- PTAB · Feb 20, 2024 · IPR2023-01212 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1, 7, 9, 32, 38, and 40, finding a reasonable likelihood of prevailing on anticipation by Spain and obviousness over Spain as evidenced by Agiwal.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. We also agree with Petitioner that the timing of the progress of the appeal and any potential remand to the district court is uncertain. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.6 Thus, we determine that this factor weighs against the exercise of discretionary denial.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“As Petitioner asserts, in the prosecution history, Dressler is only referred to for the rejection of dependent claims for limitations not found in the challenged claims. Ex. 1002, 56; see also Pet. 45–46; PO Resp. 9–10. Further, Petitioner points out that the Examiner’s reliance on Dressler was for a disclosure that is common to Spain, but is not relied upon in the Petition. Pet. 45–46, Ex. 1006 ¶ 53. As such, there is no evidence in the prosecution history that the Examiner’s reliance on Dressler is related to any issue in the challenges here. Moreover, while the Examiner’s reference to Dressler infers that the Examiner performed some evaluation of that reference, Spain contains additional disclosures that are not in Dressler. See Ex. 1006 ¶¶ 64–65, 67, 82–84, 70–72, 80, Fig. 15; Ex. 1016. Accordingly, any evaluation of Dressler does not reflect a full evaluation of Spain. There is no support in the prosecution history of an evaluation of Spain, except for the Examiner’s initialization of an Information Disclosure Statement, which is not indicative of a substantive evaluation. Similarly, the references to the prior art disclosures alleged by Patent Owner to be the same as Spain were only initialed on Information Disclosure Statements. See Prelim. Resp. 12. Accordingly, the record does not provide support that Spain was substantively evaluated by the Examiner during prosecution.” slip op. at 19
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“viii. Conclusion Accordingly, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is anticipated by Spain. b. Claim 32 Claim 32 is a system claim that recites similar limitations to the limitations of method claim 1. Petitioner relies on similar evidence and argument to that presented for claim 1 in support of Spain’s disclosures of the claim 32 limitations. Pet. 35–38. Patent Owner presents no additional arguments specifically directed to claim 32 that we have not already addressed. See generally Prelim. Resp. We have reviewed the Petition’s showing for this claim and find that sufficient evidence has been provided in support of the anticipation challenge at this stage of the proceeding. Accordingly, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 32 is anticipated by Spain.” slip op. at 34
- Prior constructionPrior construction adoptedDecided for petitioner
“The district court issued claim constructions in the Google action for all disputed terms of the ’753 patent claims at issue. Ex. 1028. Petitioner uses the district court’s construction for the terms: “calibration data,” “calibration points,” “grid point,” “network measurement report,” and the order of the “providing,” “generating,” “evaluating,” and “selecting” steps of claim 1. Pet. 19–21 (citing Ex. 1008 ¶ 54; Ex. 1024, 1, 2; Ex. 1028, 8, 18, 20). Petitioner proposes that any other claim terms not addressed by the district court should be interpreted consistent with the Phillips standard. Id. at 19. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of [the] Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.” Prelim. Resp. 39. For the purposes of this Decision, we will use the district court’s claim constructions, which have been agreed to by the parties at this juncture. We determine that we need not expressly construe any claim terms at this juncture. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,406,753 - PTAB · Dec 8, 2023 · IPR2023-00946 · APJ Patrick R Scanlon · IPR · Institution
Instituted IPR of claims 1–4, 8, 10, 11, and 17–19 on all asserted grounds, based on a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of all the challenged claims on all the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Director Memo explains that, “[c]onsistent with Sotera Wireless, Inc., 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.” Director Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Director Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. court has set a trial date for February 20, 2024. Pet. 4.5 But to address any concerns regarding duplication of efforts between the related district court case and this proceeding, Petitioner provides a stipulation that it “will not pursue in the district court any grounds of invalidity against the challenged claims that were raised or reasonably could have been raised in IPR.” Id.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The only substantial difference between the two proposals is that Petitioner includes experience in “determining the position and/or orientation of a device used by a user (such as a device worn on the human body),” whereas Patent Owner does not. Compare Pet. 4–5, with Prelim. Resp. 11. At this stage, Patent Owner and its expert Dr. Abowd do not say if, or why, they disagree with this part of Petitioner’s articulation. See Prelim. Resp. 11–12; Ex. 2002 ¶¶ 8–12. We preliminarily determine that this part of Petitioner’s proposal is consistent with the types of technical problems that the ’217 patent assumes the reader would have been able to solve without detailed disclosure. See, e.g., Ex. 1001, 5:25–48, 6:38–50. And because the remainder of Petitioner’s proposal is substantially undisputed, we adopt Petitioner’s articulation of the level of ordinary skill in the art for this decision. Because this is a preliminary determination, Patent Owner may provide additional arguments or evidence supporting a different level of ordinary skill at trial.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“that the applicant intended to limit a “manipulatable input device” to the physical devices identified in the Specification, and therefore exclude the identified physical objects. To the extent Patent Owner is arguing that the amendment replacing “peripheral configured to be manipulated by the user” with “manipulatable input devices” was intended to disclaim physical objects from the scope of the claims, Patent Owner has not demonstrated that the amendment amounts to a “clear and unmistakable” disavowal. See Traxcell Techs., LLC v. Nokia Sols. & Networks Oy, 15 F.4th 1136, 1141 (Fed. Cir. 2021) (Prosecution disclaimer “attaches if a patentee ‘has that is ‘clear and unmistakable.’” (quoting Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324–26 (Fed. Cir. 2003)). Here, the amendment does not appear, based on the preliminary evidence, to be an unambiguous disavowal because it uses a different term (“manipulatable input device”) than the term from the Specification (“physical device”). Moreover, applicant’s remarks accompanying the amendment do not state that the amendment was intended to distinguish peripherals that are physical objects from peripherals that are physical devices; nor do the remarks state that the amendment was intended to exclude physical object peripherals from the scope of the claims. See Ex. 1012, 342–47.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,727,217 - PTAB · Dec 7, 2023 · IPR2023-00944 · APJ Iftikhar Ahmed · IPR · Institution
The Board instituted IPR on claims 1, 2, 5, 7, 10, 11, 15, 17, 18, 21, and 23 based on a reasonable likelihood of obviousness over Douris and Rodriguez.
RulingsInstitution decision- 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). After considering the parties’ briefing and the evidence of record, we conclude the information presented shows there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’222 patent. Accordingly, we institute an inter partes review as to the challenged claims on the unpatentability ground asserted in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We also find Petitioner’s reasons to combine Douris and Rodriguez persuasive for the purposes of institution. We agree that the combination would have provided an effective way of getting the user’s attention and would have been superior to the video or audio feedback disclosed in Douris in some situations, for example, when a quiet environment must be observed or when it is too noisy. See Pet. 23–24 (citing Ex. 1002 ¶ 73). Dr. Cooperstock testifies that in view of the audio overlay information disclosed by Douris as beneficial in certain situations, “[a]n ordinarily skilled artisan would have appreciated that the same advantage attaches to haptic feedback, as it would have provided a third modality to present information to the user—the sense of touch—without impacting the user’s field of vision.” Ex. 1002 ¶ 73. At this stage, we are persuaded by Dr. Cooperstock’s testimony and we determine that Petitioner provides an adequate reason for one of ordinary skill in the art to have modified Douris’s KSR, 550 U.S. at 420 (“[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed”). We are also persuaded at this stage that person of ordinary skill in the art would have had a reasonable expectation that the combination would have been successful. Dr. Cooperstock testifies that the use of control signals to provide haptic feedback in augmented reality systems was well-known before March 2013. Ex. 1002 ¶ 74 (citing Ex. 1004 ¶¶ 3, 9–10). He further testifies that “Rodriguez also identifies a number of commercially available, off-the-shelf components and toolkits for implementing haptics in mobile devices,” and that Rodriguez’s descriptions are sufficient for implementing the detailed functionality without undue experimentation. Id. (citing Ex. 1004 ¶¶ 3, 9–10, 71, 98); Pet. 24. Rodriguez discloses multiple Software Development Kits that would have allowed skilled artisans to develop software to control the haptic actuators. Ex. 1004 ¶ 71. On this record, we find Dr. Cooperstock’s testimony consistent with Rodriguez and persuasive to show that a person of ordinary skill in the art would have found the prior art disclosures adequate to implement Petitioner’s proposed combination.8 Thus, Petitioner sufficiently establishes that the combination of Douris and Rodriguez teaches this limitation.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Memo explains that, “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. Petitioner acknowledges that in the related district court case, the court has set a trial date of February 20, 2024. Pet. 4.10 But to address any concerns regarding duplication of efforts between the related district court case and this proceeding, Petitioner provides a stipulation that it “will not pursue in the district court any grounds of invalidity against the challenged claims that were raised or reasonably could have been raised in IPR.” Id.” slip op. at 38
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“[a] two-part framework: (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 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); see also” slip op. at 40
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,269,222 - PTAB · Dec 6, 2023 · IPR2023-00942 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 11, 12, and 15 on both asserted obviousness grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of all the challenged claims on all the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Petitioner’s arguments on this point are not persuasive because part one of the Advanced Bionics framework is not limited to prior art that was substantively considered by the Office. Advanced Bionics states that “[p]reviously presented art includes . . . art provided to the Office by an applicant, such as on an [IDS].” Advanced Bionics, Paper 6 at 7–8. Here, Poupyrev was included on an IDS. Ex. 1007, 153, 236. Moreover, the timing of the IDS submission has no impact on the first part of the Advanced Bionics framework given that the Examiner initialed a copy of the IDS, indicating that Poupyrev had been considered. Id. at 236. Thus, based on the totality of the evidence presented, we determine that Ground 1 includes only the same prior art that previously was presented to the Office.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Director Memo explains that, “[c]onsistent with Sotera Wireless, Inc., 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.” Director Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Director Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“We agree that the Specification provides a definition for this term that corresponds to the construction adopted by the District Court. See Ex. 1001, 5:7–16; Ex. 2004, 2. Inventors can act as their own lexicographers if they clearly set forth a definition of a claim term other than its ordinary and customary meaning. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 677 (Fed. Cir. 2015). But any such definition must appear in the specification “with reasonable clarity, deliberateness, and precision.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In this case, we are persuaded that the cited passage exhibits a clear intent to define “control gesture” and does so with the requisite clarity, deliberateness, and precision. We thus determine that the Specification provides an express lexicographic definition for the term. See Ex. 1001, 5:7–16. Accordingly, we preliminarily adopt the District Court’s construction of “control gesture” for purposes of this Decision.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,469,806 - PTAB · Dec 6, 2023 · IPR2023-00945 · APJ Christopher L Ogden · IPR · Institution
Instituted IPR of claims 1–3, 7–10, 14–17, and 20 on all petition grounds; Meta showed a reasonable likelihood of prevailing on obviousness over Nogami.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The Director Memo explains that, “[c]onsistent with Sotera Wireless, Inc., 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.” Director Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Director Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“6. Conclusion as to Claim 1 For the above reasons, we determine that Meta has shown sufficiently that Nogami teaches all the limitations of claim 1, and that based on Nogami’s teachings, a person of ordinary skill in the art would have had reason to make a system as recited in claim 1. We therefore determine that Meta is reasonably likely to prevail in showing that claim 1 is unpatentable under § 103(a) as obvious over Nogami.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The only substantial difference between the two proposals is that Meta includes experience in “determining the position and/or orientation of a device used by a user (such as a device worn on the human body),” whereas Immersion does not. Compare Pet. 4–5, with Prelim. Resp. 9. At this stage, Immersion and its expert Dr. Abowd do not say if, or why, it disagrees with this part of Meta’s articulation. See Prelim. Resp. 8–9; Ex. 2002 ¶¶ 8–12. We preliminarily determine that this part of Meta’s proposal is consistent with the types of technical problems that the ’143 patent assumes the reader would have been able to solve without detailed disclosure. See, e.g., Ex. 1001, 5:35–58, 6:48–60. And because the remainder of Meta’s proposal is substantially undisputed, we adopt Meta’s articulation of the level of ordinary skill in the art for this decision. Because this is a preliminary determination, Immersion may provide additional arguments or evidence supporting a different level of ordinary skill at trial.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the preliminary record, we have not identified any claim terms, including “real space,” that clearly depart from their ordinary and customary meanings, and our decision to institute trial does not require us to construe any terms explicitly. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Accordingly, we analyze the claim language below in the context of the prior art.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,664,143 - PTAB · Nov 28, 2023 · IPR2023-00920 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted IPR on all challenged claims and all grounds after finding a reasonable likelihood that claims 12–18 would be unpatentable over Jiang, Jiang2, and Jiang3.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’218 patent. Thus, we institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Patent Owner argues that Petitioner’s “generic motivations” to “increase power savings” fail to provide sufficient motivation to modify Jiang’s power gating system to supply multiple voltages. Prelim. Resp. 33– 39. Patent Owner asserts that the devices in each reference operates effectively and that Petitioner has not offered any motivation to modify what Jiang has already achieved. Pet. 38–39. On the present record, we disagree with Patent Owner. Petitioner asserts that a POSITA would have understood that different portions of a chip have different power requirements and that providing high voltages to the portions requiring high voltages and providing lower voltages (as opposed to no voltage) to the portions of the rest of the chip that require lower voltages would result in power savings. See Pet. 26–27; Ex. 1003 ¶¶ 90–93. Whether it would have been obvious to replace Jiang’s global power mesh with a mesh having two separate power sources is an issue that is best resolved on a full record.” slip op. at 32
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“A reference patent or published patent application can be entitled to the benefit of its provisional application’s filing date for pre-AIA 35 U.S.C. § 102(e) prior art purposes on two conditions. First, the provisional application must provide sufficient support for at least one claim in the reference patent or published patent application. See Dynamic Drinkware, 800 F.3d at 1381 (“A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.”). Second, the provisional application must provide sufficient support for the subject matter relied upon for prior art purposes in the reference patent or published patent application. See In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (“[A]n applicant is not entitled to a patent if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application or U.S. non-provisional application.”); Ex parte Mann, 2016 WL 7487271, at *5 (PTAB Dec. 21, 2016) (stating that the party claiming priority also must show that the subject matter relied upon in the non-provisional is sufficiently supported in the provisional application [and that t]his subject matter test is in addition to the comparison of claims required by Dynamic Drinkware”); Here, Petitioner fails to sufficiently show that Chiu’s Provisional Application (Ex. 1011) provides written description support for either (1) any claim of Chiu or (2) the subject matter that Petitioner relies upon in Chiu for prior art purposes. Petitioner provides no comparison or analysis of the material disclosed in Chiu’s Provisional Application with either Chiu’s claims or the subject matter in Chiu that Petitioner relies upon in its unpatentability argument. See Prelim. Resp. Petitioner’s invitation to the Board to compare the disclosure of Chiu and Chiu’s provisional application is not sufficient to meet this burden. See Benitec Biopharma Ltd. v. Cold Spring Harbor Labs., IPR2016-00016, Paper 8 at 9 (PTAB Mar. 31, 2016) (stating the petitioner failed to provide sufficient evidence that the asserted reference qualified as prior art when it failed to provide expert testimony or sufficient evidence that the provisional application provides support for the claims in the asserted reference); Comcast Cable Commc'ns, LLC v. Promptu Sys. Corp., IPR2018-00345, Paper 10 at 25–26 (PTAB July 2, 2018) (stating the petitioner’s “barebones analysis” was insufficient to show “how the [provisional underlying the asserted reference] provides support for the subject matter relied upon [in the asserted reference]”). Accordingly, Petitioner has not shown that Chiu is entitled to the priority date of its provisional application, and thus has not sufficiently shown that Chiu qualifies as prior art to the ’218 patent.” slip op. at 29
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We disagree with Patent Owner. As noted above, claim element 12[c] recites “a global power mesh, coupling to the first local power mesh and the second local power mesh, to provide the power needed by the first power domain and the second domain separately.” Neither party has provided an express or detailed claim construction analysis of this claim language. Nor does the ’218 patent appear to indicate that the phrase recited in claim element 12[c] should be afforded any special definition. See Ex. 1001. A plain and ordinary reading of this phrase, however, indicates that the global power mesh must be able to provide power needed by the first and second power domains separately. Pet. 21–22; Ex. 1004, Abstract, 1–2, Fig. 1(b); Ex. 1003 ¶¶ 78–85. Petitioner sufficiently shows that Jiang’s global power mesh is able to provide power separately to the first and second power domains by selectively turning off and on each domain’s sleep transistors, each of which is provided power by the global mesh.14 Pet. 22–23 (citing Ex. 1003 ¶ 81). Dr. Subramanian explains that the use of sleep transistors between the global power mesh and the first and second local power meshes enables the global power mesh to power each domain “separately” by 14 Petitioner has sufficiently shown, and Patent Owner does not dispute, that Jiang teaches sleep transistors are independently operable. Pet. 22–23; Ex. 1004, Abstract, 1–2, Fig. 1(b); Ex. 1003 ¶¶ 81–85. selectively turning off each domain’s sleep transistor when desired. Ex. 1003 ¶ 81 (citing Ex. 1004, Abstract, 1, 2). Dr. Subramanian further explains that turning off the power to the local power mesh, through use of the sleep transistors, will necessarily turn off the power to the macro (power domain) underlying the partial local power mesh. Ex. 1003 ¶ 81. Thus, Petitioner’s argument and evidence that Jiang discloses connecting global power mesh power VDD to the gated macros (power domains) through the sleep transistors and the local meshes provides a sufficient showing that Jiang discloses a global power mesh that provides power to the power domains through the sleep transistors and local power meshes.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,006,218 - PTAB · Oct 23, 2023 · IPR2023-00669 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1–6 and 9 for all petition grounds, finding a reasonable likelihood that Cisco would prevail on the asserted obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–6 and 9 in the ’708 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“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.” Interim Procedure at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)); see id. at 7, 9. The Interim Procedure also” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“factors to consider when deciding whether to exercise discretion under § 314(a) to deny institution based on a follow-on petition: (1) whether the same petitioner previously filed a petition directed to the same claims of the same patent; (2) whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; (3) whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; (4) the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; (5) whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; (6) the finite resources of the Board; and (7) the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review. Gen. Plastic, IPR2016-01357, Paper 19 at 9–10, 16.” slip op. at 17
- Parallel petitionsDenied
“Parallel Petitions Challenging the Same Patent. Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. See 35 U.S.C. § 316(b). In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. Nonetheless, the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references. . . .” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,302,708 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting v. Cao Lighting, Inc.Some claims unpatentablePTAB · Sep 28, 2023 · IPR2022-00848 · APJ Brian D Range · IPR · Final written decision
Claims 21, 22, 25, 26, 28–30, 32–36, 40, 42–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 are unpatentable under § 103; claim 41 is not shown …
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 18 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52, EPRC 1:32. One requirement of this apparatus is that it comprise “a semiconductor chip” (id. at 9:66) where “said semiconductor chip is a light emitting diode (LED) chip EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction (Resp. 14) of “said semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as referring to “a semiconductor LED chip capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor LED chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 53 (quoting Ex. 1008, 10). Notably, claim 18 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 9
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’770 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 16. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’770 patent claims. Patent Owner’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 Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 15
- Prior constructionPrior construction adoptedTerm construed patent owner constructionDecided for patent owner
“Delaware held, with respect to related U.S. Patent 6,465,961, construed “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” Resp. 14 (citing Ex. 1024, 15–18). Petitioner responds that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1. We note that the language of claim 18 does not precisely match the language the District Court considered, it is substantively the same. The record supports a construction very similar to the construction the District Court adopts, and we reference the District Court’s reasoning. Ex. 1024, 15– 18. We, thus, construe claim 18’s recitation that “said semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as referring to “a semiconductor LED chip that is capable of emitting light greater than about 40 milliwatts.” It is unnecessary to construe any other claim terms in this Decision because none of the parties’ disputes turn on the meaning of other terms. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 17
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“The facts above are evidence of the Krames reference’s publication as of June 29, 2000, because the facts tend to make the Krames reference’s publication as of June 29, 2000, more probable than it would be without the evidence. See Fed. R. Evid. 401(a) (defining evidence as relevant “if it has any tendency to make a fact more or less probable than it would be without the evidence”). The evidence is sufficient to support publication. Meanwhile, no evidence of record suggests that Krames was not a printed publication as of June 29, 2000. Thus, a preponderance of the evidence supports Krames’s prior art status. Patent Owner argues that Ms. Watters “never establishes a firm date when Krames was purportedly available to the relevant public.” Resp. 21. Patent Owner bases this argument by taking a tortured reading of Ms. Watters’s statement that “[m]embers of the interested public could locate a copy of [the Proceedings] on or after June 29, 2000, the date it was catalogued.” Id. (quoting Ex. 1020, 3); see also Sur-Reply 12–13. The best understanding of Ms. Watters’s statement, in view of the context of Ms. Watters explaining the library’s cataloguing process, is that a member of the interested public had two options: the person could choose to locate the Proceedings on June 29, 2000, or the person could choose to locate the Proceedings after June 29, 2000. Thus, the statement supports public availability as of June 29, 2000.” slip op. at 21
Patent outcomesUS 6,634,770 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,634,770 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentablePTAB · Sep 28, 2023 · IPR2023-00129 · APJ Brian D Range · IPR · Final written decision
Claims 21–40, 42–44, 47–49, 52–53, 56–59, 62–63, 65–68, 71–73, 77–78, 81–82, 85–86, and 88–91 are unpatentable over Begemann, Krames, and Allen; claim 41 is not shown unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“In the Reply, Petitioner uses the Krames declaration (Ex. 1028) to argue, for example, that a person of ordinary skill in the art would have used a lower amperage than the 1.5 A dc that Patent Owner’s Response focuses on. Reply 8 (citing Ex. 1028 ¶ 22). This use of the Krames declaration is timely because it responds to an argument Patent Owner makes in the Patent Owner Response. 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in . . . patent owner response.”). As to relevancy and whether the Krames declaration is applicable to the facts of this case, the issues at hand are (1) whether or not a person having ordinary skill would have had reason to use the Krames LED with Begemann with a reasonable expectation of success and (2) whether or not the Krames LED is capable of outputting light at greater than about 40 milliwatts. Again, we emphasize that claim 21 does not recite a method where the LED within the recited semiconductor light source actually outputs greater than about 40 milliwatts. The Krames declaration is relevant to the facts of this case because the declaration has bearing on whether or not a person of ordinary skill in the art would have combined the Krames reference’s LED with Begemann’s lightbulb design. See, e.g., Ex. 1028 ¶ 22. Patent Owner argues that evidence must be relevant to motivation to combine “an LED chip from the Krames article (operating at 1.5 amps to produce 170 milliwatts of output)” but claim 21 has no “operating at 1.5 amps to produce 170 milliwatts of output” requirement. What is relevant is that Krames discloses a single chip that has the capability of outputting more or less light depending on operating conditions. Pet. Opp. 3; see also Ex. 1008, 8 (providing that Figure 12 of the Krames reference is described as illustrating “[l]ight output vs. current characteristic of a blue … 1x1 mm2 AlGaInN LED in a power package, compared to a conventional AlGaInN LED in a 5 mm lamp a package”). Because claim 21 does not require actually running the recited LED at any particular wattage or amperage, it is appropriate for the Krames declaration to rebut Patent Owner’s argument that a person of ordinary skill would not have considered using the Krames LED with Begemann at high amperage by explaining that a person of ordinary skill in the art would have considered using the exact same Krames LED with Begemann at a low amperage instead and that at this lower amperage the Krames LED would generate an amount of heat that would be easily dissipated by Begemann’s lamp while still providing an optical output of “greater than about 40 milliwatts” as recited by claim 21. Ex. 1028 ¶¶ 23–24 (citing Ex. 1008, 8). The fact that the Krames LED is configured to run at the high amperage if desired for a different application does not negate the rationale for combining the Krames LED to run at a lower amperage.” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’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 Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20
- Prior constructionPrior construction adoptedDecided for patent owner
“Patent Owner’s claim construction is well-supported by the record including the reasoning provided by the California and Delaware district courts. Ex. 2002, 19–21 (California district court explaining why the “reflective layers” must be distinct layers based on how claim 8 is structured and also explaining why the amount of reflection must be non-negligible); Ex. 2003, 2, 13 (Delaware district court explaining why reflection has to be more than negligible but need not reflect more light than the light absorbed or transmitted). We, thus, agree that “first and a second reflective layers . . . 10 Patent Owner’s proposed claim construction combines various statements made by the district courts into one statement. Resp. 15 (citing Ex. 2002, 19–21; Ex. 2003, 2, 13). serving to reflect light emitted by said active layer” means that the “first and second reflective layers are distinct from each other and reflect more than negligible light.” We further note that the preponderance of the evidence supports that as little as one percent light reflectance is “non-negligible” in this context. Reply 4; also Ex. 1032, 188:7–14 (Patent Owner’s witness, Dr. Shealy, testifying that reflection “on the order of one percent” would be more than negligible); see also Tr. 53 (counsel for Patent Owner agreeing that Dr. Shealy opined that “three percent reflection is enough to be non-negligible”).” slip op. at 21
Patent outcomesUS 6,465,961 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,465,961 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentablePTAB · Sep 28, 2023 · IPR2023-00123 · APJ Brian D Range · IPR · Final written decision
Claims 21–40, 42–44, 47–49, 52–53, 56–59, 62–63, 65–68, 71–73, 77–78, 81–82, and 85–91 are unpatentable over Begemann, Krames, and Allen; claim 41 was not shown unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 21 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52. One requirement of this apparatus is that it comprise “at least one semiconductor chip” (id. at 10:1) where the “at least one semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts.” Id. at EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction of “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as meaning “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 54 (quoting Ex. 1008, 10). Notably, claim 21 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 12
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’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 Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“The facts above are evidence of the Krames reference’s publication as of June 29, 2000, because the facts tend to make the Krames reference’s publication as of June 29, 2000, more probable than it would be without the facts. See Fed. R. Evid. 401(a) (defining evidence as relevant “if it has any tendency to make a fact more or less probable than it would be without the 13 We note that Dr. Lebby does not directly state when the Proceedings were widely available. See Sur-Reply 14. evidence”). The evidence is sufficient to support publication. Meanwhile, no evidence of record suggests that Krames was not a printed publication as of June 29, 2000. Thus, a preponderance of the evidence supports Krames’s prior art status. Patent Owner argues that Ms. Watters “never establishes a firm date when Krames was purportedly available to the relevant public.” Resp. 25. Patent Owner bases this argument by taking a tortured reading of Ms. Watters’s statement that “[m]embers of the interested public could locate a copy of [the Proceedings] on or after June 29, 2000, the date it was catalogued.” Id. (quoting Ex. 1020, 3); see also Sur-Reply 13–14. The best understanding of Ms. Watters’s statement, in view of the context of Ms. Watters explaining the library’s cataloguing process, is that a member of the interested public had two options: the person could choose to locate the Proceedings on June 29, 2000, or the person could choose to locate the Proceedings after June 29, 2000. Thus, the statement supports public availability as of June 29, 2000.” slip op. at 25
Patent outcomesUS 6,465,961 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,465,961
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.