• Vivint, Inc. v. SB IP Holdings LLCAll claims unpatentable
  PTAB · Oct 16, 2023 · IPR2022-00814 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–6 and 9–21 are unpatentable because Vivint proved each challenged claim unpatentable by a preponderance of the evidence.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner and its expert rely on conclusory statements regarding a person of ordinary skill in the art. Petitioner cites exclusively to its expert (Petition at 5), and Petitioner’s expert merely lists a handful of factors in stating that he has taken those factors “into account.” Hochwald Decl. ¶¶ 21–24. This is a wholly conclusory opinion that is devoid of any analysis or even explanation for how the expert’s opinion was reached. Hochwald lists five factors but fails to provide any analysis of those factors with which the Board can determine whether his opinion “is based on sufficient facts or data; . . . is the product of reliable principles and methods; and . . . reliably applied the principles and methods to the facts of the case.” Fed. R. Evid. 702. Accordingly, Hochwald’s conclusory opinion should be given no weight. One World Tech. Inc. v. Chevron Ltd., IPR2020-00885, 2020 WL 6542022, Paper 21 at 29 (P.T.A.B. Nov. 6, 2020) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Petitioner and its expert rely on conclusory statements regarding a person of ordinary skill in the art. Petitioner cites exclusively to its expert (Petition at 5), and Petitioner’s expert merely lists a handful of factors in stating that he has taken those factors “into account.” Hochwald Decl. ¶¶ 21–24. This is a wholly conclusory opinion that is devoid of any analysis or even explanation for how the expert’s opinion was reached. Hochwald lists five factors but fails to provide any analysis of those factors with which the Board can determine whether his opinion “is based on sufficient facts or data; . . . is the product of reliable principles and methods; and . . . reliably applied the principles and methods to the facts of the case.” Fed. R. Evid. 702. Accordingly, Hochwald’s conclusory opinion should be given no weight. One World Tech. Inc. v. Chevron Ltd., IPR2020-00885, 2020 WL 6542022, Paper 21 at 29 (P.T.A.B. Nov. 6, 2020) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 10

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

    “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Kahn, 441 F.3d at 988.” slip op. at 28

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

    “more than merely a conclusion that one with ordinary skill in the art would have combined the teachings of Menard and Vaios. Rather, Petitioner provides multiple reasons and explains why one of ordinary skill in the art would have done so, i.e., (1) improved aesthetics; (2) ease of implementation and modification of a graphical user interface; (3) lack of reliance on expensive specialized control hardware; and (4) consistent and convenient control and direction of a surveillance system irrespective of the location of the user. Id. It is misplaced for Patent Owner not to recognize these stated reasoning of Petitioner, particularly where, as here, Patent Owner does not dispute that they all do yield advantages for combining Menard and Vaios the way Petitioner proposes.” slip op. at 39

  Patent outcomesUS 8,144,183 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,144,183
• Apple Inc. / Samsung Electronics Co., Ltd. et al. v. Smart Mobile Technologies LLCAll claims unpatentable
  PTAB · Sep 26, 2023 · IPR2022-00980 · APJ Paul J Korniczky · IPR · Final written decision

  Claims 1–3, 5, 6, 10, 13, and 16–18 are unpatentable as obvious over the Rautiola-based grounds; the Board did not reach the Grube, Gillig, and Cohn ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s proffered level of skill discussed by Petitioner’s declarant. See PO Resp. We adopt Petitioner’s definition of the level of ordinary skill for the purposes of this Decision.” slip op. at 9

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

    “Because Petitioner shows that the combined teachings of Rautiola, Regnier, and Sainton disclose “dynamic conversion” from a first function to a second function, and “switch[ing] dynamically” between local networks and public carrier networks under Petitioner’s and Patent Owner’s proposed construction, claim construction of “dynamic” and “dynamically” is not needed to resolve the present controversy. See Nidec, 868 F.3d at 1017.” slip op. at 11

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “To qualify as prior art for an obviousness analysis, a reference must qualify as “analogous art,” i.e., it must satisfy one of the following conditions: (1) the reference must be from the same field of the inventor’s endeavor; or (2) the reference must be reasonably pertinent to the particular problem with which the inventor is involved. K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012).” slip op. at 14

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

    “We agree with Petitioner that the combined teachings of Rautiola and Regnier disclose a server which dynamically converts between two functions under Petitioner’s proposed construction of dynamic. Rautiola, for example, teaches that an office server distributes “database services and voice mail and e-mail services” to a user’s wireless device, such as a laptop. Ex. 1005, 4:30–34, Fig. 2; Ex. 1003 ¶ 160. Regnier teaches a technique where a server provides a “client portion” of an application that is “downloaded from server 110 to terminal 130 upon a request from the user.” Ex. 1006, 1:35–40, 5:52–54; Ex. 1003 ¶ 162. Regnier controls whether a client device can use and/or access various services “on a dynamic basis.” Ex. 1006, Abstract, 10:32–39. For example, “[i]ndividual application programs may internally configure their possible choices,” such that the programs available to a user change on “a dynamic basis” (i.e., programs available change when needed and in real time). Ex. 1006, Abstract. Regnier also can “allow menu items to change on a dynamic basis, whenever a system administrator modifies a profile, or by some other factor, such as time of day” — such that the services available to a device can be changed including whenever (i.e., in real time) an administrator (i.e., as needed) changes a user profile. Id. at 10:32–39, 10:49–51. Regnier further “allow[s] . . . users to choose dynamically among said shared system resources” — i.e., users can choose to convert the device’s functionality when needed and in real time. Id. at 10:49–51; Ex. 1066 ¶¶ 23–24. Therefore, based on these disclosures, we credit Dr. Kotzin’s testimony that Rautiola in view of Regnier discloses a server that enables dynamically converting a client between a plurality of functions (e.g., office telephone, database, e-mail) when and as needed and in real time (i.e., Petitioner’s proposed construction of “dynamic”). Ex. 1066 ¶ 25; see also Ex. 1003 ¶¶ 159–172.” slip op. at 27

  Patent outcomesUS 8,761,739 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,761,739
• Apple Inc. v. Scramoge Technology Ltd.All claims unpatentable
  PTAB · Sep 11, 2023 · IPR2022-00573 · APJ Michelle N Wormmeester · IPR · Final written decision

  Claims 1–22 and 28 are unpatentable: Flowerdew anticipates claims 1, 2, 8–11, and 28; the remaining claims are unpatentable as obvious over the stated combinations.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “102 1, 2, 8–11, 28 1, 2, 8–11, 28” slip op. at 112

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

    “recited switch element of claim 12. We also are persuaded that Petitioner’s proffered reasoning for modifying Flowerdew’s charging system to include Jang’s inverter, namely, to provide a way to implement Flowerdew’s digital driver, is sufficient to support the legal conclusion of obviousness. See In re Kahn, 441 F.3d at 988.” slip op. at 38

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “1. Qualification of Baarman as Prior Art The parties dispute whether Baarman, a pre-grant publication,” slip op. at 57

  Patent outcomesUS 7,825,537 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 7,825,537
• Apple Inc. v. Scramoge Technology Ltd.All claims unpatentable
  PTAB · Jul 27, 2023 · IPR2022-00351 · APJ Michelle N Wormmeester · IPR · Final written decision

  Claims 1, 2, 5–7, 14–16, 19, and 20 are unpatentable: claims 1, 2, 5, 6, 14–16, 19, and 20 as obvious over Suzuki, and claim 7 as obvious over Suzuki and Park.

  RulingsFinal written decision

  • Skill levelOther

    “III. DISCUSSION A. Claim Construction In an inter partes review proceeding, we construe a claim of a patent “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).” See 37 C.F.R. § 42.100(b) (2021). Applying that standard, we construe the claim in accordance with its ordinary and customary meaning as would have been understood by one of ordinary skill in the art, taking into account the specification and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 1 The Leahy-Smith America Invents Act (“AIA”) amended 35 U.S.C. § 103, effective March 16, 2013. See Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011). Because the application from which the ’842 patent issued claims the benefit of priority to an application that was filed before this date, the pre-AIA version of § 103 applies. 2 Suzuki, U.S. Patent No. 8,421,574 B2, issued Apr. 16, 2013 (Ex. 1005). 3 Park, U.S. Patent No. 8,922,162 B2, issued Dec. 30, 2014 (Ex. 1006). Petitioner asserts that “no terms require specific construction.” Pet. 10. Patent Owner does not respond. See generally PO Resp. For purposes of this Decision, we conclude that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6

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

    “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).” See 37 C.F.R. § 42.100(b) (2021). Applying that standard, we construe the claim in accordance with its ordinary and customary meaning as would have been understood by one of ordinary skill in the art, taking into account the specification and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). slip op. at 6

  • BurdenDecided for patent owner

    “Petitioner’s burden to show that [Patent Owner is] not entitled to the Korean date.” Tr. 44:3–4; see also PO Resp. 23 (“Petitioner cannot carry its burden to show that the ’842 patent should not be given its earliest alleged priority date to show that Park is prior art.”). That is not so. There are two distinct burdens of proof, namely, a burden of persuasion and a burden of production. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Petitioner carries “the burden of persuasion to prove unpatentability by a preponderance of the evidence,” and that burden never shifts to Patent Owner. Id. at 1379. The burden of production, however, is a shifting burden, the allocation of which depends on where in the process of trial the issue arises. See id. Here, Petitioner starts with the initial burden of production, which it satisfies by arguing obviousness based on its assertion that Park is prior art, as discussed above. See id. The burden of production then shifts to Patent Owner to argue or produce evidence that Park is not prior art because the challenged claims are entitled to the benefit of a filing date earlier than Park’s effective date of December 6, 2011. See id. at 1380. To shift the burden back to Petitioner, Patent Owner needs to present evidence to support an argument that the specification of the Korean application describes an invention understandable to an ordinarily skilled artisan and that the inventor actually invented the invention claimed in the ’842 patent. See Ariad Pharms., 598 F.3d at 1351; see also Dynamic Drinkware, 800 F.3d at 1378. Patent Owner does not do that here. Notably, Patent Owner does not address at all whether the disclosure of the Korean application provides support for claim 7 of the ’842 patent. See generally PO Resp. Indeed, counsel for Patent Owner admitted at oral argument that he did not know whether the record even contains an English language translation of the Korean application. Tr. 42:25–43:1 (counsel for Patent Owner referring to “the Korean patent application, which I’m not aware of whether or not we have a translation of that”). Without such translation, there can be no “objective inquiry into the four corners of the specification.” See Ariad Pharms., 598 F.3d at 1351. Counsel for Patent Owner further acknowledged that Patent Owner did not meet this burden of production. Tr. 44:7–13. We asked counsel at oral argument, “Well, if we disagree with you and say you have the burden to show support in the Korean application, then you lose on that issue?” Id. at 44:7–9. Counsel responded, “Well, yes, Your Honor. . . . If you disagree with me on that position, yes, that is correct.” Id. at 44:10–13. Because Patent Owner neither argues nor presents evidence that claim 7 is entitled to the benefit of the filing date of the Korean application, we determine that Petitioner shows that Park qualifies as prior art.” slip op. at 37

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for patent owner

    “Under 35 U.S.C. § 119, “the claims set forth in a United States application are entitled to the benefit of a foreign priority date if the corresponding foreign application supports the claims in the manner required by section 112, ¶ 1.” In re Gosteli, 872 F.2d 1008, 1010 (Fed. Cir. 1989). Section 112, ¶ 1 contains a written description requirement, which is satisfied here if “the disclosure of the [foreign] application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art,” and, “[b]ased on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id.” slip op. at 36

  Patent outcomesUS 10,622,842 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR
  Patents in suitUS 10,622,842
• Juniper Networks, Inc. v. Smart Path Connections, LLCAll claims unpatentable
  PTAB · May 19, 2023 · IPR2022-00240 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Cohen, Cao, and Malis; the Board did not find claims 1–20 unpatentable over Choi, Lewin, and Zelig.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “level of ordinary skill in the art. Prelim. Resp. 16–17. In the Decision to Institute, we adopted Petitioner’s articulation of the level of ordinary skill in the art, and reasoned that Petitioner’s assertion is supported by the testimony of Dr. Lavian and appears consistent with the content of the applied prior art references, citing Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Post institution, neither party objected to or disputed our adopted level of ordinary skill in the art. See generally Reply; PO Resp. 16. That level is consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d at 1354–55. Consequently, we adhere to the level of ordinary skill in the art as adopted in the Decision to Institute, i.e., Petitioner’s statement of the level of ordinary skill in the art. C.” slip op. at 10

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

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. 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))). Petitioner has not proposed a specific construction for any claim term, and states that no express construction is needed. Pet. 7. Further, Petitioner states that it understands each claim term according to its ordinary and customary meaning. Id. Patent Owner states: “Patent Owner does not propose any claim term [to] depart from its ordinary and customary meaning.” PO Resp. 8. We determine that no express claim construction of any claim term is necessary for this Decision.” slip op. at 11

  • BurdenDecided for patent owner

    “limitation [1.2]. First, Petitioner has shown that there are separate inputs for synchronous data and non-synchronous data, not that there is any means or step within Choi’s integrated communication system to determine whether the data it receives is synchronous or non-synchronous. Second, as we discussed above, the antecedent basis for “the data” is the payload carried by the time-division-multiplexed (“TDM”) input signal of limitation [1.1]. The payload data in that input route does not go through Ethernet Media Access Controller 202 or Ethernet Controller 504. Thus, the non-synchronous Ethernet data Petitioner refers to in Choi is not a part of “the data” relied on by Petitioner to meet limitation [1.1]. Third, with respect to the text from Choi quoted by Petitioner (Pet. 70), “data is separated into PDH/SDH/SONET data and Ethernet data” (Ex. 1008 ¶ 17), Petitioner’s reliance is misplaced, because there is no indication that the identified description relates to the TDM data received at PDH/SDH/SONET Line Interface Unit 201. Rather, the description relates to data received from the optical fiber at the other end of the integrated communication system, where synchronous and non-synchronous data have already been combined into one data stream. For instance, Choi states: “[T]he combined PDH/SDH/SONET and Ethernet data stream received from the optical fiber are demultiplexed within the integrated communication system and send to the PBX (508) and server (507) respectively.” Ex. 1008 ¶ 22.” slip op. at 28

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Where there is a separate input for non-synchronous data, as in Choi, Petitioner provides no reasonable basis for one with ordinary skill in the art to expect to find any non-synchronous data in the TDM SONET input received at line interface unit 201 for which the only described input is synchronous voice data. That is so notwithstanding that SONET frames are capable of carrying non-synchronous data. We find that no reasonable motivation is provided by Petitioner for one with ordinary skill in the art to provide or add a determining step that acts on the TDM SONET input received at line interface unit 201. Further, we are not persuaded by Petitioner’s assertion that it would have been obvious to one with ordinary skill in the art, in light of Choi and Lewin, to determine whether the data includes synchronous or non-synchronous data. Pet. 71. First, as presented by Petitioner, Choi discloses separate inputs for Ethernet data, which is nonsynchronous, sent through Ethernet Media Access Controller 202, and for synchronous data supplied to PDH/SDH/SONET Line Interface Unit 201. Id. at 68. Thus, Choi’s system is not comparable with or similar to Lewin’s system which has a common input providing both synchronous voice data and nonsynchronous packet data. Second, in Lewin’s system it is necessary to separate the voice data from the packet data so that the voice data can be routed to a PBX and the identified by Petitioner in Choi is the opposite. Id. (annotating Choi’s Figure 2). Through the separate inputs identified by Petitioner, id., Choi seeks to combine synchronous data and nonsynchronous data to send to a network over optical fiber. Ex. 1008 ¶¶ 16, 18. The splitting function of Lewin has no reasonable application at the input locations identified by Petitioner. (4) Conclusion For reasons discussed above, we are not persuaded by Petitioner that Choi discloses or reasonably would have suggested limitation [1.2]. We also are not persuaded by Petitioner that Choi in combination with Lewin satisfies or accounts for the requirement of limitation [1.2].” slip op. at 31

  Patent outcomesUS 7,961,755 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,961,755
• Apple Inc. v. Scramoge Technology Ltd.All claims unpatentable
  PTAB · May 5, 2023 · IPR2022-00117 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1, 5, 8–13, and 17–22 are unpatentable as obvious over Sawa and Park, or Sawa, Park, and Inoue.

  RulingsFinal written decision

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

    “The case before us is similar to the situation in Animatics. In Animatics, claim 26 at issue recited “a proportional-integral-derivative (PID) filter connected to said microprocessor.” Animatics, 102 F. App’x at 665 (emphasis added). Nevertheless, the court held that claim 26 did not require “physically separate circuits that are electrically connected,” reasoning that “[i]f the PID filter is implemented purely in software, then the physical line between the microprocessor and PID filter completely disappears.” Id. at 666–67. Here, claim 1 similarly recites that “the first extending portion and the second extending portion are connected to each other” (emphasis added). However, the text in the Specification that describes the embodiments of Figures 3–5 does not describe how to connect the extending portions with any specificity. See Ex. 1001, 5:24–64. In Animatics, rejecting the district court’s overly restrictive requirement that “connected” means “physically separate circuits that are electrically connected,” the Federal Circuit reasoned that this requirement is not the ordinary meaning and then found “no indication in the intrinsic evidence (claims, specification, or prosecution history) clearly indicating that the inventor intended to [narrow the ordinary meaning] and exclude a software-only implemented PID.” See Animatics, 102 F. App’x at 666–667. Similarly, there is nothing here to indicate that the inventors intended to exclude an integral connection of extending portions to require physically separate connection portions.” slip op. at 12

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

    “Our construction of claim 1 does not require that the first and second polymeric material be separate and distinct. See Section VI herein. Nevertheless, for reasons discussed below, even under Patent Owner’s construction, we find that Petitioner has demonstrated that Sawa discloses claim limitations 1.2–1.8.” slip op. at 20

  Patent outcomesUS 9,843,215 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,843,215
• Apple Inc. v. Scramoge Technology Ltd.All claims unpatentable
  PTAB · Apr 26, 2023 · IPR2022-00120 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–4, 7, 8, 18, and 19 are unpatentable as obvious over the three grounds based on Suzuki, Lee, Sawa, and Park.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Determining whether an invention would have been obvious under 35 U.S.C. § 103 requires resolving the level of ordinary skill in the pertinent art at the time of the effective filing date of the claimed invention. Graham, 383 U.S. at 17. The person of ordinary skill in the art is a hypothetical person who knows the relevant art. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors in determining the level of ordinary skill in the art include the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. One or more factors may predominate. Id.” slip op. at 7

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

    “C. Claim Construction In inter partes reviews, the Board interprets claim language using the district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2020). Under this standard, claim terms have their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Neither party provides an explicit claim construction for any claim term here. We determine that it is not necessary to construe any claim terms explicitly, because doing so would have no effect in the analyses below of Petitioner’s asserted grounds. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe 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 successUnpatentableMotivation foundUnpatentable

    “Contrary to Patent Owner’s arguments, the Petition applies persuasive rationale to combine the teachings of Suzuki and Lee, as summarized above. For example, the Petition asserts that a person of ordinary skill in that art “would have . . . found it straightforward and predictable given that the combination utilizes Lee’s multilayer adhesive precisely as it was intended—for attaching a power-receiving coil to a magnetic layer.” Pet. 24–25 (citing Ex. 1003 ¶ 45). Patent Owner does not dispute that Lee employs double-sided adhesive tape to attach power receiving coils to a magnetic layer––the same purpose for the adhesive in Suzuki. See generally PO Resp. As the Petition argues, using Lee’s double-sided adhesive tape in place of Suzuki’s adhesive for the same purpose of adhering a secondary coil to a magnetic layer is “the predictable use of prior art elements according to their established functions.” See Pet. 25 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)).” slip op. at 21

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

    “Importantly, however, Patent Owner does not quantify how an increase of 4–5 % (or more accurately, 3 %, see supra note 9) in the tape thickness relative to Suzuki’s magnetic layers amounts to a teaching away of using Lee’s double-sided tape based on a measurable level of decreased flux coupling––i.e., due to an increased distance between the secondary coil and magnetic layer in Suzuki’s modified device. See PO Resp. 16 (arguing that “magnetic flux concentration resulting from magnetic layer 171 would be detrimentally reduced” without quantifying any reduction (citing Ex. 2016 ¶ 45)). Dr. Ricketts’ cited testimony on this point is conclusory as it also fails to quantify the reduction in flux coupling versus an increase in distance between Suzuki’s magnetic layer and coil layer due to the double-sided tape thickness (which separates the two layers). See Ex. 2016 ¶ 45; Pet. 39 (annotating Suzuki’s Fig. 3 showing structure, reproduced above). As indicated above (note 9), Patent Owner does not provide any evidence that quantifies even the thickness of the double-sided tape in its briefing. 10 Absent this type of quantifiable evidence or other objective evidence indicating how the costs of reduced flux coupling outweigh the benefits of increasing adhesion by increasing thickness or generally controlling for thickness to suit the application (e.g., size of the device), Patent Owner’s 10 Patent Owner only quantified the thickness increase in percentage during the Oral Hearing after questioning by the Board. Dr. Ricketts, fail to undermine Petitioner’s rationale. See Intel Corp. I at *4 (reversing the Board and finding patent owner’s expert’s testimony did not support the Board’s finding of a lack of motivation where the “expert does not opine how much the modification would increase latency or whether the latency introduced by the additional arbitration logic would be offset by the ability for the cache cores to operate as a single large cache” or “[i]n other words, . . . merely opines that there is an unspecified processing speed ‘cost’ associated with implementing Arimilli’s L3 caches in King’s bus system but does not opine on whether the benefits of the implementation outweigh the cost” (emphasis added)).11 Patent Owner also fails to explain why an increase in 3–5 % in thickness (which overstates the overall increase in thickness if one accounts for other layers in the claimed (open-ended) secondary device such as the insulative layer) amounts to teaching away from Suzuki’s description of a desire in the prior art to miniaturize devices on the market. See PO Resp. 16 (quoting Ex. 1005, 1:38–41; citing Ex. 2016 ¶ 44); Ex. 1005, 1:38–57. Immediately above the cited passage of Suzuki expressing this desire, Suzuki lists a wide variety of secondary devices, which imply different sizes and thicknesses to one of ordinary skill in the art, including “a cordless 11 It is indisputable that the ultimate burden of establishing unpatentability lies with Petitioner. However, requiring Patent Owner to support its teaching away arguments with quantifiable evidence is not a shift of that burden. See Idemitsu Kosan Co., Ltd., v. SFC Co., Ltd., 870 F.3d 1376, 1381 (Fed. Cir. 2017) (“[Petitioner], of course, bears the ultimate burden of establishing unpatentability, but it is not required as a matter of law to rebut mere attorney argument with expert testimony in order to satisfy that burden.”). Moreover, Petitioner establishes with supporting evidence that there is no teaching away, as discussed herein. like (hereinafter referred to as a ‘secondary device’).” Ex. 1005, 1:17–26. And as indicted above with respect to limitation 1.2, Suzuki teaches increasing the thickness by implementing multiple magnetic layers, which reduces noise. See Pet. 35 (citing Ex. 1005, 10:63–65). This indicates that increasing thickness is not a paramount concern in Suzuki or involves a trade-off for which the benefits outweigh the costs, at least with respect to the scope of the challenged claims and Suzuki’s disclosure of a wide variety of devices. In other words, because none of the challenged claims recite any thickness or size limitation, Patent Owner’s “teaching away argument is of questionable relevance” because any argument (or evidence) based on layer thickness does not “relate to and is” not “commensurate in scope with the ultimate claims at issue.” See Idemitsu Kosan, 870 F.3d at 1381 (“Idemitsu’s teaching away argument is of questionable relevance anyway. Evidence concerning whether the prior art teaches away from a given invention must relate to and be commensurate in scope with the ultimate claims at issue.”).” slip op. at 27

  Patent outcomesUS 9,997,962 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,997,962
• ADT, LLC v. Vivint, Inc.All claims unpatentable
  PTAB · Mar 28, 2023 · IPR2022-00071 · APJ Jameson Lee · IPR · Final written decision

  Claims 1, 2, 4, 8–10, and 12 are unpatentable as anticipated by Monroe and obvious over Monroe, Monroe and Fadell, Jin, or Jin and Monroe.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “including a “bachelor’s degree in electrical engineering,” that is not a literal test. We know of no precedent from the U.S. Court of Appeals for the Federal Circuit, and Patent Owner has cited none, that requires the stated level of education for the level of ordinary skill in the art to be met literally without considering any equivalence. The inclusion of a statement of formal technical education in the articulated statement facilitates understanding for comparison purposes because, typically, (1) an expert would have a formal technical education, and (2) a formal degree is associated with an ascertainable or known curriculum. Accordingly, Petitioner may show that Mr. Parker possesses at least the level of skill corresponding to that of one who has a bachelor degree in electrical engineering.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “4. “predefined area” The term “a predefined area” is recited in each of independent claims” slip op. at 20

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “g) Conclusion Petitioner has proven by a preponderance of the evidence that claim 1” slip op. at 44

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

    “2. Obviousness over Monroe Alone Petitioner’s arguments for obviousness over Monroe alone for claims 1, 2, 4, 8–10, and 12 are the same as its assertion that Monroe anticipates these same claims. Petitioner states: “As discussed above in [the ground based on anticipation by Monroe], Monroe discloses all the limitations of claims 1, 2, 4, 8, 9, 10, and 12. Thus, the claims can be cancelled on singlereference obviousness grounds as well as anticipation grounds.” Pet. 26. Petitioner cites Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1373 (Fed. Cir. 2019), for the position that a disclosure that anticipates under 35 U.S.C. § 102 also renders the claim obvious under 35 U.S.C. § 103. Id. Patent Owner presents no arguments to the contrary. We agree that an anticipatory reference can be deemed, pro forma, to render the anticipated claims obvious. All the limitations are disclosed by the single reference and no modification is necessary. Accordingly, for the same reasons discussed above, Petitioner has proven by a preponderance of the evidence that claims 1, 2, 4, 8–10, and 12 would have been obvious over Monroe alone.” slip op. at 52

  Patent outcomesUS 10,325,159 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,325,159
• Inductev Inc. v. Witricity CorporationAll claims unpatentable
  PTAB · Mar 6, 2023 · IPR2021-01165 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–7, 13, 19–22, 25, 26, 29, 30, 33, 34, 37, 38, 41, 42, 45, 46, 49, 50, 53, 54, 57–62, 64, 65, and 67–70 are unpatentable as obvious over Stark, alone or with Mecke.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision to Institute, we adopted Petitioner’s articulation of the level of ordinary skill, but deleted the qualifier “at least” for the level of education and for the amount of experience, to keep the level from being vague and overbroad and extending into the level of an expert. Inst. Dec. 2; Paper 7, 6–7. Post institution, neither party objected to our determination of the level of ordinary skill in the art. the art. In summary, one with ordinary skill in the art at the pertinent time period would have had a bachelor’s degree in electrical engineering (or equivalent) and two to three years of industry or equivalent research experience in the field of wireless power transfer, and would have been familiar with the use of induction to provide power or data wirelessly. C.” slip op. at 7

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

    “Under this standard, claim terms are generally given their ordinary and customary meaning as would be understood by one with ordinary skill in the art in the context of the specification, the prosecution history, other claims, and extrinsic evidence including expert and inventor testimony, dictionaries and learned treatises, although extrinsic evidence is less significant than the intrinsic record. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). Petitioner states that “no claim terms require a specific construction.” Pet. 6. Patent Owner does not address claim construction in its Response. We determine that no claim term requires an express claim construction to resolve the parties’ dispute. Nidec Motors, 868 F.3d at 1017.” slip op. at 8

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

    “Stark expressly discloses the case of Q1 = Q2 = 1,000 (Figure 3-9) as well as the benefits of having high Q values (Figure 4-3), and states that “[t]here is no fundamental limit to the unloaded energy transfer efficiency save for constraints on the quality factors and the coupling coefficient,” (Ex. 1006, 101). We also determine that Petitioner accurately notes that Stark states in Chapter 5 that using the results of previous chapters, it is now possible to design a coupled resonant system by setting certain parameters and system specifications, and that the approach is to determine component values to match the intended operational specifications of the resonant system (Ex. 1006, 109). For these reasons, one with ordinary skill in the art would have been motivated to use and adjust Stark’s prototype, described in Chapters 7 and 8, to implement the described and simulated case of Q1 = Q2 = 1,000. We need not and do not reach Petitioner’s alternative argument that it would have been obvious to one with ordinary skill in the art to maximize Q or to have Q1 = Q2 = 1,000.” slip op. at 42

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

    “Q1 = Q2 = 1,000 or maximizing Q. PO Resp. 15–18. We disagree. A reference teaches away from a claimed invention if it “criticize[s], discredit[s], or otherwise discourage[s]” modifying the reference to arrive at the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We do not, however, “read into a reference a teaching away from a process where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). The disclosure of Stark does not “teach away” from Q1 = Q2 = 1,000 or from maximizing Q. In Figure 3-9, Stark specifically discloses the case of Q1 = Q2 = 1,000, simulated by MATLAB software, and in Figure 4-3, Stark shows that at any coupling coefficient k, the higher are Q1 and Q2, the higher is the unloaded energy transfer efficiency. Ex. 1006, 53, 101. Stark also states that “[t]here is no fundamental limit to the unloaded energy transfer efficiency save for constraints on the quality factors and the coupling coefficient.” Id. at 101. These disclosures express an affinity for” slip op. at 34

  Patent outcomesUS 7,741,734 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,741,734
• Inductev Inc. v. Witricity CorporationAll claims unpatentable
  PTAB · Dec 20, 2022 · IPR2021-01166 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–23 are unpatentable: claims 1, 5–8, 15, and 19–22 are anticipated by O’Brien, and claims 1–23 are obvious over O’Brien and Haaster.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (“POSA”) “at the relevant time (around 2008) would have had at least a bachelor’s 5 Ex. 1024 was served, but not filed in this proceeding. Opp. Mot. to Exclude v. degree in electrical engineering (or equivalent) and at least two years’ industry experience, or equivalent research”; “[a]lternatively, a POSA could substitute directly relevant additional education for experience, e.g., an advanced degree relating to electrical engineering (or equivalent), with at least one year of industry experience.” Pet. 8 (citing Allen Decl. ¶¶ 31–34). Patent Owner does not dispute the level of ordinary skill in the art. See generally PO Resp. We adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the specification of the ’935 patent and asserted prior art of record.” slip op. at 10

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

    “Petitioner asserts that “prior art relied on in this Petition discloses the subject matter of the challenged claims under any reasonable construction, including their plain meaning” and “submits that no terms need to be construed to find the asserted claims unpatentable under the grounds set forth herein.” Pet. 9. Patent Owner does not submit any claim construction for any term. See generally PO Resp. We do not discern a dispute between the parties regarding any claim limitations, nor do we discern the need to expressly construe any claim limitations to resolve the controversy before us. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner

    “Frequency Power Transmission System for Wireless Systems and Devices.” Ex. 1007, Title. Petitioner asserts that O’Brien “was publicly available more than one year prior to the ’935 patent’s filing date” as “O’Brien was completed and approved by faculty members at the University of Dresden on March 11, 2006” and the “‘Machine-Readable Cataloging’ (MARC) record for O’Brien demonstrates that O’Brien was received, cataloged, and indexed by the Verbundzentrale Des Gemeinsamen Bibliotheksverbundes as of March 2, 2007.” Pet. 10–11 (citing Ex. 1005 ¶¶ 38, 40–43). Patent Owner does not challenge Petitioner’s assertions regarding O’Brien’s public accessibility. See generally PO Resp.6 Because Petitioner has shown, by a preponderance of the evidence, public accessibility of O’Brien through the MARC record and the library indexing as of March 2, 2007, as discussed above, and there is no evidence to the contrary, we find that O’Brien was publicly available more than one year prior to the filing date of the 6 We note here, however, Patent Owner’s contention that Petitioner has not properly authenticated O’Brien. Mot. Exclude 1. We address the issue of authentication below in connection with our denial of Patent Owner’s Motion to Exclude. See Section IV. ’935 patent (December 28, 2009), and thus qualifies as prior art under 35 U.S.C. § 102(b).” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “As stated in our Decision on Institution, although we agree with Patent Owner’s explanation of how O’Brien describes source coils and tuning circuits in discrete chapters of the reference, the Petition explains sufficiently that the Tuneable Resonant Circuit is inexorably linked to the source coils and that the circuits are thus tuned to resonance. Dec. on Inst. 20. The arguments presented by Patent Owner do not persuade us otherwise. See Sur-reply 3−4 (arguing that O’Brien’s disclosure of tuning circuits is distinct from its disclosure of coils and, therefore, Petitioner’s discussion of one does not imply the other). As explained above, despite the Petition’s prominent reliance on the source-side Tuneable Resonant Circuit, highlighted in purple in Figure 5-1, Petitioner also relies on the discussions in Chapter 6 that describe the characteristics of the tuning circuits and Chapter 7 that describe source coils and the resonant circuits as “Source side systems.” Pet. 18−20. Accordingly, and as previously noticed in our Decision on Institution, the Petition gives sufficient notice that O’Brien’s source coils are part of the “source resonator.” Dec. on Inst. 20. Therefore, we are not persuaded by Patent Owner’s arguments that the Petition fails to show that O’Brien discloses the claimed “source resonator.” For the same reason, we are not persuaded that Petitioner’s Reply represents a new theory as compared with the position taken in the Petition. Consequently, Petitioner has shown that the “source resonator optionally coupled to an energy source” of claim 1 is taught by O’Brien’s source side system where the tunable resonant circuit (including the source coils) is coupled to the power source. Pet. 18−20; Ex. 1007, Figs. 5−1 (depicting the coupling to the power source), 6−1 (depicting the source side power conversion part of the system with tuning circuits in three different axes in an omni-directional system); 112−112 (Chapter 6 – describing the power converter of the source side and stating that the “power rating of the source side converter is primarily determined by the losses in the source coils for operation at resonance”); 114−115 (Chapter 6 – describing resonant circuit parameters where the source and receiver sides are tuned to a resonant frequency and form a transformer); 139−140 (Chapter 7 – describing “Source side systems,” the source coils operating characteristics, and three resonators connected to three independent power supplies); Allen Decl. ¶¶ 76−78.” slip op. at 23

  Patent outcomesUS 8,304,935 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,304,935

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.