- TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentablePTAB · Nov 21, 2022 · IPR2022-00245 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 2–4 are unpatentable as obvious over Lam, Enz, and Tayloe; claims 2 and 3 are also unpatentable as obvious over Tayloe and the TI Datasheet.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Neither party contends that the difference in their proposals affects the outcome of this proceeding and we do not find that it does. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner, 669 F.3d at 1366 (citing CCS Fitness, 288 F.3d at 1366). “It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to redefine the term.” Id. (citing Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed. Cir. 2009)). That is precisely what the patentees did in the above-passage. Specifically, we find that they clearly set forth a definition that is different than the plain and ordinary meaning and, in so doing, clearly expressed an intent to redefine the term. That the patentees intended to redefine the term “storage module” is clearly expressed by the use of “as used herein”16 and “refers to” in the above-passage and is consistent with the patentees’ use of these same phrases when defining other terminology in the ’551 patent, as discussed above. slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Generally . . . the preamble does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). A term in the preamble is a limitation only if it “recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” TomTom, 790 F.3d at 1323. We agree with Petitioners that “wireless modem apparatus,” as recited in the preambles of claims 2 and 3, is not limiting. In particular, “wireless modem apparatus” does not provide antecedent basis for any term subsequently recited in claims 2–4; it does not provide any essential structure because the body of the claim recites a structurally complete invention; and it is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner’s argument that the preamble is limiting because it makes clear that the input signal is input to a wireless modem apparatus is unavailing because the body of claims 2 and 3 expressly recite, as the first element, “a receiver for frequency down-converting an input signal.” See Ex. 1001, 60:48–49 (claim 2), 61:2–3 (claim 3). And, Patent Owner’s arguments make clear that its attempt to read “wireless modem apparatus” as limiting is solely for the purpose of arguing that claims 2–4 require a transmitter, which is a structural element that is not recited in the claims. See, e.g., PO Resp. 72 (arguing that Tayloe does not disclose a transmitter), 79 (raising the same arguments directed to Lam). When the patentees intended to limit a claim to a transmitter, they expressly recited a transmitter in the body of the claim. See, e.g., Ex. 1001, 61:25–57 (Claim 6 recites “[a] wireless modem apparatus, comprising,” and expressly recites “a receiver” and “a transmitter” in the body of the claim.). Accordingly, for each of these reasons, we find that “wireless modem apparatus” recited in the preambles of claims 2 and 3 is not limiting. slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“On the full record before us, none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of these additional terms. Accordingly, we need not construe them expressly to resolve the present disputes between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 24
Patent outcomesUS 7,110,444 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,444 - TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentablePTAB · Nov 21, 2022 · IPR2021-00990 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 2–4 are unpatentable under §103: claims 2–3 over Tayloe and the TI Datasheet, and claims 2–4 over Lam, Enz, and Tayloe.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s option (a) is substantially the same as Petitioners’ proposal—both require a bachelor’s degree in the same or a related subject and two additional years of related work experience. Patent Owner’s option (b) adds an additional option based on work experience in lieu of a formal degree. Neither party contends that the difference in their proposals affects the outcome of this proceeding and we do not find that it does. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“The terms storage module and storage capacitance, as used herein, are distinguishable from the terms holding module and holding capacitance, respectively. Holding modules and holding capacitances, as used above, identify systems that store negligible amounts of energy from an under-sampled input EM signal with the intent of “holding” a voltage value. Storage modules and storage capacitances, on the other hand, refer to systems that store non-negligible amounts of energy from an input EM signal. Ex. 2029, 66:59–67 (emphases added); see Ex. 2016, 39–40 (discussing Patent Owner’s prior arguments to construe “storage module” in IPR2014- 00948). When defining certain terms in a section titled “General Terminology,” the ’551 patent repeatedly uses the phrase “when used herein” in combination with the phrase “refer(s) to.” See, e.g., Ex. 2029, 13:56–15:27 (mentioning a term followed by “when used herein,” followed by “refers to,” followed by a definition). For example, the ’551 patent states, “[t]he term digital signal, when used herein, refers to a signal that changes between discrete states, as contrasted to a signal that is continuous.” Id. at 15:7–9. As shown, the ’551 patent defines “digital signal” by stating “when used herein” followed by “refers to.” And, the same sentence also provides a comparison between “digital signal” and a signal that is continuous. Even though the passage describing “storage module” is not listed under the “General Terminology” section of the ’551 patent, the passage provides the same indications that the patentees clearly and unambiguously intended to define the term “storage module” by stating “as used herein” and “refer to”—hallmarks that the patentees were providing a lexicographic definition of the term. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 679 (Fed. Cir. 2015) (“An applicant’s use of the phrase ‘refers to’ generally indicates an intention to define a term.”) (citing In re Imes, 778 F.3d 1250, 1252–53 (Fed. Cir. 2015); Microsoft Corp. v. Int’l Trade Comm’n, 731 F.3d 1354, 1360 (Fed. Cir. 2013); Linear Tech. Corp. v. Int’l Trade Comm’n, 566 F.3d 1049, 1054 (Fed. Cir. 2009)). Additionally, as with the term “digital signal,” the above-passage provides a comparison between “storage module” and “holding module” and uses the definitions of the terms to compare and contrast them. “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner, 669 F.3d at 1366 (citing CCS Fitness, 288 F.3d at 1366). “It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to redefine the term.” Id. (citing Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed. Cir. 2009)). That is precisely what the patentees did in the above-passage. Specifically, we find that they clearly set forth a definition that is different than the plain and ordinary meaning and, in so doing, clearly expressed an intent to redefine the term. That the patentees intended to redefine the term “storage module” is clearly expressed by the use of “as used herein”16 and “refers to” in the above-passage and is consistent with the patentees’ use of these same phrases when defining other terminology in the ’551 patent, as discussed above.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Generally . . . the preamble does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). A term in the preamble is a limitation only if it “recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” TomTom, 790 F.3d at 1323. We agree with Petitioners that “wireless modem apparatus,” as recited in the preambles of claims 2 and 3, is not limiting. In particular, “wireless modem apparatus” does not provide antecedent basis for any term subsequently recited in claims 2–4; it does not provide any essential structure because the body of the claim recites a structurally complete invention; and it is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner’s argument that the preamble is limiting because it makes clear that the input signal is input to a wireless modem apparatus is unavailing because the body of claims 2 and 3 expressly recite, as the first element, “a receiver for frequency down-converting an input signal.” See Ex. 1001, 60:48–49 (claim 2), 61:2–3 (claim 3). And, Patent Owner’s arguments make clear that its attempt to read “wireless modem apparatus” as limiting is solely for the purpose of arguing that claims 2–4 require a transmitter, which is a structural element that is not recited in the claims. See, e.g., PO Resp. 72 (arguing that Tayloe does not disclose a transmitter), 79 (raising the same arguments directed to Lam). When the patentees intended to limit a claim to a transmitter, they expressly recited a transmitter in the body of the claim. See, e.g., Ex. 1001, 61:25–57 (Claim 6 recites “[a] wireless modem apparatus, comprising,” and expressly recites “a receiver” and “a transmitter” in the body of the claim.). Accordingly, for each of these reasons, we find that “wireless modem apparatus” recited in the preambles of claims 2 and 3 is not limiting. slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Additional Terms Petitioners propose that we construe the following three terms: “frequency down-conversion module,” “subtractor module,” and “under-samples.” Pet. 15–18. Patent Owner responds to Petitioners’ constructions for “frequency down-conversion module” and “subtractor module.” PO Resp. 39–41. On the full record before us, none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of these additional terms. Accordingly, we need not construe them expressly to resolve the present disputes between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 24
Patent outcomesUS 7,110,444 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,444 - TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentablePTAB · Nov 17, 2022 · IPR2022-00246 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1, 12–15, and 17–20 are unpatentable as obvious over the prior-art combinations; the Board did not reach the alternative grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’835 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“preamble of claim 1, is not limiting. In particular, “cable modem” does not provide antecedent basis for any term subsequently recited in claim 1, it does not provide any essential structure because the body of the claim recites a structurally complete invention, and “cable modem” is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner fails to raise any arguments on these issues to the contrary. Accordingly, for each of these reasons, we find that “cable modem” is not limiting.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“the construction of “frequency translation module,” but that is inapposite because none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of this term. Accordingly, we need not construe it expressly to resolve the present dispute between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 26
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“differently than the Federal Circuit in ParkerVision. Accordingly, because this specific issue of what amounts to “non-negligible amounts of energy” was already decided by the Federal Circuit, we construe this term to mean “energy in amounts that are distinguishable from noise.”30” slip op. at 55
Patent outcomesUS 7,292,835 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,292,835 - TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentablePTAB · Nov 17, 2022 · IPR2021-00985 · APJ Bart A Gerstenblith · IPR · Final written decision
The Board held claims 1, 12–15, and 17–20 unpatentable as obvious, including over Hulkko and Gibson and over Gibson and Schiltz.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“preamble of claim 1, is not limiting. In particular, “cable modem” does not provide antecedent basis for any term subsequently recited in claim 1, it does not provide any essential structure because the body of the claim recites a structurally complete invention, and “cable modem” is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner fails to raise any arguments on these issues to the contrary. Accordingly, for each of these reasons, we find that “cable modem” is not limiting.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the construction of “frequency translation module,” but that is inapposite because none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of this term. Accordingly, we need not construe it expressly to resolve the present dispute between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 26
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“differently than the Federal Circuit in ParkerVision. Accordingly, because this specific issue of what amounts to “non-negligible amounts of energy” was already decided by the Federal Circuit, we construe this term to mean “energy in amounts that are distinguishable from noise.”30” slip op. at 55
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“argument regarding the second alternative persuasive. In particular, the distinction Patent Owner seeks to draw between Hulkko and Gibson generally, does not undermine Petitioners’ argument and evidence that the particular structures proposed for combination are substantially similar, operate in a similar manner, and would have been expected, by one of ordinary skill in the art, to function predictably and with a reasonable expectation of success, once combined. Notably, we find particularly persuasive Hulkko’s teaching to use its switched capacitors as a mixer to perform down-conversion, which is the same function as Gibson’s mixers. See Ex. 1004, 5:39–49 (“switched capacitor switching elements . . . are used to implement the mixer 11 which directly demodulates the IF-signal into a base-frequency signal”). Accordingly, we find that the combination of Hulkko and Gibson teaches element [1B] and that one of ordinary skill in the” slip op. at 42
Patent outcomesUS 7,292,835 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,292,835 - Amphenol Corp. v. PPC Broadband, Inc.InstitutedPTAB · Oct 26, 2022 · IPR2022-00721 · APJ George R Hoskins · IPR · Institution
The Board instituted review of claims 1–6, 8–19, 21–33, 35–43, 45–50, and 52–62 on both grounds, finding a reasonable likelihood of obviousness over Youtsey, Lionetto, and Horak.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“When applying § 325(d), we utilize a two-part framework. See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). First, we determine “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.” Id. Second, “if either condition of [the] first part of the framework is satisfied,” we consider “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id. In the second part, we consider: (i) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (ii) whether Petitioner has pointed out sufficiently how the Examiner erred in evaluating the asserted prior art; and (iii) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art. Id. at 10–11 (citing factors (c), (e), and (f) of Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential)).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“analysis overlook that the specific solution proposed by Petitioner’s combination is much simpler than that suggested by Patent Owner. Patent Owner acknowledges the negative effects of RF interference and Petitioner’s evidence, including the discussion in the background section of the ’083 patent, establishes on this record that it was known that preventing RF interference was an important consideration in cable connector design, and that interference is particularly disruptive where an electromagnetic buffer is not provided by an adequate electrical and/or physical interface between the port and the connector. See, e.g., Pet. 17 (quoting Ex. 1001, 1:51–67) (citing Ex. 1005 ¶¶ 61–62). Petitioner’s evidence also establishes that Youtsey’s o-rings protect a center conductor from degradation due to moisture. See id. at 17–18 (citing Ex. 1007, 1:19–22, 2:14–16, 5:50–53). And, Horak specifically provides that a conductive, compressible o-ring can address both issues by blocking RF interference and sealing from the weather, e.g., moisture. See id. at 18 (citing Ex. 1009, 5:4–7; Ex. 1005 ¶¶ 64–66). Thus, we do not agree with Patent Owner that one of ordinary skill in the art needed to be motivated to create a coupler-body grounding path in particular, as opposed to being motivated to modify Youtsey such that the connector was not only sealed off from moisture (which Youtsey already taught), but also blocked RF interference, which was a known issue of concern and which Horak taught could be addressed with the same component that also seals off from moisture. Thus, Horak’s teaching, as applied to Youtsey’s o-rings, results in the element that Patent Owner asserts does not exist in the prior art—a coupler-body grounding path—whether or not creating that coupler-body grounding path was a specific, intended goal prompting one of ordinary skill in the art to make the proposed modification to Youtsey. Accordingly, on the present record, Patent Owner’s argument does not detract from Petitioner’s stated motivation and reasons for the proposed combination.” slip op. at 62
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner’s piecemeal arguments in response to Petitioner’s analysis overlook that the specific solution proposed by Petitioner’s combination is much simpler than that suggested by Patent Owner. Patent Owner acknowledges the negative effects of RF interference and Petitioner’s evidence, including the discussion in the background section of the ’083 patent, establishes on this record that it was known that preventing RF interference was an important consideration in cable connector design, and that interference is particularly disruptive where an electromagnetic buffer is not provided by an adequate electrical and/or physical interface between the port and the connector. See, e.g., Pet. 17 (quoting Ex. 1001, 1:51–67) (citing Ex. 1005 ¶¶ 61–62). Petitioner’s evidence also establishes that Youtsey’s o-rings protect a center conductor from degradation due to moisture. See id. at 17–18 (citing Ex. 1007, 1:19–22, 2:14–16, 5:50–53). And, Horak specifically provides that a conductive, compressible o-ring can address both issues by blocking RF interference and sealing from the weather, e.g., moisture. See id. at 18 (citing Ex. 1009, 5:4–7; Ex. 1005 ¶¶ 64–66). Thus, we do not agree with Patent Owner that one of ordinary skill in the art needed to be motivated to create a coupler-body grounding path in particular, as opposed to being motivated to modify Youtsey such that the connector was not only sealed off from moisture (which Youtsey already taught), but also blocked RF interference, which was a known issue of concern and which Horak taught could be addressed with the same component that also seals off from moisture. Thus, Horak’s teaching, as applied to Youtsey’s o-rings, results in the element that Patent Owner asserts does not exist in the prior art—a coupler-body grounding path—whether or not creating that coupler-body grounding path was a specific, intended goal prompting one of ordinary skill in the art to make the proposed modification to Youtsey. Accordingly, on the present record, Patent Owner’s argument does not detract from Petitioner’s stated motivation and reasons for the proposed combination.” slip op. at 62
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, . . . would be led in a direction divergent 9 Lionetto teaches that leaf spring 22 also provides electrical contact through the conductors. Ex. 1008, 2:34–36. from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)); see In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that, to teach away, the prior art must “criticize, discredit, or otherwise discourage the solution claimed”). We do not agree with Patent Owner that one of ordinary skill in the art would have been led in a direction divergent from that taken by Patent Owner. Although we agree with Patent Owner that Lionetto attributes importance to annular leaf spring 22, Lionetto also attributes importance to conductive elastomer gasket ring 34. In particular, Lionetto expressly attributes the electrical contact to both the spring and the gasket ring. See Ex. 1008, 2:34–36 (“the electrical contact is essentially through the leaf spring 22 and a conductive elastomer 34 against which the tapered surface 27 abuts”). And, Lionetto’s claims repeat the importance of both structures in providing continuous electrical contact and RFI suppression. See id. at 2:50–58 (claim 1) (“an annular electrical spring contact member which functions to provide continuous annular outer conductor electrical contact and RFI suppression . . . even during slight conductor misalignment”), 3:14–20 (“A connector of claim 1, and further comprising an electrically conductive elastomer gasket ring, carried on said male member against which said outer end taper of said female member may engage and compensates for misalignment of said male and female connector halves when fully engaged, providing continuous circumferential electrical contact and RFI suppression.”). Thus, Lionetto supports a finding that one of ordinary skill in the art would have been prompted to use an annular spring, a conductive gasket ring, or both to provide continuous electrical contact and RFI suppression across the connector. But, we disagree with Patent Owner that Lionetto would have led one of ordinary skill in the art away from using a conductive gasket ring in Youtsey, as proposed by Petitioner, because, as explained above, Lionetto uses a conductive gasket ring and expressly attributes the benefits noted above to its use (i.e., continuous electrical contact and RFI suppression). slip op. at 56
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,225,083 - PPC Broadband, Inc. v. Times Fiber Communications, Inc.Institution deniedPTAB · Oct 24, 2022 · IPR2022-00830 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution of IPR on claims 1–14 and 16–21 because the Patent Owner effectively disclaimed all challenged claims.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“conclude a disclaimer of claims 1–14 and 16–21 of the ’632 Patent, under 35 U.S.C. § 253(a) has been recorded in the Office as of July 28, 2022. Ex. 2002. Vectra Fitness, Inc., 162 F.3d at 1382. The record shows that a completed Form PTO/SB/43 (“DISCLAIMER IN PATENT UNDER 37 CFR 1.321(a)”) was filed and received by the Office on that date. See Ex. 2002. The disclaimer form was signed by Lance D’Armico, Secretary for Patent Owner Times Fiber Communications, Inc. See Ex. 2002, 3; see also Ex. 2001 (recorded assignment of the challenged patent from Amphenol Corporation to Times Fiber Communications, Inc., executed on December 23, 2021). The form identifies Patent Owner as having a “100% Ownership Interest” in the ’632 Patent, and identifies claims 1–14 and 16– 21 as being disclaimed. See Ex. 2002, 3. The evidence also reflects payment of the required fee. See id. at 1, 4–5. We determine Patent Owner has met the requirements for an effective disclaimer under 35 U.S.C. § 253 and 37 C.F.R. § 1.321(a). In view of this disclaimer, and as consistent with 37 C.F.R. § 42.107(e) and the Board’s precedential General Electric decision, we determine a denial of institution is sufficient to dispose of this case. See Gen. Elec. Co., IPR2017-00491, Paper 9. Thus, we decline to institute an inter partes review.” slip op. at 4
Discretionary denialPatents in suitUS 10,913,632 - PTAB · Apr 12, 2022 · IPR2022-00246 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted review of claims 1, 12–15, and 17–20 on all asserted grounds and granted LG Electronics’ motion to join IPR2021-00985.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] 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). For the reasons given below, we institute inter partes review of the Challenged Claims of the ’835 patent. We also grant Petitioner’s Motion for Joinder and join Petitioner to IPR2021-00985.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“35 U.S.C. § 315(c). We have explained that a motion for joinder should: (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact, if any, joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).” slip op. at 7
NonePatents in suitUS 7,292,835 - W-W Manufacturing Co., Inc. v. Jager Pro, Inc.All claims unpatentablePTAB · Feb 16, 2022 · IPR2020-01471 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–20 are unpatentable as obvious under §103 based on the combinations listed in the decision.
RulingsFinal written decision- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Motion to exclude, deniedDenied
“1 The Supplemental Response updated the following: (1) the exhibit list with a corrected description for Exhibit 2007, (2) the Conclusion (Part 8) of the Response to include a completed signature section, and (3) an updated Certificate of Compliance to confirm the word count of the Response. PO Supp. Resp. 2. 2 A combined oral hearing was held for this proceeding and related proceeding IPR2020-01470. 3 Petitioner served and then filed, at our request, a list of objections to Patent Owner’s demonstrative exhibits. Paper 37; see Tr. 6:3–26 (discussing Petitioner’s objections). As we explained at the oral hearing, “although the demonstratives are a useful aide during the oral hearing, we do not rely on them when rendering a final written decision. We rely on the arguments raised in the briefing and the evidence submitted in each case.” Tr. 6:11–15.” slip op. at 2
- Expert testimonyDecided for petitioner
“by Petitioner. In particular, Petitioner “substitut[es] the triggering mechanism and methodology of Jeong for the tripwire triggering mechanism known from the TexasBoars Combination” and asserts that such substitution “would yield predic[t]able results with a reasonable expectation of success.” Pet. 33–34 (citing Ex. 1002 ¶ 135). The success identified by Petitioner is making the modifications proposed—substituting or adding the teachings of Jeong to TB1/TB2 to create a remotely controlled, monitored/detected corral trap. Nothing about these modifications has anything to do with trap-shyness or conditioning of the animals as Patent Owner contends. Rather, the success has to do with whether one of ordinary skill in the art would have had a reasonable expectation of success in achieving the combination. And, Petitioner’s arguments are supported by Dr. Ditchkoff’s testimony (Ex. 1002 ¶ 135) as well as Jeong itself because Jeong effectively takes a trap and adds the same features (remote control and detection) that Petitioner proposes to add to TB1 and TB2 (see Pet. 20 (relying on Jeong and the stated benefits therein)). Accordingly, we find that Petitioner has established sufficiently that one of ordinary skill in the art would have had a reason with rational underpinning to make the modifications proposed and would have had a reasonable expectation of success in so doing.” slip op. at 63
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“by Petitioner. In particular, Petitioner “substitut[es] the triggering mechanism and methodology of Jeong for the tripwire triggering mechanism known from the TexasBoars Combination” and asserts that such substitution “would yield predic[t]able results with a reasonable expectation of success.” Pet. 33–34 (citing Ex. 1002 ¶ 135). The success identified by Petitioner is making the modifications proposed—substituting or adding the teachings of Jeong to TB1/TB2 to create a remotely controlled, monitored/detected corral trap. Nothing about these modifications has anything to do with trap-shyness or conditioning of the animals as Patent Owner contends. Rather, the success has to do with whether one of ordinary skill in the art would have had a reasonable expectation of success in achieving the combination. And, Petitioner’s arguments are supported by Dr. Ditchkoff’s testimony (Ex. 1002 ¶ 135) as well as Jeong itself because Jeong effectively takes a trap and adds the same features (remote control and detection) that Petitioner proposes to add to TB1 and TB2 (see Pet. 20 (relying on Jeong and the stated benefits therein)). Accordingly, we find that Petitioner has established sufficiently that one of ordinary skill in the art would have had a reason with rational underpinning to make the modifications proposed and would have had a reasonable expectation of success in so doing.” slip op. at 63
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“by new evidence other than deposition transcripts of the cross-examination of any reply witness.”); Consolidated Trial Practice Guide at 74 (Nov. 2019) (available at https://www.uspto.gov/TrialPracticeGuideConsolidated) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” (emphasis added)). Accordingly, the only claim for which we consider the question of nexus is claim 1.58” slip op. at 127
Patent outcomesUS 10,098,339 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,098,339 - W-W Manufacturing Co., Inc. v. Jager Pro, Inc.All claims unpatentablePTAB · Feb 16, 2022 · IPR2020-01470 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–28 are unpatentable as obvious over the listed combinations of TB1, TB2, Jeong, and, where applicable, Vorhies, Silsby, and Kimura.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“1 A combined oral hearing was held for this proceeding and related proceeding IPR2020-01471. 2 Petitioner served and then filed, at our request, a list of objections to Patent Owner’s demonstrative exhibits. Paper 34; see Tr. 6:3–26 (discussing Petitioner’s objections). As we explained at the oral hearing, “although the demonstratives are a useful aide during the oral hearing, we do not rely on them when rendering a final written decision. We rely on the arguments raised in the briefing and the evidence submitted in each case.” Tr. 6:11–15. Thus, we have noted Petitioner’s objections, but we dismiss them as moot because demonstrative exhibits are not evidence and we do not rely on them in rendering this Final Written Decision.” slip op. at 2
- BurdenFwd all claims unpatentableUnpatentable
“Challenged Claims. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Having reviewed the arguments and the supporting evidence, we determine that Petitioner has shown, by a preponderance of the evidence, that the Challenged Claims of the ’228 patent are unpatentable.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“by Petitioner. In particular, Petitioner “substitut[es] the triggering mechanism and methodology of Jeong for the tripwire triggering mechanism known from the TexasBoars Combination” and asserts that such substitution “would yield predic[t]able results with a reasonable expectation of success.” Pet. 28 (citing Ex. 1002 ¶ 110). The success identified by Petitioner is making the modifications proposed—substituting or adding the teachings of Jeong to TB1/TB2 to create a remotely controlled, detected corral trap. Nothing about these modifications has anything to do with trap-shyness or conditioning of the animals as Patent Owner contends. Rather, the success has to do with whether one of ordinary skill in the art would have had a reasonable expectation of success in achieving the combination. And, Petitioner’s arguments are supported by Dr. Ditchkoff’s testimony (Ex. 1002 ¶ 110) as well as Jeong itself because Jeong effectively takes a trap and adds the same features and method (remote control and detection) that Petitioner proposes to add to TB1 and TB2 (see Pet. 32 (relying on Jeong and the stated benefits therein)). Accordingly, we find that Petitioner has established sufficiently that one of ordinary skill in the art would have had a reason with rational underpinning to make the modifications proposed and would have had a reasonable expectation of success in so doing.” slip op. at 70
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“in a new direction with a new approach as compared to the positions taken in a prior filing.” (emphasis added)). Accordingly, the only claim for which we consider the question of nexus is claim 1.59” slip op. at 128
Patent outcomesUS 9,814,228 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,814,228 - Ecofasten Solar, LLC / Wencon Development, Inc. D/B/A Quickmount PV Corporation et al. v. Unirac, Inc.Institution deniedPTAB · Feb 8, 2022 · IPR2021-01379 · APJ Barry L Grossman · IPR · Institution
The Board denied institution of IPR for claims 3–7, 9, 10, 13, and 15–23 under § 325(d), finding the same or substantially the same art or arguments had previously been presented to the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“and Nobuyuki[] are the same or substantially the same as art previously considered by the Office, in either original prosecution or during reexamination.” Prelim. Resp. 30. Patent Owner asserts that the first part of the Advanced Bionics two-part framework for determining if denial of institution under § 325(d) is proper is satisfied. We agree, based on our analysis above. Specifically, we determine that under Becton, Dickinson factors (a), (b), and (d), the same or substantially the same art or arguments previously were presented to the Office. Turning to the second part of the Advanced Bionics framework, Petitioner also argues that the “Examiner erred in a manner material to patentability by adopting a narrow construction of ‘one or more clamps variably positionable on the dual track rail and footing grid’ that is inconsistent with the term’s plain and ordinary meaning.” Pet. 19. We disagree. We discussed the Board’s appeal decision in the previous section of this Decision. The Board affirmed the entirety of the RAN decision by the Reexamination Examiner, including construction of the phrase Petitioner argues was construed in error. We are not persuaded that Petitioner has met its burden to show error. Thus, under Becton, Dickinson factors (c), (e), and (f), Petitioner has not demonstrated a material error by the Office.” slip op. at 41
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Accordingly, based on our analysis of the Becton, Dickinson factors and the guidelines in Advanced Bionics, we exercise our discretion and deny institution under 35 U.S.C. § 325(d) because the same or substantially the same prior art or arguments previously were presented to the Office. III. CONCLUSION Taking into consideration the arguments in the Petition, the Preliminary Response, and the evidence of record, we exercise our discretion and deny institution of an inter partes review under 35 U.S.C. § 325(d).” slip op. at 42
- BurdenDecided for patent owner
“Petitioner also argues that the “Examiner erred in a manner material to patentability by adopting a narrow construction of ‘one or more clamps variably positionable on the dual track rail and footing grid’ that is inconsistent with the term’s plain and ordinary meaning.” Pet. 19. We disagree. We discussed the Board’s appeal decision in the previous section of this Decision. The Board affirmed the entirety of the RAN decision by the Reexamination Examiner, including construction of the phrase Petitioner argues was construed in error. We are not persuaded that Petitioner has met its burden to show error. Thus, under Becton, Dickinson factors (c), (e), and (f), Petitioner has not demonstrated a material error by the Office.” slip op. at 41
Discretionary denialPatents in suitUS 7,434,362
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.