• Canon U.S.A., Inc. / Canon Inc. v. Slingshot Printing LLCAll claims unpatentable
  PTAB · May 20, 2024 · IPR2022-01541 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–7, 9, 10, 20–22, and 24 are unpatentable as obvious over Hamafuku, Whitman, and Imanaka, with Cleland added for claim 5.

  RulingsFinal written decision

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

    “Upon review of the prior art of record, we determine that no claim terms require construction for purposes of this Final Written Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Upon review of the prior art of record, we adopt Petitioner’s definition of a person of ordinary skill in the art as it is consistent with the prior art of record, but note that neither party contends the outcome of this case depends on whether a person of ordinary skill could include an individual with a degree in Materials Science.” slip op. at 10

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

    “In this case, there was a known desire to increase nozzle pitch in inkjet printheads, Imanaka’s heater and nozzle configuration had been used in the art to achieve this goal, and there is no suggestion that combining the teachings of Hamafuku, Whitman, and Imanaka was beyond the skill of an ordinarily skilled artisan. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1381 (Fed. Cir. 2023). Thus, we credit the testimony of Mr. Curley that one of ordinary skill in the art would have sought to use Imanaka’s heater and nozzle pitch in Hamafuku in order to provide a more compact and higher density printhead. Ex. 1002 ¶¶ 404–05. A conclusion of obviousness requires a reasonable expectation of success. Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1365 (Fed. Cir. 2016). This inquiry asks whether one of ordinary skill in the art would have had a reasonable expectation of combining the references to achieve what is claimed in the patent-at-issue. Id. at 1367. The inquiry does not look to whether unclaimed elements or functions would or would not also be achieved, or whether “one would reasonably expect the prior art reference to operate as those references intended once combined.” Id.” slip op. at 42

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “As noted by Patent Owner, the components of Imanaka are made of silicon-based materials, manufactured using thin film technology. PO Resp. 53–54 (citing Ex. 1008, 6:50–61). We are not persuaded, however, that Imanaka’s preference for silicon-based materials would teach away from, or otherwise discourage, one of ordinary skill in the art from combining Hamafuku, Whitman, and Imanaka. Imanaka does not suggest that failure to use silicon-based materials would result in an inoperable device. Rather, Imanaka states that use of silicon-based materials may “improve the mechanical characteristics” and “reliability” of “the liquid discharge head.” Ex. 1008, 6:50–61. Given the considerable increase in printhead nozzle pitch and print resolution provided by Imanaka’s heater and nozzle pitch configuration, we are not persuaded that a failure to capture the same improvement in mechanical characteristics and reliability from the use of silicon-based materials would prevent one of ordinary skill in the art from implementing Imanaka’s nozzle pitch in Hamafuku and Whitman or counsel against this modification.” slip op. at 41

  Patent outcomesUS 7,152,951 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,152,951
• Samsung Electronics Co., Ltd. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · Jun 7, 2023 · IPR2022-00100 · APJ Scott Raevsky · IPR · Final written decision

  Claims 8–10 and 15–18 are unpatentable as obvious over Piepgras, Michael, and Butler, with Schultz or Naskali added for claims 16 and 17.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner contends that there is “no meaningful dispute over [the definition of] a POSITA.” Reply 1. We agree. However, we adopt Patent Owner’s definition of the level of skill because we are persuaded that it is more consistent with the problems and solutions in the ’583 patent. In particular, Patent Owner’s definition requires experience with LED devices, whereas Petitioner’s definition makes LED experience optional (“experience with LED devices and/or related circuit design”). We note that the outcome of this decision would not have changed had we adopted Petitioner’s definition.” slip op. at 7

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

    “The parties propose no constructions. Pet. 7; PO Resp 8–9; Reply 1. At institution, we discussed the meaning of the term “array.” Dec. 16 n.12. Patent Owner traverses this construction and submits that “no special construction for ‘LED array’ is needed,” as it does not dispute any limitation reciting an “LED circuit array.” See PO Resp. 9. We agree. Based on our review of the record, no terms need to be construed. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

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

    “fails to identify any deficiencies or drawbacks of Piepgras’s two-button remote control because the law does not require Petitioner to identify problems with a reference in order to establish obviousness. See PO Resp. 28–30; In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.”). What the Petition must demonstrate is that there was some reason why one of ordinary skill in the art would have sought to combine the elements of the prior art in the manner proposed. KSR, 550 U.S. at 418. The Petition provides multiple, persuasive reasons (discussed above) as to why one of ordinary skill in the art would have sought to use a touch screen, as disclosed in Butler, to permit user control of a remote control, as disclosed in Piepgras.” slip op. at 21

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Petitioner argues, and we agree, that the Piepgras-Michael-Butler combination discloses that the portable telecommunications device can detect a human touch. Pet. 43. Further, Dr. Baker testifies, and we agree, that a POSITA would have understood that the modified device “would use an LED touch display and thus when touched, the LED(s) of the display would change (e.g., turning on and/or changing interface content).” Ex. 1002 ¶ 141. We credit this testimony by Dr. Baker because it is well-supported by evidence. See, e.g., Exs. 1009 (Hack), 1022 (Gillespie); Pet. 43 (citing same).13 Patent Owner does not offer any contrary evidence that would undermine Dr. Baker’s persuasive testimony that a POSITA would have understood that the modified device would use an LED touch display and that when touched, the LED(s) of the display would change (and thus provide light). See Ex. 2001 ¶¶ 105–16 (attacking the sufficiency of Petitioner’s evidence but not disputing Dr. Baker’s core assertion regarding the understanding of a POSITA). It is somewhat ironic that Patent Owner asserts that Dr. Baker’s testimony is “conclusory and not tied to supporting evidence.” Sur-reply 26 (citing Ex. 1002 ¶ 141). In reality, Petitioner supplies ample supporting evidence (e.g., Hack and Gillespie), but Patent Owner denies that we can consider it. See, e.g., Pet. 43 (citing, e.g., Exs. 1009, 1022); PO Resp. 44. Petitioner’s reliance on evidence to show the understanding of a skilled artisan is appropriate because “the obviousness ‘analysis requires an assessment of the . . . background knowledge possessed by a person having ordinary skill in the art.’” Koninklijke Philips, 948 F.3d at 1337. Petitioner does not rely upon references such as Hack and Gillespie to supply a missing claim limitation.14 Rather, Petitioner relies on Butler’s disclosure of a touch screen for this limitation and points to Hack and Gillespie to show that prior art touch screens often included LED displays and that one of ordinary skill in the art would have understood that a touch screen would have provided 13 As we explain below, we need not rely on Swartz. 14 For this reason, Petitioner need not have included Swartz, Hack, or Gillespie in its ground listing, and Petitioner need not show a motivation to combine Swartz, Hack, or Gillespie with Piepgras, Michael, and Butler. light based upon detection of human touch. Reply 20; see also Pet. 43. Arendi is therefore inapposite because Petitioner’s detailed explanations and supporting evidence are the opposite of relying on “common sense” as a “wholesale substitute for reasoned analysis and evidentiary support.” See 832 F.3d at 1362.” slip op. at 33

  Patent outcomesUS 10,750,583 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,750,583
• Samsung Electronics Co. Ltd. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · Jun 2, 2023 · IPR2022-00052 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 2–5, 7, 11–13, 21, and 23 are unpatentable: claims 2–5, 7, 13, 21, and 23 as obvious over Birrell and Schultz; claims 11–12 as obvious over Piepgras and Kasegi.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986).” slip op. at 6

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

    “the same claim construction standard that would be used to construe the claim[s] in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under that standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have had to a person of ordinary skill at the time of the invention in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party contends that any terms of the ’251 patent require express construction, with each party relying on the plain and ordinary meaning of each claim term. PO Resp. 13–14; Pet. Reply 1. Upon review of the parties’ arguments and evidence, we agree that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 7

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “10A–C, the reflective coating is folded and shaped to form non-planar reflectors. Ex. 1046 ¶ 49; PO Resp. 15–16; Sur-Reply 4–5. We agree with Petitioner, however, that the reflector embodiments depicted in Figures 10A–C are just one potential way of utilizing a reflective layer in Schultz, and one of ordinary skill in the art would have understood that use of an unfolded reflective layer is contemplated, and would be beneficial in, the planar embodiments of Schultz, such as the planar embodiment depicted in Figure 1. Pet. Reply 3–4, 7; Ex. 1046 ¶ 49 (“By using reflective surfaced materials, such as multilayered optical film, for the insulative layer 34 in the embodiments described herein, the light reflected from the attached LED dies has a higher probability of being reflected toward” a focusing element) (emphasis added).” slip op. at 15

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

    “to use a reflective coating or substrate in Birrell because “the use of a reflective substrate to provide mechanical support for an array of LEDs was well known in the art.” Pet. 14. Petitioner further contends that Schultz expressly discloses that reflective coatings are beneficial as they prevent light from an LED die being “unutilized due to absorption or scattering of the light.” Id. at 14–15 (quoting Ex. 1046 ¶ 48); Ex. 1046 ¶ 49 (Schultz explaining that “reflective surfaced materials” provide a “higher probability” that light reflected from the LEDs will reach the focusing element). Petitioner further contends that one of ordinary skill in the art would have used a reflective substrate in Birrell in view of Birrell’s expressed desire for a uniform optical reflection to provide a uniform light source. Pet. 15 (citing Ex. 1002 ¶ 104; Ex. 1018, 6:6–18; Ex. 1022 ¶ 81; Ex. 1023, 16:16–45). Petitioner contends one of ordinary skill in the art would have had a reasonable expectation of success in using a reflective substrate in Birrell because this would have entailed “the use of known components and mounting techniques to produce the predictable result of an LED circuit that benefited from known properties of reflective base structures, as suggested by Schultz and the knowledge of a [person of ordinary skill in the art].” Id. at 16.” slip op. at 16

  Patent outcomesUS 10,492,251 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,492,251
• Samsung Electronics Co. Ltd. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · Jun 2, 2023 · IPR2022-00051 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1 and 6 are unpatentable as obvious over Birrell and Schultz; the Board did not reach the Piepgras or Harbers and Schultz grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art as of the priority date of the ’251 patent “would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and two or more years of experience with LED devices and/or related circuit design, or a related field.” Pet. 8–9 (citing Ex. 1002 ¶¶ 20–24). For purposes of this proceeding, “Patent Owner does not dispute Petitioner’s definition of [a person of ordinary skill in the art].” PO Resp. 14. Upon review of the parties’ arguments, the prior art of record, and the ’251 patent, we adopt Petitioner’s undisputed level of ordinary skill in the art for purposes of this Decision.” slip op. at 5

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

    “the same claim construction standard that would be used to construe the claim[s] in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under that standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have had to a person of ordinary skill at the time of the invention in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party contends that any terms of the ’251 patent require express construction, with each party relying on the plain and ordinary meaning of each claim term. PO Resp. 13–14; Pet. Reply 1. Upon review of the parties’ arguments and evidence, we agree that no claim terms require express construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 6

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “In view of the foregoing, we determine that Birrell and Schultz, when viewed in light of the knowledge of one of ordinary skill in the art, teach or suggest mounting “at least one LED circuit” “on a reflective substrate,” as recited in claim 1 of the ’251 patent.” slip op. at 14

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

    “sought to use a reflective coating in Birrell because “the use of a reflective substrate to provide mechanical support for an array of LEDs was well known in the art.” Pet. 29. Petitioner further contends that Schultz expressly discloses that reflective coatings are beneficial as they prevent light from an LED die being “unutilized due to absorption or scattering of the light.” Id. at 30 (quoting Ex. 1046 ¶ 48); Ex. 1046 ¶ 49 (Schultz explaining that “reflective surfaced materials” provide a “higher probability” that light reflected from the LEDs will reach the focusing element). Petitioner further contends that one of ordinary skill in the art would have used a reflective substrate in Birrell in view of Birrell’s expressed desire for a uniform optical reflection to provide a uniform light source. Pet. 30 (citing Ex. 1002 ¶ 104; Ex. 1018, 6:6–18; Ex. 1022 ¶ 81; Ex. 1023, 16:16–45). Petitioner contends that one of ordinary skill in the art would have had a reasonable expectation of success in using a reflective substrate in Birrell because this would have entailed “the use of known components and mounting techniques to produce the predictable result of an LED circuit that benefited from properties of reflective base structures, as suggested by Schultz and the knowledge of a [person of ordinary skill in the art].” Id. at 31.” slip op. at 14

  Patent outcomesUS 10,492,251 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,492,251
• Tokyo Ohka Kogyo., Ltd. v. Fujifilm Electronic Materials U.S.A., Inc.All claims unpatentable
  PTAB · May 31, 2023 · PGR2022-00010 · APJ Jo-Anne M Kokoski · PGR · Final written decision

  Claims 1–15 are unpatentable for lack of written description support under § 112(a); the Board did not reach either obviousness ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art (“POSA”) “would have had a Bachelor degree in materials science, engineering, chemistry or similar technical discipline, and had at least two years of experience relating to the design and development of semiconductor manufacturing processes.” Pet. 14. Petitioner further submits that, “[a]lternatively, such a person may have had additional graduate education as a substitute for professional experience, or significant work experience as a substitute for formal education.” Id. Patent Owner states that, “[w]ithout taking a position on the correctness of this definition, Patent Owner applies Petitioner’s POSA definition.” PO Resp. 11 (citing Pet. 14). 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), revised 35 U.S.C. § 103 effective March 16, 2013. Petitioner contends, and Patent Owner does not contest, that “the earliest priority date claimed by the ’329 patent” is December 6, 2013. Pet. 13; PO Resp. 6. Because the undisputed earliest claimed priority date of the ’329 patent is after March 16, 2013, we apply the AIA versions of §§ 102 and 103. record, and is consistent with the level of skill in the art at the time of the invention as reflected in the prior art in this proceeding.” slip op. at 5

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

    “We disagree. It is clear from the plain language of claim 1 that the claimed “cleaning composition” is a composition for cleaning that includes four named components and has a specified pH. Ex. 1001, 29:2–9. The ’329 patent specification unambiguously teaches that the cleaning composition is for removing residues from semiconductor substrates. Id. at 1:23–29, 2:10–12, 2:17–33, 15:52–55. Although the ’329 patent describes a cleaning composition that comprises a redox agent, a chelating agent, a metal corrosion inhibitor, an organic solvent, and water, we see no reason to construe the term “cleaning composition” itself to require these components. Claim 1 expressly recites expressly including or precluding a chelating agent or a metal corrosion inhibitor. Ex. 1001, 29:2–9. The Federal Circuit advises that the specification “is not a suitable substitute for, nor can it be used to rewrite, the chosen claim language. ‘Specifications teach. Claims claim.’” SuperGuide, 358 F.3d at 875 (quoting SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 n. 14 (Fed. Cir. 1985) (en banc)). The ’329 patent specification does teach a cleaning composition that includes a redox agent, a chelating agent, a metal corrosion inhibitor, an organic solvent, and water, but claim 1 is directed to a cleaning composition that expressly requires only a subset of those components. Patent Owner’s proposed construction would effectively rewrite the claim by adding unclaimed components, which we decline to do under the guise of claim construction. See id. (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”).” slip op. at 9

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

    “that Petitioner establishes that the ’329 patent does not provide sufficient written description support for the challenged claims. Pet. 15–43; Ex. 1007 ¶¶ 56–82. More specifically, we find that the ’329 patent does not reasonably convey to a POSA that the inventor was in possession of cleaning compositions that do not include a chelating agent or a metal corrosion inhibitor. There is no dispute, on this record, that the ’329 patent specification explicitly teaches that a redox agent, a chelating agent, a metal corrosion inhibitor, an organic solvent, and water are mandatory components of the cleaning composition described therein. PO Resp. 15 (Patent Owner agreeing with Petitioner that “[t]he ’329 patent’s disclosure is unambiguously explicit regarding mandatory components of the cleaning compositions described therein.” (citing Pet. 17; Ex. 1007 ¶¶ 56–57) (emphasis omitted, alteration in original)); see Ex. 1001, 3:47–48, 3:62–64, 10:24–26, 10:66–11:2, 12:3–4; Ex. 1007 ¶¶ 56–67. Claim 1, however, does not require that the cleaning composition include a chelating agent or a metal corrosion inhibitor. Ex. 1001, 29:2–9. Therefore, establishing proper written description support for claim 1 requires more than showing that the inventor was in possession of a cleaning composition that includes a redox agent, a chelating agent, a metal corrosion inhibitor, an organic solvent, and water; the ’329 patent must also show that the inventor was in possession of a cleaning composition that includes only a redox agent (hydroxylamine), an organic solvent (an alkylene glycol), water, and an alkanolamine. Id.” slip op. at 13

  Patent outcomesUS 10,927,329 unpatentable
  Claim construction§ 112 disclosurecites Phillips
  Patents in suitUS 10,927,329
• Home Depot U.S.A., Inc. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · May 22, 2023 · PGR2022-00009 · APJ Monica S Ullagaddi · PGR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

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

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

  Patent outcomesUS 10,932,341 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,932,341
• Samsung Electronics Co. Ltd. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · May 10, 2023 · IPR2021-01575 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–9 are unpatentable as obvious over the asserted combinations of Saito and Catalano, Saito and Wojnarowski, and those combinations with Johnson.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art as of the priority date of the ’551 patent “would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and two or more years of experience with LED devices and/or related circuit design, or a related field.” Pet. 9 (citing Ex. 1002 ¶¶ 19–20). For purposes of this proceeding, “Patent Owner does not dispute Petitioner’s definition of a [person of ordinary skill in the art].” PO Resp. 9. Upon review of the parties’ arguments, the prior art of record, and the ’551 patent, adopt Petitioner’s undisputed level of ordinary skill in the art in this proceeding.” slip op. at 6

  • Prior constructionPrior construction adoptedDecided for petitioner

    “In IPR2021-01367, which also is directed to the ’551 patent, the Board construed the term “driver” to mean “a program, circuitry, or device used to power other programs, circuits, or devices.” Home Depot USA, Inc. v. Lynk Labs, Inc., IPR2021-01367, Paper 8 at 11–14 (PTAB Feb. 14, 2023) (Institution Decision); see also IPR2021-01367, Paper 46 at 7 (Final Written Decision). Patent Owner believes that this construction is broader than that used by the ’551 patent, “but will nevertheless refer to this construction because it is helpful in resolving the disputes over the teachings of the prior art, because none of the prior art teaches or suggests a driver even under this broader construction.” PO Resp. 10–11. Patent Owner does not propose an alternative construction of the claim term. Id. Petitioner does not contest the adopted construction of “driver.” Pet. Reply 1. Upon review of the parties’ arguments and evidence, and for the reasons expressly set forth in IPR2021-01367, we construe “driver” to mean “a program, circuitry, or device used to power other programs, circuits, or devices.” No other claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 6

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date awardedDecided for petitioner

    “connector” to describe the 3-pin connector of Catalano was potentially ambiguous. Based on the full trial record, we are persuaded that the citations provided in the Petition provide sufficient evidence that the ’495 Provisional provides written description support for claim 23 of Catalano.11 In response to Patent Owner’s argument that Catalano’s 3-pin connector 612 is connected to bulb base 616, and there is no evidence that such a connector is used in “a conventional incandescent bulb” (Sur-Reply 9), we find that regardless of the internal components connecting the “standard bulb base” to the LED circuit, the “standard bulb base” is a connector that can fit within “standard bulb sockets” and allow the device to replace a conventional incandescent bulb. Ex. 1006 ¶¶ 5–7. Therefore, it is “a standard bulb power connector equivalent to the power connector of a” slip op. at 14

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Upon review of the record and the parties’ arguments as a whole, we agree with Petitioner that Saito discloses a driver, as that term is used in claim 1 of the ’551 patent. First, our construction of “driver” is broad, constituting any “program, circuitry, or device used to power other programs, circuits, or devices.” And, consistent with the structure of claim 1 of the ’551 patent, this construction does not require that the identified circuit or device actually generate power, only provide power to another device or circuit. switch that turns on or off a power source. Rather, the circuit of Saito monitors the voltage provided at both node A 107 and node B 715 and, depending on the reported voltages, switches between voltage sources to provide power to the LEDs. In this way, the voltage applied to the LED circuit is maintained within a range of roughly 16 and 30 Volts, and the LEDs are driven for a prolonged period of time by capacitors 106 and 107, which Saito explains “cut[s] down the consumption of electric current” and results in more efficient use of power. Ex. 1008 ¶¶ 98–103. We find persuasive Dr. Baker’s testimony that one of ordinary skill in the art would have considered such a circuit to be a “driver,” as recited in claims 1 and 5 of the ’551 patent. Ex. 1002 ¶¶ 94–95, 110–111.” slip op. at 23

  Patent outcomesUS 10,154,551 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,154,551
• Samsung Electronics Co., Ltd. v. Lynk Labs, Inc.Some claims unpatentable
  PTAB · May 5, 2023 · IPR2022-00098 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1, 3, and 4 are unpatentable as obvious over the stated combinations; claim 2 was not shown unpatentable because the driver was not shown configured to receive the rectifier’s forward voltages.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that a person of ordinary skill in the art would have had experience in LED devices. For this reason, we apply Patent Owner’s proposed level of ordinary skill in the art because it comports with the level of skill reflected in the ’149 patent and the prior art of record. However, if we were to apply Petitioner’s proposed level of skill, our Decision would not be affected.” slip op. at 9

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

    “Upon review of the entire record, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “Dr. Ducharme’s testimony that “the spacing of the chips in Zhang would not likely be so close as to create overheating issues” (Ex. 2002 ¶ 111) is unsupported by any disclosure of the actual spacing of Zhang’s chips. Consequently, his testimony that there would be no overheating concerns in Zhang due to the spacing of the chips is entitled to little, if any, weight. Dr. Ducharme further testifies that the components of Zhang’s driver “could easily increase the temperature of the LED 19 chips on the circuit board, which can cause LEDs to generate less illumination, burn out and otherwise adversely affect their performance.” Ex. 2002 ¶ 126. Dr. Ducharme further testifies that “[i]t is well-known that excessive operational temperatures can reduce the illumination provided by the LEDs, can decrease the operational lifetime of the LEDs, and if the temperature is sufficiently high, it can cause LED junction failure and a burnt-out LED.” Id. We agree with this testimony, which as discussed below, is consistent with Salam. Dr. Ducharme’s testimony concerning overheating issues caused by the driver components contradicts Patent Owner’s ’s contention that there would not be “an overheating issue with Zhang’s LED exit sign circuit in Figure 2.1.” PO Resp. 30. Regardless of whether Zhang’s LEDs in Figure 2.1 have a heat problem or not, Salam teaches the advantages of using a heat sink. Salam teaches that a heat sink will result in a higher efficiency of the LEDs and improved life. Ex. 1006, 16:38–43. The Federal Circuit, in DyStar Textilfarben GmBH & Co v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006), stated that “the desire to enhance commercial opportunities by improving a product or process is universal–and even common-sensical . . . the proper question is whether the ordinary artisan possesses the knowledge and skills rendering him capable of combining the prior art references.” Id. at 1368. Dr. Ducharme testified that a person of ordinary skill in the art “would have an understanding of the generation of heat and using a heat sink to remove unwanted heat from electronics and LED lighting devices.” Ex. 1102, 23:18–24:3. Dr. Ducharme’s testimony is consistent with Petitioner’s contention that the combination of Zhang and Salam “would have been a straightforward combination of known components and technologies, according to known methods, to produce the predictable result of reducing/ mitigating heat effects in a circuit.” Pet. 17 (citing Ex. 1002 ¶ 106). Patent Owner next contends it would be extremely burdensome and costly to modify Zhang to add a heat sink layer because “each of the multiple chips mounted and epoxied to Zhang’s circuit board in the exit sign would have to be modified.” PO Resp. 30 (citing Ex. 2002 ¶ 112). Dr. Ducharme’s testimony repeats the Patent Owner Response verbatim and is entitled to little, if any, weight. Ex. 2002 ¶ 112. Nonetheless, this contention is unavailing because it is based on Patent Owner’s bodily incorporation of Zhang and Salam. Patent Owner next contends that a person of ordinary skill in the art” slip op. at 27

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

    “Regardless of whether Zhang’s LEDs in Figure 2.1 have a heat problem or not, Salam teaches the advantages of using a heat sink. Salam teaches that a heat sink will result in a higher efficiency of the LEDs and improved life. Ex. 1006, 16:38–43. The Federal Circuit, in DyStar Textilfarben GmBH & Co v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006), stated that “the desire to enhance commercial opportunities by improving a product or process is universal–and even common-sensical . . . the proper question is whether the ordinary artisan possesses the knowledge and skills rendering him capable of combining the prior art references.” Id. at 1368. Dr. Ducharme testified that a person of ordinary skill in the art “would have an understanding of the generation of heat and using a heat sink to remove unwanted heat from electronics and LED lighting devices.” Ex. 1102, 23:18–24:3. Dr. Ducharme’s testimony is consistent with Petitioner’s contention that the combination of Zhang and Salam “would have been a straightforward combination of known components and technologies, according to known methods, to produce the predictable result of reducing/ mitigating heat effects in a circuit.” Pet. 17 (citing Ex. 1002 ¶ 106).” slip op. at 27

  Patent outcomesUS 10,517,149 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,517,149
• Home Depot USA, Inc. v. Lynk Labs, Inc.Some claims unpatentable
  PTAB · May 5, 2023 · IPR2022-00023 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1 and 4 are unpatentable over the stated § 103 combinations; Petitioner did not show claim 2 unpatentable because it did not explain how the LED array’s forward voltage is received by the driver.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “degree in electrical engineering, or similar technical field, with two years of experience in the field of design and/or development of light-emitting diodes (LEDs) and circuits in the context of lighting control systems.” Pet. 11–12 (citing Ex. 1002 ¶ 34). Petitioner further contends that “[a]n increase in experience could compensate for less education.” Id. at 12. Patent Owner proposes the same level of skill in the art. See PO Resp. 6. We apply the parties’ undisputed level of ordinary skill in the art because it comports with the level of skill reflected in the ’149 patent and the prior art of record.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We credit Dr. Lebby’s testimony over Dr. Ducharme for the following reasons. First, in Deese, power cable 28 is inserted into an opening in rubber housing 21. Ex. 1008, Fig. 2A. [R]ubber housing 21 forms a water-tight seal around the power cable 28.” Id. at 4:63–65. Dr. Ducharme does not explain why Hochstein’s protruding heat sink shell could not similarly be inserted through rubber housing 21 with a water-tight seal. Further, Dr. Lebby relies on the similarity between the structures of Deese and Hochstein. Hochstein uses gasket 45 and weather seal 48 to seal housing 10 with electrical lead 49 and heat sink shell 38 extending therethrough. Ex. 1010, 5: 39–40, 5:63:65, Fig. 8.” slip op. at 47

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther

    “Our analysis starts with the claim language. Claim 1 recites “a driver, wherein the driver includes at least one transistor and at least one capacitor” and “the driver is configured to receive an AC voltage from a mains power source and provide a voltage and current to the at least one LED circuit.” Ex. 1001, 23:16–17, 26:22–24. Dr. Ducharme testifies that power is determined by multiplying voltage and current. Ex. 2008 ¶ 63. The language of claim 1, thus, supports Patent Owner’s construction which is also consistent with the dictionary definition offered by Petitioner which also defines “driver” as [a] program, circuit or device used to power or control other programs, circuits or devices.” Ex. 1007, 4 (emphasis added). The Specification provides “the driver providing an AC voltage and current to one or more LED circuits.” Ex. 1001, 3:65–67. Thus, the Specification also provides support for Patent Owner’s construction. For the foregoing reasons, we apply Patent Owner’s proposed construction of “driver” because it is consistent with the language of claim 1 and the description of driver in the Specification. We note that the adjective “LED” prior to circuits or devices in Patent Owner’s construction is not necessary because that it essentially repeats limitation 1.e.” slip op. at 12

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

    “We begin with the claim language itself which is “the package is a heat sinking reflective material.” Ex. 1001, 23:18–19 (emphasis added). In its analysis, Patent Owner parses “heat sinking reflective material” out of context by omitting the italicized language “the package is” preceding “heat sinking reflective material.” PO Resp. 29. The deposition testimony of Dr. Lebby and Dr. Ducharme’s declaration testimony cited by Patent Owner are also out of context. The Specification of the ’149 patent defines “package” as an integrated unit that “in certain applications may preferably include a heat sink, a reflective material, a lens for directing light, phosphor nano-crystals or light changing or enhancing substances.” Ex. 1001, 5:30–33. Because heat sink and reflective material are listed separately in the Specification, this disclosure suggests that, at least in certain embodiments, a package with a heat sink separate from a reflective material would fall within the scope of limitation 1.c. This is further confirmed by comparing the packages illustrated in Figures 25 and 26 of the ’149 patent which are reproduced above. Figure 25 is described as illustrating “heat sinking material 198 . . . integrated into the package 30.” Id. at 17:34–35. Figure 26 is described as illustrating reflector 202 “integrated into the package 30 for optimized light dispersion.” Id. at 17:47–49. As can be seen from a visual comparison of Figures 25 and 26, reflector 202 is separate from heat sinking material 198. Given the disclosure in the ’149 patent of a package with a heat sink” slip op. at 15

  Patent outcomesUS 10,517,149 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,517,149
• Home Depot U.S.A., Inc. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · Apr 26, 2023 · IPR2021-01541 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1–4, 6–8, 11–13, 15–17, and 19 are unpatentable as obvious over the cited combinations of Dowling, Mueller, Okuno, Nortrup, Yan, and Martin.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “After considering the evidence and arguments of the parties, we determine that Petitioner has proven by a preponderance of the evidence that claims 1– 4, 6–8, 11–13, 15–17, and 19 are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that [a] person of ordinary skill in the art (“POSITA”) . . . would have had a bachelor’s degree in electrical engineering, or similar technical field, with two years of relevant experience in the field of design and/or development of LEDs and circuits in the context of lighting control systems. An increase in experience could compensate for less education. Pet. 10–11 (citing Ex. 1002 ¶ 22). Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill. PO Resp. 14. We are persuaded that Petitioner’s proposal is consistent with the problems and solutions in the ’001 patent and prior art of record. We therefore adopt Petitioner’s definition of the level of skill.” slip op. at 6

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Under the correct claim construction, Dowling discloses this limitation because Dowling discloses several examples of two-way switch 190 turning on or off LED circuits, independent of other LED circuits. For example, Dr. Neikirk persuasively testifies that Dowling’s color wash mode (selected by switch 190) discloses this limitation by referring to LEDs that “cycle . . . through the full color spectrum,” turning different colored LEDs on or off. Ex. 1033 ¶ 26 (citing Ex. 1004 ¶¶ 44, 103 (“If two LEDs were used . . . with circuitry to turn each color on or off, four colors could be produced.”) (emphasis added)). As another example, Dr. Neikirk persuasively testifies that switch 190 can be used to select a “static color mode to produce, for example, the color red, then only the red LED will be turned on and the remaining LEDs will be turned off.” Id. ¶ 28 (citing Ex. 1004 ¶ 103). Finally, Dr. Neikirk persuasively testifies that switch 190 can select a strobing mode to cause LEDs to “alternate[] green and red,” which a POSITA would have understood to cause “at least one color LED circuit to be turned on or off independent of other LED circuits.” Id. ¶ 29 (citing Ex. 1004 ¶ 47). Patent Owner does not rebut these assertions of Dr. Neikirk. See Sur- reply 7–10. Accordingly, we determine that Petitioner has established that Dowling discloses this limitation.” slip op. at 26

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

    “We begin our analysis with the claim language. Claim 1 requires a switch to “independently switch on or off at least one of the first LED circuit or the at least one additional LED circuit.” There is no express requirement in the claim that any switching occur independently “of other switches.” In effect, Patent Owner appears to imply that “independently” modifies only the word “switch.” Yet the plain reading of this phrase is that the word “independently” modifies the entire phrase that follows—“switch on or off at least one of the first LED circuit or the at least one additional LED circuit.” As such, the plain language of the claim encompasses switching one of the LED circuits on or off independently of another LED circuit. In other words, the switch can turn on or off either LED circuit by itself, without affecting the other LED circuit. Patent Owner even appears to have had the same understanding pre-institution, arguing that one of Dowling’s modes “is simultaneously controlling all the LEDs, not independently switching one LED circuit on or off.” Prelim. Resp. 19. The specification does not inform the meaning of this limitation because it does not include the word “independently”—this term only appears in the claims. And Patent Owner points us to no discussion of independent switching in the specification by another name. At most, Patent Owner refers to two separate claims and a few specification references that possibly mention two separate switches. Sur-reply 3–4. But Patent Owner’s references to claims 11 and 15 are unavailing, as even if claims 11 and 15 mention different switches, Patent Owner does not sufficiently explain how this compels the meaning it ascribes to “independently switch.” This is true even though claim 11 itself recites a similar “independently switch” limitation. Further, the specification’s mere mention of different switches is also insufficient to draw any conclusion about whether those switches are independently switched from one another. We therefore find no disavowal, lexicography, or any context that would counsel departing from the plain and ordinary meaning of this limitation. As such, we construe “a switch . . . configured to at least one of independently switch on or off at least one of the first LED circuit or the at least one additional LED circuit” in claims 1, 6, and 11 to encompass a switch that switches an LED circuit on or off independently of another LED circuit.” slip op. at 11

  Patent outcomesUS 10,537,001 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,537,001

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.