- BMW Of North America, LLC / Mercedes-Benz USA, LLC v. Stragent, LLCAll claims unpatentablePTAB · Jul 12, 2022 · IPR2021-00417 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–30 are unpatentable as obvious under §103 over the combinations of Miesterfeld, Wong, Grattan, and the additional references listed for each ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Institution Decision, we adopted Petitioner’s assessment except for the phrase “at least,” which expands the ranges of education and experience indefinitely without an upper bound. Inst. Dec. 8–9.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“request the access right to the common resource, a section of the non-volatile or volatile memory, from the operating system (1001). This is called explicit resource management.” Ex. 1001, 7:53–57, quoted in PO Resp. 15. Patent Owner quotes this passage but omits the next sentence, which states that, “[i]f the resource is available, the process gets the resource.” Ex. 1001, 7:58; see PO Resp. 15. Figure 10 shows an arrow from block 1001 captioned “Request BB Resource” to a circle and then an arrow from the circle to decision block 1002 captioned “BB Resource Available ?.” Based on the Specification’s description, we conclude that the phrase “issue a storage request” at least encompasses checking to see if the storage resource is available. This is consistent with Patent Owner’s dictionary definition that a request is the act of asking for something. See PO Resp. 15. The Specification explains that, when the request is made, “[i]f the resource is available, the process gets the resource.” Ex. 1001, 7:58. Thus, according to the Specification, the act of checking availability of the resource is the issuance of the request. To the extent there is a grant of permission to store information, as suggested by Patent Owner (PO Resp. 15–16), such permission is granted if there is availability. Ex. 1001, 7:58. Based on the foregoing, we conclude that the phrase “issue a storage request” encompasses checking to see if the storage resource is available.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As explained below in § II.D.4, Petitioner has demonstrated unpatentability of claims 2, 13, and 24 under either parties’ proposed construction. Therefore, we need not resolve this claim construction dispute. 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))). 3. Remaining Terms Based on the record developed during trial, we need not construe expressly any other claim terms to decide the issues of patentability before us. D. Obviousness over Miesterfeld, Wong, Grattan, Wense, and Nikklason” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“limited to the disclosure of one reference, but this effectively eviscerates the legal framework of combining the teachings of references for obviousness. Miesterfeld’s disclosure of an allegedly simple system does not foreclose its use in an obviousness combination with a reference having more sophisticated teachings. Nor does a reference have to identify in itself an area in need of improvement for that reference to be used in an obviousness combination. Rather, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 18
Patent outcomesUS 10,248,477 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,248,477 - Align Technology, Inc. v. 3shape A/SAll claims unpatentablePTAB · Jan 19, 2022 · IPR2020-01087 · APJ Jason M Repko · IPR · Final written decision
Claims 1–22 are unpatentable: claims 1–22 on Morgan-based obviousness grounds; the Board did not reach the cumulative Noguchi-based grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In its Response, Patent Owner also applies this skill level. PO Resp. 3 (citing Pet. 3; Ex. 1002 ¶¶ 48–50; Sergienko Decl. ¶ 23).4 For the purpose of this decision, we apply Petitioner’s proposed definition, which appears to be consistent with the level of skill reflected in the asserted references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“We need only construe terms that are in controversy. 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)). Here, no terms are in controversy. Patent Owner explains that, in the related litigation, the District Court issued a Memorandum Order (Ex. 2022) adopting the Report and Recommendation on Claim Construction (Ex. 2021).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“We agree that the preamble is limiting. “If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim preamble should be construed as if in the balance of the claim.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Here, the body of the claim recites, in part, “an optical system comprising a beam splitter, at least one lens, and a tip configured to be inserted into the oral cavity.” Ex. 1001, 38:47–49 (emphasis added). In this limitation, the term “oral cavity” gives meaning to the tip’s structure because the term defines the tip’s configuration by reciting how the tip is used. And the antecedent basis for “the oral cavity” is found in the preamble. In at least this way, the preamble gives meaning to the terms recited in the body and limits the structure of the claimed invention.” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“on technical features that are not relevant to Petitioner’s rationale—e.g., correcting for magnification changes and Geng’s fiber optics. See id. at 14– 19; Sur-reply 12. For this reason, we disagree with Patent Owner’s argument (id.) and assign little weight to the Sergienko Declaration on this issue. See Sergienko Decl. ¶¶ 46–51. We see no evidence that Petitioner’s obviousness rationale about the preamble and tip requires correcting for the magnification changes. See PO Resp. 14–15; Sur-reply 10–12. In fact, according to Morgan, each embodiment has advantages and disadvantages: An advantage of a normal lens is that it is “relatively inexpensive.” Ex. 1011, 14:14–16. A disadvantage of using a normal lens is that its magnification changes during the sweep of the lens. Id. at 14:34–37. But Morgan does not require resolving the magnification-change issue. See id. at 14:14–46. On the other hand, a zoom lens has the advantage of maintaining a constant net magnification by changing the focal length during the sweep. Id. at 14:42– 46. One disadvantage of a zoom lens is its limited depth resolution. Id. at 14:23–25.” slip op. at 13
Patent outcomesUS 10,349,042 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,349,042 - Seoul Semiconductor Co., Ltd. / Seoul Semiconductor, Inc. v. Document Security Systems, Inc.All claims unpatentablePTAB · Nov 17, 2021 · IPR2020-00938 · APJ Jason M Repko · IPR · Final written decision
Claims 1–4 and 7 are unpatentable as anticipated by Nichia-614; claims 5 and 6 are unpatentable as obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“PO Resp. 9 (quoting Ex. 1007 ¶ 29) (emphasis omitted). Patent Owner does not, however, explain how this difference in experience level would affect our analysis. Indeed, we see nothing in the record that indicates that viewing the ordinarily skilled artisan as having two more years of experience would change the outcome here. To the extent necessary, we apply Patent Owner’s adopted definition above because it is consistent with the ’119 patent and the asserted prior art and is supported by the Doolittle Declaration submitted by Petitioner. But our analysis would be the same under either definition.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“16. In particular, the patentee has not defined “conformal” or “substantially uniform” in the patent’s written description. See id. In fact, the terms do not appear in the Specification as originally filed. Id. at 13–14 (citing Ex. 1002, 152–162). And we see no other evidence of lexicography or disavowal with respect to these terms. See Ex. 1001. So, consistent with Petitioner’s articulation of the case law, the terms “conformal” and “substantially uniform” should be given “their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” See Thorner v. Sony Comp. Ent. Amer., 669 F.3d 1362, 1365 (Fed. Cir. 2012), cited in Pet. Reply 3. As evidence of the “ordinary usage,” Petitioner cites the patent’s” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“To be sure, a patent “specification may reveal a special definition given to a claim term.” Phillips, 415 F.3d at 1316. Or it may reveal “an intentional disclaimer, or disavowal, of claim scope.” Id. “The patentee’s lexicography must, of course, appear ‘with reasonable clarity, deliberateness, and precision’ before it can affect the claim.’” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). The patentee can disavow claim scope with language in the specification or the prosecution history. Poly-Am., L.P. v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016). “In either case, the standard for disavowal is exacting, requiring clear and unequivocal evidence that the claimed invention includes or does not include a particular feature.” Id. For the phrase “layer of phosphor particles” recited in the claims here, we see no reasonably clear, deliberate, and precise lexicography in the ’119 patent’s written description. When read in context, the sentence that Patent Owner characterizes as definitional simply explains that the drawings are not to scale: To simplify the drawings and better explain the present invention, the above figures show layers of relatively large phosphor particles that are only a few particles thick. However, it is to be understood that the phosphor layers are actually uniform layers constructed from much smaller particles, and the layers are many particles thick.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“Patent Owner also quotes the sentence that reads in full: “In the proposed invention, a wavelength converting material such as phosphor is laid over the LED chip in a manner such that substantially all the phosphor particles are in contact with the LED chip and the walls of the cavity where the LED is mounted.” Ex. 1001, 3:16–19, quoted in PO Resp. 11 (emphasis added). The written description also discloses that “the phosphor particles all settle down and are deposited around the LED chip and at least some portions of the cavity walls.” Id. at 4:24–26, quoted in PO Resp. 12. Yet these sentences do not define the term “layer of phosphor” with the reasonable clarity, deliberateness, and precision required to limit the claim as Patent Owner proposes. In fact, the cited passages do not even explicitly use the term “layer of phosphor.” Id. Instead, these sentences describe a single, exemplary embodiment, which is not definitional. See id. Lastly, Patent Owner points to the drawings to support its position. PO Resp. 12 (citing Ex. 1001, Figs. 2–4, 6). But the drawings are merely exemplary, non-limiting embodiments. See Ex. 1001, 5:20–24; supra § II.C.1.b(1). In sum, we see no reason to interpret the claimed “layer of phosphor particles” as limited to the phosphor particles themselves. And we see no requirement in the claims that a “conformal layer of phosphor particles covering said die and in direct contact therewith” requires that the bottom layer of phosphor particles directly contact the LED, as Patent Owner has proposed. PO Resp. 11–13. Rather, consistent with the patent’s written description and the evidence of record, we determine that the recited “layer of phosphor particles” simply requires a layer that includes phosphor particles, without limitation to the position of the bottom phosphor particles relative to the LED.” slip op. at 14
Patent outcomesUS 7,315,119 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,315,119 - Election Systems & Software, LLC v. Hart Intercivic, Inc.All claims unpatentablePTAB · Sep 1, 2021 · PGR2020-00031 · APJ Jason M Repko · PGR · Final written decision
Claims 1–30 are unpatentable: claims 1–5, 15–19, 25, and 11–14, 28 on obviousness grounds; claims 6, 7, 9, 10, 23, 24, 29, 30 on anticipation; claims 20–22 on obviousness.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On September 2, 2020, we instituted an inter partes review of all challenged claims based on all grounds in the Petition. Paper 6 (“Inst. Dec.”). Patent Owner filed a Response. Paper 14 (“PO Resp.”). Petitioner filed a Reply. Paper 19 (“Pet. Reply”). Patent Owner filed a Sur-reply. Paper 20 (“Sur-reply”). An oral hearing was held on July 6, 2021. A transcript of that hearing has been entered into the record. Paper 28 (“Tr.”).” slip op. at 2
- Skill levelDecided for petitioner
“B. Level of Ordinary Skill in the Art According to Petitioner, A person of ordinary skill in the art at the time the ‘966 patent was filed (“POSITA”) would have had at least a Bachelor’s degree in electrical engineering or computer science or an equivalent field, or equivalent work experience and, in addition, at least two years’ experience with electronic voting machines, including familiarity with ballot marking devices (“BMDs”), optical character recognition, bar codes and hash functions. Pet. 24 (citing Shamos Decl. ¶¶ 50–51). In the Institution Decision, we applied Petitioner’s proposed definition. Inst. Dec. 6. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. (PO Resp. 3). We continue to find that the level of ordinary skill identified by Petitioner (Pet. 24) is consistent with the record. See Inst. Dec. 6. Thus, we use the same definition here that we used in the Institution Decision.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“testimony also support Petitioner’s conclusion that the accuracy of Brockhouse’s OCR could be improved. Pet. 56; Ex. 1005, 1:20–21 (disclosing that OCR is error prone); Shamos Decl. ¶ 231. On this record, Petitioner provides sufficient “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“4. Claims 7, 9, 10, 24, and 30, Anticipation The Petition states that the statutory basis for challenging claims 7, 9, 10, 24, and 30 is “35 U.S.C. §§ 102 and/or 103.” Pet. 3. In this section, we consider anticipation under Section 102. Patent Owner does not contest Petitioner’s analysis. See generally PO Resp.; PO Sur-reply. Upon review of the entirety of the record, we credit the undisputed testimony of Dr. Shamos and are persuaded by Petitioner’s uncontested analysis. In particular, claims 7 and 24 depend from claims 6 and 23, respectively. Both claims 7 and 24 add “wherein the bar code is utilized to confirm the printed vote record is valid.” Ex. 1001, 9:30–31 (claim 7), 11:18–19 (claim 24). For claims 7 and 24, Petitioner asserts that Nadaf counts the vote only after confirming that the PVR is valid. Pet. 70 (citing Ex. 1007, 6:2–10). In the cited passages, Nadaf refers to the process as “confirming the institutional provenance and integrity of the content of the printed vote.” Ex. 1007, 6:2–6. According to Nadaf, “Only after being audited will the printed vote be validated for counting.” Id. at 6:7–10. On this record, Petitioner supports the assertion that Nadaf confirms the printed vote’s validity with the bar code, as recited. See Pet. 69–70. Thus, we determine that Petitioner has shown by a preponderance of the evidence that the subject matter of claim 7 and 24 are anticipated by Nadaf. Claim 9 recites a “two dimensional bar code.” Ex. 1001, 9:35–36. Claims 10 and 30 recite “a QR code bar code” Id. at 12:34–35. As for claims 9, 10, and 30, Petitioner asserts that Nadaf’s PVR contains both voter-readable text and a bar code encoded with voter selections. Pet. 71 (citing Ex. 1006, Fig. 4). Petitioner asserts that (1) Nadaf’s Figure 4 shows an example QR code and (2) a QR code is a two-dimensional bar code. Id. (citing Ex. 1007, 18:9; Ex. 1003 ¶ 296). On this record, Petitioner shows that Nadaf discloses the two-dimensional bar code that is a QR code, as recited in claims 9, 10, and 30. Thus, we determine that Petitioner has shown by a preponderance of the evidence that claims 9, 10, and 30 are anticipated by Nadaf.” slip op. at 56
Patent outcomesUS 10,445,966 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,445,966
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.