- Hanwha Solutions Corporation / Hanwha Q Cells USA, Inc. v. Rec Solar Pte. Ltd.No claims unpatentablePTAB · Dec 9, 2022 · IPR2021-00989 · APJ Brian D Range · IPR · Final written decision
Claims 1–6, 11, and 13 were not shown unpatentable under either obviousness ground because Petitioner did not establish a motivation to combine Yagiura and Shimasaki.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Petitioner’s position is persuasive. We agree that documents from the Japanese Patent Office are self-authenticating official government documents. The technical issues regarding missing pages in the originally filed version of the document do not cause us to question authenticity. We also agree that Petitioner uses the documents to establish what the documents teach rather than establishing the truth of what the documents teach. In Reply, Patent Owner argues that Petitioner relies on the date printed on the document to prove up the truth of when the document was published. Mot. Excl. Reply 1–2. To the extent this is the case, an exception to hearsay applies because the document is a record of a public office. Fed. R. Evid. 803(8)(B) (a record of public office is an exception to the hearsay rule if the opponent does not show that the source of information or other circumstances “indicate a lack of trustworthiness”). Here, Patent Owner does not persuasively demonstrate a lack of trustworthiness; Patent Owner does not identify any substantively meaningful distinction in the missing pages of the originally filed document and does not identify any evidence to suggest that the missing pages were anything more than a harmless clerical error. For the reasons above, Patent Owner’s motion to exclude is denied with respect to these documents. B.” slip op. at 8
- Skill levelSkill level board ownOther
“Petitioner’s proposal is too broad. PO Resp. 8. For example, a person who merely installs solar panels for three years (satisfying “professional experience in solar energy”) while having some familiarity with module manufacturing would not be of ordinary skill in the design aspects of the ’060 patent as, for example, reflected by the claims at issue and the ’060 patent’s text and figures. See, e.g., Ex. 1101, Figs. 2a, 2b, 3a, 3b, 4a, 4b, 3:22–7:44. On the other hand, we also determine that Patent Owner’s proposal is too narrow. A person could, for example, have ordinary skill in the art of the ’060 patent by virtue of non-professional experience (for example, academic experience). When assessing relevant experience, research work done for a university (beyond mere classroom study) would have been just as valuable as research work done for a corporation. Also, ordinary skill in the art could be demonstrated by work that requires understanding of the ’060 patent’s field even if not “designing, developing, and/or researching” in the field itself We, thus, determine that a person of ordinary skill in the art of the ’060 patent would have been someone with a bachelor’s degree in electrical engineering, applied physics, or the like, and at least two years of (a) experience designing, developing, and/or researching in the field or (b) experience in solar energy that required an understanding of the ’060 patent’s field. Alternatively, that person would have had an advanced degree in electrical engineering, applied physics, or the like and at least one year of” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“qualifies as evidence in this matter. The Federal Circuit has held that expert testimony about the perspective of person of ordinary skill in the art (as Dr. Kimball provides here) must come from a person having at least ordinary skill in the art. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022) (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)) (holding that ITC Administrative Law Judge abused discretion by admitting expert testimony of witness who lacked the experience of a person having ordinary skill in the art); see Mot. Excl. 6–7 (arguing this point). Patent Owner, however, cites no authority that expert testimony on such matters come from a person having ordinary skill in the art at the time of the invention. Cf. Scentair Tech., LLC v. Prolitiec Inc., IPR2021-00012, Paper 22 at 61 (PTAB Apr. 22, 2022) (similarly noting a party’s lack of authority on this point). Beyond needing to come from a person of ordinary skill in the art, expert testimony is admissible if the expert has the “scientific, technical, or other specialized knowledge [that] will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702. Furthermore, “[t]here is … no requirement of a perfect match between the expert’s experience and the relevant field.” USPTO, Patent Trial and Appeal Board Consolidated Trial Practice Guide, 34 (Nov. 2019). Here, Petitioner adequately establishes that Dr. Kimball qualifies as a” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Petition argues that all claim terms should be given their plain and ordinary meaning. Pet. 18. Patent Owner does not dispute this. PO Resp. 13. We determine that no claim term requires express construction for purposes of this Final Written Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms that are in controversy, and only to the” slip op. at 15
Patent outcomesUS 10,749,060 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,749,060 - Fantasia Trading LLC D/B/A Ankerdirect v. Cognipower, LLCNo claims unpatentablePTAB · May 11, 2022 · IPR2021-00067 · APJ Jeffrey S Smith · IPR · Final written decision
The Board held claims 1, 2, 8, 10, 18, 25, 27, 30–33, 37, 38, 40, 43–46, 49, 52–55, and 58–61 not shown unpatentable over either asserted obviousness combination.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Mr. Bohannon testifies that an ordinarily skilled artisan would have “B.S. degree, or its equivalent, in electrical engineering or physics and approximately two years of practical experience working with switching regulators and analog/mixed signal circuit design, or an equivalent 1 US 2011/0096573 A1, published Apr. 28, 2011 (Ex. 1005). 2 US 6,466,461 B2, issued Oct. 15, 2002 (Ex. 1006). 3 US 5,498,995, issued Mar. 12, 1996 (Ex. 1007). combination of academic study and work experience.” Ex. 1003 ¶ 41. Mr. Sandler uses the same definition for his analysis. Ex. 2001 ¶ 19. We are persuaded that Messrs. Bohannon’s and Sandler’s description of the level of ordinary skill in the art is appropriate for the subject matter of the ’031 patent, and, for this Decision, we adopt that description.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We determine that we do not need to construe any claim term expressly for this Decision. 4 Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). III. ANALYSIS OF ASSERTED GROUNDS “In an inter partes review . . ., the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). “[T]he burden of proof is on the petitioner to prove unpatentable those issued claims that were actually challenged in the petition for review and for which the Board instituted review.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016). To satisfy its burden of proving obviousness, a petitioner must articulate a reason why a person of ordinary skill in the art would have combined or modified prior art references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any 4 We authorized the parties to file additional briefs regarding the meaning of the term “frequency” and appreciate the parties’ briefing of that issue. Papers 50–54. We have nevertheless determined that we do no need to construe that term for this Decision.” slip op. at 8
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“identify Zhu’s purported bias circuit. Inst. Dec. 30. Although we did not decline institution on that basis, we do agree with Patent Owner that, in the Petition, Petitioner should have identified the purported bias circuit in Zhu that an ordinarily skilled artisan would have been motivated to improve. Further, in our Institution Decision, we instructed Petitioner to identify Zhu’s purported bias circuit during the trial. Id. As set forth below, during trial, Mr. Bohannon, upon whose testimony Petitioner relies to prove a motivation to combine, gave inconsistent testimony regarding that bias circuit. That inconsistent testimony, coupled with Mr. Bohannon’s initial failure to identify Zhu’s bias circuit, diminishes the weight we accord to Mr. Bohannon’s testimony regarding motivations to combine. As mentioned, the Petition does not identify the bias circuit in Zhu that it claims an ordinarily skilled artisan would be motivated to improve. Pet. 12–13. In his original declaration, Mr. Bohannon also does not identify that bias circuit. Ex. 1003 ¶¶ 56–58. Zhu itself does not show or discuss any bias circuit. Ex. 2015 ¶ 118. Thus, Mr. Bohannon’s original testimony regarding motivations to combine lacks specificity: all four rationales set forth by Mr. Bohannon are directed to improving a bias circuit in Zhu, which Mr. Bohannon did not identify. Ex. 1003 ¶¶ 56–58; Pet. 12–13. As discussed, in our Institution Decision, we instructed Petitioner to identify the bias circuit in Zhu that an ordinarily skilled artisan would have been motivated to improve. Inst. Dec. 30. During subsequent cross-examination, Mr. Bohannon was asked to identify that bias circuit and identified the wire in Figure 3 of Zhu from Vout up to VCC at controller 320 as Zhu’s bias circuit. Ex. 2016, 186:4–6 (“The bias circuit was just a wire from Vout or trace out of circuit, probably a trace out of PCB going from Vout to 320.”). After Mr. Sandler testified that there was no evidence that a wire would have the problems that Mr. Bohannon identified Zhu’s bias circuit as having (Ex. 2015 ¶ 125), Mr. Bohannon changed his identification of Zhu’s bias circuit (Ex. 1025 ¶ 27), now identifying the elements highlighted in red in the annotated portion of Figure 3 of Zhu, reproduced below: Ex. 1025 ¶ 27. The above annotated figure additionally identifies diode 313, capacitor 314, and the wire extending from Vcc to Vout as Zhu’s bias circuit. Id. This latter identification is not only inconsistent with Mr. Bohannon’s cross examination testimony, it is also inconsistent with his original declaration testimony. In his original declaration, Mr. Bohannon illustrated the combination of Zhu and Mao as follows: Ex. 1003 ¶ 57. Mr. Bohannon described this combined structure as showing “the bias circuitry of FIG. 9 of Mao has been attached in place of the bias circuitry in Zhu, which merely powered the secondary controller using the output voltage.” Id. ¶ 58 (emphasis added). As can be seen from the above figure, diode 313 and capacitor 314 from Zhu Figure 2 were not replaced in this combined structure. Thus, Mr. Bohannon’s reply testimony that diode 313 and capacitor 314 are part of what he originally referred to as Zhu’s bias circuit is inconsistent with his original declaration testimony. This inconsistent testimony, coupled with the initial failure by Mr.” slip op. at 19
- Strike new argumentNew argument disregardedDecided for patent owner
“Bohannon to identify Zhu’s bias circuit, diminishes the weight we accord to Mr. Bohannon’s testimony regarding motivations to combine. The proper identification of Zhu’s bias circuit is not a minor issue: all four rationales for Petitioner’s motivation to combine are directed to improving Zhu’s bias circuit. Pet. 12. Further, although, over Patent Owner’s objections, we gave Petitioner the opportunity to identify the bias circuit in Zhu to be improved during trial, we do not permit Petitioner and Mr. Bohannon to identify that bias circuit during cross examination and then completely change that identification after Patent Owner argued the initial identification was flawed. A “petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated Trial Practice Guide”), 73;5 see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (holding that the Board did not err in refusing the reply brief as improper under 37 C.F.R. § 42.23(b) because petitioner relied on an entirely new rationale to explain why one of skill in the art would have combined the references at issue); 37 C.F.R. § 42.23(b); Apple Inc. v. e- Watch, Inc., IPR2015-00412, Paper 50, 44 (PTAB May 6, 2016) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean embark in a new direction with a new approach as compared to the position originally taken in the Petition. Accepting such belatedly presented new arguments would be unjust to the Patent Owner and we decline to do so.”). To be clear, we do not hold the issues concerning Petitioner’s and Mr. Bohannon’s identification of the bias circuit in Zhu to be dispositive, but those issues do diminish the weight we accord Mr. Bohannon’s testimony regarding motivations to combine, which undermines Petitioner’s showing regarding those motivations.” slip op. at 21
Patent outcomesUS RE47,031 not shown unpatentableClaim construction§ 103 obviousness - Fantasia Trading LLC D/B/A Ankerdirect v. Cognipower, LLCNo claims unpatentablePTAB · May 11, 2022 · IPR2021-00071 · APJ John R Kenny · IPR · Final written decision
Claims 18–23, 25, 30–31, 34–36, 41–43, 45, and 48–51 were not shown unpatentable because the petitioner did not prove motivation to combine for any asserted obviousness ground.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation omitted). Mr. Bohannon testifies that an ordinarily skilled artisan would have had a “B.S. degree, or its equivalent, in electrical engineering or physics and approximately two years of practical experience working with switching regulators and analog/mixed signal circuit design, or an equivalent combination of academic study and work experience.” Ex. 1003 ¶ 43. Mr. Sandler uses the same definition for his analysis. Ex. 2015 ¶ 19. We are persuaded that Messrs. Bohannon’s and Sandler’s description of the level of ordinary skill in the art is appropriate for the subject matter of the ’713 patent, and we adopt that description.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction Patent Owner requests that we construe the term “regulate” in claims 18 and 48. PO Resp. 13. We determine that we do not need to expressly construe any claim term for this Decision. 6 Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). III. ANALYSIS OF ASSERTED GROUNDS “In an inter partes review . . ., the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). “[T]he burden of proof is on the petitioner to prove unpatentable those issued claims that were actually challenged in the petition for review and for which the Board instituted review.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016). To satisfy its burden of proving obviousness, a petitioner must articulate a reason why a person of ordinary skill in the art would have combined or modified prior art references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of 6 We authorized the parties to file additional briefs regarding the meaning of the term “frequency” and appreciate the parties’ briefing of that issue. Papers 50–54. We have nevertheless determined that we do no need to construe that term for this Decision.” slip op. at 9
- BurdenFwd all claims patentableNot shown unpatentable
“III. ANALYSIS OF ASSERTED GROUNDS “In an inter partes review . . ., the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). “[T]he burden of proof is on the petitioner to prove unpatentable those issued claims that were actually challenged in the petition for review and for which the Board instituted review.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016). To satisfy its burden of proving obviousness, a petitioner must articulate a reason why a person of ordinary skill in the art would have combined or modified prior art references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of 6 We authorized the parties to file additional briefs regarding the meaning of the term “frequency” and appreciate the parties’ briefing of that issue. Papers 50–54. We have nevertheless determined that we do no need to construe that term for this Decision. prior art to arrive at the claimed invention.”) (citing InTouch Techs., Inc. v. VGO Commc'ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Further, it is Petitioner’s “burden to burden to demonstrate both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quoting Intelligent Bio–Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1367- 68 (Fed. Cir. 2016)). As set forth below, we determine that Petitioner has not proven that an ordinarily skilled artisan would have been motivated to make any of the combinations set forth in its asserted grounds. Thus, Petitioner has not proven that any challenged claim would be unpatentable. Magnum Oil, 829 F.3d at 1381.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“First, Mr. Bohannon’s testimony, upon which Petitioner’s analysis for this rationale to combine relies, is unspecific and conclusory, and thus is entitled to little weight. Ex. 1003 ¶¶ 58–60. Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1022 (Fed. Cir. 2017) (the Board is “not required to credit [a party’s] expert evidence simply because [the party] offered it”); TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“This court’s opinions have repeatedly recognized that conclusory expert testimony is inadequate to support an obviousness determination on substantial evidence review.”); MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1172 (Fed. Cir. 2015); Regents of Univ. of Min v. AGA Med. Corp., 717 F.3d 929, 941 (Fed. Cir. 2013); Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1152 (Fed. Cir. 2004); 37 C.F.R. § 42.22(a)(2) (“Each petition . . . must include . . . [a] full statement of the reasons for the relief requested including material facts.”). As discussed in Section III.A.4.b. above, Mr. Bohannon’s testimony regarding Zhu’s bias circuit was initially unspecific and subsequently contradictory. Further, as set forth below, Mr. Bohannon’s additional testimony for this rationale is conclusory and thus entitled to little weight. In his original declaration, Mr. Bohannon testifies that a passage in Mao (Ex. 1006, 1:50–55) teaches that a secondary bias circuit such as the one disclosed in Zhu can be disadvantageously vulnerable to output voltage fluctuations. Ex. 1003 ¶¶ 58–60. The cited passage reads “Although changing the polarity of the bias winding Tb may somewhat reduce the variation range of the voltage bias Vbias in some cases, the reduction is usually not significant, considering that both input voltage and output voltage can change in a typical dc-dc converter.” Ex. 1006, 1:50–55. This passage does not, on its face, teach that a secondary bias circuit, such as the one disclosed in Zhu, can be disadvantageously vulnerable to output voltage fluctuations. Id. And Mr. Bohannon does not explain why that passage teaches that the circuit disclosed in Zhu is vulnerable to such fluctuations. Ex. 1003 ¶¶ 58–60; Ex. 1025 ¶¶ 39–45. Second, the record indicates Zhu’s circuit would not be vulnerable to” slip op. at 24
Patent outcomesUS RE47,713 not shown unpatentableClaim construction§ 103 obviousness - Xilinx, Inc. / Xilinx Asia Pacific Pte. Ltd. v. Analog Devices, Inc.No claims unpatentablePTAB · Mar 11, 2022 · IPR2020-01559 · APJ Scott A Daniels · IPR · Final written decision
Claims 1–25 were not shown unpatentable because the evidence did not establish sufficient motivation to combine the references or teach applying dither at the claimed sampling or conversion stages.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, supported by the testimony of Dr. Holberg, argues that a person of ordinary skill in the art (“POSITA”) “would [have] at least a Master’s degree in Electrical Engineering or equivalent field, including studies in the area of analog circuitry; or at least a Bachelor’s degree in Electrical Engineering and at least two years of experience working on analog circuitry design.” Pet. 23 (citing Ex. 1003 ¶¶ 54–56). Neither Patent Owner nor its declarant, Dr. Moon, dispute or offer an alternative level or skill in the art at this time. See generally PO Resp., see also Ex. 2001 ¶ 13 (Dr. Moon stating that Petitioner’s asserted level of ordinary skill in the art is “reasonable”). On the full record now before us, the parties do not dispute the proposed level of ordinary skill in the art. Petitioner’s proposed level of ordinary skill is consistent with our review and understanding of the technology and descriptions in the ’075 patent and the prior art references that disclose electronic circuits including analog-to-digital converters using modulation feedback signals and charge injection in MOS transistor circuits to account for differential non-linearity. For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“The term “perturbation” is, however, inextricably linked to “dither” in the context of the ’075 patent. It is clear from multiple descriptions in the ’075 patent that perturbation of the sampled voltage introduces dither into the analog to digital converter. See Ex. 1001, 7:62–8:4 (The ’075 patent states that “selective switching of capacitors within the sub capacitor array can be used to perturb the voltage that was sampled onto the main capacitor array during the sampling phase and hence introduce a positive or negative dither into the analog to digital converter.”); see also id. at 2:7–11 (The ’075 patent describing dithering where “[m]ultiple conversions of substantially the same input value can result in the input value being assigned different ‘bins’ within the conversion process as a result of different perturbations being applied at each individual sampling point.”).”) On the full record now before us, we agree with both parties to an extent. Considering Petitioner’s position, we find that dither has a broader meaning than perturbation in the context of the ’075 patent and, based on Dr. Holberg’s testimony, that a person of ordinary skill in the art would have understood perturbation as “a small change in movement, quality, or behavior of something, especially an unusual change.” Reply 5; Ex. 1003 ¶ 81. With respect to Patent Owner’s arguments and evidence, we do not agree that perturbation is simply random noise, but we find persuasive Patent Owner’s declarant, Dr. Moon, and his testimony that the ’075 patent uses this term “to describe the disturbance or agitation of the charge stored on the capacitor array, in a manner that introduces dither” into the analog to digital converter. PO Resp. 19–20. In sum, perturbation means “a small change in movement, quality, or behavior of something, especially an unusual change, and describes the disturbance or agitation of the charge stored on the capacitor array that introduces dither into the analog to digital converter.”” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“Ex. 1003 ¶ 83. This explanation potentially explains how one of skill in art could apply a perturbation, but does not explain why a person of ordinary skill in the art would do so after sampling or why such a person would find the result of applying perturbation after sampling predictable. At best, Dr. Holberg’s testimony describes that a person of ordinary skill in the art could change the offset capacitance code B0, B1 during the course of sampling the input voltage onto the capacitor array and after sampling. And, that this would achieve the claimed perturbation “after . . . sampling.” Id. This explanation, however, describes a result of manipulating Confalonieri’s CATT capacitance circuit and does not articulate sufficient reasoning as to why a person of ordinary skill in the art would have done so. Petitioner’s arguments and Dr. Holberg’s testimony are mostly conclusory and unsupported on this point. First, Petitioner points out what Confalonieri does not expressly disclose, namely “whether the offset perturbation is provided before or after sampling.” Pet. 28 (citing Ex. 1012, 6:28–46; 6:51–55). Second, Dr. Holberg testifies that a perturbation could be effected by “establish[ing] a first code to the capacitance CATT (i.e., switched capacitor digital to analog converter) during sampling, and then apply a different code to the capacitance CATT after the sampling phase has been completed.” Ex. 1003 ¶ 83. However, beyond this statement Dr. Holberg provides no persuasive supporting or evidentiary basis for reaching this conclusion, and no citation to Confalonieri for any disclosure of providing a first offset capacitance code during sampling, then another different capacitance code after sampling. On this point, Petitioner argues that Confalonieri states that “[t]he additional shunt capacitance in the lower array can be used as a component for further functions, such as an offset compensation.” Pet. 26 (citing Ex. 1012, 5:58–60) (emphasis added). In pointing out this language, Petitioner is insinuating that “further functions” includes perturbation. See id. at 28 (Petitioner states that “[t]he provision of offset in Confalonieri discloses the perturbation as claimed.”). We are not persuaded that this is an appropriate reading of Confalonieri. Prior to the language referenced by Petitioner, Confalonieri discusses that “the shunt capacitance operates as a voltage attenuator, so that it is easy to limit the dynamics at the node NSL by a proper selection of this capacitance.” Ex. 1002, 5:46–48. The following paragraph then explains that “[t]he additional shunt capacitance in the lower array can be used as a component for further functions, such as an offset compensation.” Id. at 5:56–58. A plain reading of Confalonieri, in context, is more reasonably understood as indicating that (1) the shunt capacitance CATT “provides a strong improvement of the converter linearity, while the operation speed is as high as the operation speed of the prior art basic design,” (2) “power consumption is also as low as in that prior art design,” and (3) the shunt capacitance can be used for “further functions, such as an offset compensation.” Id. at 5:53–57. Nowhere does Confalonieri indicate that shunt capacitance CATT is considered for perturbation or dithering, or to provide offset during or after the input voltage sample is sampled onto the upper and lower array. Indeed, this interpretation of Confalonieri by Petitioner never references any testimonial support from Dr. Holberg, nor do we find related support in Dr. Holberg’s testimony related to such an interpretation of Confalonieri and claim element 16[c]. See, e.g., Ex. 1003 ¶¶ 79–84. In this way, Petitioner and Dr. Holberg essentially rely on the absence” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner’s reasoning “that dither as provided in Hiller could be provided in the system of Confalonieri instead of, or in addition to, offset in order to provide the known desirable and well known performance benefits of dither” arguably asserts a desired result, e.g., a more accurate circuit, but does not explain why a person of ordinary skill in the art would have replaced or supplemented offset compensation of an input voltage with dither. Id. This is particularly true where we have persuasive evidence that offset is a different technique and is applied for a different reason and result compared to dither. See Ex. 2017 ¶ 91 (Patent Owner’s declarant, Dr. Moon testifying that “Confalonieri discloses the provision of offset but does not disclose the provision of dither.”); Ex. 2001 ¶ 26 (Dr. Moon testifying that “instead of reducing errors, dither redistributes or smears out the errors.”); Ex. 2018, 74:9–10 (Petitioner’s declarant, Dr. Holberg testifying that Confalonieri “does not mention dither in—in his patent.”). Indeed Dr. Moon provides an explanation of how Confalonieri designed its circuit for improved linearity, as was the state of the art in 2005, not with dither, but by “a circuit design that allows all the capacitors (especially the coupling capacitor) to be sized in integer multiples of a unit capacitance, which improves capacitor matching.” Ex. 2001 ¶ 23 (citing Ex. 1012, 4:36–5:8). Confalonieri expressly discloses any problems of accuracy and linearity related with the dimensioning of the coupling capacitor Cs is solved simply by the addition of a shunt capacitor CATT in the lower array. Since all the capacitors of the converter can be designed as integer numbers of a unit capacitance, all the layout tools normally used for obtaining optimum matching of integrated components can be used. Ex. 1012, 4:65–5:4. Dr. Moon explains further that using capacitance matching for “addressing root causes of DNL directly reduces the DNL errors, dither as described in ’075 patent randomizes the errors. That is[], instead of reducing errors, dither redistributes or smears out the errors. Thus, how dither improves DNL is different than how improving capacitor matching improves DNL.” Ex. 2001 ¶ 26. It is not explained sufficiently by Petitioner, where linearity was already addressed by Confalonieri’s circuit design itself, even if one of ordinary skill in the art could have potentially added dither in an ADC using shunt capacitance CATT instead of, or in addition to compensating for offset, why a skilled artisan would have looked to Hiller’s teaching of dither. Considering the complete record now before us, we are not persuaded” slip op. at 31
Patent outcomesUS 7,286,075 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,286,075
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.