- Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Smart Mobile Technologies LLCSome claims unpatentablePTAB · Jan 23, 2024 · IPR2022-01249 · APJ Hyun J Jung · IPR · Final written decision
Claims 14–15, 17–21, and 27–30 are unpatentable as obvious; claims 1–13, 16, and 26 were not shown unpatentable.
RulingsFinal written decision- Skill levelOther
“C. Level of Ordinary Skill in the Art” slip op. at 9
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“A. Petitioner’s Motion to Submit Supplemental Information” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“agree that “Yegoshin’s phone is configured to switch between cellular and IP communication modes, and also ‘capable of taking some calls via cellular path while receiving other calls via IP path’” but that does not lead to the conclusion, or support, that “in order to receive calls on both cellular network and WLAN simultaneously or to switch between two networks, the phone includes multiplexing of the signals communicated on two network paths.” Ex. 1003 ¶¶ 126 (citing Ex. 1004, 3:18–22, 5:33–65), 127 (citing Ex. 1004, 5:33–65; Ex. 1006, 1:6:12, 1:54–60, 3:53–61). The declarant’s citations to the record also do not support that Yegoshin’s “phone includes multiplexing of the signals communicated on two network paths.” Ex. 1004, 3:18–22, 5:33–65; Ex. 1006, 1:6:12, 1:54–60, 3:53–61.” slip op. at 45
Patent outcomesUS 9,019,946 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,019,946 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentablePTAB · Sep 28, 2023 · IPR2022-00847 · APJ Brian D Range · IPR · Final written decision
Claims 21, 22, 25, 26, 28–30, 32–36, 40, 42–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 are unpatentable over Begemann, Krames, and Allen; claim 41 is …
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Patent Owner’s argument is unpersuasive because the Krames declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 21 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52. One requirement of this apparatus is that it comprise “at least one semiconductor chip” (id. at 10:1) where the “at least one semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts.” Id. at EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction of “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as meaning “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 54 (quoting Ex. 1008, 10). Notably, claim 21 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 12
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“It is unnecessary to construe any other claim terms in this Decision because none of the parties’ disputes turn on the meaning of other claim terms. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 22
Patent outcomesUS 6,465,961 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,465,961 - Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentablePTAB · Jul 6, 2023 · IPR2022-00417 · APJ Brian D Range · IPR · Final written decision
Claims 1, 2, 4–8, 10–12, and 18 are unpatentable as obvious over Takeda-322.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). The Specification of the ’250 patent describes its technical field as relating to a smart card that may comprise an RFID (radio frequency identification) chip with antenna components for operating in contactless modes. Ex. 1001, 1:37–54. The Specification discusses both inductive and capacitive coupling. See, e.g., id. at 3:14–39. Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be at use by various RFID systems. See Ex. 2005, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Thus, we are not persuaded that the level of ordinary skill should be narrowly confined to developing antenna for RFID devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” Pet. 7.5” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“testimony of Petitioner’s declarant, Dr. van der Weide, for several reasons. Patent Owner first argues that Dr. van der Weide lacks relevant experience to provide opinions through the lens of a person having ordinary skill in the art. PO Resp. 27–38 (citing Ex. 2003 ¶ 71). According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with relevant inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Moreover, Petitioner presents evidence that Dr. Van der Weide’s experience exceeds even Patent Owner’s articulation of the level of ordinary skill in the art. Pet. Reply 22–23 (citations omitted). Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7; Ex. 1004 (van der Weide curriculum vitae).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededTerm construed board ownMixed
“appears in independent claims 1 and 18) should be construed as “a component in a booster antenna for coupling with a module antenna connected to an integrated circuit.” PO Resp. 15–16. We determine that it is unnecessary to construe this claim term for purposes of this Decision. See, e.g., Nidec Motor Corp., 868 F.3d at 1017 (“[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))). As we explain herein, the preponderance of the evidence supports that Takeda-322 renders the recited “coupler coil” obvious even under Patent Owner’s proposed construction. See Section III(G)(2)(b), infra.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“to the extent Takeda-322 does not expressly teach a single wire implementation, such an implementation would have been obvious because it was a known, conventional, technique and because it would lead to obvious and predictable results while avoiding drawbacks of multiple wires. Id. at 11–12 (citing Ex. 1003 ¶¶ 59–63; Ex. 1012, 3:54–60, 4:26–36, 5:35– 60 (Ayala suggesting use of single wire)). Petitioner further argues, with supporting evidence, that a person of ordinary skill in the art would have had a reasonable expectation of success in achieving this implementation. Id. The preponderance of the evidence supports Petitioner’s argument that a person of ordinary skill in the art would have had both reason and a reasonable expectation of success in achieving this implementation, and Patent Owner does not dispute the argument. We, thus, determine that a single-wire embodiment of Takeda-322 would have been obvious.” slip op. at 26
Patent outcomesUS 9,033,250 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,033,250 - Linkedin Corporation v. Ebuddy Technologies B.V.All claims unpatentablePTAB · May 15, 2023 · IPR2022-00177 · APJ Jason M Repko · IPR · Final written decision
Claims 1–6 are unpatentable as obvious over Odell and Daniell; claims 7–16 are unpatentable as anticipated by Odell.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“(b) High- and Low-Level Networks We also determine that the evidence favors the conclusion that the” slip op. at 37
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“D. Anticipation: Odell 1. Claims 7 and 12 Claims 7 and 12 recite similar limitations, except that claim 7 recites a” slip op. at 76
- ExcludeMotion to exclude, deniedMixed
“FURTHER ORDERED that Patent Owner’s Motion to Exclude Evidence is denied in part and dismissed in part as moot; and” slip op. at 100
Patent outcomesUS 9,584,453 unpatentable§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 9,584,453 - Linkedin Corporation v. Ebuddy Technologies B.V.All claims unpatentablePTAB · May 15, 2023 · IPR2022-00176 · APJ Stephen E Belisle · IPR · Final written decision
Claims 1–11 are unpatentable as anticipated by Odell and as obvious over Odell alone or with Daniell.
RulingsFinal written decision- ExcludeMotion to exclude, deniedMixed
“A Motion to Exclude “must identify the objections in the record in order and must explain the objections.” 37 C.F.R. § 42.64(c). Here, Patent Owner never filed or served any objections to Exhibits 1021, 1027, or 1028. On that basis, we deny Patent Owner’s Motion as to those exhibits. Also, we do not rely on the content of Exhibits 1022–1026 or 1030 in reaching our decision on the patentability of the challenged claims. Thus, we dismiss as moot the Motion as to Exhibits 1022–1026 and 1030. See Consolidated Trial Practice Guide,5 79–80 (Nov. 21, 2019) (“In the Board’s experience, consideration of the objected-to evidence is often unnecessary to resolve the patentability of the challenged claims, and the motion to exclude is moot.”). Even so, we note that Patent Owner’s Motion does not satisfy the requirements of 37 C.F.R. § 42.64(c) because it does not “identify the objections in the record.”” slip op. at 112
- Skill levelDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, at the time” slip op. at 11
- Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for petitioner
“distinguish among business relationships between IM services, or importantly, one that is rooted in the ’395 patent. See PO Resp. 7–8; PO Sur-Reply 7–10. Rather, treating the IM services together based on common ownership would appear to contradict the ’395 patent’s describing them as distinct services. See Ex. 1001, 3:52–55; see also Ex. 1001, 8:18–32. For the foregoing reasons, we disagree with Patent Owner that a “messaging service provider” as recited in the claims is the entity that provides the instant messaging service (PO Resp. 7–8), and assign little weight to Dr. Surati’s testimony on this point (Ex. 2006 ¶¶ 114–118). Instead, we find persuasive Petitioner’s proposed meaning for “messaging service provider” and underlying arguments discussed above, namely, that this term means the computer system or platform providing a distinct messaging service (and not which company at any given time might own that system or platform), and credit the testimony of Mr. Willis in this regard (see Ex. 1040 ¶ 27 (“Two different homes in two different cities and rented to two different families are not one house, even if they are owned by the same investor.”); see also Ex. 1040 ¶¶ 23–33).” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“stores the aggregated contact list in a non-transitory computer readable medium at the web server.” So, we see no reason to construe the term “contact aggregation engine” itself to require network storage. Rather, Patent Owner’s network-storage argument supports the conclusion that “contact aggregation engine” is defined by the functions expressly recited in the claim. See PO Sur-Reply 11. slip op. at 22
Patent outcomesUS 8,510,395 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,510,395 - Canfield Scientific, Inc. v. Quantificare S.A.All claims unpatentablePTAB · Mar 17, 2023 · IPR2021-01519 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–5, 9–12, 15, 16, and 20–23 are unpatentable as obvious over Plassmann, Treuillet, and Staller, with Peng added for claims 21–23.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“In the Decision to Institute, we declined to construe this term as a means plus function term under 35 U.S.C § 112(f). Dec. to Inst. 9–12. Although Petitioner disagrees and asserts that the term “device for stereophotogrammetry” should be construed under 35 U.S.C. § 112(f), Petitioner presents no arguments other than those in the Petition that we addressed in the Decision to Institute. Reply 7–8. Petitioner further acknowledges that “an express construction may not be necessary for the Board to evaluate patentability.” Id. at 8. For the reasons discussed in the Decision to Institute, we do not construe device for stereophotogrammetry configured for an acquisition of two views according to two different angles as a means plus function term under 35 U.S.C. § 112(f). Our Decision to Institute applied the plain and ordinary meaning to this term without any express construction to the remaining language of this limitation, including “configured for an acquisition of two views according to two different angles.” Dec. to Inst. 9–11. In the context of the challenged claims, the parties dispute the implications of the plain and ordinary meaning.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Having considered the claim language, the specification, the prosecution history, and the extrinsic evidence, for the reasons discussed below, we conclude that the claim language does not mean that the sub-optics are angled, but instead means that they each view a subject from different angles.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“We also agree with Petitioner that “the preamble here is not limiting, because the body of the claim provides a complete description of the device.” Reply 6–7 (citing Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). The preamble for claim 1 recites “[a] device for stereophotogrammetry,” but “[g]enerally, the preamble does not limit the claims.” Ex. 1022, 11:42; Georgetown Rail Equip. Co. v. Holland L.P., 867 F.3d 1229, 1236 (Fed. Cir. 2017). Regardless, as Petitioner notes, no “canon of claim construction is absolute in its application and [] some surplusage may exist in some claims.” Reply 7 (alteration in original) (quoting Decisioning.com, Inc. v. Federated Dep’t Stores, Inc., 527 F.3d 1300, 1312 n.6 (Fed. Cir. 2008) (acknowledging that proper construction of “remote interface” arguably “render[s] the term ‘public’ in [a dependent claim] surplusage”)).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Treuilett discloses the actual focal length of their lenses, but Dr. Otto states that a person of ordinary skill would understand such devices may be used with any lens suitable to the subject. Pet. 50. We agree with Petitioner that Dr. Otto’s testimony provides sufficient reasoning with rational underpinning to support the proposition that a person of ordinary skill in the art would have known how to select the requisite lenses to achieve the results recited in claim 11. See KSR, 550 U.S. at 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Having considered the arguments and evidence of record, for the reasons discussed above, we find that Petitioner has demonstrated that a person of ordinary skill would have had reason to combine the teaching of Plassmann, Treuilitt, and Staller and that their combined teachings would have disclosed or suggested the subject matter of claim 11 to a person of ordinary skill.” slip op. at 65
Patent outcomesUS 10,681,334 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,681,334 - Canfield Scientific, Inc. v. Quantificare S.A.All claims unpatentablePTAB · Mar 9, 2023 · IPR2021-01518 · APJ John D Hamann · IPR · Final written decision
Claims 1–4, 8–12, 15, 16, and 20–23 are unpatentable under § 103 over the stated combinations of Plassmann, Treuillet, and Staller, with Kingslake or Peng as applicable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Patent Owner. Rather, we conclude that the claim language does not mean that the sub-optics’ optical axes are angled, but instead means that the sub-optics each view a subject from a different angle, as Petitioner argues. Ex. 1020, 11:43–45; Pet. Reply 7. Specifically, this limitation recites that the two sub-optics are “configured for a simultaneous acquisition of two views according to two different angles.” Ex. 1020, 11:43–45. Notably, “according to two different angles” directly follows “two views,” rather than directly following “configured.” Id. And “view” means “[a] scene or an arrangement of subject material for a photograph,” according to a technical dictionary provided by Patent Owner. Ex. 2014,7 210 (defining “view”). In other words, the term “view” itself refers to viewed subject material—a target subject.” slip op. at 11
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties do not substantively address the differences in their proposed definitions for one of ordinary skill in the art. Pet. Reply. 8; PO Resp. 23; see generally PO Sur-reply. Moreover, the parties agree that which definition we adopt does not substantively impact our analysis of the parties’ arguments concerning unpatentability. Tr. 29:19–30:9, 75:20–25. Because Patent Owner’s definition of the level of skill in the art is consistent with the ’253 patent and the asserted prior art, we adopt it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). In addition, we do not find sufficient support in the record for requiring one of ordinary skill in the art to have had a master’s degree. Compare Ex. 1003 ¶ 20 (requiring a master’s degree), with Ex. 2013 ¶ 31 (testifying why a master’s degree was unnecessary). Our analysis herein, however, does not turn on which of the parties’ definitions we adopt.” slip op. at 8
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We disagree. Patent Owner does not provide an analysis demonstrating that its Infinity product is coextensive (or nearly coextensive) with the challenged claims. Rather, Patent Owner cites to the following testimony of Dr. van der Weide: “I have reviewed the LifeViz Infinity device and conclude that it embodies the invention of the [’]253 Patent. More specifically, the Infinity possesses all the features listed in claim 1 of the patent.” Id. (citing Ex. 2013 ¶ 213). Simply put, Patent Owner fails to provide any analysis whatsoever. Id.; see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Moreover, Patent Owner’s reliance on WBIP is misplaced. In that case, “WBIP presented evidence that specific products . . . [we]re embodiments of the invention as claimed in the asserted claims,” and that provided a basis for finding a presumption of nexus. WBIP, 829 F.3d at 1329–31. Such is not the case here. In sum, Patent Owner does not provide the required analysis demonstrating that Infinity is coextensive (or nearly coextensive) with the challenged claims. PO Resp. 55; Lectrosonics, Paper 33 at 33. We, therefore, find that a presumption of nexus is inappropriate.” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Ex. 1020, 11:46–57. We agree with Petitioner and find that the combination of Plassmann, Treuillet, and Staller teaches this limitation. First, we agree with Petitioner and find that Plassmann teaches a positioning system that uses a pair of light beamers to signal when a target subject is reaching a predefined distance position to the camera. See Ex. 1007, Fig. 1A (light beamers 6a, 6b); Pet. 33. Plassmann teaches that light beams converge at a predefined distance “corresponding to the distance in which the camera lens is focussed.” Ex. 1007, 12:7–13. More specifically, Plassmann states the following: The apparatus is also provided with two low-powered light emitting diodes (LEDs) 6a, 6b, each provided with a focussing lens to produce a beam of light and being arranged so that the beams converge and meet at a point a fixed and desired distance from the apparatus, this distance corresponding to the distance at which the camera lens is focussed. Id.; Pet. 34. Accordingly, we find that Plassmann teaches the limitation, save for having a second predefined distance position—if there are two different distance positions, one necessarily is closer to the camera body and the other one farther. Ex. 1007, 12:7–13, Fig. 1A. Second, we agree with Petitioner and find that Staller teaches a positioning system having more than one predefined imaging distance position. Pet. 38. More specifically, we find that Staller teaches a strobe diffuser attachment for a camera, which includes a “distance measurement device [that] may be adapted to selectively produce one of a plurality of pairs of light beams which intersect at different repeatable distances from the diffuser body.” Ex. 1006, code (57), 2:29–32, 5:13–15; see also id. at 5:56– 6:2 (“[T]wo pairs of light beam emitters . . . may be used to provide three or four separate pairs of intersecting bea[m]s and three or four corresponding repeatable distances for diffuser 10.”); Pet. 38. In other words, Staller teaches having at least two distinct predefined distance positions for the camera. Ex. 1006, code (57), 2:29–32, 5:13–15, 5:56–6:2. We also agree with Petitioner and find that Staller teaches that its “distance indicator improves the usefulness of close range photography by providing a repeatable scale to photographs[, which] . . . improves the usefulness of close ranges photographs for medical and other organic growth measurement applications.” Ex. 1006, 6:10–15; Pet. 38. In addition, we agree with Petitioner and find that Plassmann teaches that “[s]tereoscopic imaging has been known for many years,” and “ha[s] been used to measure the shape of wounds and the like which are otherwise difficult to measure by conventional techniques.” Ex. 1007, 1:6–15; Pet. 35. We also agree with Petitioner and find that it was known in the art before the ’253 patent to use a camera having multiple predefined distances for imaging a subject in connection with wound or lesion treatment. See Ex. 1017,17 579; Ex. 1011,18 164, Fig. 2, Table 2; Ex. 1008,19 481.” slip op. at 42
Patent outcomesUS 10,165,253 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,165,253 - Canfield Scientific, Inc. v. Quantificare S.A.All claims unpatentablePTAB · Mar 9, 2023 · IPR2021-01511 · APJ Brian D Range · IPR · Final written decision
Claims 1–4 and 8 are unpatentable as obvious over Plassmann, Treuillet, and Staller; claims 9–11 are unpatentable as obvious over those references and Peng.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We find this argument unavailing. Rather, we agree with Petitioner and determine that the claim language does not mean that the sub-optics are angled but instead means that they each view a subject from different angles. Ex. 1020, 11:43–45; Pet. Reply 7. Specifically, this limitation recites that the two sub-optics are “configured for a simultaneous acquisition of two views according to two different angles.” Ex. 1020, 11:43–45. Notably, “according to two different angles” directly follows “two views,” rather than directly following “configured.” Id. And “view” means “[a] scene or an arrangement of subject material for a photograph,” according to a technical dictionary provided by Patent Owner. Ex. 2014,6 210 (defining “view”). In other words, the term “view” itself refers to viewed subject material—a target subject.” slip op. at 13
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties do not substantively address the differences in their proposed definitions for one of ordinary skill in the art. Pet. 15; PO Resp. 23; see generally Reply; PO Sur-reply. Moreover, the parties agree that which definition we adopt does not substantively impact our analysis of the parties’ arguments concerning unpatentability. Tr. 29:19–30:9, 75:20–25. Because Patent Owner’s definition of the level of skill in the art is consistent with the ’253 patent and the asserted prior art, we adopt it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). In addition, we do not find support in the record for requiring one of ordinary skill in the art to have had a master’s degree. Pet. 15; Ex. 2013 ¶ 31 (testifying why a master’s degree was unnecessary). Our analysis herein, however, does not turn on which of the parties’ definitions we adopt.” slip op. at 11
- ExcludeMotion to exclude, deniedMixed
“Otto rely on Treuillet for what the Treuillet reference teaches to a person having ordinary skill in the art at the relevant time. Treuillet’s suggestions to a person having ordinary skill in the art remain relevant even if Treuillet were factually incorrect in some respects. Second, even if considered hearsay, Dr. Otto properly relied on Treuillet. Opp. Mot. Excl. 4–7. Under Federal Rule of Evidence 703, an expert may rely on facts and data that “need not be admissible,” including hearsay (double or otherwise). Here, the evidence supports that Treuillet was published in an independent, respected, and peer-reviewed IEEE journal. Id. at 5–6 (citing evidence regarding reliability of the IEEE journal). In addition, we find unavailing Patent Owner’s arguments concerning “Reference 45.”5 Mot. Excl. 3–5; Reply Mot. Excl. 1–5. Rather, we find that it is appropriate for an expert also to rely on the sourcing in article published in such an IEEE journal. Thus, Treuillet is the kind of evidence we would expect an expert witness or person having ordinary skill in the art to rely upon, and Dr. Otto was entirely reasonable on relying on Treuillet in forming his opinions Third, even if Treuillet were inconsistent with other evidence, such as Plassmann, this issue would go to the credibility of Dr. Otto’s testimony and the weight given to it in deciding ultimate issues of fact rather than admissibility in the first instance. For the reasons above, we deny Patent Owner’s motion to exclude with respect to Dr. Otto’s testimony.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner persuasively argues that Treuillet teaches that the Plassmann MAVIS II device may take acceptable wound photographs from 65 centimeters to 95 centimeters (within its “depth of field”). Pet. 36; Ex. 1003 ¶ 113; Ex. 1016, 755. A person of skill in the art would have understood that acceptable medical wound photographs would have to be adequately focused and that Treuillet, therefore, suggests a depth of field from 65 centimeters to 95 centimeters for the Plassmann device. Ex. 1003 ¶ 113 (explaining that a person of skill in the art would understand that Plassmann has an expanded depth of field because it can “accurately image a subject at multiple positions”). Petitioner then relies on Staller as teaching multiple light beamers to define more than one imaging position within a depth of field. Pet. 41–42; Ex. 1006, Fig. 4, 2:29–34, 5:56–6:2. Staller teaches plurality of pairs of light beams that “intersect at a different repeatable distance from the diffuser body.” Pet. 23; Ex. 1006, code (57), 2:29–32, 5:13–15; see also id. at 5:56– 6:2 (“[T]wo pairs of light beam emitters . . . may be used to provide three or four separate pairs of intersecting bea[m]s and three or four corresponding repeatable distances for diffuser 10.”). In other words, Staller teaches having at least two distinct predefined distance positions for the camera. Ex. 1006, code (57), 2:29–32, 5:13–15, 5:56–6:2. The advantage of the plurality of pairs of light beams is taught by Staller: repeatability. Ex. 1006, 6:10–15 (referring a concern for “repeatable scale” to “improve[] the usefulness of close range photographs for medical” applications). Petitioner persuasively argues that a person of skill in the art would have been motivated to predefine two distances from a device in order to provide for varying levels of magnification. Pet. 45–46. Petitioner persuasively explains that a person of skill in the art would have had a reasonable expectation of success in combining the references’ teachings. Id. at 46–47.” slip op. at 40
Patent outcomesUS 10,070,119 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,070,119 - PTAB · Jan 24, 2023 · IPR2022-01248 · APJ Aaron W Moore · IPR · Institution
The Board instituted IPR on all presented grounds for claims 1–21 and 23–30, finding a reasonable likelihood of proving at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. We accordingly institute an inter partes review of claims 1–21 and 23–30 of the ’653 patent on all presented challenges. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). B.” slip op. at 4
- BurdenMixed
“For the reasons above, based on the present record, Petitioner’s arguments do not show adequately that Yegoshin would have been understood to have multiplexed signals, or that Bernard “includes or operates as a multiplexer for combining the data packets” (Pet. 37). Because Petitioner does not sufficiently show multiplexed signals in any of the asserted references, Petitioner does not provide enough argument and evidence that its proposed combination of Yegoshin, Johnston, Billström, and Bernard would have “a single interface comprised of multiplexed signals from the plurality of wireless transmit and receive components,” as required by claim 1. For these reasons, we find that Petitioner has not shown a reasonable likelihood that it will prove claim 1 unpatentable over the combination of Yegoshin, Johnston, Billström, and Bernard. For the same reasons, we find that Petitioner has not shown a reasonable likelihood that it will prove dependent claims 2–13 unpatentable over the combination. However, because claim 1 will remain in the proceeding under SAS, we also provide our preliminary views on the dependent claims.” slip op. at 28
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Claim Construction Petitioner states that “no formal claim constructions are necessary in this proceeding.” Pet. 2. Patent Owner does not propose an interpretation for any term but, as discussed below in Section II.D, argues that Petitioner should have disclosed and applied the claim constructions it has advanced in related litigation. At this preliminary stage, we determine that the record does not require use to resolve any claim construction dispute to decide whether or not to institute. 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)). C.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner asserts that one of ordinary skill in the art “would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience related to the design or development of wireless communication systems, or the equivalent.” Pet. 3 (citing Ex. 1003 ¶¶ 27–28). Petitioner also states that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. (citing Ex. 1003 ¶¶ 27–28). Patent Owner does not propose a level of ordinary skill and does not dispute Petitioner’s proposal. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, and because we find it generally consistent with the disclosures of the ’653 patent and the prior art, we adopt it for purposes of this analysis. B.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,842,653 - PTAB · Dec 2, 2022 · IPR2022-00951 · APJ Stacey G White · IPR · Institution
Instituted review of claims 1–11 on all asserted §103 grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented 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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to all of the challenged claims of the ’240 patent on all of the asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“1 We apply the pre-AIA version of 35 U.S.C. § 103 because the claims at issue have an effective filing date prior to March 16, 2013, the effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). See Ex. 1001, code (22). 2 Petitioner does not list claim 1 in its table on page 3, but Petitioner provides argument as to claim 1 in its discussion of the ground. See Pet. 56– 57. 3 Petitioner does not list claims 1and 4 in its table on page 3, but Petitioner provides argument as to claims 1 and 4 in its discussion of the ground. See Pet. 73. 4 Petitioner argues that the Fintiv factors weigh against discretionary denial. Pet. 77–78; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5‒6 (PTAB Mar. 20, 2020) (precedential). Because Patent Owner does not argue for discretionary denial, we see no need to consider the issue further.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“educational level of active workers in the field.” Best Med. Int'l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quotation omitted). The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). The specification of the ’240 patent describes its technical field as relating to “‘secure documents’ …having RFID (radio frequency identification) chips …operating in contactless mode (ISO 14443) including dual interface (‘DI’, or ‘DIF’) cards which can also operate in contact mode (ISO 7816-2), and more particularly to improving coupling between components within the smart card …and consequent improvements in interacting with external RFID readers.” Ex. 1001, 1:24–34. The specification discusses both inductive and capacitive coupling. See e.g., id. at 6:55–58. Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be at use by various RFID systems. See Ex. 20035, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Thus, on the record currently before us, we are not persuaded that the level of 5 Our citations are to the native page numbers in the document and not Patent Owner’s numbering. devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1– 2 years of experience researching and developing antennas used in RFID applications.” See Pet. 8.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“B. Dr. van der Weide’s Level of Experience Patent Owner argues that we should not give substantial weight to the testimony of Petitioner’s declarant, Dr. van der Weide, because he “lacks relevant experience to provide opinions through the lens of a [person having ordinary skill in the art].” Prelim. Resp. 27–28 (citing Ex. 2001 ¶¶ 71–72. According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with relevant inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. at 27. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Based on the current record, Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,165,240
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.