- PTAB · Jan 6, 2023 · IPR2022-01203 · APJ Christopher L Crumbley · IPR · Institution
The Board instituted IPR on claims 1–10, 12–14, and 17–19 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. Patent Owner has not persuaded us that we should exercise our discretion to deny institution. We hereby institute an inter partes review as to claims 1–10, 12–14, and 17–19 of the ’989 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“in situations where a district court trial date is set to occur before the issuance of the Board’s final written decision. The facts and reasoning of Fintiv are, at a minimum, only applicable to cases in which the district court has actually set a trial date in a copending litigation. But here, as will be discussed below, the parties agree that no trial date has been set, and the District Court has stayed the litigation. Prelim. Reply 8; Prelim. Sur-Reply 6 (“There has never been a trial date.”). Furthermore, that stay will continue until our final determination should we decide to institute trial. Without a trial date, we see no need to engage in a full analysis of the Fintiv factors,14 as there is no basis for Patent Owner’s argument for discretionary denial.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“numerical solubility limit into the claims, noting that the ’989 patent expressly defines “non-ionic side groups capable of imparting solubility in water” as simply “side groups which are not charged and allow the resulting polymer to be soluble in water or aqueous solution with no visible particulates.” Prelim. Reply 1 (citing Ex. 1001, 54:9–13). Petitioner notes that this definition contains no numerical limit, and that it is followed by a statement that in some embodiments, the R group is capable of imparting solubility in excess of 10 mg/mL. Id. at 2 (citing Ex. 1001, 54:13–16). Petitioner contends that reading a limitation from “some embodiments” into the claims would be “one of the cardinal sins of patent law.” Id. (citing Phillips, 415 F.3d at 1320; Polaris Innovations Ltd. v. Brent, 48 F.4th 1365, 1375–76 (Fed. Cir. 2022)). Petitioner also directs our attention to related patents that expressly claim a solubility in excess of 10 mg/mL, arguing that when Patent Owner sought to claim such polymers, it knew how to do so. Id. (citing Ex. 1005, 218:11–12; Ex. 1006, 239:43–45, 252:51–52, 254:39–40, 262:56–57, 269:31–35).” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“proposed claim construction on solubility above, which we declined to do on the present record. For this reason, we find them unpersuasive. In addition, we note that Xue expressly discloses that its glycopolymers utilizing PEG-tethered spacers (Polymers B and C) “are highly water-soluble due to their long, flexible, hydrophilic spacers.” Ex. 1010, Abstract, 2289–90. Petitioner sufficiently sets forth why a person of ordinary skill in the art would have considered the PEG side chains of Xue to impart solubility in water, which is all we have construed the claims to require.” slip op. at 35
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,458,989 - Hanwha Solutions Corporation / Hanwha Q Cells USA, Inc. v. Rec Solar Pte. Ltd.No claims unpatentablePTAB · Dec 9, 2022 · IPR2021-00989 · APJ Brian D Range · IPR · Final written decision
Claims 1–6, 11, and 13 were not shown unpatentable under either obviousness ground because Petitioner did not establish a motivation to combine Yagiura and Shimasaki.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Petitioner’s position is persuasive. We agree that documents from the Japanese Patent Office are self-authenticating official government documents. The technical issues regarding missing pages in the originally filed version of the document do not cause us to question authenticity. We also agree that Petitioner uses the documents to establish what the documents teach rather than establishing the truth of what the documents teach. In Reply, Patent Owner argues that Petitioner relies on the date printed on the document to prove up the truth of when the document was published. Mot. Excl. Reply 1–2. To the extent this is the case, an exception to hearsay applies because the document is a record of a public office. Fed. R. Evid. 803(8)(B) (a record of public office is an exception to the hearsay rule if the opponent does not show that the source of information or other circumstances “indicate a lack of trustworthiness”). Here, Patent Owner does not persuasively demonstrate a lack of trustworthiness; Patent Owner does not identify any substantively meaningful distinction in the missing pages of the originally filed document and does not identify any evidence to suggest that the missing pages were anything more than a harmless clerical error. For the reasons above, Patent Owner’s motion to exclude is denied with respect to these documents. B.” slip op. at 8
- Skill levelSkill level board ownOther
“Petitioner’s proposal is too broad. PO Resp. 8. For example, a person who merely installs solar panels for three years (satisfying “professional experience in solar energy”) while having some familiarity with module manufacturing would not be of ordinary skill in the design aspects of the ’060 patent as, for example, reflected by the claims at issue and the ’060 patent’s text and figures. See, e.g., Ex. 1101, Figs. 2a, 2b, 3a, 3b, 4a, 4b, 3:22–7:44. On the other hand, we also determine that Patent Owner’s proposal is too narrow. A person could, for example, have ordinary skill in the art of the ’060 patent by virtue of non-professional experience (for example, academic experience). When assessing relevant experience, research work done for a university (beyond mere classroom study) would have been just as valuable as research work done for a corporation. Also, ordinary skill in the art could be demonstrated by work that requires understanding of the ’060 patent’s field even if not “designing, developing, and/or researching” in the field itself We, thus, determine that a person of ordinary skill in the art of the ’060 patent would have been someone with a bachelor’s degree in electrical engineering, applied physics, or the like, and at least two years of (a) experience designing, developing, and/or researching in the field or (b) experience in solar energy that required an understanding of the ’060 patent’s field. Alternatively, that person would have had an advanced degree in electrical engineering, applied physics, or the like and at least one year of” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“qualifies as evidence in this matter. The Federal Circuit has held that expert testimony about the perspective of person of ordinary skill in the art (as Dr. Kimball provides here) must come from a person having at least ordinary skill in the art. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022) (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)) (holding that ITC Administrative Law Judge abused discretion by admitting expert testimony of witness who lacked the experience of a person having ordinary skill in the art); see Mot. Excl. 6–7 (arguing this point). Patent Owner, however, cites no authority that expert testimony on such matters come from a person having ordinary skill in the art at the time of the invention. Cf. Scentair Tech., LLC v. Prolitiec Inc., IPR2021-00012, Paper 22 at 61 (PTAB Apr. 22, 2022) (similarly noting a party’s lack of authority on this point). Beyond needing to come from a person of ordinary skill in the art, expert testimony is admissible if the expert has the “scientific, technical, or other specialized knowledge [that] will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702. Furthermore, “[t]here is … no requirement of a perfect match between the expert’s experience and the relevant field.” USPTO, Patent Trial and Appeal Board Consolidated Trial Practice Guide, 34 (Nov. 2019). Here, Petitioner adequately establishes that Dr. Kimball qualifies as a” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Petition argues that all claim terms should be given their plain and ordinary meaning. Pet. 18. Patent Owner does not dispute this. PO Resp. 13. We determine that no claim term requires express construction for purposes of this Final Written Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms that are in controversy, and only to the” slip op. at 15
Patent outcomesUS 10,749,060 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,749,060 - Hanwha Solutions Corporation / Hanwha Q Cells USA, Inc. v. Rec Solar Pte. Ltd.All claims unpatentablePTAB · Dec 9, 2022 · IPR2021-00988 · APJ Brian D Range · IPR · Final written decision
Claims 1–6, 11, and 13 are unpatentable as obvious over Huang and Wu; claims 1, 2, and 4 are also anticipated by Zhang.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Petitioner’s position is persuasive. We agree that documents from the Japanese Patent Office are self-authenticating official government documents. The technical issues regarding missing pages in the originally filed version of the document do not cause us to question authenticity. We also agree that Petitioner uses the documents to establish what the documents teach rather than establishing the truth of what the documents teach. In Reply, Patent Owner argues that Petitioner relies on the date printed on the document to prove up the truth of when the document was published. Mot. Excl. Reply 1–2. To the extent this is the case, an exception to hearsay applies because the document is a record of a public office. Fed. R. Evid. 803(8)(B) (a record of public office is an exception to the hearsay rule if the opponent does not show that the source of information or other circumstances “indicate a lack of trustworthiness”). Here, Patent Owner does not persuasively demonstrate a lack of trustworthiness; Patent Owner does not identify any substantively meaningful distinction in the missing pages of the originally filed document and does not identify any evidence to suggest that the missing pages were anything more than a harmless technical error. For the reasons above, Patent Owner’s motion to exclude is denied with respect to these documents. B.” slip op. at 8
- Skill levelSkill level board ownOther
“Petitioner’s proposal is too broad. PO Resp. 8. For example, a person who merely installs solar panels for three years (satisfying “professional experience in solar energy”) while having some familiarity with module manufacturing would not be of ordinary skill in the design aspects of the ’060 patent as, for example, reflected by the claims at issue and the ’060 patent’s text and figures. See, e.g., Ex. 1001, Figs. 2a, 2b, 3a, 3b, 4a, 4b, 3:22–7:44. On the other hand, we also determine that Patent Owner’s proposal is too narrow. A person could, for example, have ordinary skill in the art of the ’060 patent by virtue of non-professional experience (for example, academic experience). When assessing relevant experience, research work done for a university (beyond mere classroom study) would have been just as valuable as research work done for a corporation. Also, ordinary skill in the art could be demonstrated by work that requires understanding of the ’060 patent’s field even if not “designing, developing, and/or researching” in the field itself. We, thus, determine that a person of ordinary skill in the art of the ’060 patent would have been someone with a bachelor’s degree in electrical engineering, applied physics, or the like, and at least two years of (a) experience designing, developing, and/or researching in the field or (b) experience in solar energy that required an understanding of the ’060 patent’s field. Alternatively, that person would have had an advanced degree in electrical engineering, applied physics, or the like and at least one year of (a) experience designing, developing, and/or researching in the field or 7 Our analysis is constrained to the extent neither party addresses the Best Medical factors with particularity. For example, the briefing does not address the educational level of the inventor. patent’s field.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We next assess whether or not Dr. Kimball’s testimony properly qualifies as evidence in this matter. The Federal Circuit has held that expert testimony about the perspective of a person of ordinary skill in the art (as Dr. Kimball provides here) must come from a person having at least ordinary skill in the art. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022) (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)) (holding that ITC Administrative Law Judge abused discretion by admitting expert testimony of witness who lacked the experience of a person having ordinary skill in the art); see Mot. Excl. 6–7 (arguing this point). Patent Owner, however, cites no authority that expert testimony on such matters come from a person having ordinary skill in the art at the time of the invention. Cf. Scentair Tech., LLC v. Prolitiec Inc., IPR2021-00012, Paper 22 at 61 (PTAB Apr. 22, 2022) (similarly noting a party’s lack of authority on this point). Beyond needing to come from a person of ordinary skill in the art, expert testimony is admissible if the expert has the “scientific, technical, or other specialized knowledge [that] will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702. Furthermore, “[t]here is … no requirement of a perfect match between the expert’s experience and the relevant field.” USPTO, Patent Trial and Appeal Board Consolidated Trial Practice Guide, 34 (Nov. 2019). Here, Petitioner adequately establishes that Dr. Kimball qualifies as a” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner argues, however, that where claim 4 recites “the first and second solar cell series are coupled with the bypass diode of the first solar cell unit via a first cross-connector, and the third and fourth solar series are coupled with the bypass diode of the second solar cell unit via a second cross-connector,” the word “a” means “one.” PO Resp. 13–14. In particular, Patent Owner argues that a person of ordinary skill in the art via one or more cross-connectors” and that “a” meaning “one” in claim 4 is necessary for claim 4 to further limit claim 1. Id. Petitioner argues that “a” means “one or more.” Pet. Reply 2–4. We agree with Petitioner. The ’040 patent explicitly defines “a” consistently with Petitioner’s position by stating that “it should be noted that the term ‘comprising’ does not exclude other elements or steps and the ‘a’ or ‘an’ does not exclude a plurality.” Ex. 1001, 7:62–63. The ’040 patent’s explicit definition is consistent with typical usage of “a” in this patent law context. See, e.g., KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (explaining that “a” in patent parlance means “one or more” for open-ended claims reciting the transitional phrase “comprising”). Patent Owner’s argument regarding claim construction is unpersuasive because Claim 4 further limits claim 1 by explicitly requiring first and second crossconnectors; claim 1 does not recite a “cross-connector.” Ex. 1001, 8:2–22. Thus, we construe “a” in this context as meaning “one or more.”” slip op. at 15
Patent outcomesUS 10,749,060 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,749,060 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting v. Cao Lighting, Inc.InstitutedPTAB · Oct 19, 2022 · IPR2022-00848 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 18, 22, 25, 26, 28–30, 32–36, 40–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 70–73, 77, 78, 81, 82, 85, 86, and 88–91 on both asserted §103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to all of the challenged claims of the ’770 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Here, our consideration of relevant factors including the seven Becton, Dickinson factors does not favor discretionary denial. In particular, the reexamination examiner allowed new claims based on prior art not disclosing an LED chip configured to output light at greater than about 40 mW as follows. Pet. 14. In particular, the Examiner distinguishes claim 18 from the prior art as follows: Proposed new claim 18, from which all of the other proposed new claims depend directly or indirectly, includes a feature requiring the semiconductor chip to be “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts. Ex. 1005, 7/9/2014 Notice of Intent to Issue Ex Parte Reexamination Certificate; see also Pet. 1 (explaining same). In the Petition, Petitioner persuasively establishes for purposes of institution that Krames teaches an LED chip that achieves “[a] power output of over 170 mW.” Pet. 53 (quoting Ex. 1008, 10). As explained herein when addressing the merits of Petitioner’s asserted grounds, Petitioner also provides persuasive argument why a person of skill in the art would have reason to combine Krames’s teachings with the teachings of the other cited references with a reasonable expectation of success. Pet. 26–31. Given these circumstances, the seven Becton, Dickinson factors weigh” slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts: As of the ’770 Patent’s claimed priority date (August 24, 2001), a POSITA would have had at least a bachelor’s degree in an engineering discipline with coursework in semiconductors and/or optoelectronics, and three or more years of experience working in the semiconductor and/or optoelectronics fields. Less work experience may be compensated by a higher level of education with the foregoing coursework. Pet. 19–20 (citing Ex. 1006 ¶ 34). Patent Owner does not dispute Petitioner’s definition of one of ordinary skill in the art. See generally Prelim. Resp. Petitioner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Petitioner’s description.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “[t]he terms in the Challenged Claims should receive their ordinary and customary meaning as understood by a POSITA in the context of the patent specification and prosecution history.” Pet. 19 (citing Ex. 1006 ¶ 69). Patent Owner asserts that the petition fails to show a reasonable likelihood that Petitioner would prevail for at least one claims because Petitioner has not identified how the challenged claims are to be construed or how the asserted references apply to any construed claim. Prelim. Resp. 1–4; Prelim. Sur-reply 1–3. Patent Owner further asserts that the petition violates 37 C.F.R. § 42.104(b)(3) because it does not, for each claim challenged, identify “how the challenged claim is to be construed” and “how the construed claim is unpatentable.” Prelim. Sur-reply 1. In particular, Patent Owner emphasizes that two district courts have construed various terms of the ’961 Patent and that Petitioner does not address these constructions. Prelim. Resp. 4–10. Patent Owner’s argument does not persuade us that institution is inappropriate here. Petitioner identified how each challenged claim is to be construed by asserting that “ordinary and customary meaning” applies. Pet. 19. Petitioner also explained how each challenged claim is unpatentable. Id. at 32–111. Patent Owner does not persuasively dispute Petitioner’s position. Under these circumstances, the petition satisfies 37 C.F.R. § 42.104(b)(3). As we explain below, Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim under each of these constructions. Thus, we determine that no claim terms require express construction for purposes of this Decision. See, e.g., Nidec Motor Corp. 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 10
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,634,770 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting v. Cao Lighting, Inc.InstitutedPTAB · Oct 19, 2022 · IPR2022-00847 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 21, 22, 25, 26, 28–30, 32–36, 40–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 on all three § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Office (“USPTO”) issued a Memorandum8 titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation.” The Memorandum states that “the precedential import of Fintiv is limited to the facts of that case.” Memorandum at 2. The Memorandum also states that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Id. at 3. The Memorandum further states that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Id. at 4–5. Further, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. Here, Petitioner stipulates that they “will not assert, in the parallel district court proceeding, that any Challenged Claim is invalid based on (a) the same grounds as those in the Petition, or (b) any grounds that reasonably could have been raised in the Petition.” Pet. Reply 7. The stipulation eliminates the possibility of Petitioner asserting duplicative invalidity grounds in both the Petition and in District Court. The Director’s guidance that “PTAB will not discretionarily deny institution” in view of a stipulation” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[t]he terms in the Challenged Claims should receive their ordinary and customary meaning as understood by a POSITA in the context of the patent specification and prosecution history.” Pet. 19 (citing Ex. 1006 ¶ 71). Petitioner states that “Patent Owner has taken a position as to the scope of certain claim terms through infringement contentions in the district court case.” Id. Specifically, Petitioner avers that Patent Owner proposes claim constructions for the term “reflective layers” and contends that grounds 1 and 3 demonstrate invalidity even under Patent Owner’s interpretation of “reflective layers.” Id. at 20 (citing Ex. 1017, 22– 23; Ex. 1006 ¶ 72). Patent Owner contends that the petition fails to show a reasonable likelihood that Petitioner would prevail for at least one claim because Petitioner has not identified how the challenged claims are to be construed or how the asserted references apply to any construed claim. Prelim. Resp. 4–10; Prelim. Sur-reply 1–3. Patent Owner further contends that the petition violates 37 C.F.R. § 42.104(b)(3) because it does not, for each claim challenged, identify “how the challenged claim is to be construed” and “how the construed claim is unpatentable.” Prelim. Sur-reply 1. In particular, Patent Owner emphasizes that two district courts have construed various terms of the ’961 Patent and that Petitioner does not address these constructions. Prelim. Resp. 4–10. Patent Owner’s argument does not persuade us that institution is inappropriate here. Petitioner identified how each challenged claim is to be construed by asserting that “ordinary and customary meaning” applies. Pet. 19. Petitioner also explained how each challenged claim is unpatentable. Id. at 32–30. Moreover, Petitioner explains that its challenges are sufficient under the District Court’s claim constructions. Pet. Reply 4. Patent Owner does not persuasively identify how the District Court claim constructions undermine Petitioner’s challenges and do not persuasively explain how the assert art fails to disclose or suggest claim 21’s recitations. Under these circumstances, the petition satisfies 37 C.F.R. § 42.104(b)(3). As we explain below, Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim based on ordinary and customary meaning. Thus, we determine that no claim terms require express construction for purposes of this Decision. See, e.g., Nidec Motor Corp. 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))). We also further address claim 8’s recitation of “reflective layers” when addressing that claim recitation in the context of the prior art.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner also asserts that a person of skill in the art would have had reason to combine the teachings of Allen and Krames with Begemann. Pet. 27–32. Based on the current record, we also determine that Petitioner’s assertion is persuasive and supported by evidence. Begemann teaches the use of LED chips for its LED lamp, but it does not describe the details of its LED chips. Ex. 1007, 1:1–4, 4:21–22. A person of skill in the art seeking to implement Begemann’s teachings would have looked to other references, 9 Petitioner mistakenly cites 3:32–35 (Pet. 40), but the quote is easily located on the next page. such as Krames and Allen, to learn more about the structure of high-power LED chips. Ex. 1006 ¶¶ 91–94. Krames teaches a chip that appears suitable for use in Begemann’s package. Pet. 29–30. Krames teaches that its chip “should be able to compete more favorably with conventional lighting technologies in many applications.” Ex. 1008, 6. This matches Begemann’s LED Lamps. Ex. 1007, 2:3–5. A person of ordinary skill in the art would have had a high expectation of success in mounting Krames’s chips within Begemann given, for example, the heat dissipation Begemann teaches (as explained above). Ex. 1006 ¶ 93. On the present record, Petitioner adequately establishes that a person of ordinary skill in the art would have reason to implement Krames’s chip design with Begemann with a high expectation of success. As to Allen, Begemann teaches a “white LED” for at least one embodiment. Pet. 31 (quoting Ex. 1007, 3:6–9). Krames teaches conversion of blue light into white “via phosphors” and Allen teaches that “blue dies with phosphorescent coating” may be used. Ex. 1008, 11; Ex. 1011, 4:11– 12; Ex. 1006 ¶¶ 95–96. Therefore, based on this current record, Petitioner’s position that a person of skill in the art would have combined the teachings of Begemann, Allen, and Krames to reach claim 1’s recited coating is persuasive and supported by evidence.” slip op. at 27
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,465,961 - Vudu, LLC v. Ideahub, Inc.All claims unpatentablePTAB · Apr 14, 2022 · IPR2020-01688 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 3, 4, 6, 8, 11, 13, 15, 18, 19, 21, and 23 are unpatentable over DIS 23009-1; the revised contingent motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 18–19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor 6 Patent Owner does not present objective evidence of nonobviousness. does it present its own definition. We adopt Petitioner’s definition as it is consistent with the specification of the ’830 patent and the cited references.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes that we construe “adaptation set,” “SegmentBase,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in its briefing. We need not construe any claim term to resolve any issues before us, and therefore, do not expressly define any claim term in our Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
“not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely because paragraph 253 uses the term “[h]ereinafter” before it discloses “two simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited 8 Ex. 2005 is Application No. 16/168,933 (“the ’933 application”). in limitations [38.6], [40.6], and [46.6]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicates a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. MTA 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 38, 40, and 46 do not find sufficient written description support in the ’644 application nor in the ’933 application, whether considered individually or collectively, and thus, these claims contain new matter.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“rationale for combining DIS 23009-1 with M20060, Petitioner persuasively contends that: A POSA would have been motivated to add the additional “metadata” described in M20060 to the MPDs described in the DIS 23001-6 or DIS 23009-1 references in order to enable the client to choose the most suitable version of media content among alternative versions of media content. For example, M20060 describes that the additional metadata (e.g., the extended accessibility element and the usedWith, equivalentTo, bitDepth, minBitDepth, and maxBitDepth attributes) helps “both users and clients to select appropriate representations” by, for example, “1) supporting accessibility, 2) describing relationships of representations, and 3) describing media’s bit depth.” Moreover, a POSA would have had an expectation of success in modifying the MPDs in DIS 23001-6 or DIS 23009-1 to include the additional metadata described below because it simply would have been a matter of adding additional metadata to the MPD XML schemas described in DIS 23001-6 or DIS 23009-1. Id. (citing Ex. 1094 ¶ 33; Ex. 1097 § 1, 1). Dr. Bestavros persuasively explains that “M20060 expressly references the DIS 23001-6 reference and proposes specific modifications to the MPEG DASH metadata included in the MPD XML schema.” Ex. 1094 ¶ 34 (citing Ex. 1097 § 1, 1 (introduction of M20060); Ex. 1097, 7 (references cited by M20060)).” slip op. at 41
Patent outcomesUS 10,270,830 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,270,830 - Vudu, Inc. v. Ideahub, Inc.All claims unpatentablePTAB · Apr 14, 2022 · IPR2020-01689 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 11, 25, 27, and 29 are unpatentable as anticipated by and obvious over DIS 23009-1; the revised contingent motion to amend proposing claims 31–35 is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level Of Ordinary Skill In The Art Petitioner contends that: A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor does it present its own definition in any of its briefing. We adopt Petitioner’s definition as it is consistent with the Specification of the ’414 patent and the cited references.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner proposes that we construe “adaptation set,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in any of its briefing. 6 Patent Owner does not present objective evidence of nonobviousness. and therefore, do not expressly define any claim term in our Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot shown unpatentable
“The newly-cited portion in paragraph 232 does not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited in limitations [31.11], [32.12], and [35.7]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicate a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 31, 32, and 35 do not have sufficient written description support in the ’644 application and the ’092 application, either individually or collectively, and as such, contain new matter.” slip op. at 29
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“are not entitled to a priority date earlier than March 16, 2012 (the filing date of PCT ’922), because the disclosure of KR10-2011-0023271 does not support at least the limitations of: “the adaptation set includes one or more attributes or elements that are common to each of the representations for that adaptation set,” as recited in independent claims 1 and 11, and the “SegmentTemplate” recited in independent claims 25. Patent Owner has not asserted, after institution, that the challenged claims are entitled to an earlier date. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327–28 (Fed. Cir. 2008) (indicating that patent owner bears a burden of production in arguing that the asserted references are not prior art based on entitlement to an earlier priority date). As such and for the reasons discussed below, Petitioner has persuasively demonstrated that DIS 23001-6, DIS 23009-1, and 3GPP TS 26.247 qualify as prior art to the challenged claims, because Petitioner has sufficiently demonstrated that the references were publicly accessible prior to the applicable priority date of March 16, 2012.” slip op. at 12
Patent outcomesUS 10,313,414 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,313,414 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Mar 22, 2022 · IPR2021-01520 · APJ Steven M Amundson · IPR · Institution
The Board denied institution of inter partes review of claims 1, 2, 4, 9-11, 13, 18, and 19 under § 325(d), finding the same art had been evaluated and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“If “either condition of first part of the framework is satisfied,” we must then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8. “An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.” Id. at 8 n.9.” slip op. at 16
- Other 314aNot reached
“III. DISCRETIONARY DENIAL Patent Owner argues that we should exercise our discretion under § 314(a) or § 325(d) to deny institution. See Prelim. Resp. 13–43; Prelim. Sur-reply 1–8; 35 U.S.C. §§ 314(a), 325(d). Petitioner argues that we should decline to exercise our discretion to deny institution. See Pet. 8–12; Prelim. Reply 1–10. For the reasons explained below, we exercise our discretion under § 325(d) to deny institution. Because we exercise our discretion under § 325(d) to deny institution, we do not reach discretionary denial under § 314(a).” slip op. at 15
Discretionary denialPatents in suitUS 9,686,193 - PTAB · Mar 15, 2022 · IPR2021-01158 · APJ Lynne E Pettigrew · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Palo Alto Networks would prevail in showing at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. We consider each of these factors below.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“35 U.S.C. § 325(d) because every ground asserted in the Petition is based on the same or substantially similar art and arguments already considered during prosecution of the ’899 patent. Prelim. Resp. 13–26. Section 325(d) states, in relevant part, “[in] determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses the following two-part framework in determining whether to exercise discretion under § 325(d) to deny institution: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In applying the two-part framework, we consider the following non-exclusive factors: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph). Factors (a), (b), and (d) relate to whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. Factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office. Id.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). After considering the parties’ arguments and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’899 patent. Accordingly, we institute an inter partes review of claims 1–20 of the ’899 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a bachelor’s degree in computer science, electrical engineering, or a related field, and approximately two years of professional experience or equivalent study in network security and the use of machine-learning algorithms.” Pet. 13 (citing Ex. 1004 ¶ 30). Petitioner further asserts that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. (citing Ex. 1004 ¶ 30). At this stage of the proceeding, Patent Owner does not dispute Petitioner’s assessment of the level of ordinary skill in the art. See generally Prelim. Resp. Based on the information presented in the Petition and Dr. Lee’s testimony, we adopt Petitioner’s assessment for purposes of this Decision.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,503,899 - PTAB · Mar 15, 2022 · IPR2021-01157 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–17, finding a reasonable likelihood that the challenged claims are obvious over four combinations of Jungck, Shah, Ke, and Sarathy.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. We consider each of these factors below.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“35 U.S.C. § 325(d). See Prelim. Resp. 19–35. Pursuant to § 325(d), the Director may elect not to institute a proceeding if the challenge to the patent is based on matters previously presented to the Office. Section 325(d) states, in relevant part, “[in] determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses the following two-part framework in determining whether to exercise discretion under § 325(d) to deny institution: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (footnote omitted).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends that a person of ordinary skill in the art would have had “a bachelor’s degree in computer science, computer engineering, or an equivalent, and four years of professional experience” and that “[l]ack of work experience can be remedied by additional education, and vice versa.” Pet. 16 (citing Ex. 1004, Decl. of Dr. Vijay Madisetti (“Madisetti Decl.”) ¶¶ 34–36). Patent Owner does not dispute Petitioner’s description of a person of ordinary skill. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Petitioner’s description of a person of ordinary skill is commensurate with the subject matter of the ’906 patent and we apply it for purposes of this Decision.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,749,906
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.