Generally, Patent Owner’s arguments and Dr. Cooklev’s corresponding testimony do not give sufficient weight to the 300 reference. See id. at 49–52. Rather, they are heavily focused on what the 321 reference alone expressly teaches or suggests. See id.; Cooklev Decl. ¶¶ 140–148, 180–181. Because Petitioner relies on the 300 reference together with the 321 reference in its obviousness rationale, we disagree with these arguments (PO Resp. 49–52), and we give little weight to Dr. Cooklev’s corresponding testimony on this issue (Cooklev Decl. ¶¶ 140–148, 180– 181). c) Experts versus a POSITA Patent Owner notes that “both parties agree that the members of the 3GPP Working Groups were experts in the field—with more expertise and understanding than a POSITA.” PO Resp. 49 (emphasis added). Dr. Cooklev testified, “I disagree that a POSITA—who under all accounts would have less expertise than the members of the 3GPP Working Groups—would recognize a problem and believe that the solution was obvious when the Working Group members themselves struggled with the same issue.” Cooklev Decl. ¶ 194, cited in PO Resp. 49. Patent Owner argues that Petitioner’s obviousness analysis relies on the skill level of an expert, not a POSITA. PO Resp. 56. Patent Owner, though, provides insufficient evidence to support the assertion that the Working Group members struggled with this issue. See id. at 49. To the contrary, the background knowledge, reflected in the 300 reference, demonstrates that, in the RAP, the UE must receive a RAR before it transmits Message 3. See, Pet. 33–34 (citing Min Decl. ¶ 102; Ex. 1002, as “correction” (category F), instead of an “addition of feature” (category B) or a “functional modification of feature” (category C). Ex. 1011, 1. The “reason for change” in Qualcomm’s change request also lacks any indication of a struggle: According to the original intention, it is clarified that the transmission of the RACH Msg3 performed only in response to an uplink grant in the Random Access Response. The current specification also allows transmission of Msg3 in response to UL grant on PDCCH.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “PO Resp. 44–45. Patent Owner claims that its definition is better than Petitioner’s because (1) it is not “based on a rigid formula that does not credit significant industry or research experience, which may substitute for formal academic work” and (2) it references additional degrees and coursework. Id. at 45. Patent Owner, though, does not explain how those differences affect the obviousness analysis in this case. See id. Instead, Patent Owner argues that, “even under Samsung’s proposal, the level of ordinary skill in the art does not comport with Samsung’s assertion of obviousness” because the members of the 3GGP working groups were experts, not persons having ordinary skill. PO Resp. 56. That is, Patent Owner’s argument does not depend on the specific differences between the proposed definitions. See id. Rather, Patent Owner argues that Petitioner implicitly applies a level of skill that exceeds the ones proposed by either party. See id. We disagree with Patent Owner’s argument for the reasons discussed in Section II.C of this Decision. We see no differences between the parties’ proposed definitions that would affect our analysis. Considering the full record developed during trial, including our review of the ’120 patent and the types of problems and solutions described there and in the cited prior art, we apply Petitioner’s definition in this Decision. Pet. 12. But our conclusion would be the same under Patent Owner’s.” slip op. at 9

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

    “Petitioner asserts, The Board should construe these two related terms [in claims 1 and 12] such that this “transmitting” feature requires transmitting the Msg3 data only when the three claimed conditions are met: (1) the UL Grant is received on the specific message, (2) the specific message is the random access response message, and (3) there is data stored in a Msg3 buffer of the user equipment. Pet. 12–13 (citing Ex. 1016 ¶¶ 56–57). In Petitioner’s view, the plain language supports the “only when” construction because “the only time after the UL Grant is received on the specific message that the user equipment transmits Msg3 buffer data is only when the specific message is the random access response message and there is data stored in a Msg3 buffer of the user equipment.” Id. at 13. Patent Owner argues for a broader construction. PO Resp. 40; Sur- reply 1–7. In Patent Owner’s view, narrowing the claim by adding the word in other IPRs involving a related patent (U.S. Patent No. 7,881,236),7 the word “only” clarified when the system transmits Message 3 data, but this is not needed here because the claim recites four transmitting limitations that cover all possible scenarios. PO Resp. 40. Patent Owner argues that Petitioner’s narrow construction is “an effort to introduce a potential non-infringement position” in this IPR. Sur-reply 5. In Patent Owner’s view, “No word or phrase from the challenged claims requires construction for resolution of this IPR.” PO Resp. 36; Sur-reply 4. During the oral hearing, both parties agreed that we need not construe the claims to reach the unpatentability issues. See Tr. 43:14–17 (Patent Owner’s counsel); 64:18–22 (Petitioner’s counsel). We need not resolve the dispute because Petitioner has shown that the” slip op. at 10

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

    “properly considers the 300 reference together with the 321 reference because the 300 reference describes a process not clearly documented by the 321 reference. Pet. 6. In particular, the 321 reference, individually, does not clearly describe whether a UE transmits Message 3 when it receives an uplink grant on a message other than an RAR. See id. But together the references show that (1) the Message 3 transmission occurs only if the RAP is ongoing and the Message 3 buffer has a MAC PDU and (2) Message 3 transmission requires a prior UL Grant received in an RAR. See id. at 34–35; Min. Decl. ¶ 104. Specifically, the 321 reference states, “If the UE receives both a grant for its RA-RNTI and a grant for its C-RNTI, the UE may choose to continue with either the grant for its RA-RNTI or the grant for its C-RNTI.” Ex. 1003 § 5.4.1, quoted in Pet. 32. The 321 reference calls the RA-RNTI grant an UL Grant in an RAR and calls the C-RNTI grant the UL Grant in a PDCCH. See, e.g., id. §§ 3.1 (“UE shall monitor the PDCCH after the uplink message containing the C-RNTI MAC”), 4.5.2 (“RA-RNTI for Random Access Response on DL-SCH”), cited in Min Decl. ¶ 99. Dr. Min testifies that, in the 321 reference, the UE chooses either the UL Grant received in an RAR or the UL Grant received in a PDCCH. Min Decl. ¶ 95. But, according to Dr. Min, the 321 reference clearly indicates that UL Grant received in the RAR is the correct one to use during the RAP. Id. ¶ 96. Dr. Min explains that the 321 reference teaches that the UE processes the received UL Grant value after successfully receiving RARs, but the 321 reference is silent about looking for a grant in a PDCCH during the RAP. Id. (citing Ex. 1003 § 5.1.4; Ex. 1045, TS 36.213 v8.3.0, § 6.1). Dr. Min testifies that a UL Grant received in a PDCCH during a RAP “would be highly unreliable” and should be discarded. Id. ¶¶ 96–97. So the 321 reference alone provides strong evidence supporting Petitioner’s assertion that it would have been obvious to transmit Message 3 only when (1) Message 3 data was available to transmit and (2) the UE had received an UL Grant in an RAR. See Pet. 35. To the extent that the language of the 321 reference is ambiguous on” slip op. at 15

  Patent outcomesUS 10,517,120 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,517,120
• Meta Platforms, Inc. v. Wrinkl, Inc.All claims unpatentable
  PTAB · Nov 23, 2022 · IPR2021-00883 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–9, 11–20, 22–28, and 30 are unpatentable as obvious over Ji, Sarafa, and Oh.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “with the prior art before us. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Accordingly, we apply the level of skill identified by Petitioner. Additionally, we agree with Patent Owner that the level of skill it identifies differs very little from Petitioner’s proposed level of skill, and our analysis below would be the same under either party’s identified level of skill.” slip op. at 16

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

    “PO Resp. 67. As with the dispute regarding Petitioner’s proposed combination of Sarafa with Ji, Patent Owner argues that a person of ordinary skill in the art would understand that only Ji’s message operation bar approach makes sense for adding another feature, such as for adding features from Oh. For the reasons discussed above in Section III.C.4.b).(4).(b), Petitioner persuades us otherwise. c) Conclusion Regarding Claims 1–9, 11–20, 22–28, and 30 Petitioner supports its position that claims 1–9, 11–20, 22–28, and 30 would have been obvious over Ji, Sarafa, Oh by explaining in detail its position that it would have been obvious to combine Ji’s, Sarafa’s, and Oh’s teachings, as well as its position that, in combination, the references teach every limitation of independent claims claims 1–9, 11–20, 22–28, and 30. Pet. 14–72. Having reviewed all of the parties’ arguments and evidence, we find Petitioner has demonstrated by a preponderance of the evidence that claims 1–9, 11–20, 22–28, and 30 of the ’192 patent would have been obvious over Ji, Sarafa, and Oh. Pet. 4–72; PO Resp. 6–69; Pet. Reply 1–25; PO Sur-reply 4–25.” slip op. at 80

  Patent outcomesUS 10,728,192 unpatentable
  § 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,728,192
• Meta Platforms, Inc. v. Wrinkl, Inc.All claims unpatentable
  PTAB · Nov 23, 2022 · IPR2021-00882 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–23 are unpatentable as obvious over Ji and Sarafa; the Board did not reach the Ji, Sarafa, and Oh ground.

  RulingsFinal written decision

  • Strike new argumentNew argument consideredMixed

    “We do not agree with Patent Owner that the arguments in sub-section 2 on pages 8–9 of Petitioner’s Reply are improper new arguments. Rather, we find these arguments properly elaborate on the Petition, in response to the proposed construction of “link” in Patent Owner’s Response. Although we agree with Patent Owner that the Petition does not include the phrase “quoted message identifier,” Sarafa explains that the quoted message cited in the Petition and the “quoted message identifier” are part of the same message package. E.g., Ex. 1007 ¶ 83. Patent Owner contends that Petitioner’s citation of the quoted message in the Petition and then the quoted message identifier in the Reply is like if I have a patent to some kind of car and someone points to a Porsche and says, look, the Porsche has an engine, and then we argue about an engine, and then they come back and say, well, we're referring to the turbo charger in the engine in their reply, even though they never mention turbo charger, and said that's the key, it's like, well, we weren't on notice of that. Tr. 71:2–9. We find this unpersuasive. Patent Owner does not explain why a reply that cites a subcomponent of an item cited in the petition would necessarily go beyond properly elaborating on the arguments in the petition.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find Petitioner’s proposed definition reasonable and consistent with the prior art before us. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Accordingly, we apply the level of skill identified by Petitioner. Additionally, we agree with Patent Owner that the level of skill it identifies differs very little from Petitioner’s proposed level of skill, and our analysis below would be the same under either party’s identified level of skill.” slip op. at 16

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

    “In order to resolve the parties’ patentability dispute, we only need to resolve whether the correct construction of “link” requires using an address specifically (rather than data generally) to “point to” a message. We find the record lacks persuasive support for such a construction. Looking to the ’198 patent itself first, neither the claims nor the Specification says anything about “point[ing] to” a message or another resource. See generally Ex. 1001. The ’198 patent mentions “address” only once, and that passage refers to a person’s address, not a message’s address. Id. at 12:29–33. Additionally, Patent Owner does not cite any other intrinsic evidence, such as the prosecution history of the ’198 patent, supporting a construction of “link” requiring a message’s address. See, e.g., PO Resp. 10–12; PO Sur-reply 2–7.” slip op. at 18

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

    “Weighing the parties’ arguments and evidence, we find that Petitioner demonstrates by a preponderance of the evidence that a person of ordinary skill in the art would have been motivated to combine the teachings of Ji and Sarafa. As explained below, Petitioner persuades us that a person of ordinary skill in the art would have understood that Ji teaches automatic scrolling, and that Sarafa’s automatic scrolling would have beneficially complemented Ji’s. Pet. 21–22; Pet. Reply 14–17; Ex. 1003 ¶¶ 75–77; Ex. 1018 ¶ 47. Additionally, regardless of whether Ji teaches automatic scrolling in paragraph 92, Petitioner persuades us that Ji and Sarafa address similar problems related to tracking and understanding convoluted conversations in messaging systems. See Pet. 16–21; Ex. 1003 ¶¶ 64, 65, 70, 73, 74. As Dr. Cockburn testifies, Ji emphasizes the problem that users cannot quickly find and understand messages in complicated message streams. Ex. 1003 ¶ 64 (citing Ex. 1006 ¶ 2); Pet. 16. Petitioner also persuades us that Sarafa addresses such problems, at least in part, by expressly teaching certain advantages of its scroll-back feature, such that a person of ordinary skill in the art would have considered it advantageous to add Sarafa’s scroll-back feature to Ji’s system. See Pet. 18–19; 21–23; Ex. 1003 ¶¶ 70, 74. For example, addressing the same problems discussed in Ji, Sarafa explains that its scroll back feature would facilitate a user’s ability to understand a complicated conversation because “[m]aking available the context of a quoted message may benefit a user in understanding a quoted message by providing messages that were displayed before and/or after the quoted message so as to play the quoted message in context.” Ex. 1007 ¶ 90; Pet. 19; Ex. 1003 ¶ 70. Similarly, Sarafa explains that its scroll back feature “provid[es] additional context to users . . . , improving the user experience of quoted messages for its users.” Ex. 1007 ¶ 23; Pet. 19; Ex. 1003 ¶ 70. We find that these disclosed benefits would have provided compelling motivation for a person of ordinary skill in the art to add Sarafa’s scroll back feature to Ji’s messaging system. Pet. 19–23; Ex. 1003 ¶¶ 71, 73–77. Indeed, as Dr. Cockburn explains, “[s]ince Ji also quotes the original message in the reply, Sarafa would therefore be a natural complement to Ji.” Ex. 1003 ¶ 77.” slip op. at 42

  Patent outcomesUS 9,860,198 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,860,198
• Google LLC v. Parus Holdings, Inc.Instituted
  PTAB · Nov 7, 2022 · IPR2022-00805 · APJ Patrick M Boucher · IPR · Institution

  The Board instituted IPR on claims 1–26, finding a reasonable likelihood of prevailing on the Wise–Dasan obviousness grounds and the Wise–Dasan–Uppaluru ground for claim 26.

  RulingsInstitution decision

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

    “Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant the Petition and institute an inter partes review. The Board has not made a final determination regarding the patentability of any claim.” slip op. at 2

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “testimony—“throughout the Petition”—for the understanding of a person of ordinary skill in the art as “baseless” because “the expert declaration does nothing more than repeat the unsupported attorney argument in the Petition.” Prelim. Resp. 28. Although we agree with Patent Owner’s general characterization that Mr. Lipoff largely repeats most of the Petition verbatim and that such testimony is of less probative value than more elaborative testimony, we disagree with Patent Owner’s implication that we should therefore summarily discount Mr. Lipoff’s testimony. See id. (“This type of copy-and-paste analysis has no probative value and is therefore unhelpful.”).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have had a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing.” Pet. 6–7. Petitioner adds that “[m]ore education could substitute for less experience, and vice versa.” Id. Mr. Lipoff supports this articulation, and Patent Owner does not propose any different articulation. See Ex. 1002 ¶ 77. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Mr. Lipoff, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 11

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

    “On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,769,314
• Satco Products, Inc. v. The Regents Of The University Of CaliforniaAll claims unpatentable
  PTAB · Nov 4, 2022 · IPR2021-00662 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over Yamazaki, Schubert, and Tadatomo; the Board did not reach the other asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art “would have been knowledgeable regarding conventional designs and fabrication techniques pertaining to LEDs, including LED package designs, and would have had at least 2 years of experience in LED design and fabrication as well as at least a master’s degree in a relevant field (e.g., chemical engineering, materials engineering, or electrical engineering), or alternatively would have an equivalent combination of advanced education and practical experience.” Pet. 10–11 (citing Ex. 1035 ¶¶ 27–29). Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp. We have reviewed Petitioner’s proposal and find it reasonable and consistent with the prior art, and apply it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 14

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

    “Third, and most significantly, Petitioner points to Shimizu, a patent filed in 1999, as repeatedly referring to phosphor as a garnet-based fluorescent material. Reply 3 (citing Pet. 27; Ex. 1013, 10:16–13:50). We agree that Shimizu appears to use the two terms interchangeably. For example, Shimizu states that “[t]he phosphor is specifically garnet fluorescent material” and “the fluorescent material is preferably yttrium- aluminum-garnet fluorescent material (YAG phosphor) activated with cerium.” Ex. 1013, 10:17–30. Patent Owner does not dispute this reading of Shimizu, but argues instead that it is “impermissible to rely on an entirely different reference” in a Reply. See Sur-Reply 4–5 (citing Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015)). For the same reasons discussed above, we do not agree that Petitioner’s use of Shimizu is improper, but is instead a proper response to Patent Owner’s argument that a person of ordinary skill in the art would not have understood Yamazaki to disclose phosphor. Ariosa, relied upon by Patent Owner, confirms that the Board should consider an exhibit “for what it show[s] about the background knowledge that a skilled artisan would have possessed.” Ariosa, 805 F.3d at 1365 (“The Board’s language on its face supports Ariosa’s interpretation of what the Board meant—that the Board was declining to consider Exhibit 1010, even as evidence of the background understanding of skilled artisans as of January 2010, simply because the brochure had not been identified at the petition stage as one of the pieces of prior art defining a combination for obviousness. If that is what the Board meant, the Board erred. Art can legitimately serve to document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness.”). The Petition relies on Shimizu to show such background understanding. Pet. 27. Specifically, the Petition states that conventional LEDs “were made using the III-nitride material system, with semiconductor layers formed on sapphire substrates and combined with YAG phosphors to efficiently generate white light output.” Id. (citing Ex. 1013, 10:30–11:35). Thus, Shimizu is properly objective evidence supporting a finding that at least as early as 1999, a person of ordinary skill in the art would have used the terms “phosphor” and “fluorescent material” interchangeably. Moreover, Dr. Schubert’s textbook published in 2018 explicitly references Shimizu. Ex. 1039, 3-4. In this context, we find that Dr. Schubert’s textbook and testimony indicate that a person of ordinary skill in the art, at the relevant time, would have understood the terms to be interchangeable.” slip op. at 20

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

    “Based on the complete record, Petitioner establishes by a preponderance of the evidence that an ordinarily skilled artisan would have found the sapphire growth substrate obvious in light of Yamazaki’s disclosure. Petitioner cites Schubert to show an ordinarily skilled artisan’s knowledge about conventional blue LEDs as disclosed in Yamazaki, i.e., that “conventional blue LEDs were III-nitride-based LEDs that commonly included sapphire growth substrates.” See Pet. 71–72, 76–77; Ex. 1007 ¶ 27 (stating the disclosed light-emitting chip “is of a publicly known structure”); Ex. 1008, 166 (discussing “commonly used sapphire and SiC substrates”). We credit Dr. Dupuis’ testimony that is consistent with the prior art of record. Ex. 1035 ¶¶ 238, 248–251 (citing Ex. 1008, 166); Ex. 1007 ¶ 27; Ex. 1009, 1:10–17, 4:61–67; Ex. 1012, 243; Ex. 2013, 10:30–11:35. We are not persuaded otherwise by the deposition testimony of Dr. Dupuis pointed to by Patent Owner. PO Resp. 44 (citing Ex. 2016, 53:7– 12). This testimony confirms that Schubert does not explicitly discuss whether the sapphire growth substrate is included in an LED package. Id. (citing Ex. 2016, 53:7–12). However, Patent Owner does not dispute that sapphire growth substrates were commonly used (as confirmed by Schubert) or that a person of ordinary skill in the art would have reasonably expected a blue LED to include a sapphire growth substrate. See PO Resp. 42–43 (stating only that sapphire is one among several materials that could be used as a growth substrate); Sur-Reply 9–10 (same). Petitioner is not required to show that the proposed combination would have been preferred over other alternatives. Infineum USA L.P. v. Chevron Oronite Co. LLC, No. 2020-1333, 2022 WL 3147683, at *6 (Fed. Cir. Aug. 8, 2022) (“We have rejected the notion that a patent challenger seeking to demonstrate obviousness must prove that a person of ordinary skill would have been motivated to select one prior art disclosure over another.”); In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[O]ur case law does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.”). Instead, the question is whether a person of ordinary skill in the art would have understood the disclosure of Yamazaki, in light of the disclosure in Schubert, to teach or suggest the sapphire growth substrate limitation. As discussed above, persuasive evidence in the record establishes that this is true.” slip op. at 38

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “offered to show that the ’213 patent solved a long-felt, but unresolved need in the field and the merits of the challenged claims. See PO Resp. 67–68. First, Patent Owner has not shown a presumption of nexus because none of the cited evidence involves any particular product. Second, Patent Owner 22 Exhibit 2111 is a redacted version of Exhibit 2105. has not established that the any long-felt need resulted directly from the unique characteristics of the claimed subject matter. Other than a general statement that the technology addressed by the ’213 patent is a continuation of Dr. Nakamura’s prize-winning work (see Ex. 2112 ¶ 231), we see no evidence in the record that the subject matter recited by claims 1 and 2 of the ’213 patent, itself, solved the need for a more efficient LED without a heat sink or mirrors. See PO Resp. 65–66; Sur-Reply 23–24.” slip op. at 46

  Patent outcomesUS 10,644,213 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,644,213

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.