- PTAB · Jan 24, 2024 · IPR2023-01184 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on claims 1–19 and all petition grounds, finding a reasonable likelihood that claims 1, 2–4, 6–8, 15–16, and 18–19 are unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateOther
“Although Petitioner has asserted the absence of specific supporting disclosure for claims 1, 15, and 18 from the ’780, ’317, and ’977 applications and the ’155, ’587, ’601, ’977, and ’753 provisional applications, the burden to show an effective filing date (or dates) of the challenged claims prior to April 22, 2010 falls on Patent Owner here because Petitioner has asserted prior art references with earlier effective dates. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016) (In an inter partes review, “a patentee bears the burden of establishing that its claimed invention is entitled to an earlier priority date than an asserted prior art reference.”). An earlier effective filing date is not presumed because, as shown in the above figure, the ’783 application is a continuation-in-part to each of the ’780, ’317, and ’977 applications that have filing dates earlier than April 22, 2010. See PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008) (“When neither the PTO nor the Board has previously considered priority, there is simply no reason to presume that claims in a [continuation-in-part] application are entitled to the effective filing date of an earlier filed application.”). On this record, and in the absence of the development of any contrary argument, we find that Petitioner has demonstrated sufficiently for institution that each of the asserted references are prior art to the challenged claims. The parties will have an opportunity to present their positions on the issue of the effective filing date of the challenged claims further during trial.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“of Kronberg, discloses or suggests all of the elements of claim 6. Pet. 28–34 (citing Ex. 1002 ¶¶ 107–148). More particularly, Petitioner argues that Adest discloses the limitations of claims 6, but to the extent there is a dispute that Adest discloses the “watchdog unit” limitation [6A], a person of ordinary skill in the art would have been motivated to combine the watchdog apparatus taught by Kronberg with the solar power system taught by Adest to monitor communications between signal mechanism 420 and power modules 405 of Adest. Id. at 32 (citing Ex. 1002 ¶ 127). Petitioner further argues that the watchdog taught by Kronberg was a well-known technique for detecting malfunctions at the time of the invention, and would have been one of a number of solutions for detecting the absence of a periodic signal. Id. (citing Ex. 1002 ¶¶ 128–129; Ex. 1009, 1269). Petitioner further argues that Kronberg “suggests that its watchdog apparatus is to be used to provide ‘automatic shutdown of critical devices in case of failure,’” consistent with Adest’s objective of shutting down a power generating facility when a transmitter fails to send a communication because of, for example, a fire or theft of a photovoltaic module. Id. at 32–33 (citing Ex. 1006, 1:12–15; Ex. 1005, 7:6–12).” slip op. at 19
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“The limitation “means to poll the central controller to determine if an interruption of the communication is transient” presumptively invokes 35 U.S.C. § 112 ¶ 6. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Claims subject to 35 U.S.C. § 112 ¶ 6 are construed in a “two-step process,” whereby we “first identify the claimed function,” and then “determine what structure, if any, disclosed in the specification corresponds to the claimed function.” Id. at 1351. Accordingly, our rules require that the Petition “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). Further, “the corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification” Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)). Federal Circuit precedent requires disclosure of an algorithm in the specification for any computer-implemented function beyond “basic functions of a microprocessor.” See EON Corp. IP Holdings, LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“A microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer implemented functions require disclosure of an algorithm.”). Petitioner does not identify any portion of the ’218 patent specification that describes corresponding structure for performing the claimed function of “poll[ing] the central controller to determine if an interruption of the communication is transient.” See Pet. 39. Accordingly, Petitioner has not identified sufficient corresponding structure for performing the function of this presumptive means-plus-function limitation.” slip op. at 22
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 8,823,218 - PTAB · Dec 19, 2023 · IPR2023-01062 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted review of claims 27–33 on all asserted grounds after finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’095 patent. Thus, we institute an inter partes review of all challenged claims of the ’095 patent on all grounds asserted in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham, 383 U.S. at 17–18. Petitioner argues that a “person of ordinary skill in the art of the ’095 patent would have had a bachelor’s degree in electrical engineering and a minimum of 3–4 years of 7 At this stage of the proceeding, Patent Owner has not offered any evidence of secondary considerations. See generally Prelim. Resp. testing of twisted-pair data cables.” Pet. 11 (citing Ex. 1007 ¶ 13). Petitioner also argues an “individual with a master’s degree in electrical engineering would require less industry experience (e.g., 1–2 years).” Id. (citing Ex. 1007 ¶ 13). Patent Owner does not dispute this proposed definition. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s proposal, because we find Petitioner’s statement of the level of ordinary skill in the art adequate and supported on this record. The level of ordinary skill in the art also appears to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes express constructions for “data communications cable,” “dielectric pair separator,” “substantially flat,” “configurable,” and grooves.” Pet. 12–18. Patent Owner proposes an express construction of “twisted pairs” of insulated conductors. Prelim. Resp. 10–17. As explained below, on the present record, we provide a preliminary construction of the “dielectric pair separator,” “substantially flat,” configurable,” “grooves,” and “twisted pairs” and determine that we need not expressly construe any other claim term at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) ) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy). 1. Preamble The preambles of claims 27 and 31 recite a “data communications cable comprising.” Petitioner asserts that the preambles merely states an intended purpose and are not limiting. Pet. 12. We determine that no construction of this term is required at this stage of the proceedings to resolve any issues in dispute.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“2. “dielectric pair separator” Petitioner asserts that the ordinary and customary meaning of a “dielectric pair separator” in view of the intrinsic record is a separator that serves as a dielectric medium and that the term does not require that the separator consist entirely of dielectric material. Pet. 12 (citing Ex. 1007 ¶ 74; Ex. 1001, claim 24 (requiring that the dielectric pair separator have Decision, we adopt Petitioner’s uncontested proposed construction of this term, namely that a dielectric pair separator is “a separator that serves as a dielectric medium” and there is no requirement that the separator consist entirely of dielectric material. 3. “substantially flat” Claim 27 recites “the configurable dielectric pair separator being substantially flat.” Claim 31 requires that the “configurable dielectric pair separator include[e] a substantially flat dielectric tape.” Petitioner asserts that the ordinary and customary meaning of a substantially flat separator is a separator that is a substantially flat member prior to being formed into the cable assembly and that the term does not require that the separator be substantially flat in the finished cable. Pet. 13 (citing Ex. 1007 ¶ 76; Ex. 1001, 6:12–25). Petitioner asserts that this construction is consistent with the specification and the construction adopted by the Patent Office during reexamination of the related Patent No. 6,998,537 (“the ’537 patent”) and by the district court. Pet. 13–15 (citing Ex. 1001, 6:12–2, Figs. 5–11, 13; Ex. 1006, 10–11; Ex. 1007 ¶¶ 77–80; Ex. 1052, 3–4). Patent Owner does not dispute this construction. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s uncontested proposed construction of this term, namely, a separator that is a substantially flat member prior to being formed into the cable assembly, and that the term does not require that the separator be substantially flat in the finished cable. 4. “configurable” Independent claims 27 and 31 both recite a “configurable dielectric pair separator.” Petitioner asserts that the ordinary and customary meaning of a “configurable” separator in view of the intrinsic record is “flexible (citing Ex. 1007 ¶ 81). Petitioner further asserts that this construction is consistent with the construction adopted by the district court. Id. (citing Ex. 1052, 1–2 Ex. 1007 ¶¶ 81– 84). Patent Owner does not dispute this construction. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s proposed construction of this term, namely, that “configurable” means “flexible enough to be formed or shaped in the course of making the cable.” 5. “grooves” Petitioner states that, for the purposes of this proceeding, Petitioner adopts the definition provided by the district court in prior litigation: “Regions within a cable that are substantially physically separated from other regions with[in] the cable by a pair separator; i.e., they are formed by, but need not be part of, the separator.” Pet. 18 (citing Ex. 1052, 3). Patent Owner does not dispute this construction. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s proposed construction of this term, namely, that grooves are regions within a cable that are substantially physically separated from other regions within the cable by a pair separator.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,570,095 - PTAB · Dec 19, 2023 · IPR2023-01061 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted IPR on claims 19, 20, and 22 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’537 patent. Thus, we institute an inter partes review of all challenged claims of the ’537 patent on all grounds asserted in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Petitioner argues that a “person of ordinary skill in the art of the ’537 patent would have had a bachelor’s degree in electrical engineering and a minimum of 3–4 years of industry experience in connection with designing, manufacturing, and testing of twisted-pair data cables.” Pet. 14 (citing Ex. 1007 ¶ 12). Petitioner also argues an “individual with a master’s degree in electrical engineering would require less industry experience (e.g.,1–2 years).” Id. (citing Ex. 1007 ¶ 12). Patent Owner does not dispute this proposed definition. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s proposal, because we find Petitioner’s statement of the level of ordinary skill in the art adequate and supported on this record. The level of ordinary skill in the art” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “unshielded communications cable” The preamble of claim 19 recites “[a]n unshielded communications cable comprising.” Petitioner asserts that the preamble merely states an intended purpose and is not limiting. Pet. 15–17. Petitioner further asserts that although the term “unshielded” was added through amendment, “the same response amended the body of claim 19 to add the substantive limitation, specifying that separator ‘consists of non-conductive, dielectrical materials” in order to distinguish art having a separator of shielding tape formed of meatal and plastic laminate. Pet. 16 (citing Ex. 1043, 8). We determine that no construction of this term is required at this stage of the proceedings to resolve any issues in dispute.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner asserts that the ordinary and customary meaning of a “substantially flat’” separator in view of the intrinsic record is a separator that is a substantially flat member prior to being formed into the cable assembly and that the term does not require that the separator be substantially flat (i.e., free of any bends or folds) in the finished cable. Pet. 17 (citing Ex. 1007 ¶ 65). Petitioner asserts that this construction is consistent with the specification and the construction adopted by the Patent Office during reexamination and by the district court. Pet. 17–20. Patent the purposes of this Decision, we adopt Petitioner’s uncontested proposed construction of this term, namely, a separator that is a substantially flat member prior to being formed into the cable assembly; and further preliminarily determine that the term does not require that the separator be substantially flat (i.e., free of any bends or folds) in the finished cable. 3. “configurable dielectric separator” Claim 19 recites a “configurable dielectric separator.” Petitioner asserts that the ordinary and customary meaning of a “configurable” separator in view of the intrinsic record is “flexible enough to be formed or shaped in the course of making the cable.” Pet. 20 (citing Ex. 1007 ¶ 70). Petitioner further asserts that this construction is consistent with construction adopted by the district court. Id. (citing Ex. 1052; Ex. 1007 ¶¶ 70–74). Patent Owner does not dispute this construction. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s proposed construction of this term, namely, that “configurable” means “flexible enough to be formed or shaped in the course of making the cable.”” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,998,537 - PTAB · Dec 15, 2023 · IPR2023-01056 · APJ Kristina M Kalan · IPR · Institution
The Board instituted inter partes review on all challenged claims and all asserted grounds after finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’030 patent, and we institute inter partes review on all challenges raised in the Petition. 37 C.F.R. § 42.108.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“partes review). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. 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))). The parties do not argue for any express claim construction. Petitioner argues that it “presently believes the plain meaning is enough to resolve this petition.” Pet. 14. Patent Owner’s Preliminary Response has no separate section addressing claim construction. See Prelim. Resp., passim. The parties, however, dispute the meaning of the term “lateral edge” of the two layers of the dielectric material, as recited by the independent claims. See Pet. 36–37; Prelim. Resp. 19–26. We discuss “lateral edge” below in the context of the parties’ arguments regarding patentability. Infra § II.E.4. The parties may propose and support constructions of the term “lateral edge” during trial. On the present record, we determine we need not expressly construe any claim term at this stage of the proceeding. See Realtime Data, 912 F.3d at 1375.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“of ordinary skill in the art, does not include the front or back edges, but rather refers to the edges of the claimed barrier tape “running along the sides of the tape parallel to (or in) the longitudinal direction.” Prelim. Resp. 19– 20, 26. Patent Owner argues that this construction is supported by the Specification (citing Ex. 1001, 7:64–8:25, 8:38–46; Figures 3B–3E, Ex. 2001 ¶¶ 58–61) and the art cited by Petitioner (citing Ex. 1010, 23:58– 67; Ex. 1009, 2:20–24, 2:42–46, 4:27–33, 4:34–40, 5:65–75, Figs. 2, 3, 10; Ex. 2001 ¶¶ 62–65). Id. at 19–24. On the present record, and for the purposes of preliminarily discussing the term “lateral edge” in the context of the parties’ Ground 3 arguments, we understand “lateral edge” as referring to the edges of the claimed barrier tape “running along the sides of the tape parallel to (or in) the longitudinal direction,” and as not including the front or back edges. Prelim. Resp. 26. Patent Owner provides reasonable support for this interpretation in the ’030 patent Specification and other references. Id. at 19–24. We note again that in Ground 3, Petitioner argues that lateral edges may include the “front” and “back” edges of the dielectric material, “in that they extend laterally (as compared to extending along the longitudinal axis)” as shown in Petitioner’s annotated Figure 13C of Glew (Pet. 36–37), but argues in Grounds 1 and 4 that the lateral edges may be along the sides of the dielectric material, as shown in Petitioner’s annotated Figures 8D and 11 of Cook (Ground 1) and annotated Figure 13C of Glew (Ground 4). Pet. 20–21, 49. Petitioner’s inconsistent position on the interpretation of the “lateral edge” term among its Grounds 1, 3, and 4 arguments undermines its position as to the interpretation of the term, and undermines its position that Glew discloses this limitation under an anticipation standard. Accordingly, we are unpersuaded that Petitioner has met its burden of demonstrating a reasonable likelihood of prevailing on its Glew-based anticipation arguments.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that “a person of ordinary skill in the art (POSITA) would have had a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in connection with designing, manufacturing, and testing of twisted-pair data cables,” and an “individual with a master’s degree in electrical engineering would require less industry experience (e.g., 1-2 years).” Pet. 15 (citing Ex. 1006 ¶ 12). Patent Owner’s declarant asserts that one of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in the telecommunications industry,” and does not agree industry experience specifically with respect to twisted-pair data cables would be necessary to qualify as having ordinary skill in the art. Ex. 2001 ¶ 26 (cited at Prelim. Resp. 22 n.6). Patent Owner states, however, that any differences between the parties’ proposed definitions “are insubstantial and do not impact the analysis of the issues presented.” Prelim. Resp. 22 n.6. For the purposes of this Decision, we adopt Petitioner’s proposal, because we find Petitioner’s statement of the level of ordinary skill in the art adequate and supported on this record. The level of ordinary skill in the art also appears to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,991,030 - PTAB · Nov 28, 2023 · IPR2023-00920 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted IPR on all challenged claims and all grounds after finding a reasonable likelihood that claims 12–18 would be unpatentable over Jiang, Jiang2, and Jiang3.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’218 patent. Thus, we institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Patent Owner argues that Petitioner’s “generic motivations” to “increase power savings” fail to provide sufficient motivation to modify Jiang’s power gating system to supply multiple voltages. Prelim. Resp. 33– 39. Patent Owner asserts that the devices in each reference operates effectively and that Petitioner has not offered any motivation to modify what Jiang has already achieved. Pet. 38–39. On the present record, we disagree with Patent Owner. Petitioner asserts that a POSITA would have understood that different portions of a chip have different power requirements and that providing high voltages to the portions requiring high voltages and providing lower voltages (as opposed to no voltage) to the portions of the rest of the chip that require lower voltages would result in power savings. See Pet. 26–27; Ex. 1003 ¶¶ 90–93. Whether it would have been obvious to replace Jiang’s global power mesh with a mesh having two separate power sources is an issue that is best resolved on a full record.” slip op. at 32
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“A reference patent or published patent application can be entitled to the benefit of its provisional application’s filing date for pre-AIA 35 U.S.C. § 102(e) prior art purposes on two conditions. First, the provisional application must provide sufficient support for at least one claim in the reference patent or published patent application. See Dynamic Drinkware, 800 F.3d at 1381 (“A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.”). Second, the provisional application must provide sufficient support for the subject matter relied upon for prior art purposes in the reference patent or published patent application. See In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (“[A]n applicant is not entitled to a patent if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application or U.S. non-provisional application.”); Ex parte Mann, 2016 WL 7487271, at *5 (PTAB Dec. 21, 2016) (stating that the party claiming priority also must show that the subject matter relied upon in the non-provisional is sufficiently supported in the provisional application [and that t]his subject matter test is in addition to the comparison of claims required by Dynamic Drinkware”); Here, Petitioner fails to sufficiently show that Chiu’s Provisional Application (Ex. 1011) provides written description support for either (1) any claim of Chiu or (2) the subject matter that Petitioner relies upon in Chiu for prior art purposes. Petitioner provides no comparison or analysis of the material disclosed in Chiu’s Provisional Application with either Chiu’s claims or the subject matter in Chiu that Petitioner relies upon in its unpatentability argument. See Prelim. Resp. Petitioner’s invitation to the Board to compare the disclosure of Chiu and Chiu’s provisional application is not sufficient to meet this burden. See Benitec Biopharma Ltd. v. Cold Spring Harbor Labs., IPR2016-00016, Paper 8 at 9 (PTAB Mar. 31, 2016) (stating the petitioner failed to provide sufficient evidence that the asserted reference qualified as prior art when it failed to provide expert testimony or sufficient evidence that the provisional application provides support for the claims in the asserted reference); Comcast Cable Commc'ns, LLC v. Promptu Sys. Corp., IPR2018-00345, Paper 10 at 25–26 (PTAB July 2, 2018) (stating the petitioner’s “barebones analysis” was insufficient to show “how the [provisional underlying the asserted reference] provides support for the subject matter relied upon [in the asserted reference]”). Accordingly, Petitioner has not shown that Chiu is entitled to the priority date of its provisional application, and thus has not sufficiently shown that Chiu qualifies as prior art to the ’218 patent.” slip op. at 29
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We disagree with Patent Owner. As noted above, claim element 12[c] recites “a global power mesh, coupling to the first local power mesh and the second local power mesh, to provide the power needed by the first power domain and the second domain separately.” Neither party has provided an express or detailed claim construction analysis of this claim language. Nor does the ’218 patent appear to indicate that the phrase recited in claim element 12[c] should be afforded any special definition. See Ex. 1001. A plain and ordinary reading of this phrase, however, indicates that the global power mesh must be able to provide power needed by the first and second power domains separately. Pet. 21–22; Ex. 1004, Abstract, 1–2, Fig. 1(b); Ex. 1003 ¶¶ 78–85. Petitioner sufficiently shows that Jiang’s global power mesh is able to provide power separately to the first and second power domains by selectively turning off and on each domain’s sleep transistors, each of which is provided power by the global mesh.14 Pet. 22–23 (citing Ex. 1003 ¶ 81). Dr. Subramanian explains that the use of sleep transistors between the global power mesh and the first and second local power meshes enables the global power mesh to power each domain “separately” by 14 Petitioner has sufficiently shown, and Patent Owner does not dispute, that Jiang teaches sleep transistors are independently operable. Pet. 22–23; Ex. 1004, Abstract, 1–2, Fig. 1(b); Ex. 1003 ¶¶ 81–85. selectively turning off each domain’s sleep transistor when desired. Ex. 1003 ¶ 81 (citing Ex. 1004, Abstract, 1, 2). Dr. Subramanian further explains that turning off the power to the local power mesh, through use of the sleep transistors, will necessarily turn off the power to the macro (power domain) underlying the partial local power mesh. Ex. 1003 ¶ 81. Thus, Petitioner’s argument and evidence that Jiang discloses connecting global power mesh power VDD to the gated macros (power domains) through the sleep transistors and the local meshes provides a sufficient showing that Jiang discloses a global power mesh that provides power to the power domains through the sleep transistors and local power meshes.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,006,218 - PTAB · Nov 6, 2023 · IPR2023-00879 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on all claims 1–20 and all asserted grounds, finding a reasonable likelihood that SMA would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon considering the Petition and the evidence of record, we determine that Petitioner has shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the claims challenged in the Petition. Accordingly, we institute inter partes review of all claims and all grounds asserted in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b) (2023). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. 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 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For the purpose of this Decision, we accept Petitioner’s undisputed contention that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, or a similar discipline and at least two years of design experience with circuit design.” Pet. 22 (citing Ex. 1007 ¶ 30); see Ex. 1007 ¶ 31. The level of ordinary skill in the art is further demonstrated by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,584,021 - PTAB · Oct 26, 2023 · IPR2023-00789 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted inter partes review of claims 1–5, 8, and 9 on all three § 103 grounds because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’245 patent. Thus, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham, 383 U.S. at 17–18. Petitioner argues that “[a]s of May 19, 2009, a person of ordinary skill in the art (“POSITA”) would have had a B.S.E.E. and at least 3-4 years of professional experience in the field of integrated circuit design; or an M.S.E.E. and 1-2 years of professional experience in the field of integrated circuit design; or a Ph.D. in electrical engineering.” Pet. 25–26 (citing Ex. 1003 ¶ 4). Although phrased slightly differently, Patent Owner provides essentially the same definition of a POSITA. In particular, Patent Owner asserts that “[a] person of ordinary skill in the art of this technology at the time of the invention would have had at least a bachelor’s degree in electrical engineering or an equivalent field and at least 3‒4 years of professional experience in the field of integrated circuit design.” Prelim. Resp. 14. Patent Owner further argues that “[s]omeone with additional education but less professional experience may qualify as a POSITA, such as someone with a master’s degree in electrical engineering and 1‒2 years of professional experience in the field of integrated circuit design or someone with a Ph.D. in electrical engineering.” Id. regarding the level of one of ordinary skill in the art. We also note that this definition of a POSITA appears to be consistent with the level of ordinary skill in the art that is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Based on the present record, we agree with Patent Owner that the term “spiral inductor” recited in the preamble is limiting. Without the preamble, the body of claim 1 does not recite a structurally complete invention. The body of claim 1 recites a number of “metal layers” having a collection of “segments,” number of via sets, and limitations requiring certain segments and vias to construct a number of shunt windings and a crossover region. Without the preamble, it is unclear from just the recitations in the body of claim 1 what field of art the claim relates to. The preamble is therefore necessary to provide context as to which field of art the recited limitations pertain so as to understand limitations in the claim body. As such, the term “spiral inductor” recited in the preamble is necessary to give life, meaning, and vitality to the claim. dependent claim 8, thus further indicating that the preamble of claim 1 is a necessary component of the claimed invention. See Pitney Bowes, F.3d at 1305 (stating that a preamble claim should be construed as limiting the scope of the claim “[i]f the claim preamble, when read in the context of the entire claim, recites limitations of the claim”); Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1358 (Fed. Cir. 2012) (“a preamble phrase that provides antecedent basis for a claim limitation generally limits the scope of the claim”).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“segment and the first set of vias construct a first shunt winding; the second segment, the fifth segment and the second set of vias construct a second shunt winding.” Ex. 1001, 9:59–62 (emphasis added). Petitioner argues that one of ordinary skill in the art would have understood that “shunt windings,” as claim 1 recites, means “windings in parallel.” Pet. 27. Petitioner contends that the ’245 patent describes a first segment, a fourth segment, and a first set of vias as constructing a first shunt winding and a second segment, fifth segment, and a second set of vias as constructing a second shunt winding, which are depicted in the drawings. Id. at 27–28 (citing Ex. 1001, 1:64–67, 4:22–24, 6:27–28, Figs. 2, 6B). According to Petitioner, “[t]he 245 patent distinguishes a ‘shunt winding’ from a ‘serial winding’” because the ’245 patent states “symmetric spiral inductor 500 is a multi-layer stacked spiral inductor combining the first inductor 510 (i.e., the serial winding) with the second inductor 610 (i.e., the shunt winding). . .” Id. at 28–29 (citing Ex. 1001, 6:14–17, Figs. 6A, 6B). Petitioner asserts that “[t]his distinction is consistent with how a common understanding of ‘shunt’ is to place components in parallel.” Id. at 29 (citing Ex. 1020; Ex. 1021; Ex. 1003 ¶¶ 89, 113–116). Petitioner further argues that “patents and technical articles confirm this understanding.” Id. at 29–30 (citing Ex. 1018 ¶ 6, 22, 23; Ex. 1030, 1, 7, 9). Petitioner also contends that this is consistent with how Patent Owner interprets the claim language due to the interchangeable use of “shunt winding” and “parallel winding” in the Taiwanese priority application. Id. at 30 (citing Ex. 1023, 9, 23; Ex. 1003 ¶¶ 117–120). Patent Owner does not dispute Petitioner’s claim construction. At this stage of the proceeding, we agree with Petitioner’s undisputed contentions and construe “shunt windings” to mean windings in parallel.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,936,245 - PTAB · Oct 26, 2023 · IPR2023-00788 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted inter partes review of claims 1–5 and 9 on both asserted obviousness grounds, based on a reasonable likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’582 patent. Thus, we institute an inter partes review of all challenged claims of the ’582 patent on all grounds asserted in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham, 383 U.S. at 17–18. Petitioner argues that “[b]y April 16, 2014, a person of ordinary skill in the art (‘POSITA’) would have had a B.S.E.E. and at least 3-4 years of professional experience in the field of integrated circuit design; or a M.S.E.E. and 1-2 years of professional experience in the field of IC design; or a Ph.D. in electrical engineering.” Pet. 31 (citing Ex. 1003 ¶ 4). Patent Owner does not dispute this proposed definition. See generally Prelim. Resp. In light of the record before us, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art. We also note that this level of ordinary skill in the art appears to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention” and “after reading the entire patent” and its prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313, 1321 (Fed. Cir. 2005) (en banc). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner states that it applies “herein the understanding of the claims set forth in Realtek’s infringement chart in the ITC Investigation.” Pet. 34 (citing Ex. 1034). Petitioner otherwise does not assert any explicit claim construction but states that it reserves “the right to challenge Realtek’s proposed constructions in litigation.” Id. Patent Owner does not provide any express claim construction for the challenged claims. See generally Prelim. Resp. We determine no express claim construction is required at this stage of the proceeding.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“combination of Muh and Niknejad. Pet. 79–110. We have reviewed Petitioner’s argument and evidence, which we discuss below, and are persuaded that Petitioner has sufficiently shown that each of the limitations of claim 1 are taught or suggested by the combination of Muh and Niknejad, and that Petitioner has articulated a reasonable rationale for combining the references to arrive at claim 1, notwithstanding Patent Owner’s arguments to the contrary.” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,590,582 - Intel Corporation v. Bitmicro, LLCInstitutedPTAB · Oct 24, 2023 · IPR2023-00781 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1, 2, 11, and 12 on all asserted grounds, finding a reasonable likelihood that claims would be unpatentable over Hosomi and Sato.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’243 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Petitioner identifies Intel Corporation as the real party-in-interest. Pet. 106. Patent Owner identifies BiTMICRO, LLC, as the real party-in-interest. Paper 4, 2. Based on the current record, we determine that Petitioner has established compliance with the statutory requirement under 35 U.S.C. § 312(a)(2) to identify all real parties in interest. C. The ’243 Patent” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the pertinent art “would have had (1) a bachelor’s degree in electrical engineering or similar discipline, and two to three years of work experience in semiconductor packaging or (2) a master’s degree with one or more years of experience in those fields.” Pet. 5 (citing Thompson Decl. ¶ 68). Patent Owner does not address the level of skill of the ordinary artisan. See generally Prelim. Resp. We regard Petitioner’s definition as consistent with the ’243 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Therefore, for the purpose of this decision, we adopt Petitioner’s formulation. C. Claim Construction” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that two terms require construction: “a plurality of modules each comprising,” and “passive port.” Pet. 6–8. 1. “a plurality of modules each comprising” Petitioner contends this term “is not part of the preamble and should be construed as ‘each module in the stacked module comprising.’” Pet. 6. Patent Owner contends the term is part of the preamble and not a limitation of the claim. Prelim. Resp. 10. Patent Owner asserts that “Petitioner incorrectly argues that the effect of its proposed construction means that each module in a stacked module must be identical in structure,” which “requires each module in a stacked module to possess every claimed feature.” Id. 2. “passive port” Petitioner contends “passive port” should be construed as “connection between a passive ball on one surface of a SDRAM module and a passive pad on another surface of the same SDRAM module.” Pet. 7.” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,826,243 - Apple Inc. v. Immervision, Inc.InstitutedPTAB · Aug 1, 2023 · IPR2023-00472 · APJ Kristina M Kalan · IPR · Institution
Instituted inter partes review of claims 1–7 on all asserted grounds: anticipation and/or obviousness based on Thibault, Matsusaka, and Kim.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“used to compensate” language is an “intended use,” we agree with Patent Owner that the language including and following the “being used to compensate” language of claim 1 results in a structural limitation. Per the language of claim 1, the location of the “zone” is keyed to an area of the image where the quality drops due to a drop either of relative illumination or of MTF, and where the image magnification takes effect. The language of claim 1 requires that the zone be “intentionally” created. Within this “zone,” lower or higher object to image magnification (compared to linear targeted resolution) is required depending on the conditions. The “being used to compensate” language describes the conditions (i.e. lower relative illumination or lower MTF) that lead to the intentional creation of the “zone” where the image magnification is required. As Patent Owner notes, the “being used to compensate” language explains “how the created zone is arranged within the field of view of the optical apparatus.” Prelim. Resp. 11. This “tells us something about the structural requirements” of the zone intentionally created within the apparatus. K-2 Corp., 191 F.3d at 1364. Accordingly, we decline to view the “being used to compensate” language of claim 1 as an “intended use.” Any claim construction at this stage in the proceeding is preliminary, and our final determinations as to claim construction will be made on the full record, as developed during trial.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a Bachelor’s degree in an academic area emphasizing physics, optical engineering, electrical engineering and/or a similar discipline, and at least five years of experience in developing and designing optical imaging systems and have familiarity with image processing algorithms and optical design software” and that “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Pet. 8 (citing Ex. 1003 ¶ 15). Patent Owner states that solely for purposes of the Preliminary Response, it “does not object to Petitioner’s definition of a POSA [person of ordinary skill in the art].” Prelim. Resp. 10. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“that Petitioner’s comparison of Thibault’s Figure 6 and the ’120 patent’s Figure 7 (above), particularly with respect to the downward resolution curve circled in green, supports Petitioner’s assertion that Thibault’s apparatus meets the “being used to compensate” language. Id. at 30–31. We are also persuaded that Petitioner’s comparison of Thibault’s Figure 6 and the ’120 patent’s Figure 7, in view of the language of the ’120 patent (the “downward curve between maximum value 712 and position 714 allows the lens system to have a higher relative illumination value toward the edge of the field of view,” Ex. 1001, 6:36–41), supports Petitioner’s assertion that Thibault’s apparatus “would therefore have the same impact on relative illumination as described in the ’120 Patent.” Id. at 31 (citing Ex. 1003 ¶ 123). Although Patent Owner argues that “slope alone cannot equate to the claimed magnification zones” (Prelim. Resp. 16), at this stage in the proceeding we have unrebutted testimony from Petitioner’s declarant, providing reasoning supporting Petitioner’s arguments about Thibault’s disclosures and limitation [1e]. Pet. 25–32 (citing Ex. 1003 ¶¶ 117–124). On this record, we are persuaded that Petitioner establishes a reasonable likelihood of prevailing on its arguments that Thibault discloses and/or renders obvious the limitations of claim 1. On the present record, Patent Owner does not substantively dispute Petitioner’s arguments as to dependent claims 2–7. Prelim. Resp. 13–18. We have reviewed Petitioner’s arguments and the cited evidence, and, on the present record, Petitioner shows sufficiently that Thibault discloses the limitations of claims 2–7. Accordingly, Petitioner shows a reasonable likelihood of prevailing on its argument that claims 1–7 would have been anticipated by or obvious in view of Thibault.” slip op. at 29
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). A “prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,795,120
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.