- Avx Corporation / Avx Filters Corporation v. Greatbatch, LtdAll claims unpatentablePTAB · Oct 21, 2015 · IPR2014-00697 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1, 2, 4, 6, 7, 9, 11, 13–20, 23, 25, and 26 are unpatentable as obvious over Stevenson and Hazzard, with claims 6, 7, 18, and 19 also obvious over Colburn.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Mr. Galvagni’s testimony is consistent with Patent Owner’s argument that an electrical design expert would be involved in the design of the electrical connections of the feedthrough capacitor assembly, and with the prior art of record, which discloses various methods of connecting, arranging, and electrically coupling the components of the disclosed feedthrough filter capacitor assemblies. See, e.g., Ex. 1001, 1:6–8, 4:66–5:4, 10:14–28; Ex. 1012, 1:27–33, 4:36–43, Fig. 16. Thus, we conclude that a person of ordinary skill in the art would have a degree in electrical engineering, chemistry, or physics, or a related field, and would have work experience in the electrical or structural design of EMI filter capacitors or assemblies.4 4 Patent Owner asserts a level of ordinary skill in the art that is higher than that asserted by Mr. Galvagni, including “advance knowledge” of electrical filtering concepts. PO Resp. 3. We note that, in general, a lower level of skill in the art favors a determination of nonobviousness, while a higher level of skill favors a finding of obviousness. See Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“II. ANALYSIS A. Claim Construction In the Decision to Institute, we determined that resolution of the issues presented in the Petition did not require explicit construction of any claim terms. Dec. on Inst. 8. We did, however, provide guidance as to the scope of the term “feedthrough filter capacitor.” Id. at 8–9. During trial, neither party asserted that the Board’s prior discussion of “feedthrough filter capacitor” was in need of revision or that any claim terms required construction. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (noting that only claim terms that are in controversy need be construed, “and only to the extent necessary to resolve the controversy”).” slip op. at 6
- Expert testimonyPetitioner expert creditedDenied
“As discussed above, we are not persuaded that a person of ordinary skill in the art must be an electrical designer of EMI filter capacitors, as asserted by Patent Owner. Moreover, a declarant’s expertise and experience need not match perfectly the experience and education of a person of ordinary skill in the art to provide testimony. SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1373 (Fed. Cir. 2010). The declarant must, instead, have sufficient “knowledge, skill, experience, training, [and] education” of such specialized nature to assist the trier of fact to understand the evidence. Id. (quoting Fed. R. Evid. 702). Mr. Galvagni testifies that he has over 50 years of experience in the field of capacitors, including EMI filter capacitors, and has published numerous technical articles and papers in this field, including on the topics of “low inductance capacitors, actuators, and passive components.” Ex. 1002 ¶ 3. He also testifies that he is named as an inventor on at least 55 U.S. Patents related to capacitors, filters, or similar electronic structures, and has work experience in the design of filter capacitors similar to the ’627 patent, including capacitors with internally connected common ground planes, multiple capacitor access through vertical feeds, and non-circumferential terminations. Ex. 1002 ¶ 5; Ex. 1018 ¶ 8; Ex. 1024 ¶¶ 3, 6, 10. Petitioner contends this work experience in feedthrough filter capacitor construction and design would be helpful in understanding the construction and design of the EMI filter capacitor assemblies claimed in the ’627 patent. Resp. to Mot. to Excl. 3. The claims of the ’627 patent are directed to a feedthrough filter capacitor assembly constructed of various individual components. Ex. 1001, 10:64–11:8. Upon review of Mr. Galvagni’s work experience, including his experience relating to the construction and manufacture of EMI filters, we conclude that an adequate relationship exists between Mr. Galvagni’s education and work experience and the claimed invention. See SEB S.A., 594 F.3d at 1373 (finding no error in admitting testimony where the proffering party established an adequate relationship between the expert’s work experience and the claimed invention). Accordingly, we deny Patent Owner’s Motion to Exclude the testimony of Mr. Galvagni.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“The evidence of record, however, demonstrates that internally grounding a feedthrough capacitor was known in the art, as was the decreased attenuation from such a design. Modifying a known device, using a known method, to achieve a predictable result, is obvious, even if one is willing to accept a known loss in performance others sought to avoid. KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).” slip op. at 16
Patent outcomesUS 5,905,627 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 5,905,627 - Ubisoft Entertainment SA v. Princeton Digital Image CorporationAll claims unpatentablePTAB · Oct 16, 2015 · IPR2014-00635 · APJ Benjamin D M Wood · IPR · Final written decision
Claims 1–13, 15–18, and 21–23 are unpatentable based on the grounds decided in the final written decision.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“parenthetical statements of intent” into our construction, because the ’129 patent expressly defined “virtual environment” to include those statements. Dec. on Inst. 8. Petitioner fails to persuaded us to modify that construction; thus, as in the Decision on Institution, we adopt the Specification’s express definition of “virtual environment,” which is “a computer-simulated environment (intended to be immersive) which includes a graphic display (from a user’s first person perspective, in a form intended to be immersive to the user), and optionally also sounds which simulate environmental sounds.” Id. (quoting Ex. 1001, 1:22–33). However, we agree with Petitioner that the term should be construed to encompass the specific embodiments that the ’129 patent describes. As the Federal Circuit has noted, “the specification is always highly relevant to the claim construction analysis,” and, in fact, “is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (internal citation and quotation marks omitted). Here, given that the Specification does not elucidate what it means by “intended to be immersive to the user,” and given that the phrase is subjective, we find the specific embodiments discussed in the Specification to be particularly informative. As part of “the preferred VR program,” Figure 11 depicts a group of simple cylindrical objects that appear to change height in response to the sound of drums. Ex. 1001, 18:16–33. Also in the “preferred VR program embodiment,” words representing the lyrics of a song are displayed as the words are vocalized. Id. at 18:49–53. Further, as Petitioner notes, the Specification teaches that the graphic display generated by a VR system can be either two-dimensional or three-dimensional, and can be displayed on a single flat screen display that need not be stereoscopic. Pet. 4 (citing Ex. 1001, 1:34–35, 8:7–13).7 Given that a claim construction that excludes a preferred embodiment is “rarely, if ever, correct,” Vitronics, 90 F.3d at 1583, it is appropriate to construe “virtual environment” broadly enough to encompass these displays. slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for petitioner
“Having reviewed the ’129 patent, we determine that the Specification clearly associates the following structure with the first two recited functions: (1) a source of music and/or a control track, such as a four-track audio tape, video-game cartridge or compact disk (CD); and (2) a processor programmed to generate control signals from the input music and/or control track and send the control signals to the VR processor. For example, in discussing Figure 1, the Specification states: 10 The parties make essentially the same arguments with respect to two other means-plus-function limitations: “means for receiving said music signal in digital or analog form, and processing said music signal to produce control information for modification of objects in the virtual environment” (claim 13); and “means for supplying the music signal to the means for producing the virtual environment” (claim 18). See PO Resp. 15–16, 21–22; Pet. Reply 5–8. The analysis that follows applies equally to these limitations, and we determine that the structure that corresponds to the “supplying” function of claim 12 also corresponds to the functions recited in these limitations. An analog-to-digital conversion circuit within Acoustic Etch unit 3 receives and digitizes a music signal from source 1. The music signal is optionally accompanied by one or more prerecorded control tracks corresponding to the music signal. . . . Analyzer 5[11] within Acoustic Etch unit 3 receives the digitized output of [music source 1 via analog-to-digital converter 4], and generates control signals by processing the music signal (or both the music signal and the control tracks). The control signals output from analyzer 5 are supplied through interface 6 to VR processor 7 for use within processor 7 for controlling generation of the virtual environment.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“There is no dispute that Tsumura’s teaching of storing music data, including “stored pitch data” and other vocal data relating to the vocal features of the music, corresponds to claim 10’s step of “prerecording a control track having audio and/or control information corresponding to an audio signal;” stored music data constitute the control track, and the vocal data, including the pitch and strength data, constitute the claimed control information that corresponds to an audio signal. Further, we agree with Petitioner that Tsumura teaches operating the computer system in accordance with this control track, in that, among other things, the computer system will display messages to a user that depend on a comparison of the stored data and the user’s vocal performance. We have considered Patent Owner’s contrary evidence and arguments, but do not find them persuasive. Neither Patent Owner nor Dr. Kesan explains why generating and displaying messages to a user based on the comparison of stored music data and the user’s actual voice does not constitute ”operating the computer system in response to said prerecorded control track,” as recited in claim 10. Given Dr. Kesan’s failure to support his position with any analysis, we accord that position little weight. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (affirming the Board’s determination to give little weight to an expert’s “broad conclusory statements”).” slip op. at 23
- Expert testimonyPatent owner expert discountedDecided for petitioner
“We have considered Patent Owner’s contrary evidence and arguments, but do not find them persuasive. Neither Patent Owner nor Dr. Kesan explains why generating and displaying messages to a user based on the comparison of stored music data and the user’s actual voice does not constitute ”operating the computer system in response to said prerecorded control track,” as recited in claim 10. Given Dr. Kesan’s failure to support his position with any analysis, we accord that position little weight. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (affirming the Board’s determination to give little weight to an expert’s “broad conclusory statements”).” slip op. at 23
Patent outcomesUS 5,513,129 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 5,513,129 - PTAB · Oct 8, 2015 · IPR2015-01025 · APJ Justin Busch · IPR · Institution
The Board denied institution because Bruwer did not teach the claimed touch-sensor-triggered find-in-the-dark indication, and Petitioner gave no persuasive reason to modify it.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“evidence of record, and we determine Petitioner has not demonstrated a reasonable likelihood of prevailing in establishing that claims 1, 3, and 20 are unpatentable as obvious in view of Bruwer. Although Patent Owner does not specifically contest Petitioner’s assertions that Bruwer’s disclosures render the subject matter of the challenged claims obvious we find Petitioner has not met its burden of establishing that the subject matter of the challenged claims would have been obvious in view of Bruwer.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Figure 11 and its accompanying description, however, describe a circuit that activates the FITD indication either “when switch 1111 is closed by the user” or “[w]hen microchip 1113 pulls the line 1114 to high.” Ex. 1004, 13:29–30. Thus, contrary to Petitioner’s assertion, the portion of Bruwer cited by Petitioner and Dr. Horenstein does not disclose that the microchip activates the FITD indication in response to input from switch 1111, as required by claim 1. Although Petitioner provides a rationale as to why it would have been obvious to activate the FITD indication when the load is inactive, Petitioner provides no persuasive analysis or rationale for modifying Bruwer’s disclosed circuit to teach that the “microchip, in response to at least a signal from the touch sensor, is configured for activating a visible find-in-the-dark indication, when the load is not activated,” as recited in claim 1.” slip op. at 6
§ 103 obviousnessPatents in suitUS 7,265,494 - Sony Corporation / Samsung Electronics Co., Ltd. et al. v. Surpass Tech Innovation LLCInstitution deniedPTAB · Aug 26, 2015 · IPR2015-00862 · APJ Sally C Medley · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–3 unpatentable; the asserted combinations did not disclose applying data impulses via the scan line as claimed.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“A patent claim may be corrected through claim construction “only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.” Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003). But “courts may not redraft claims, whether to make them operable or to sustain their validity.” Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004). The burden is on Petitioner to show that a claim contains the kind of error that is considered a drafting error. 37 C.F.R. § 42.20(c).” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner has not shown how any of the relied upon references discloses applying data impulses via the scan line as claimed, nor has Petitioner shown that a person having ordinary skill in the art at the time of the invention would have known of the claimed feature. Petitioner’s reliance on Nitta’s disclosure, for example, of a source driver that conveys a plurality of data impulses to the pixels of an LCD panel via corresponding data lines (Pet. 26, 52) for both proposed grounds of unpatentability is misplaced, as that is not what is claimed. For these reasons, the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing that claims 1 and 2 are obvious over Suzuki, Nitta, and Lee, or claims 1 and 3 are obvious over Jinda, Nitta, and Lee. III. CONCLUSION For the foregoing reasons, we conclude that there is not a reasonable likelihood that Petitioner would prevail in challenging claims 1–3 of the ’843 patent. IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We find that the underlying supporting evidence upon which Mr. Credelle relies is insufficient to support the assertion that a person of ordinary skill in the art at the time of the invention would have understood the recitation of “scan line” in original claim 1 to be a typographical error, and that what was meant instead was “data line.” See 37 CFR §§ 42.1(d), 42.65(a). Merely directing attention to a conventional LCD arrangement that shows data voltages applied to data lines, as opposed to scan lines, is insufficient to explain why a person of ordinary skill in the art would have understood the claimed invention also to convey necessarily this arrangement. Here, for instance, we would want to know whether the claim 1 phrase is unable to be construed in any other way than as the proposed corrected way. In other words, Petitioner’s evidence of showing a conventional LCD arrangement does not appear to us to be particularly relevant in informing us of whether LCD arrangements must necessarily be configured in such a manner or they will not function to drive an LCD display, for example. Even Petitioner’s declarant opines that the “conventional” arrangement seen in the O’Mara Textbook is “typical,” (Ex. 1015 ¶ 35), leading us to believe that other, albeit nonconventional arrangements, were possible though not necessarily “typical” at the time of the invention for driving LCD pixels.” slip op. at 6
Claim constructionPatents in suitUS 7,202,843 - PTAB · Apr 20, 2015 · IPR2014-01331 · APJ Beth Z Shaw · IPR · Rehearing
The Board denied Ericsson’s rehearing request, leaving unchanged its decision not to institute inter partes review because the petition did not adequately show the claimed MAC-layer resource allocator.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply.” slip op. at 2
NonePatents in suitUS 6,640,248
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.