- 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 - L’Oréal USA, Inc. v. Liqwd, Inc.Some claims unpatentablePTAB · Jul 30, 2019 · PGR2018-00025 · APJ Timothy G Majors · PGR · Final written decision
Claims 1–13, 19–23, 29, and 30 are unpatentable as obvious; claims 14–16, 18, and 24–28 were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“combination of Pratt and Tanabe teaches or suggests all of claim 1’s limitations, and that the skilled artisan had a sufficient reason to combine the art as proposed with a reasonable expectation of success in arriving at the bleaching method that is claimed. Before reaching a conclusion of obviousness, however, we consider the parties’ argument and evidence related to alleged objective indicia of nonobviousness. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016).” slip op. at 35
- ExcludeMotion to exclude, deniedMixed
“those exhibits) as discussed above in the context for which they were offered (objective indicia of nonobviousness as to alleged unexpected results and industry skepticism). We gave the exhibits little weight on those issues for the reasons explained, and ultimately found in Petitioner’s favor—that objective indicia of nonobviousness did not outweigh the evidence of obviousness on this record. Thus, excluding this evidence would not change the result. Accordingly, we dismiss Petitioner’s motion to exclude Exhibits 2038 and 2041 as moot.” slip op. at 85
Patent outcomesUS 9,668,954 mixed§ 103 obviousnesscites KSRPatents in suitUS 9,668,954 - The Kingsford Products Company, LLC v. Creative Spark, LLCSome claims unpatentablePTAB · Mar 9, 2018 · IPR2016-01831 · APJ Christopher M Kaiser · IPR · Final written decision
Claims 1, 2, 4–12, 17, 19–21, 23, 24, and 26–32 are unpatentable; claims 3, 13–16, 18, 22, and 25 were not shown unpatentable.
RulingsFinal written decision- Expert testimonyPatent owner expert discountedDecided for petitioner
“the briquets resulting from the combination of Burke, Wulf, and Peters, nor whether those microfractures could lead to deleterious results. Instead, the question is whether a person of ordinary skill in the art would have combined the teachings of Burke, Wulf, and Peters in the manner claimed in the ’803 patent with a reasonable expectation of success. On this point, we have considered Dr. Speight’s testimony that [a] person of ordinary skill in the art would have understood that using roller pressing to press grooves into a charcoal briquet as described in Wulf would have led to an unacceptably structurally weak charcoal briquet, subject to premature crumbling during combustion and likely to shatter during shipping, handling, and use. Ex. 2021 ¶ 89;9 see PO Resp. 11–19. Dr. Speight’s testimony is unsupported by additional objective evidence and, therefore, as discussed below, outweighed by Petitioner’s evidence that a person of ordinary skill in the art would have wanted to use grooved briquets in order to provide improved ignition and combustion characteristics by enhancing air flow around the briquet. Ex. 1002 ¶ 94; Ex. 1006, 1:53–60; Ex. 1007, 1:54–61. In addition to the testimony of Petitioner’s declarant, Ex. 1002 ¶ 94, both Burke and Peters state that the “provision of external surface discontinuities such as . . . slots or the like” is a way of “enhanc[ing] ignition or burning by enhancing air supply,” providing objective evidence that a person of ordinary skill in the art would have pursued grooves as a way of enhancing air supply to a charcoal briquet. Ex. 1006, 1:53–60; Ex. 1007, 1:54–61.” slip op. at 21
- Skill levelSkill level board ownDecided for petitioner
“benefits of adding grooves to charcoal briquets, Petitioner directs us to the testimony of Donald Swatling, who “has worked in the commercial charcoal briquetting field since 1999, has direct, personal experience using roller presses to make grooved charcoal briquets before 2004, and has supported the technical aspects of the commercial production of grooved charcoal briquets using roller presses.” Reply 15 (citing Ex. 1030 ¶¶ 4–9) (emphasis removed). In his testimony, Mr. Swatling, a fact witness who approximates a person of ordinary skill in the relevant art, “states that he was never aware of any concern that the standard roller presses used to manufacture charcoal briquets would cause structural weaknesses that would lead to premature crumbing during combustion if used to produce grooved briquets” or any concern that “roller pressing would cause a charcoal briquet to be unacceptably susceptible to breakage under normal shipping, storage, handling or use conditions.” Id. at 15–16 (citing Ex. 1030 ¶¶ 10–15). This is significant evidence that a person of ordinary skill in the art was not troubled by the microfracture concerns Dr. Speight raises, or at least that a person of ordinary skill in the art was not so troubled that he would have been persuaded not to pursue roller-pressed grooves as an option in briquet design and production.” slip op. at 22
- Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner
“with a limited ignition time and an extended burning time.” Id. We disagree that this portion of Peters necessarily evidences an unmet need for “a charcoal briquet that achieved a cooking temperature of at least, about, or on the order of at least 1000 degrees Fahrenheit within about fifteen minutes after ignition, and sustained that temperature for at least fifteen minutes thereafter.” PO Resp. 48. Instead, it suggests a generic need, whether met or not, for an ignition phase of “limited” duration and a burn phase that is “extended” and “provide[s] adequate cooking time.” Patent Owner does not direct us to evidence in Peters that supports a finding that there was an unmet need for achieving a cooking temperature within about fifteen minutes or for sustaining the cooking temperature for at least fifteen minutes. Patent Owner also does not direct us to evidence in Peters that suggests an attempt and failure to meet a need for any particular cooking temperature. The second portion of Peters cited by Patent Owner states that “[t]here have been very [few] prior art developments related to design of solid fuel articles for desired combustion performance” and that these earlier developments “do not provide desired optimal ignition and burning characteristics.” Ex. 1006, 1:51–62; see also id. at 2:7–9 (increased surface area-to-volume ratio has not “provid[ed] optimal desired ignition and burning characteristics”). Again, this is not evidence of the unmet need for which Patent Owner argues: “a charcoal briquet that achieved a cooking temperature of at least, about, or on the order of at least 1000 degrees Fahrenheit within about fifteen minutes after ignition, and sustained that temperature for at least fifteen minutes thereafter.” PO Resp. 48. Thus, we are not persuaded that Peters supports the long-felt but unmet need for which Patent Owner argues.” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerations › Skepticism / industry praiseDecided for petitioner
“We have considered Patent Owner’s arguments, but we are not persuaded that Franke’s statements, even as supplemented by the testimony of Dr. Speight, show skepticism regarding the invention of the challenged claims. As discussed above, relevant skepticism is expressed at the time of the invention of the claims in question, and it is directed at the feasibility of the claimed invention itself or the results of that invention. Here, Professor Franke’s statements were made before 1917. The application leading to the ’803 patent was filed in 2011 and claims priority to applications filed as early as 2002. Ex. 1001, at [22], [63]. Thus, Professor Franke’s statements were made at least 85 years before the invention of the ’803 patent, not at or around the time of the invention. In addition, Professor Franke’s statements were directed at briquets made of a different material than the briquets of the ’803 patent—lignite coal, rather than charcoal. Furthermore, the briquets discussed by Professor Franke were made using technology available before 1917, not technology available in 2002 or 2011. Professor Franke’s belief that grooved lignite briquets made using early 20th century technology were likely to crumble prematurely during combustion thus is not sufficiently pertinent to the’803 patent to persuade us that it represents a relevant skepticism on the part of experts in the field at the time of the invention of the ’803 patent.” slip op. at 14
Patent outcomesUS 9,131,803 mixed§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,131,803 - Parrot S.A. / Parrot, Inc. v. Drone Technologies, Inc.Some claims unpatentablePTAB · Oct 20, 2015 · IPR2014-00730 · APJ Howard B Blankenship · IPR · Final written decision
Claims 1–3, 5–14 are unpatentable: claims 1–3, 5, 10–14 anticipated by Smith; claims 6–7 and 8–9 obvious over Smith with Barr and Fouche, respectively. Claims 4 and 15 were not shown unpatentable.
RulingsFinal written decision- BurdenMixed
“construe “difference of motion” in claim 4 as relative motion. Pet. Reply 5– 6. Petitioner in its Reply does not, however, provide a persuasive explanation with respect to how the signal sent by the remote controller in Smith, or its “target motion signal” in the terms of claim 4, may contribute to getting the relative motion between the remote controller and the remotecontrolled device.2 Petitioner submits that “[i]t bears noting, moreover, that the ‘target motion signal’ (STAR3) of Fig. 5 of the ’071 Patent, also is a combination of the remote-controller’s measured orientation and the angle of the joystick, just as in Smith. Ex. 1001, 6:39-51. In that embodiment, it is ‘STAR3’ that is used to calculate the ‘difference of motion.’” Pet. Reply. 7. Petitioner refers to no evidence of record, however, to establish that this “third operation mode” described by the ’071 patent necessarily sends, as in Smith, a target motion signal that is the summation of the terrestrial magnetism signal and the orientation of the joystick relative to the remote 2 Although we did not institute trial on the alternative ground that claim 4 would have been obvious over Smith and Fouche (or the knowledge of a person of ordinary skill in the art) (Pet. 29), the alternative ground for obviousness would suffer from the same deficiency as the anticipation ground. controller. Although attorney arguments are helpful when directing us to evidence in the record, the arguments themselves do not constitute evidence. Arguments of counsel cannot take the place of evidence in the record. See, e.g., Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). In consideration of the foregoing, we conclude that Petitioner has not demonstrated, by a preponderance of the evidence, that claim 4 is unpatentable as anticipated by Smith.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“The ’071 patent, thus, makes clear that, in the preferred embodiment of the invention, “detecting” the remote controller’s motion is detecting the change in terrestrial magnetism relative to the horizontal ground surface as the controller is moved or rotated, with the resulting terrestrial magnetism sensing signal SG changing accordingly. The “terrestrial magnetism” of the Earth “directs to a fixed direction parallel to the horizontal ground surface.” Id. at col. 3, ll. 63–65. Detecting the orientation of a remote controller with respect to magnetic North is, at the least, within the scope of “detect[ing] the remote controller’s motion” as claimed. “A claim construction that excludes the preferred embodiment ‘is rarely, if ever, correct and would require highly persuasive evidentiary support.’” Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583–84 (Fed. Cir. 1996)).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“in orientation.” Pet. 17. As Petitioner indicates (id.), the ’071 patent does not provide a definition of the relevant terms different from the ordinary meaning of the words. At the preliminary proceeding stage, we interpreted “difference of motion” simply to mean, under the required broadest reasonable interpretation, relative motion. Dec. on Inst. 10. That interpretation is consistent with the language of claim 4. Claim 4 recites that the “calculated result” — the calculated current motion of the remote-controlled device — is compared with the target motion signal to get the “difference of motion” (relative motion) between the remote-controlled device and the remote controller. In relation to Petitioner’s proffered interpretation, because a change in orientation is a type of motion, relative orientation would be a type (or species) of “difference of motion.”” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Thus, “detecting” the remote controller’s motion is detecting the change in terrestrial magnetism relative to the horizontal ground surface as the controller is moved or rotated, with the resulting terrestrial magnetism sensing signal SG changing accordingly. Patent Owner has not pointed to any disclosure in the ’071 patent of the remote controller storing a previous orientation for comparison with a present orientation to effect “detect[ing] the remote controller’s motion” as claimed. We, therefore, remain convinced that detecting the orientation of a remote controller with respect to magnetic North — which Patent Owner admits Smith to disclose — is, at the least, within the scope of “detect[ing] the remote controller’s motion” as claimed.” slip op. at 13
Patent outcomesUS 7,584,071 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 7,584,071
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.