- PTAB · Jul 15, 2024 · PGR2024-00011 · APJ Jean R Homere · PGR · Institution
The Board instituted PGR on claims 1–15 and all asserted grounds, finding a reasonable likelihood that at least claim 1 is obvious over Chang, Chang II, and POSITA knowledge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324(a) (2018); 37 C.F.R. § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon considering the evidence and arguments in the Petition (including its supporting testimonial evidence) and the evidence and arguments in the Preliminary Response (including its supporting testimonial evidence), we determine that the information presented shows that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute post-grant review on all” slip op. at 2
- Other 314aDenied
“Petitioner hereby stipulates that, if the PTAB institutes this post-grant review, Petitioner will not pursue invalidity of the Challenged Claims in a parallel district court proceeding on the same grounds or any grounds that could have reasonably been raised before the PTAB in this Petition. Pet. 106. Petitioner cites the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”)3 in support of its contentions. Pet. 106.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“§ 325(d), the Board uses the following two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In applying the two-part framework, we consider several non-exclusive factors, including: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which petitioner relies on the prior art or patent owner distinguishes the prior art; (e) whether petitioner has pointed out sufficiently how the examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph) (“Becton, Dickinson”). Becton, Dickinson factors (a), (b), and (d) relate to whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. Factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a material error by the Office” in its prior consideration of that art or arguments. Id. Only if the same or substantially the same art or arguments were previously presented to the Office do we consider whether the petitioner has demonstrated a material error by the Office. Id. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“At the time of the invention, a POSITA would have had a bachelor’s degree in computer science, electrical engineering, or an equivalent, and two years of professional experience working with computer network protocols such as USB. Lack of work experience can be remedied by additional education, and vice versa. Id. (citations omitted). At this stage, we find Patent Owner’s proposed level of a POSITA to be consistent with the problems and solutions disclosed in the ’643 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (approving the determination of the level of ordinary skill in the art by appeal to the references of record). We nonetheless invite the parties to further address this issue, if they deem it necessary and appropriate. The parties should also specifically explain how different definitions for one of ordinary skill in the art relate to specific arguments and issues of unpatentability or claim construction, to the extent that a dispute remains as to who constitutes a POSITA.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · Graham · NautilusPatents in suitUS 11,681,643 - NXP USA, Inc. v. Bell Semiconductor, LLCInstitutedPTAB · May 8, 2024 · IPR2024-00168 · APJ Brian D Range · IPR · Institution
Instituted inter partes review of claims 1–6 and 8 on all petition grounds addressing those claims, 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
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–6 and 8 of the ’245 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in a field relating to the semiconductor manufacturing process, such as materials science, physics, electrical engineering, and/or other related subjects, and at least two to three years of experience with fabrication of integrated circuits.” Pet. 4 (citing Ex. 1002 ¶ 20). Petitioner also contends “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 4–5. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’245 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Claim 1 affirmatively recites, for example, “a plurality of layers under the top layer.” Ex. 1001, 4:13. Claim 1 also affirmatively recites that the “plurality of layers compris[es] a bottom routing layer having signal traces thereon.” Id. at 4:14–15. So, claim 1 requires a bottom routing layer having signal traces. Claim 1 then recites “where[] none of the signal traces of the bottom routing layer are located over ball pads of the ball pad layer which are disposed in an area within two ball pad pitches of the corner of the die.” Id. at 4:17–20. This recitation serves to describe the “signal traces of the bottom routing layer.” The recitation does not affirmatively recite a required location of any ball pads. Likewise, the claim as a whole also does not state that the ball pad layer comprises ball pads disposed within two ball pad pitches of the corner of the die. Rather, the claim recites “said ball pad layer having a plurality of ball pads” without affirmatively indicating where those ball pads must be located within the ball pad layer. Thus, on the present record, we interpret claim 1’s recitation of “none of the signal traces . . . within two ball pad pitches of the corner of the die” as requiring that no signal traces of the bottom routing layer be located over ball pads of the ball pad layer disposed within two ball pad pitches of the corner of the die if any such ball pads exist in this location. We do not interpret claim 1 as affirmatively requiring ball pads disposed within two ball pad pitches of the corner of the die. To the extent Patent Owner maintains arguments regarding this recitation in a Patent Owner Response, we invite the parties to further address this claim construction issue at trial to the extent permitted by our rules.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We have reviewed Petitioner’s contentions for all of the elements of independent claim 1, as well as the supporting evidence. Pet. 45–55. Based on the record before us, we are persuaded that Petitioner’s discussion of the particular structures and methods in Chung and Celeron establishes a reasonable likelihood of prevailing at trial on the issue of whether the combined teachings of Chung and Celeron teach or suggest all of the limitations of independent claim 1. Id. Also, based on the present record, we are persuaded that Petitioner adequately establishes that a person having ordinary skill in the art would have had reason to combine the teachings of Chung and Celeron.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,345,245 - PTAB · Apr 25, 2024 · IPR2023-01411 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds, finding a reasonable likelihood that Johnson renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.108 (2023). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’705 patent.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityOther
“The parties identify themselves as real parties-in-interest. Pet. 1; Paper 4, 2. In addition, Petitioner states that it “is a subsidiary of Hisense Group,” and that “[o]ther privies or real parties in interest include companies within the Hisense Group, including Hisense International (Hong Kong) America Investment Co., Ltd.; Hisense Group Holdings Co., Ltd.; Hisense Visual Technology Co., Ltd.; Hisense International (HK) Co., Ltd.; Hisense International Co., Ltd.; [and] TVS REGZA Corporation.” Pet. 1.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ dispute regarding the level of ordinary skill in the art does not substantively impact our analysis for purposes of institution. Rather, we find in applying either parties’ definition for what comprises the level of ordinary skill in the art that Petitioner shows that there is a reasonable likelihood that it would prevail in proving the unpatentability of the challenged claims. At this stage of the proceeding, however, we adopt Petitioner’s proposed definition of the level of skill for one of ordinary skill in the art. Pet. 8–9. This definition for the level of ordinary skill is consistent with the ’705 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b); 83 Fed. Reg. 51,340, 51,340–41, 51,343 (Oct. 11, 2018). In applying such standard, claim terms generally are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Here, the parties agree that no claim terms require construction. Pet. 9; Prelim. Resp. 4–5. Thus, for purposes of our Decision on Institution, we need not provide an express construction of any claim term. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,872,705 - PTAB · Apr 25, 2024 · IPR2023-01412 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1, 2, 5, 11–13, 16, 17, 47, and 48 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.108 (2023). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’710 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ dispute regarding the level of ordinary skill in the art does not substantively impact our analysis for purposes of institution. Rather, we find in applying either parties’ definition for what comprises the level of ordinary skill in the art that Petitioner shows that there is a reasonable likelihood that it would prevail in proving the unpatentability of the challenged claims. At this stage of the proceeding, however, we adopt Petitioner’s proposed definition of the level of skill for one of ordinary skill in the art. Pet. 10. This definition for the level of ordinary skill is consistent with the ’710 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Here, the parties do not submit any claim terms for construction. Pet. 10; see generally Prelim. Resp. Thus, for purposes of our Decision on Institution, we see no need to provide an express construction of any term. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,330,710 - PTAB · Apr 2, 2024 · IPR2023-01414 · APJ Jeffrey W Abraham · IPR · Institution
The Board instituted IPR on claims 1–4 and 9–12 across all asserted grounds, finding a reasonable likelihood that claims 1–4 and 9–12 are obvious over Li-748, Tong, and Mao.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a Bachelor’s degree in Electrical Engineering, Computer Engineering, Computer Science, or a related field, and at least 2 years of experience in the field of wireless communication, or had equivalent education, work, or” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“After considering the arguments and information presented in the Petition, we determine that it is not necessary to construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). We do note, however, that limitation [9f] refers to producing “the transmitter beamforming information,” but the phrase “transmitting beamforming information” does not appear earlier in claim 9. We, therefore, question whether there is proper antecedent basis for “the transmitter beamforming information” in [9f]. We invite the parties to address this issue to clarify the language in claim 9 during the course of the proceeding.” slip op. at 9
Claim constructioncites PhillipsPatents in suitUS 8,416,862 - PTAB · Apr 2, 2024 · IPR2023-01410 · APJ Barbara A Parvis · IPR · Institution
Instituted IPR of claims 1–7 and 9–12 on all asserted grounds after finding a reasonable likelihood of success on at least one claim under either §103 combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“U.S.C. § 314 and 37 C.F.R. § 42.4. We may 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). Upon consideration of the contentions and the evidence of record at this preliminary stage, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’075 patent. Accordingly, we grant Petitioner’s request and institute an inter partes review of all challenged claims of the ’075 patent and with respect to all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had at least a graduate degree in mechanical engineering, physics, materials science, electrical engineering, or a related discipline, coupled with at least four years’ experience in designing backlighting systems for displays; the level of ordinary skill in the art is approximate and additional education could make up for a lack of experience or vice-versa. Pet. 8 (citing Ex. 1003 ¶ 28). Patent Owner argues that a person of ordinary skill in the art would have [had] (a) a Bachelor’s of Science degree in a technical field and at least four years of experience in the field of design and/or manufacture of display systems; (b) a Master’s of Science degree in a technical field and at least two years of experience in the field of design and/or manufacture of display systems; or (c) a PhD in a technical field relating to the design and/or manufacture of display systems. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. 4 Neither party presents objective evidence of nonobviousness at this stage of the proceeding.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“We preliminarily find that column 6, lines 47 through 51 of the ’075 patent provides a meaning of the term “on.” That disclosure in the ’075 patent states that “[i]t will be understood that when an element such as a layer, region or substrate is referred to as being ‘on’ or extending ‘onto’ another element, it can be directly on or extend directly onto the other element or intervening elements may also be present.” Ex. 1001, 6:47–51 (emphasis added). Our preliminary finding is consistent with both parties’ constructions proposed in the parallel district court case. Prelim. Resp. 4; Ex. 2003, 4. We agree with Patent Owner that the disagreement between the parties in the parallel district court case appears to be of form, rather than substance. Prelim. Resp. 5. We decline to resolve that dispute here. We also preliminarily find that Patent Owner’s construction in this proceeding prohibiting airgaps is not consistent with the meaning of the term “on” based on the intrinsic record as understood based on the arguments made at this early juncture. Because intervening elements, such as a diffuser sheet, may be present, the intrinsic record does not support a narrow meaning of the term “on.” As will be discussed further below, the ’075 patent describes in “contrast” to the term “on,” the term “directly on” means “there are no intervening elements present.” Ex. 1001, 6:51–53. We, therefore, preliminarily find that construing “on” such that airgaps may be present is consistent with the claim language and patent disclosure. Ex. 1001, 6:47–51, 21:51–22:3.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We also preliminary find that Mok does not teach away from Petitioner’s proposed combination. We agree with Patent Owner to the extent that Mok discloses that “[g]enerally speaking, larger spaced-distances 48 will improve the uniformity of the light produced by the panel, but at the expense of panel thickness and some loss of efficiency.” Ex. 1005 ¶ 23. Mok’s description, however, continues as follows “[b]y way of example, in one embodiment, the diffuser 16 is separated from the base panel 12 by a distance 48 of about 50 millimeters (mm) or less.” Id. Our reviewing court has explained that “[t]he fact that [a] motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another.” See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). We preliminarily find that the relative advantages (e.g., reduced panel thickness) and disadvantages (e.g., reduced light uniformity) of modifying Mok’s lighting panel to include Holman’s stacking arrangement amount to a tradeoff is a decision within the level of an ordinarily skilled artisan. Indeed, Mok acknowledges this tradeoff. See Ex. 1005 ¶ 23 (“Generally speaking, larger spaced-distances 48 will improve the uniformity of the light produced by the panel, but at the expense of panel thickness and some loss of efficiency.”). For the reasons given, we determine that Petitioner has shown sufficiently that each of Mok alone and the combination of Mok and Holman teaches element 1D for purposes of institution. We also preliminarily find Petitioner’s reasons for combining the asserted art are sufficiently persuasive for institution. Petitioner’s arguments that a person having ordinary skill in the art would have had a reasonable expectation of success (see § III.E.1) also are sufficient for purposes of institution. We preliminarily find that Petitioner’s showing is not undermined by Patent Owner’s arguments at this early stage.” slip op. at 28
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,294,075 - PTAB · Mar 20, 2024 · IPR2023-01401 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 17–25 on all asserted grounds, finding a reasonable likelihood that Hisense would prove at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.108 (2023). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’331 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ dispute regarding the level of ordinary skill in the art does not substantively impact our analysis for purposes of institution. Rather, we find in applying either parties’ definition for what comprises the level of likelihood that it would prevail in proving the unpatentability of the challenged claims. At this stage of the proceeding, however, we adopt Petitioner’s proposed definition of the level of skill for one of ordinary skill in the art. Pet. 9. This definition for the level of ordinary skill is consistent with the ’331 patent and the asserted prior art, and we apply it in our analysis below. During trial, and in accordance with our Rules, the parties should address what substantive effect, if any, different proposed definitions for the level of ordinary skill in the art have on analyzing what the prior art teaches or in otherwise evaluating unpatentability of the challenged claims.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b); 83 Fed. Reg. 51,340, 51,340–41, 51,343 (Oct. 11, 2018). In applying such standard, claim terms generally are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Pet. 9; Prelim. Resp. 5–6. Thus, for purposes of our Decision on Institution, we afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We agree with Petitioner and find that one of ordinary skill in the art would have been motivated to combine Lys and Grootes’s teachings to have a current supply circuit for each LED string in Lys’s lighting unit to achieve better color and brightness control and uniformity, and to achieve a desired white point. Pet. 18–20 (citing Ex. 1003 ¶¶ 82–84, 89), 24 (citing Ex. 1003 ¶ 61). At this stage, we find persuasive Mr. Betancourt’s cited testimony on this issue as it is consistent with Lys and Grootes’s teachings. For example, Lys teaches with respect to a lighting unit 102 that “[t]he sources 300 can also be mixed, including sources 300 of varying wavelength, intensity, power, quality, light output, efficiency, efficacy or other characteristics,” allow light of different colors or color temperatures, including color temperatures of white.” Ex. 1005, 37:3–8 (emphasis added). And Grootes explains, for example, that “[e]ach current source 40–42 is controllable to control the brightness of its associated LEDs to achieve the desired white point.” Ex. 1006 ¶ 41. We also agree with Petitioner and find that one of ordinary skill in the art would have had a reasonable expectation of success in combining Lys and Grootes’s teachings to produce a lighting system having separate circuits for supplying each of the currents for the LED strings. Pet. 18; Ex. 1003 ¶ 88. Nor at this stage do we find that Lys’s lighting units having separate current supply circuits for each LED string would have been uniquely challenging or difficult for one of ordinary skill in the art. See Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419–20) (finding that obviousness was supported because there was no evidence that making the combination was uniquely challenging or difficult for one of ordinary skill in the art). Accordingly, at this stage, we find that Petitioner has provided sufficiently articulated reasoning with rational underpinning to support combining Lys and Grootes in the manner Petitioner proposes. See In re Kahn, 441 F.3d at 988; see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374 (Fed. Cir. 2019) (“A motivation to combine may be found ‘explicitly or implicitly in market forces; design incentives; . . . and the background knowledge, creativity, and common sense of the person of ordinary skill.’”) (quoting ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1371 (Fed. Cir. 2018)).” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,941,331 - PTAB · Mar 14, 2024 · IPR2023-01385 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1–7, 10–12, 14–21, and 23 on all asserted grounds, finding a reasonable likelihood that Chou renders claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim of the ’812 patent. We therefore institute inter partes review as to all of the challenged claims of the ’812 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Based on the current record, we determine that Petitioner has established compliance with the statutory requirement under 35 U.S.C. § 312(a)(2) to identify all real parties in interest. C. The ’812 Patent” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We regard Petitioner’s definition as consistent with the complexity of the technology described in the ’812 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Patent Owner’s use of the term “technical field” is unduly vague. Therefore, for the purpose of this Decision, we adopt Petitioner’s proposed formulation. C. Claim Construction” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“On this record, we preliminarily agree with Patent Owner that the ’812 patent shows alternative ways for a reflector sheet “to conform to a shape of a protruding feature” on a lighting tile that does not demand the reflector sheet have “the same shape, outline, or contour of a protruding feature” as Petitioner’s proposed construction in the Underlying Litigation would require. To illustrate this, Figures 3 and 4 from the ’812 patent are shown in their entirety below.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,690,812 - PTAB · Feb 27, 2024 · IPR2023-01311 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted IPR on claims 1–20 based on all petitioned challenges, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the asserted prior art. We analyze Petitioner’s asserted challenges with the above-noted principles in mind.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that it “believes that no claim term requires construction.” Pet. 8–9. Patent Owner similarly asserts that it “does not believe any claim construction is necessary.” Prelim. Resp. 5. For purposes of this Decision, we conclude that no claim term requires express interpretation to resolve any controversy in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in 10 At this stage, neither party presents any objective indicia of non-obviousness. controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this stage, we disagree with Patent Owner. Regarding the arrangement of optical components in its backlight unit, Kobayashi specifies, for example, distance a from LED 1 to diffusing plate 5 and distance c from LED 1 to diffusing plate 4. Ex. 1006 ¶¶ 19–20, Fig. 1. Tabito teaches using optical stud members 25 to keep light diffusing plate 23 at a preset distance from light diffusing conducting plate 21. Ex. 1007 ¶ 60. That Kobayashi and Tabito both describe specific arrangements of optical components, and that the use of Tabito’s optical stud members was a known way to provide for such specific arrangements, is sufficient reason for combining Kobayashi and Tabito. Petitioner need only show that Tabito’s optical stud members would have been a “suitable option” for implementation in Kobayashi’s backlight unit. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1381 (Fed. Cir. 2023). We note Patent Owner’s contention that combining Kobayashi and Tabito “would result in completely different optical characteristics of [Kobayashi’s] lighting panel.” Prelim. Resp. 23. This contention, however, is unavailing. Our reviewing court has explained that “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference,” but, “[r]ather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Additionally, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Here, Kobayashi teaches keeping its diffusing plates 4, 5 and LED 1 separated by specific distances. Ex. 1006 ¶¶ 19–20. Tabito teaches using its optical stud members 25 to keep optical elements separated by a preset distance. Ex. 1007 ¶ 60. We find that an ordinarily skilled artisan, in implementing Tabito’s optical stud members in Kobayashi’s backlight unit, would have made any necessary modifications (e.g., selecting different materials for the optical stud members) to maintain Kobayashi’s desired backlight performance in order to realize the advantages of using Tabito’s optical stud members as a way to support Kobayashi’s diffusing plates. On the record before us, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that its proposed combination of Kobayashi and Tabito teaches the recited limitations of claims 4–6 and 17, including the recited “diffuser supports.” See Pet. 34–41. We also are persuaded that Petitioner’s proffered reasoning for modifying Kobayashi’s backlight unit to include Tabito’s optical stud members, namely, to provide a way to implement Kobayashi’s specific arrangement of optical elements, is sufficient for purposes of this Decision. See Pet. 33; Intel, 61 F.4th at 1381 (explaining that the petitioner need only show that the proposed combination would have provided a “suitable option”).” slip op. at 37
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,177,382 - Intel Corporation v. Ax WirelessInstitutedPTAB · Feb 14, 2024 · IPR2023-01139 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–3, 5, and 7–9 on all asserted grounds, finding a reasonable likelihood that Intel would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)5 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020)). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had at least a master’s degree in electrical engineering or similar discipline, and/or two to three years of experience working or conducting research in the field of wireless communication protocols, or an equivalent combination of education and experience.” Pet. 9 (citing Ex. 1003 ¶ 62). would have had at the time of the invention of the ’272 patent or identify any shortcoming in Petitioner’s formulation. Prelim. Resp. 2. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 9. As adopted, we view the definition for the level of ordinary skill is consistent with the ’272 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Here, neither party sets forth any term for claim construction. Pet. 10; Prelim. Resp. 3. Thus, for purposes of our Decision on Institution, we afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“awaiting peer review on an FTP server as “placing posters at an unpublicized conference with no attendees,” with no record that it “was accessible to anyone other than the peer-review committee.” SRI, 511 F.3d at 1197. Here, there is ample evidence that membership in the working group, attendance at its meetings, and access to its documents was available to the public. See Ex. 1007 ¶¶ 14 (meetings open to public); 15 (submissions presented at meetings and available to all participants); 18 (stating that “an interested member of the public could visit the 802wirelessworld website, click the ‘become a member ‘link . . . and download any submissions that had been uploaded”). Unlike SRI, WWiSE was not intended for a select group of people to review prior to its publication; instead, WWiSE was intended for public debate among the working group members to influence their choices for the new 802.11n standard. See Ex. 2001 ¶¶ 89 (WWiSE presentation in July 2005 presented aspects from the various TGn Sync and WWiSE proposals”). SRI is therefore also inapposite to the facts here. Of greater significance to the facts at hand is the court’s analysis in GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690 (Fed. Cir. 2018). In GoPro, the court stated, “our case law directs us to also consider the nature of the conference or meeting; whether there are restrictions on public disclosure of the information; expectations of confidentiality; and expectations of sharing the information.” Id. at 694 (citing Medtronic v. Barry, 891 F.3d 1368, 1382 (Fed. Cir. 2018)); see also Valve Corp. v. Ironburg Inventions Ltd, 8 F.4th 1364, 1374 (Fed. Cir. 2021) (public accessibility indicated where “a publication’s purpose is ‘dialogue with the intended [public] audience’”). In GoPro, the court noted that the trade show at issue, “not unlike conferences . . . is directed to individuals interested in the commercial and developmental aspects of products.” GoPro, 908 F.3d at 694. The GoPro court determined that, although its trade show was open only to dealers rather than the general public, the document at issue “was disseminated with no restrictions and was intended to reach the general public.” Id. at 695. Like GoPro, WWiSE was disseminated with no expectation of confidentiality, as it was available to be shared by the TGn members through unrestricted download and by sharing the publicly available ftp site location and access credentials. Ex. 1007 ¶ 19. Public disclosure was encouraged, not restricted, as evidenced by the public nature of the TGn meetings at which proposals such as WWiSE were discussed by the working group. Id. ¶¶ 14, 18, 19. Moreover, the WWiSE proposals were known to the public as one of two finalist proposals considered for adoption as the new standard. globe at IEEE meetings,” “support has coalesced around two main proposals, from groups named TGn Sync and WWiSE.”). Also like GoPro, the relevant audience was involved in the meeting because the TGn group members and attendees of the 802.11 working group meetings were engineers, researchers, and business persons interested in networking technologies, including wireless local area networking (WLAN) technologies. Ex. 1017 ¶ 14; see also Ex. 2015, 311 (stating that “quite a few manufacturers of electronic devices that might use 802.11 (Cisco, Nokia, Nortel, Philips, Samsung, Sanyo, Sony, and Toshiba) have also become part of the effort”). Based on the above facts, we determine that Petitioner has sufficiently” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,917,272
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.