• Arkema Inc. / Arkema France v. Honeywell International Inc.All claims unpatentable
  PTAB · Aug 25, 2022 · PGR2016-00012 · APJ Sheldon M Mcgee · PGR · Remand

  Claims 1–20 are unpatentable under § 102(a) for prior public use; the Board did not reach the remaining anticipation, obviousness, and enablement grounds.

  RulingsRemand decision

  • RemandOther

    “On October 1, 2019, the Federal Circuit held that we “abused [our] discretion by assuming the authority that 35 U.S.C. § 255 expressly delegates to the Director: to determine when a Certificate of Correction is appropriate,” and vacated our Final Written Decision. Honeywell Int’l Inc. v. Arkema Inc., 939 F.3d 1345 (Fed. Cir. 2019). The Federal Circuit instructed us to “authorize Honeywell to file a motion seeking leave to petition the Director for a Certificate of Correction.” Id. at 1351. Pursuant to the Federal Circuit’s mandate, we gave our authorization, and Patent Owner filed its Motion for Leave to Request a Certificate of Correction. PGR11 Paper 61; PGR12 Paper 41. After additional briefing from the parties was complete, we granted Patent Owner’s Motion. PGR11 Paper 77; PGR12 Paper 57. Patent Owner filed its Request for a Certificate of Correction, as well as a Petition to Accept [Unintentionally] Delayed Claim to Priority under 35 U.S.C. § 120 and 37 C.F.R. § 1.78. PGR11 Ex. 2174; PGR12 Ex. 2172.” slip op. at 3

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

    “Synthes USA, LLC v. Spinal Kinetics, Inc., 734 F.3d 1332, 1344 (Fed. Cir. 2013). And, although there are no bright-line rules for the amount of disclosure needed in an unpredictable art, that amount “necessarily changes with each invention” and “changes with progress in the field.” Ariad, 598 F.3d at 1351. Here, we find that the art of AAC was unpredictable and that a heat-transfer composition for AAC required specific technical features that were unpredictable and unexpected. Thus, we conclude that the ’525 application requires a more-detailed disclosure than would be required in a predictable field to adequately demonstrate possession of a heat-transfer composition consisting essentially of HFO-1234yf and PAG for use in AAC. (iii) Disclosure in the ’525 Application With these background findings in mind, we now turn to the four corners of the ’525 application—and we find that the ’525 application does not contain the detailed disclosure needed in this case to reasonably convey possession of a heat-transfer composition consisting essentially of HFO- 1234yf and PAG for use in AAC.” slip op. at 37

  • Skill levelSkill level board ownDecided for patent owner

    “develops new refrigerants for use as heat transfer fluids. Ex. 1002 ¶ 149. Such a person would have had a Ph.D. in Chemistry, Chemical Engineering, Mechanical Engineering, Material Science, or a related field or discipline and at least 3 to 5 years of experience, or alternatively an M.S. degree and 5 to 10 years of experience. Id. Patent Owner’s Declarant, Dr. Bivens, provides a similar description of the person of ordinary skill in the art, stating that such a person would have a B.S. degree in Chemical Engineering or Chemistry, and five years of work experience, or a Ph.D. or M.S. degree and 2–3 years of experience. Ex. 2001 ¶ 23. Based on these descriptions, we find that the parties’ definitions of ordinary skill in the art are substantially the same, and agree with the parties that an ordinarily skilled artisan would be educated in the Chemical and Chemical Engineering arts or related disciplines. We also agree with the parties that a person having less formal education, such as a B.S. or M.S. degree, would require more years of experience than a person with more formal education, such as a Ph.D., to qualify as an ordinarily skilled artisan. We also find that neither party states how any difference in the parties’ articulated levels of skill impacts this proceeding. Thus, our analysis would be the same regardless of any minor differences between the parties’ respective articulations. Finally, we note that the level of ordinary skill in the art is reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 20

  • Novelty / Anticipation (§102) › Prior-art status of a reference › On-sale bar (Pfaff, Helsinn)UnpatentableUnpatentable

    “Tr. 114:15–115:18 (emphases added). Thus, we find that Patent Owner does not contest that a heat-transfer composition consisting essentially of HFO- 1234yf and PAG for AAC was in public commercial use before the March 26, 2014, filing date of the ’017 patent. Accordingly, we find that Petitioner’s evidence, together with Patent Owner’s concessions, demonstrates by a preponderance of evidence that the claimed subject matter of the ’017 patent was in commercial use before its March 26, 2014, effective filing date. See Ex. 1002 ¶¶ 399–409. In particular, as to claims 1, 3–10, 12, 13, and 15–20, we credit Dr. Brown’s uncontested testimony that the refrigerant-lubricant AAC composition of the Ford Transit Custom Bus, the Mazda CX 5 (2.0i and 2.2D), and the Opel Mocca used HFO-1234yf and a PAG lubricant as early as 2012. Ex. 1002 ¶ 399 (citing Ex. 101324, 2, 38, 55, 70). We also credit Dr. Brown’s 24 Behr Hella Services, Refrigerant and Oil Filling Quantities Passenger Cars & Commercial Vehicles 2014–15. PGR12 Ex. 1013. (“Service Guide”). PGR12 Ex. 1013. The Service Guide provides tables setting forth specifications for refrigerant type, refrigerant quantity, vehicle manufacturers’ original equipment compressor oil type, and oil filling quantity for the air-conditioning system of each vehicle listed in the tables. Id. at 2–3. Petitioner and Dr. Brown direct us to the Sevice Guide’s entries calculations, which show that the Ford Transit Custom Bus had an AAC refrigerant-lubricant composition of 26.7% of PAG lubricant and 73.3% of HFO-1234yf (Ex. 1002 ¶ 401 (citing Ex. 1013, 38)); the Mazda CX 5 2.0i had 16.7% PAG lubricant and 83.3% HFO-1234yf (Ex. 1002 ¶ 402 (citing Ex. 1013, 55)); the Mazda CX 5 2.2D had a 17.5% PAG lubricant and 82.5% HFO-1234yf (id.); and the Opal Mocca had 11.6% PAG lubricant and 88.4% HFO-1234yf (Ex. 1002 ¶ 402 (citing Ex. 1013, 70)). As to dependent claims 2, 11, and 14, which all require that the lubricant is present “in an amount from about 30% to about 50% weight,” we credit Dr. Brown’s uncontested testimony that the refrigerant-lubricant composition of the Ford Transit Custom Bus recited lubricant amount. Ex. 1002 ¶ 403. In particular, we agree with Dr. Brown that, because the lubricant accounts for 26.7% of the AAC refrigerant-lubricant composition in the Ford Transit Custom Bus, the lubricant makes up “about 30%” of the refrigerant-lubricant composition as claimed. Id. For these reasons, we find that Petitioner has met its burden to show that claims 1–20 are unpatentable for anticipation under § 102(a)(1).” slip op. at 55

  Patent outcomesUS 9,157,017 unpatentable
  § 102 anticipation§ 112 disclosure
  Patents in suitUS 9,157,017
• Arkema Inc. / Arkema France v. Honeywell International Inc.All claims unpatentable
  PTAB · Aug 25, 2022 · PGR2016-00011 · APJ Grace Karaffa Obermann · PGR · Remand

  Claims 1–20 are unpatentable under § 102(a) for prior public use; the Board did not reach the other anticipation, obviousness, and enablement grounds.

  RulingsRemand decision

  • RemandOther

    “On October 1, 2019, the Federal Circuit held that we “abused [our] discretion by assuming the authority that 35 U.S.C. § 255 expressly delegates to the Director: to determine when a Certificate of Correction is appropriate,” and vacated our Final Written Decision. Honeywell Int’l Inc. v. Arkema Inc., 939 F.3d 1345 (Fed. Cir. 2019). The Federal Circuit instructed us to “authorize Honeywell to file a motion seeking leave to petition the Director for a Certificate of Correction.” Id. at 1351. Pursuant to the Federal Circuit’s mandate, we gave our authorization, and Patent Owner filed its Motion for Leave to Request a Certificate of Correction. PGR11 Paper 61; PGR12 Paper 41. After additional briefing from the parties was complete, we granted Patent Owner’s Motion. PGR11 Paper 77; PGR12 Paper 57. Patent Owner filed its Request for a Certificate of Correction, as well as a Petition to Accept [Unintentionally] Delayed Claim to Priority under 35 U.S.C. § 120 and 37 C.F.R. § 1.78. PGR11 Ex. 2174; PGR12 Ex. 2172.” slip op. at 3

  • Skill levelSkill level board ownDecided for petitioner

    “develops new refrigerants for use as heat transfer fluids. Ex. 1002 ¶ 149. Such a person would have had a Ph.D. in Chemistry, Chemical Engineering, Mechanical Engineering, Material Science, or a related field or discipline and at least 3 to 5 years of experience, or alternatively an M.S. degree and 5 to 10 years of experience. Id. Patent Owner’s Declarant, Dr. Bivens, provides a similar description of the person of ordinary skill in the art, stating that such a person would have a B.S. degree in Chemical Engineering or Chemistry, and five years of work experience, or a Ph.D. or M.S. degree and 2–3 years of experience. Ex. 2001 ¶ 23. Based on these descriptions, we find that the parties’ definitions of ordinary skill in the art are substantially the same, and agree with the parties that an ordinarily skilled artisan would be educated in the Chemical and Chemical Engineering arts or related disciplines. We also agree with the parties that a person having less formal education, such as a B.S. or M.S. degree, would require more years of experience than a person with more formal education, such as a Ph.D., to qualify as an ordinarily skilled artisan. We also find that neither party states how any difference in the parties’ articulated levels of skill impacts this proceeding. Thus, our analysis would be the same regardless of any minor differences between the parties’ respective articulations. Finally, we note that the level of ordinary skill in the art is reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 20

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “We agree with Petitioner that the ’525 application’s statement that the compounds are “adaptable for use” weighs against a finding of adequate written description. First, “adaptable for use” is vague, as Dr. Bivens acknowledges. See Ex. 1177, 151:15 (testifying that “adaptable for use can have a wide range of meaning”). Second, the ’525 application gives no direction on how a skilled artisan would need to adapt any particular composition for use in AAC, or even if any “adaptation” was necessary. We find that such a teaching is important in this case to show that the inventors had possession of the claimed invention, given our findings above that the art of AAC was unpredictable and that a heat-transfer composition for AAC required specific technical features that were unpredictable and unexpected. For completeness, we again reject Patent Owner’s argument that “[t]o show the inventors possessed claim 1 requires no more” than the statement in the written description that “‘the compositions of the present invention are believed to be adaptable . . . with or without system modification.’” PGR12 Resp. 27–28 (quoting Ex. 1001, 7:4–8). Regardless of the exact wording of claim 1, the inventors “still [had to have] describe[d] some way of performing the claimed methods.” Ariad, 598 F.3d at 1355. And here, with merely a passing reference to AAC, the ’525 application fails to provide any credible “technologic knowledge” to demonstrate to an ordinarily skilled artisan that Patent Owner “was in possession of the invention that is claimed.” Id.” slip op. at 43

  • Novelty / Anticipation (§102) › Prior-art status of a reference › On-sale bar (Pfaff, Helsinn)UnpatentableUnpatentable

    “unless . . . the claimed invention was . . . in public use . . . before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(1). “The proper test for the public use prong . . . is whether the purported use was accessible to the public or was commercially exploited.” Delano Farms Co. v. Cal. Table Grape Comm’n, 778 F.3d 1243, 1247 (Fed. Cir. 2015) (quotation omitted). “Commercial exploitation is a clear indication of public use . . . .” Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1380 (Fed. Cir. 2005).” slip op. at 53

  Patent outcomesUS 9,157,017 unpatentable
  § 102 anticipation§ 112 disclosure
  Patents in suitUS 9,157,017
• Apple Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentable
  PTAB · Aug 11, 2022 · IPR2021-00470 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1–10 and 16–19 are unpatentable as obvious under § 103, principally over Bohbot and Gundlach, with additional grounds for claims 4, 8, 9, 17, and 18.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted).” slip op. at 10

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

    “According to Petitioner, “no express constructions are required to institute review and find the Challenged Claims unpatentable.” Pet. 4. Patent Owner argues that it “has assigned the claim terms their plain and ordinary meanings as a POSITA would have understood them in the context of the ‘020 patent, unless otherwise noted herein.” PO Resp. 8. For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 12

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

    “discloses that this is “due to [its] size.” Ex. 1004, 2:9–13 (emphasis added). More relevant to Petitioner’s proposed combination of Bohbot and Gundlach are Patent Owner’s arguments concerning the ease or lack of ease of detachment of the headset from a primary module having a recess as taught by Gundlach. We determine that a POSITA would have balanced concerns about the combination lacking ease of detachment against the need for effectively securing the headset to the primary module. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (stating that “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”); see also Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349, n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Additionally, an obviousness determination does not turn on whether the proposed combination is the preferred or most desirable combination. In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004); PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014). Further, even if Bohbot teaches a “suitable mechanism” of securing its headset via magnetic coupling as Patent Owner argues (see PO Resp. 12–13 (citing Ex. 2001 ¶ 95)), we determine that Bohbot would not have dissuaded a POSITA from more effectively securing its headset using the recess cited in Gundlach. See Pet. Reply 11 (“Gundlach provides a suitable option for semi-enclosed protection in the form of a contoured recess, and Bohbot does not teach away from the use of a contoured recess.”) (citing Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009); Ex. 1089 ¶ 28). Responsive to Patent Owner’s arguments, Dr. Cooperstock testifies that “Bohbot nowhere describes its headset as being easy and quick to detach ‘with one hand,’ and thereby being ‘readily available for use.’” Ex. 1089 ¶ 26. As Petitioner points out, “Bohbot’s magnetic attachments ‘make attachment and detachment easy’ but also ‘are powerful enough to make an effective attachment possible, thus avoiding a detachment that is so easy it could easily be removed by a person with malicious intentions, or an untimely detachment that would lead to loss of the headset.’” Pet. Reply 10 (quoting Ex. 1004, 3:26–4:5) (citing PO Resp. 14). We are persuaded by Petitioner’s contention and Dr. Cooperstock’s testimony that “[t]he miniature communication device (with attached headset) is likely to be hit by other objects, dropped, etc., making the semi-enclosed protection provided by [Gundlach’s] contoured recess further advantageous and complementary to Bohbot’s stated goal.” Ex. 1003 ¶ 35 (citing Ex. 1004, 4:3–5); see Pet. Reply 11 (citing Bayer Pharma AG v. Watson Labs., Inc., 874 F.3d 1316, 1328 (Fed. Cir. 2017) (quoting PAR Pharm., 773 F.3d at 1197–98)) (“obviousness ‘does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away’”).” slip op. at 32

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

    “Further, even if Bohbot teaches a “suitable mechanism” of securing its headset via magnetic coupling as Patent Owner argues (see PO Resp. 12–13 (citing Ex. 2001 ¶ 95)), we determine that Bohbot would not have dissuaded a POSITA from more effectively securing its headset using the recess cited in Gundlach. See Pet. Reply 11 (“Gundlach provides a suitable option for semi-enclosed protection in the form of a contoured recess, and Bohbot does not teach away from the use of a contoured recess.”) (citing Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009); Ex. 1089 ¶ 28). Responsive to Patent Owner’s arguments, Dr. Cooperstock testifies that “Bohbot nowhere describes its headset as being easy and quick to detach ‘with one hand,’ and thereby being ‘readily available for use.’” Ex. 1089 ¶ 26. As Petitioner points out, “Bohbot’s magnetic attachments ‘make attachment and detachment easy’ but also ‘are powerful enough to make an effective attachment possible, thus avoiding a detachment that is so easy it could easily be removed by a person with malicious intentions, or an untimely detachment that would lead to loss of the headset.’” Pet. Reply 10 (quoting Ex. 1004, 3:26–4:5) (citing PO Resp. 14). We are persuaded by Petitioner’s contention and Dr. Cooperstock’s testimony that “[t]he miniature communication device (with attached headset) is likely to be hit by other objects, dropped, etc., making the semi-enclosed protection provided by [Gundlach’s] contoured recess further advantageous and complementary to Bohbot’s stated goal.” Ex. 1003 ¶ 35 (citing Ex. 1004, 4:3–5); see Pet. Reply 11 (citing Bayer Pharma AG v. Watson Labs., Inc., 874 F.3d 1316, 1328 (Fed. Cir. 2017) (quoting PAR Pharm., 773 F.3d at 1197–98)) (“obviousness ‘does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away’”). For the foregoing reasons, Patent Owner’s arguments do not undermine Petitioner’s showing. We determine that Petitioner’s rationale for combining Bohbot and Gundlach is persuasive for the reasons set forth above and is supported by sufficient rational underpinning in the record evidence and we adopt it as our own.” slip op. at 32

  Patent outcomesUS 10,259,020 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,259,020
• Apple Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentable
  PTAB · Aug 9, 2022 · IPR2021-00473 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–5 and 7–13 are unpatentable as obvious under § 103 based on the Gundlach and Lee combinations with the additional references identified in the grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). 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). In the Institution Decision, we considered the subject matter of the ’320 patent, the background technical field, and the prior art, and we agreed with Petitioner’s proposed qualifications. Dec. 9. Here, we adopt Petitioner’s definition of the level of skill, except that we delete the phrase “at least” to avoid ambiguity in the definition of the level of skill. Accordingly, we determine that one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer science, or a similar field and one year of experience in consumer electronics product design, and could have obtained similar knowledge and experience through other means. We note that even if we adopted Patent Owner’s proposed level of qualifications, the outcome of this Decision would remain the same.” slip op. at 11

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

    “According to Petitioner, “no express constructions are required to institute review and find the Challenged Claims unpatentable” in the proceeding. Pet. 6. Patent Owner similarly states that the ordinary meaning of the terms should be used. PO Resp. 6. In the Institution Decision, we determined that it was not necessary to provide express interpretations of any claim terms. Dec. 10–11. On the full record, we likewise determine that it is not necessary to provide an express interpretation of any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 12

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

    “We do not find that Patent Owner’s arguments undermine Petitioner’s persuasive showing. Petitioner proposes modifying Gundlach’s conductive charging components with Lee’s inductive charging components, and the relevant aspect at issue is charging of a wireless headset. See Ex. 1003 ¶¶ 36, 42. We agree with Petitioner that Lee, as well as Gundlach, include embodiments for storing and charging wireless headsets. Ex. 1003 ¶ 36 (citing Ex. 1005 ¶ 80; Ex. 1006, 6:39–46). We also agree that Lee itself discloses the motivation to modify Gundlach’s conductive charging—Lee identifies that in previously-known wired methods of recharging batteries in wireless headsets there were disadvantages of increased size and risk of failure, and Lee’s improvements presented opportunities to correct those problems. Pet. Reply 1–2 (citing Ex. 1006, 1:14–2:2, 3:15–6:4). We discuss Patent Owner’s arguments related to alleged size and failure issues below, but we agree with Petitioner that Lee describes a low power electronic device that utilizes inductive charging as an alternative to conductive charging like that utilized in Gundlach. Id. Lee also provides reasons why a person having ordinary skill in the art would have modified Gundlach to include Lee’s inductive charging.14 Id.; Pet. 14–15. We agree with 14 Although Patent Owner argues that Petitioner’s assertion of a motivation based on Lee’s teachings is a new theory (PO Sur-Reply 8), we do not agree. The Petition discusses Lee’s teachings as offering advantages to Gundlach (Pet. 14–15), with Dr. Cooperstock testifying that Lee discloses its enhanced “reliability,” in view of the known failure-prone nature of electric contacts, and that “a POSITA would have appreciated that the benefits of inductive charging disclosed by Lee also would apply to Gundlach’s embodiments.” Ex. 1003 ¶ 42 (citing Ex. 1006, 1:62–2:2, 3:17–20). Additionally, even though we do not find that Petitioner raises a new issue in Reply, Patent Owner argues for the first time in Sur-Reply that Lee’s teachings are limited, that is, they “might arguably suggest, if anything, some advantage [of inductive charging], if any, over a USB cord.” PO Sur- Reply 9 (citing Ex. 1006, 1:62–2:2). We do not find this argument persuasive because Gundlach is not limited to charging of the headset battery from the case battery. Gundlach discloses that the case may contain a reserve power supply, such as a reserve battery. Ex. 1005 ¶ 80. If a battery is not used, power could be sent to the headset battery via the power supply adapter in the case. Id. In this case, Gundlach’s charging of the Petitioner that, accordingly, Lee provides motivation to one of ordinary skill in the art to modify Gundlach. KSR, 550 U.S. at 417 (“When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”).” slip op. at 21

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “directed to the use of inductive charging in portable low power consumer electronic products and, more particularly, to Dr. Toliyat’s testimony that at the time of the invention he was not aware of any hand-held, consumer portable earpiece charging systems that did not use conductive charging to charge an earpiece from a portable, battery powered case. PO Resp. 15; Ex. 2022 ¶¶ 96, 99. Patent Owner’s arguments are narrowly directed to “consumer portable earpiece charging systems,” absent explanation why the issue of whether the product is a consumer product is specifically relevant to the consideration of the use of a modification with inductive charging. Patent Owner also attempts to differentiate charging from a portable batterypowered device, but, as explained supra note 14, Gundlach is not limited to charging from a portable, battery powered case. Moreover, because Dr. Toliyat testified during cross-examination that he could not recall doing any work on or researching earbuds or headsets, we afford little weight to his testimony on this issue. Ex. 1088, 19:19–21. Instead we credit Dr. Cooperstock’s testimony that inductive charging was an industry-recognized wireless headset would not be “from a portable battery powered device to portable battery powered device,” and instead would be similar to Lee’s charging by USB connection. alternative to conductive charging in the context of low-power portable devices because it is supported by the evidence of record. Ex. 1003 ¶ 41. For instance, the Wireless Power Consortium, a multi-national group of electronics companies formed in 2008, was promoting commercial adoption of inductive charging by standardizing specifications for inductive transmitters and receivers. Pet. Reply 9–10 (citing Ex. 203215). Exhibit 2032 describes that the Wireless Power Consortium (WPC), comprised of “a group of Asian, European, and American companies in diverse industries, including electronics manufacturers” has defined “the type of inductive coupling (coil configuration) and the communications protocol to be used for low-power wireless devices.” Ex. 2032, 1 (emphasis added). The evidence of record also provides additional support that there were products commercially available in the market that inductively charged portable devices, so inductive charging was an available option. Ex. 1003 ¶¶ 40–41; Ex. 1020; Ex. 1021; Ex. 1022. Dr. Cooperstock testifies that the Powermat and Touchstone inductive chargers were available at the time of invention, and that in a design process a person of skill who is “developing a portable device and associated charger—here, the wireless headset and charging case provided by Gundlach—would have contemplated an inductive charging solution like Lee’s.” Ex. 1003 ¶ 41. Accordingly, the evidence of record supports that a person of ordinary skill in the art would have recognized that inductive charging was a known alternative to conductive charging.” slip op. at 23

  Patent outcomesUS 10,589,320 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,589,320
• Apple Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentable
  PTAB · Jul 26, 2022 · IPR2021-00472 · APJ Sally C Medley · IPR · Final written decision

  Claims 1–5 and 7–13 are unpatentable under §103 as obvious over the listed combinations of Gundlach, Lee, and the additional references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Jeremy Cooperstock, who testifies that a person having ordinary skill in the art “would have had at least a Bachelor’s degree in an academic area emphasizing electronical engineering, mechanical engineering, or a similar discipline, and at least two years of experience in the field working with electronic devices” and that “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Pet. 7 (citing Ex. 1003 ¶ 20). Patent Owner relies on the declaration testimony of Dr. Hamid Toliyat, who applies a similar definition and testifies that a person having ordinary skill in the art “would have been someone having either a bachelor’s degree in electrical engineering, computer science, or mechanical engineering with some level of post-baccalaureate electronic device or system design experience, or someone with an equivalent level of experience and training through other means.” PO Resp. 5 (citing Ex. 2022 ¶ 31). Dr. Toliyat further testifies that “Dr. Cooperstock’s definition of a POSITA10 is somewhat different than mine; however, my opinions in this declaration would be the same regardless of whether or not my description or Dr. Cooperstock’s description of a POSITA is used.” Ex. 2022 ¶ 33. We adopt Petitioner’s definition of the level of skill for purposes of this Decision, except that we delete the phrase “at least” to avoid ambiguity in the definition of the level of skill. Patent Owner’s proposed level overlaps substantially with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level of qualifications, the outcome would remain the same.” slip op. at 10

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

    “For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). D. Asserted Obviousness of Claims 1, 2, 8, 9, and 11 over Gundlach and Lee” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
  • Obviousness (§103) › Analogous artAnalogous artNon analogous artDecided for petitioner

    “the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “Prior art is analogous if it is from the same field of endeavor or if it is reasonably pertinent to the particular problem the inventor is trying to solve.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fec. Cir. 2015). A reference is analogous art if either of these two tests is met. Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014). The Federal Circuit has indicated that the scope of analogous art is to be construed broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme Court’s decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 . . . (2007), directs us to construe the scope of analogous art broadly . . . .”). In determining the field of endeavor, we look to the ’077 patent’s written description and claims, including the structure and function of the invention. Bigio, 381 F.3d at 1326. And, we agree with Petitioner that in defining the field of invention, and in determining the relevance of Brown to the obviousness inquiry, here a broad approach should be taken. Pet. Reply 15. Indeed, the Supreme Court provided guidance in determining the applicability of a reference’s teachings in an obviousness inquiry. In KSR International Co. v. Teleflex Inc., the Court explained that if a feature has been used to improve one device, and a person of ordinary skill in the art would have recognized that it would improve a similar device in that field or another, implementing that feature on the similar device is likely obvious. 550 U.S. at 417. Here, we agree with Petitioner that the appropriate scope of the field of endeavor of the claimed invention is directed to switching devices and electronic devices. Pet. Reply 15 (citing Ex. 1001, 4:8–16, 17:63–65, 21:39–40); PO Resp. 59–60 (“[t]he field of endeavor of the ’077 patent is, broadly, speaking, magnetic switching devices that activate deactivate or hibernate an electronic device”). We further agree with Petitioner that “Brown’s headset falls into the general descriptive category of ‘electronic device.’” Pet. Reply 15. Patent Owner fails to show sufficiently that Brown is not within the same field of endeavor as the ’077 patent. PO Resp. 59. Although Brown may describe optical user interfaces for headsets, its teachings are relevant to the broad field of endeavor which includes electronic devices such as headsets. Because we find that Brown is from the same field of endeavor as the claimed invention and provides relevant teachings to a person of ordinary skill in the art at the time of the invention, we need not consider Patent Owner’s arguments regarding whether Brown is reasonably pertinent to the particular problem with which the inventors are involved.” slip op. at 54

  Patent outcomesUS 10,562,077 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,562,077
• Apple Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentable
  PTAB · Jul 26, 2022 · IPR2021-00471 · APJ Sally C Medley · IPR · Final written decision

  Claims 1, 2, 4–10, 12, 14–17, and 19 are unpatentable as obvious under § 103 over the combinations of prior art listed in the decision.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Jeremy Cooperstock, who testifies that a person having ordinary skill in the art “would have had at least a Bachelor’s degree in an academic area emphasizing electronical engineering, mechanical engineering, or a similar discipline, and at least two years of experience in the field working with electronic devices” and that “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Pet. 7–8 (citing Ex. 1003 ¶ 20). Patent Owner relies on the declaration testimony of Dr. Hamid Toliyat, who applies a similar definition and testifies that a person having 8 Patent Owner does not present any objective evidence of nonobviousness as to the challenged claims. ordinary skill in the art “would have been someone having either a bachelor’s degree in electrical engineering, computer science, or mechanical engineering with some level of post-baccalaureate electronic device or system design experience, or someone with an equivalent level of experience and training through other means.” PO Resp. 5 (citing Ex. 2022 ¶ 31). Dr. Toliyat further testifies that “Dr. Cooperstock’s definition of a POSITA9 is somewhat different than mine; however, my opinions in this declaration would be the same regardless of whether or not my description or Dr. Cooperstock’s description of a POSITA is used.” Ex. 2022 ¶ 33. We adopt Petitioner’s definition of the level of skill for purposes of this Decision, except that we delete the phrase “at least” to avoid ambiguity in the definition of the level of skill. Patent Owner’s proposed level overlaps substantially with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level of qualifications, the outcome would remain the same.” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “concerning its conductive charging” and that “conductive charging of a consumer device such as a headset would be a relatively simple and straightforward process for a POSITA” such that there would be no need to look beyond Gundlach’s teachings. PO Resp. 9 (citing Ex. 2022 ¶ 8810), id. at 1–2. Dr. Toliyat, who testifies the same, does not support his conclusions with a sufficient factual basis. Ex. 2022 ¶¶ 88–89. For example, Dr. Toliyat does not explain how Gundlach provides ample disclosure concerning its conductive charging and we find that Gundlach does not. Rather, Gundlach describes that the case may contain “charging circuitry,” but does not describe what the circuitry contains. Ex. 1005 ¶ 80. Dr. Cooperstock’s testimony is entitled to substantial weight that “[w]hile robust on structural aspects of the wireless headset and storage solutions, Gundlach provides significantly less guidance and implementation details on the subject of charging” because his testimony is supported by Gundlach itself. Ex. 1003 ¶ 35 (citing Ex. 1005 ¶¶ 69, 73, 79, 80). Moreover, Dr. Toliyat does not provide sufficient evidence to support his conclusion that, at the time of the invention, conductive charging for a wireless headset would have been simple and straightforward. Ex. 2022 ¶ 88. Thus, his testimony does not undermine Dr. Cooperstock’s sufficient explanation that a “POSITA considering Gundlach, and noting its limited disclosure on charging, would have seen a need for elaboration and description of design options to implement the charging functionality,” which would have led the POSITA to Lee, also directed to wireless headsets.” slip op. at 17

  • BurdenUnpatentable

    “case, or card. Pet. 14 (citing Ex. 1005 ¶ 55). Petitioner further contends, and we find, that although Gundlach generally describes that the case may contain charging circuitry and electrical contacts, Gundlach does not expressly describe the manner in which the headset’s charging circuitry responds when placed in the cradle for charging. Id.; Ex. 1005 ¶ 56. Petitioner argues, and we agree, that “[a] POSITA considering Gundlach, and noting its limited disclosure on charging, would have seen a need for elaboration and description of design options.” Pet. 14 (citing Ex. 1003 ¶ 35). According to Petitioner, a person of ordinary skill in the art “seeking a supplement to Gundlach, . . . would have encountered Lee’s disclosure on charging in the familiar context of wireless headsets.” Id. at 14–15 (citing Ex. 1003 ¶ 35). Petitioner argues, and we agree, that a person of ordinary skill in the art would have been motivated to exchange Gundlach’s conductive charging components with Lee’s more thoroughly explained inductive charging components. Id. at 15 (citing Ex. 1003 ¶ 37). We also agree with Petitioner’s contentions that the person of ordinary skill in the art would have recognized that inductive charging is a suitable alternative to conductive charging and would have appreciated benefits of inductive charging, such as enhanced reliability. Id. at 16–17 (citing Ex. 1003 ¶¶ 40– 43; Exs. 1020–1022; Ex. 1006, 1:62–2:2). Petitioner further contends, and we agree, that employing Lee’s inductive charging solution in Gundlach’s device would result in a more compact form factor and interoperability absent the added bulk of a standardized connection. Id. at 17–18 (citing Ex. 1003 ¶¶ 44–45; Ex. 1005 ¶¶ 56–57, 66; Ex. 1006, 2:62–66, 4:55–57, Figs. 12, 16, 18, 19; Ex. 1029).” slip op. at 16

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

    “case, or card. Pet. 14 (citing Ex. 1005 ¶ 55). Petitioner further contends, and we find, that although Gundlach generally describes that the case may contain charging circuitry and electrical contacts, Gundlach does not expressly describe the manner in which the headset’s charging circuitry responds when placed in the cradle for charging. Id.; Ex. 1005 ¶ 56. Petitioner argues, and we agree, that “[a] POSITA considering Gundlach, and noting its limited disclosure on charging, would have seen a need for elaboration and description of design options.” Pet. 14 (citing Ex. 1003 ¶ 35). According to Petitioner, a person of ordinary skill in the art “seeking a supplement to Gundlach, . . . would have encountered Lee’s disclosure on charging in the familiar context of wireless headsets.” Id. at 14–15 (citing Ex. 1003 ¶ 35). Petitioner argues, and we agree, that a person of ordinary skill in the art would have been motivated to exchange Gundlach’s conductive charging components with Lee’s more thoroughly explained inductive charging components. Id. at 15 (citing Ex. 1003 ¶ 37). We also agree with Petitioner’s contentions that the person of ordinary skill in the art would have recognized that inductive charging is a suitable alternative to conductive charging and would have appreciated benefits of inductive charging, such as enhanced reliability. Id. at 16–17 (citing Ex. 1003 ¶¶ 40– 43; Exs. 1020–1022; Ex. 1006, 1:62–2:2). Petitioner further contends, and we agree, that employing Lee’s inductive charging solution in Gundlach’s device would result in a more compact form factor and interoperability absent the added bulk of a standardized connection. Id. at 17–18 (citing Ex. 1003 ¶¶ 44–45; Ex. 1005 ¶¶ 56–57, 66; Ex. 1006, 2:62–66, 4:55–57, Figs. 12, 16, 18, 19; Ex. 1029).” slip op. at 16

  Patent outcomesUS 10,259,021 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,259,021
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentable
  PTAB · Jun 29, 2022 · IPR2021-00335 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 1–19 are unpatentable: claims 1–9, 11–15, and 19 as obvious over Kim; claim 10 over Kim and Koh; claims 16–17 over Kim and Lee; and claim 18 over Kim and Jiang.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Sayfe Kiaei, who testifies that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer science, or a similar field and one year of experience in consumer electronics product design” and that “[m]ore education can supplement practical experience and vice versa.” Pet. 16–17 (citing Ex. 1002 ¶¶ 21–22). Patent Owner relies on the declaration testimony of Dr. Mark Horenstein, who applies a similar definition and testifies that a person having ordinary skill in the art “would be someone with either a bachelor’s degree in electrical engineering, computer science, or mechanical engineering with some level of post-baccalaureate electronic device or system design experience, or someone with an equivalent level of experience and training through other means.” PO Resp. 6 n.2 (citing Ex. 2004 ¶ 25). Dr. Horenstein further testifies that “Dr. Kiaei’s definition of a POSITA7 is somewhat different than mine, nevertheless my opinions in This Declaration would be the same regardless” slip op. at 9

  • 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 [claims] in a civil action under 35 U.S.C. 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such [claims] as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” See 37 C.F.R. § 42.100(b) (2019); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “coupling member 510 on ‘at least one side’ of the second body with Petitioner’s unsupported suggestion of coupling the sub-device to either side of the second body.” PO Reply 5. We disagree that Petitioner’s position represents a conflation of the disclosure. Kim’s description that the coupling member for fixing the sub-device “is provided on at least one side of the second body” means precisely what Petitioner contends—that the sub-device may be coupled to either side of the second body. Patent Owner and Dr. Horenstein read Kim too narrowly or imprecisely.8 Indeed, Dr. Horenstein concludes that from the disputed Kim passage, the sub-device can only be coupled to the top of the second body in a closed position. Ex. 2004 ¶¶ 42–44. Dr. Horenstein, however, fails to explain sufficiently why that is so and we find his testimony lacking and inconsistent with what Kim describes. Thus, we do not give his testimony substantial weight. Dr. Kiaei’s testimony on the matter, however, is deserving of 8 During the hearing, counsel for Patent Owner confirmed that it is Patent Owner’s position that Kim does not even contemplate coupling the sub-device to the first body, even though Kim explicitly describes as much. Tr. 42:23–43:14; Ex. 1010 ¶ 260. substantial weight, because his testimony is consistent with what Kim describes. Ex. 1002 ¶¶ 81–85.” slip op. at 22

  • Strike new argumentNew argument consideredDecided for petitioner

    “immediately above are new and too late. PO Reply 8–9. We disagree. Petitioners are not prohibited from relying on new evidence and arguments in a reply, if the evidence and arguments are responsive to arguments made in a patent owner response. See 37 C.F.R. 42.23(b); Consolidated Trial Practice Guide (“Consolidated Practice Guide”)10 at 73. Here, we determine that Petitioner’s arguments and accompanying evidence (e.g., Ex. 1031) in connection with the Petitioner Reply are responsive to Patent Owner’s arguments. In particular, Petitioner could not have anticipated that Patent Owner would argue for such a narrow view of Petitioner’s Figure A representation. As explained above, the Petition does not limit the hinge in the Figure A representation in any way. Pet. 23–26. Rather, the Figure A representation is based on what is described in Kim, which also does not limit the hinge in any way. Id.; Ex. 1010 ¶ 256 (broadly describing that “[t]he second body may be configured to be connected by a hinge 100d to one side of the first body to be open or closed”), ¶ 260 (describing coupling a third body to one of the first and second bodies in a state that the first and second bodies are coupled). Thus, we determine that Petitioner’s argument that “[t]here is nothing in Kim that would suggest to a POSITA, much less require, that the folding watch-type embodiment of Figure A must have a hinge exactly as depicted in Figure 15A” and that “a POSITA would have been able to use routine design skills to select the appropriate hinge, as Dr. Horenstein admits” is permissively responsive to Patent Owner’s arguments, which are based on a myopic view of the Petition and Kim. Patent Owner did not 10 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. request to submit new testimony in support of its Sur-reply to rebut Dr. Horenstein’s testimony. For all of the above reasons, we determine that Patent Owner has not been prejudiced or denied due process, and that we may consider the reply arguments and Dr. Horenstein’s testimony in support of the arguments, which we find persuasive.” slip op. at 27

  Patent outcomesUS 10,259,020 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,259,020
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentable
  PTAB · Jun 22, 2022 · IPR2021-00338 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–13 are unpatentable as obvious: claims 1–8 over Kim, claim 11 over Kim and Koh, and claims 9, 10, 12, and 13 over Kim and Lee.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). 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). In the Institution Decision, we considered the subject matter of the ’320 patent, the background technical field, and the prior art, and we agreed with Petitioner’s proposed qualifications. Dec. 8–9. Accordingly, we determined that one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer science, or a similar field and one year of experience in consumer electronics product design, and could have obtained similar knowledge and experience through other means. In view of the relevant technology and claims of the ’320 patent, as well as the technology of the asserted prior art, we adopt the same qualifications as those identified in the Institution Decision. We note that even if we adopted Patent Owner’s proposed level, the outcome would remain the same.” slip op. at 10

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

    “Petitioner asserts that no express claim construction is required in order to assess the grounds presented and the ordinary and customary meanings of the terms should be used. Pet. 17; see generally Pet. Reply. Patent Owner similarly states that no express construction is required, and the ordinary meaning of the terms may be used. PO Resp. 4; see generally PO Sur-Reply. In the Institution Decision, we determined that it was not necessary to provide express interpretations of any claim terms. Dec. 9–10. On the full record, we likewise determine that it is not necessary to provide an express interpretation of any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Additionally, Patent Owner asserts that Petitioner “conflates Kim’s disclosure of coupling member 510 on ‘at least one side’ of the second body with Petitioner’s unsupported suggestion of coupling the sub-device to either side of the second body.” PO Sur-Reply 5. We do not agree with this assertion. Kim’s description that the coupling member for fixing the sub-device “is provided on at least one side of the second body” discloses what Petitioner contends it does, that is, that the sub-device may be coupled to either side of the second body. Although Dr. Horenstein testifies that the sub-device can only be coupled to the top of the second body in a closed position, his explanation is not sufficient as to why that is so, particularly in view of Kim’s disclosures. See Ex. 2004 ¶¶ 42–44. For instance, Dr. Horenstein testifies that certain portions of Kim, such as those describing Figure 15B, show the coupling of sub-device on top of the second body, but this testimony is overly limited and inconsistent with other of Kim’s disclosures because it fails to account for other disclosures, as discussed above. Id. ¶ 44. Thus, we do not afford his testimony substantial weight. Instead, we credit Dr. Kiaei’s testimony on the issue because his testimony is consistent with what Kim describes. Ex. 1002 ¶¶ 83–87.” slip op. at 23

  • Strike new argumentNew argument consideredDecided for petitioner

    “A petitioner may rely on new evidence and arguments in a reply, if the evidence and arguments are responsive to arguments made in a patent owner response. See 37 C.F.R. 42.23(b); Consolidated Trial Practice Guide 73. Here, we determine that Petitioner’s arguments and accompanying evidence (e.g., Ex. 1031) in connection with this issue in the Petitioner Reply are responsive to Patent Owner’s arguments. In particular, Petitioner could not have anticipated that Patent Owner would argue for such a narrow view of Petitioner’s Figure A representation. As explained above, the Petition does not limit the hinge in the Figure A representation in any way. Pet. 23–25. Rather, the Figure A representation is based on what is described in Kim, which also does not limit the hinge in any way. Id.; Ex. 1010 ¶ 256 (broadly describing that “[t]he second body may be configured to be connected by a hinge 100d to one side of the first body to be open or closed”), ¶ 260 (describing coupling a third body to one of the first and second bodies in a state that the first and second bodies are coupled). Thus, we determine that Petitioner’s argument that “[t]here is nothing in Kim that would suggest to a POSITA, much less require, that the folding watch-type embodiment of Figure A must have a hinge exactly as depicted in Figure 15A” and that “a POSITA would have been able to use routine design skills to select the appropriate hinge, as Dr. Horenstein admits” is responsive to Patent Owner’s arguments, which are based on an overly limited view of the Petition and Kim.9 For the above reasons, we 9 We note that Patent Owner did not request to submit new testimony in support of its Sur-Reply to rebut Dr. Horenstein’s testimony. determine that we may consider the reply arguments and Dr. Horenstein’s testimony in support of the arguments, which we find persuasive.” slip op. at 28

  Patent outcomesUS 10,589,320 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,589,320
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentable
  PTAB · Jun 22, 2022 · IPR2021-00337 · APJ Sally C Medley · IPR · Final written decision

  Claims 1–13 are unpatentable: claims 1–8 as obvious over Kim, claim 11 over Kim and Koh, and claims 9, 10, 12, and 13 over Kim and Lee.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Sayfe Kiaei, who testifies that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer science, 7 Patent Owner does not present any objective evidence of nonobviousness as to the challenged claims. or a similar field and one year of experience in consumer electronics product design” and that “[m]ore education can supplement practical experience and vice versa.” Pet. 17 (citing Ex. 1002 ¶¶ 21–22). Patent Owner relies on the declaration testimony of Dr. Mark Horenstein, who applies a similar definition and testifies that a person having ordinary skill in the art “would have been someone having either a bachelor’s degree in electrical engineering, computer science, or mechanical engineering with some level of post-baccalaureate electronic device or system design experience, or someone with an equivalent level of experience and training through other means.” PO Resp. 5 n.2 (citing Ex. 2004 ¶ 25). Dr. Horenstein further testifies that “Dr. Kiaei’s definition of a POSITA8 is somewhat different than mine, nevertheless my opinions in This Declaration would be the same regardless of whether or not my description or Dr. Kiaei’s description of a POSITA is used.” Ex. 2004 ¶ 25. We adopt Petitioner’s definition of the level of skill for purposes of this Decision, except that we delete the phrase “at least” to avoid ambiguity in the definition of the level of skill. Patent Owner’s proposed level overlaps substantially with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level, the outcome would remain the same.” slip op. at 9

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

    “For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “coupling member 510 on ‘at least one side’ of the second body with Petitioner’s unsupported suggestion of coupling the sub-device to either side of the second body.” Sur-reply 5. We disagree that Petitioner’s position represents a conflation of the disclosure. Kim’s description that the coupling member for fixing the sub-device “is provided on at least one side of the second body” means precisely what Petitioner contends—that the sub-device may be coupled to either side of the second body. Patent Owner and Dr. Horenstein read Kim too narrowly or imprecisely.9 Indeed, Dr. Horenstein concludes that from the disputed Kim passage, the sub-device can only be coupled to the top of the second body in a closed position. Ex. 2004 ¶¶ 42– 44. Dr. Horenstein, however, fails to explain sufficiently why that is so and we find his testimony lacking and inconsistent with what Kim describes. Thus, we do not give his testimony substantial weight. Dr. Kiaei’s testimony on the matter, however, is deserving of substantial weight, 9 During the hearing, counsel for Patent Owner confirmed that it is Patent Owner’s position that Kim does not even contemplate coupling the sub-device to the first body, even though Kim explicitly describes as much. Tr. 42:23–43:14; Ex. 1010 ¶ 260. because his testimony is consistent with what Kim describes. Ex. 1002 ¶¶ 81–85.” slip op. at 22

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

    “advocating a Figure A solution that did not allow the cover of the watch-type device to properly close due to sandwiching sub-device 300.” PO Resp. 8 (citing Ex. 2004 ¶ 48). Patent Owner also argues that such a configuration as shown in Figure A would be unattractive, large, and ill-suited for its purpose. Id. at 8–9. Patent Owner’s arguments are premised on an overly limited view of the Figure A embodiment as it would be interpreted in the view of one of ordinary skill in the art. Kim broadly states that its embodiments “may be used singly and/or by being combined together.” Ex. 1010 ¶ 179. Consideration of the combination depicted in representative Figure A would reasonably have to “account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016). For the reasons discussed above, Kim discloses not only general combination of embodiments, but, more specifically, describes that first and second bodies are coupled and that the sub-device may be on either side of the second body, which supports the depiction of representative Figure A. Representative Figure A Would Have Been Obvious In addition to Kim’s description of representative Figure A, Petitioner also provides a showing, which we agree with, that the representative Figure A embodiment would have been obvious. Pet. 23–26. Specifically, Petitioner contends that, to the extent that Patent Owner argues that Kim does not disclose Figure A, such an embodiment would have been obvious to a POSITA in view of Kim’s folder-type embodiments (Figure 11B) which are similar and closely related to the watch-type embodiment (Figure 15A). Id. at 23–24 (citing Ex. 1010, Figs. 11B, 15A; Ex. 1002 ¶¶ 87–95). Petitioner explains how in both embodiments (folder-type and watch-type) the main device comprises a first body and a second body connected to each other by a hinge so that the two bodies can open or close in a folding manner, and that with respect to both embodiments, Kim also describes using coupling members 510 (such as magnets) to detachably couple the sub-device to the main device. Id. at 23–25 (citing Ex. 1002 ¶¶ 88–90; Ex. 1010 ¶¶ 212, 218, 220, 261). Petitioner contends that a “POSITA would have recognized that because of the similarities between Kim’s folder-type and watch-type embodiments, Kim’s disclosure with respect to Figure 11B could have been adapted and applied to detachably couple sub-device 300 to the second body 100b of the watch-type embodiment in the manner shown in Figure A.” Id. at 25 (citing Ex. 1002 ¶ 90). Petitioner further contends that doing so is suggested by Kim itself, because Kim states that the embodiments “may be used singly and/or by being combined together.” Id. (citing Ex. 1010 ¶ 179). Petitioner argues that a POSITA having reviewed Kim’s Figure 11B embodiment would have recognized the feasibility and desirability of modifying the embodiment of Kim’s Figure 15 to detachably couple sub-device 300 to the second body 100b using coupling members 510. Id. (citing Ex. 1002 ¶¶ 90–95). Petitioner further provides reasons for making the modification. Id. at 25–26 (citing Ex. 1002 ¶¶ 93–95). Patent Owner makes several arguments why Petitioner’s Figure A “is not obvious.” PO Resp. 9–35. For the reasons that follow, we determine that such arguments do not undermine Petitioner’s persuasive showing.” slip op. at 23

  Patent outcomesUS 10,562,077 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,562,077
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentable
  PTAB · Jun 22, 2022 · IPR2021-00336 · APJ Sally C Medley · IPR · Final written decision

  Claims 1–19 are unpatentable: claims 1–9, 11–15, and 19 as obvious over Kim; claim 10 over Kim and Koh; claims 16–17 over Kim and Lee; and claim 18 over Kim and Jiang.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Sayfe Kiaei, who testifies that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer science, 8 Patent Owner does not present any objective evidence of nonobviousness as to the challenged claims. or a similar field and one year of experience in consumer electronics product design” and that “[m]ore education can supplement practical experience and vice versa.” Pet. 17 (citing Ex. 1002 ¶¶ 21–22). Patent Owner relies on the declaration testimony of Dr. Mark Horenstein, who applies a similar definition and testifies that a person having ordinary skill in the art “would have been someone having either a bachelor’s degree in electrical engineering, computer science, or mechanical engineering with some level of post-baccalaureate electronic device or system design experience, or someone with an equivalent level of experience and training through other means.” PO Resp. 6 n.2 (citing Ex. 2004 ¶ 25). Dr. Horenstein further testifies that “Dr. Kiaei’s definition of a POSITA9 is somewhat different than mine, nevertheless my opinions in This Declaration would be the same regardless of whether or not my description or Dr. Kiaei’s description of a POSITA is used.” Ex. 2004 ¶ 25. We adopt Petitioner’s definition of the level of skill for purposes of this Decision, except that we delete the phrase “at least” to avoid ambiguity in the definition of the level of skill. Patent Owner’s proposed level overlaps substantially with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level, the outcome would remain the same.” slip op. at 9

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

    “For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “coupling member 510 on ‘at least one side’ of the second body with Petitioner’s unsupported suggestion of coupling the sub-device to either side of the second body.” Sur-reply 5. We disagree that Petitioner’s position represents a conflation of the disclosure. Kim’s description that the coupling member for fixing the sub-device “is provided on at least one side of the second body” means precisely what Petitioner contends—that the sub-device may be coupled to either side of the second body. Patent Owner and Dr. Horenstein read Kim too narrowly or imprecisely.10 Indeed, Dr. Horenstein concludes that from the disputed Kim passage, the sub-device can only be coupled to the top of the second body in a closed position. Ex. 2004 ¶¶ 42– 44. Dr. Horenstein, however, fails to explain sufficiently why that may be so and we find his testimony lacking factual support and inconsistent with what Kim describes. See 37 C.F.R. § 42.65 (expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight). Thus, we do not give his testimony substantial 10 During the hearing, counsel for Patent Owner confirmed that it is Patent Owner’s position that Kim does not even contemplate coupling the sub-device to the first body, even though Kim explicitly describes as much. Tr. 42:23–43:14; Ex. 1010 ¶ 260. weight. Dr. Kiaei’s testimony on the matter, however, is deserving of substantial weight, because his testimony is consistent with what Kim describes. Ex. 1002 ¶¶ 83–87.” slip op. at 22

  • Strike new argumentNew argument consideredDecided for petitioner

    “immediately above are new and too late. Sur-reply 8–9. We disagree. A petitioner is not prohibited from relying on new evidence and arguments in a reply, if the evidence and arguments are responsive to arguments made in a patent owner response. See 37 C.F.R. 42.23(b); Consolidated Trial Practice Guide (“Consolidated Practice Guide”)12 at 73. Here, we determine that Petitioner’s arguments and accompanying evidence (e.g., Ex. 1031) in connection with the Petitioner Reply are responsive to Patent Owner’s arguments. In particular, Petitioner could not have anticipated that Patent Owner would argue for such a narrow view of Petitioner’s Figure A representation. As explained above, the Petition does not limit the hinge in the Figure A representation in any way. Pet. 23–25. Rather, the Figure A representation is based on what is described in Kim, which also does not limit the hinge in any way. Id.; Ex. 1010 ¶ 256 (broadly describing that “[t]he second body may be configured to be connected by a hinge 100d to one side of the first body to be open or closed”), ¶ 260 (describing coupling a third body to one of the first and second bodies in a state that the first and second bodies are coupled). Thus, we determine that Petitioner’s argument that “[t]here is nothing in Kim that would suggest to a POSITA, much less require, that the folding watch-type embodiment of Figure A must have a hinge exactly as depicted in Figure 15A” and that “a POSITA would have been able to use routine design skills to select the appropriate hinge, as Dr. Horenstein 12 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. admits” is permissively responsive to Patent Owner’s arguments, which are based on a myopic view of the Petition and Kim. Patent Owner did not request to submit new testimony in support of its Sur-reply to rebut Dr. Horenstein’s testimony. For all of the above reasons, we determine that Patent Owner has not been prejudiced or denied due process, and that we may consider the reply arguments and Dr. Horenstein’s testimony in support of the arguments, which we find persuasive.” slip op. at 27

  Patent outcomesUS 10,259,021 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,259,021

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