• Mahle Behr Charleston Inc. v. Frank Amidio CatalanoInstitution denied
  PTAB · Nov 15, 2023 · IPR2023-00861 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable on the asserted grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “On this record, we determine that Petitioner advances Dr. Medlin’s testimony to make out a claim limitation that is not suggested, much less taught, by the text of the prior art reference at hand. Because that testimony lacks objective support or adequate technical reasoning, it is entitled “little weight” and, moreover, is insufficient to support institution of trial. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (Aug. 24, 2022) (precedential). Dr. Medlin’s remaining testimony relies on the testimony we have discussed so far. Ex. 1004 ¶¶ 201–204, 207–210, 224–226. Accordingly, this testimony does not show sufficiently that Tomosada would have suggested to a person of ordinary skill in the art that anodes should be placed within 10 inches of Tomosada’s hot liquid inlet. Because Petitioner relies on Dr. Medlin’s testimony to show that a person of ordinary skill in the art would have understood that Tomosada suggested placing an anode within 10 inches of a hot liquid inlet to a radiator, and because that testimony does not show sufficiently that a person of ordinary skill in the art would have had such an understanding, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to any claim challenged on the basis of Tomosada.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “To show obviousness, it is not enough to merely show that the prior art includes separate references covering each separate limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). “Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention.” Id. (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)). “This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.” KSR, 550 U.S. at 418–19. On the other hand, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Nevertheless, “[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421.” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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 bachelor’s degree in mechanical engineering, metallurgical engineering, or materials science engineering, and have two or more years of experience in mechanical engineering, metallurgical engineering, or materials science engineering and/or corrosion prevention system design.” Pet. 16 (citing Ex. 1004 ¶¶ 72–75). According to Petitioner, “[a] person could also have qualified as a [person of ordinary skill in the art] with some combination of more formal education (e.g., a Ph.D.) and less technical experience,” or vice versa. Id. at 16–17. “To the extent necessary, the [person of ordinary skill in the art] may have collaborated with other skilled artisans, such that the individual and/or team collectively would have had experience and/or knowledge or particular characteristics of a radiator system.” Id. at 17. “For the limited purpose of [its] Preliminary Response, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so if trial is instituted.” Prelim. Resp. 7. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’494 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’494 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “C. Claim Construction In an inter partes review, we construe claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2022). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. Both parties argue that we need not construe any terms in order to decide whether to institute trial. Pet. 17; Prelim. Resp. 8. We agree. After considering the arguments and information presented in the Petition and Preliminary Response, we determine that we do not need to construe any terms expressly 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.”)).” slip op. at 8

  Claim constructioncites Phillips · KSR · Graham
• Chongqing HKC Optoelectronics Technology Co., Ltd. v. 138 East LCD Advancements LimitedInstitution denied
  PTAB · Aug 28, 2023 · IPR2023-00475 · APJ Wesley B Derrick · IPR · Institution

  Institution was denied because the petition did not sufficiently show that the counter-electrode potential line was one of the claimed main wiring lines coupled to peripheral driving circuits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as the evidence that supports the grounds for the challenge to each claim’”). When challenging claims based on obviousness, the Petitioner must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (citations omitted). The burden of persuasion, whether for anticipation or for unpatentability for obviousness, never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. See Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art “would have either a bachelor’s degree in electrical or computer engineering with three years of experience in the field of display technology or a master’s degree with one year of experience in the field of display technology.” Pet. 8 (citing Ex. 1002 ¶¶ 38‒41). Patent Owner, “[f]or purposes of th[e]” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “5. Analysis Claim 1 recites “in a peripheral region of the image display region on the element substrate, a plurality of external circuit connection terminals, a plurality of main wiring lines . . . and peripheral driving circuits.” Ex. 1001, 21:55‒60. The plain and ordinary meaning of this phrase includes that the plurality of main wiring lines and peripheral driving circuits are formed on the element substrate. Claim 1 further recites, for the main wiring lines, “each having one end coupled to each of the plurality of external circuit connection terminals, and peripheral driving circuits coupled to the other ends of the main wiring lines.” Id. at 21:57‒59. The plain and ordinary meaning of this phrase is that each main wiring line is connected at one end to an external circuit connection terminal and, at the other end, to the peripheral driving circuits; this is how Petitioner addresses “a plurality of main wiring lines” as to this portion of claim 1 in accordance with the plain and ordinary meaning. Pet. 15 (“Figure 4 shows wiring lines coupled to the external connection terminals 102 at one end and coupled to peripheral circuits, including data line driving circuit 101, and scanning line driving circuit 104, at the other.”); see also Ex. 1002 ¶ 59. Petitioner and its driving circuit 104 as peripheral circuits. Pet. 15‒16 (citing Ex. 1005 ¶¶ 1, 78‒80, Fig. 4; reproducing Fig. 4 without annotation); Ex. 1002 ¶¶ 56‒59.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Petitioner fails, however, to address the clause, “which is at least one of the plurality of main wiring lines,” and the implication that follows from the plain language of the claim. Id. Specifically, as set forth above, the “plurality of main wiring lines” are coupled at one end to peripheral circuits, and Petitioner provides no basis for the wiring 400 (LCCOM) to be coupled to any element identified by Petitioner as a peripheral circuit. Id. at 15‒17 (identifying data line driving circuit 101 and scanning line driving circuit 104 as peripheral circuits). Rather, Petitioner sets forth that wiring 400 (LCCOM) “supplies potential from the external input terminal 102 to the vertical conduction terminal 106 and then to the counter electrode 21 on the counter substrate 20.” Id. at 17 (citing Ex. 1005 ¶ 85, Figs. 3, 4; Ex. 1002 ¶¶ 63‒65). Further, to the extent Petitioner states that Muraide “discloses a counter electrode provided in the peripheral region on a counter substrate that is arranged to face the element substrate” (id. at 16 (citing Ex. 1005 ¶ 41; Ex. 1002 ¶¶ 60‒62)), Petitioner does not clearly identify the counter electrode as a peripheral circuit (id.) and, further, the counter electrode on the counter substrate is not a peripheral driving circuit on the element (“in a peripheral region of the image display region on the element substrate, . . . peripheral driving circuits” (emphasis added))). Accordingly, on this record, we determine that Petitioner fails to sufficiently establish “a counter electrode potential line that supplies counter electrode potential to the counter electrode, which is at least one of the plurality of main wiring lines.” Although Patent Owner did not clearly raise this particular issue, “[i]n an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3)). The burden of persuasion, whether for anticipation or for unpatentability for obviousness, never shifts to Patent Owner. See Dynamic Drinkware, 800 F.3d at 1378. Further, our role is not to remedy the deficiencies in Petitions that fall short. Sirona Dental Sys. GMBH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (quoting SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356–57 (2018)) (explaining that because “‘the petitioner’s contentions, not the Director’s discretion, define the scope . . . [,]’ [i]t would thus not be proper for the Board to deviate from the grounds in the petition and raise its own obviousness theory” “institut[ing] a different inter partes review”); cf. Magnum Oil Tools, 829 F.3d at 1380–81 (rejecting an argument that the Board properly “ma[de] an obviousness argument on behalf of [petitioner]” that “could have been included in a properly-drafted petition,” because “petitioner . . . bears the burden of proof”).” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,116,390
• Motif Foodworks, Inc. v. Impossible Foods Inc.Institution denied
  PTAB · Aug 7, 2023 · IPR2023-00322 · APJ Kimberly Mcgraw · IPR · Institution

  The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood that any challenged claim was obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). 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 “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “sufficiently shown why a POSITA would have been motivated to produce a nucleic acid that encodes both (1) a heme-containing protein operably linked to a promoter element as well as (2) a Mxr1 transcriptional activator sequence as required by claim element 1[a] with a reasonable expectation of success.” slip op. at 11

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “G. Discretion under 35 U.S.C. § 325(d) Patent Owner requests that the Board exercise its discretion under 35 U.S.C. § 325(d) to deny institution because the same or substantially the same prior art or arguments were previously presented to the Office. Prelim. Resp. 22. Because we deny institution on the merits, we do not reach Patent Owner’s § 325(d) argument.” slip op. at 18

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 10,273,492
• Motif Foodworks, Inc. v. Impossible Foods Inc.Institution denied
  PTAB · Aug 7, 2023 · IPR2023-00321 · APJ Kimberly Mcgraw · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner failed to show a reasonable likelihood of prevailing on any asserted § 103 ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “Moreover, Petitioner does not articulate a sufficient reasonable basis as to why a POSITA would have sought to create a single nucleic acid encoding both a transcriptional activator such as Mxr1 as well as a second exogenous nucleic acid. Rather, Petitioner’s arguments and evidence are directed to the general concept of providing a vector that encodes more than one gene of interest and do not address why one of the genes would encode a transcription factor, let alone a transcription factor such as Mxr1. Dr. Batt does identify some benefits from using a single vector to express “more than one heterologous gene sequence,” including (1) increased efficiency (i.e., only one transformation to introduce multiple heterologous gene sequences into a host cell) and (2) increased control (as use of such constructs affords a POSITA more control over the levels of the different gene’s respective expression levels, as double transfection events may lead to different levels of vector incorporation in a cell). See Ex. 1003 ¶ 128. Dr. Batt, however, does not provide any explanation as to how these benefits apply to a nucleic acid sequence encoding transcription factors such Mxr1. See e.g., id. ¶¶ 126–131 (discussing creation of a single expression vector comprising multiple gene sequences of interest, but providing no discussion of genes encoding transcription factors). Thus, Petitioner has not sufficiently shown 4 Sambrook was not provided as an Exhibit. Thus, it is unclear what particular “ample teachings” in Sambrook Petitioner relies upon.” slip op. at 13

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “G. Discretion under 35 U.S.C. § 325(d) Patent Owner requests that the Board exercise its discretion under 35 U.S.C. § 325(d) to deny institution because the same or substantially the same prior art or arguments were previously presented to the Office. Prelim. Resp. 43–48. Because we deny institution on the merits, we do not reach Patent Owner’s § 325(d) argument.” slip op. at 26

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 10,689,656
• Taiwan Semiconductor Manufacturing Company Limited v. Alidouble, Inc.Instituted
  PTAB · Jul 12, 2023 · IPR2023-00369 · APJ Kristina M Kalan · IPR · Institution

  The Board instituted review on all asserted grounds, finding a reasonable likelihood that TSMC would prevail on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “to deny institution where a 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.” Interim Procedure at 7. Here, Petitioner’s stipulation uses this language but is further limited “to the patent claim subject to the instituted IPR.” Pet. 84. We agree with Patent Owner that this stipulation is “narrower” than the stipulation “that was considered by the Board in Sotera,” because it adds further limiting language to the model Sotera stipulation. Prelim. Resp. 10. Accordingly, we do not find that this stipulation implicates the Interim Procedure’s prohibition against discretionary denial where a Sotera-type stipulation is presented. We do not agree with Patent Owner that the stipulation must be filed in district court. All the Interim Procedure requires is that Petitioner “stipulate[]” or “present[] a stipulation,” not that the stipulation be filed in district court. Interim Procedure at 3, 7. Accordingly, we do not discount Petitioner’s stipulation because Petitioner failed to file it in district court. Thus, although Petitioner’s stipulation does not track the language of the model Sotera stipulation, it does minimize the possibility of overlapping issues between the parallel proceeding and this proceeding, in which all claims of the ’169 patent are challenged in the Petition. Accordingly, the fourth factor weighs against discretionary denial.” slip op. at 10

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “To institute inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’169 patent, and we institute inter partes review on all challenges raised in the Petition. 37 C.F.R. § 42.108 (2022).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that one of ordinary skill in the art “would have been a person having a Master’s degree in electrical engineering, material science, physics, or other related disciplines with at least three years of industry experience in integrated circuit design, layout, packaging or fabrication” and that a “greater level of experience may compensate for less education and vice versa.” Pet. 10 (citing Ex. 1003 ¶¶ 66–68). Patent Owner “reserves the right to dispute Petitioner’s definition of a POSA if an IPR is instituted.” Prelim. Resp. 7. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner “does not believe the claim terms need to be construed to resolve the prior art issues presented in [the] Petition.” Pet. 10 (citing Ex. 1003 ¶ 70). Patent Owner “reserves the right to advance its own construction for any claim term should an IPR be instituted.” Prelim. Resp. 7. We determine we need not expressly construe any claim term at this stage of the proceeding. See Realtime Data, 912 F.3d at 1375.” slip op. at 7

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,356,169
• Samsung Electronics Co., Ltd. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · Jun 26, 2023 · IPR2022-00149 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 7–13 and 15–17 are unpatentable: the Board found them obvious over the listed Nerone-based and Zhang-based combinations.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner contends that a person of ordinary skill in the art would have “had, at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and two or more years of experience with LED devices and related LED circuit design. Lack of work experience could have been remedied by additional education and vice versa.” PO Resp. 7 (citing Ex. 2001 ¶¶ 38–42). Patent Owner contends this is a similar definition as “provided by Petitioner” but Petitioner’s definition is “overbroad in several respects, as explained by Dr. Ducharme,” including allowing an individual with no experience in LEDs or LED devices to be a person of ordinary skill in the art. Id. (citing Ex. 1002 ¶¶ 20–21; Ex. 2001 ¶¶ 40–41). Petitioner contends that “[t]here is no meaningful dispute over a [person of ordinary skill in the art].” Pet. Reply 1. We apply Patent Owner’s proposed level of ordinary skill in the art because it requires specific experience with LED circuit design, and, thus, more closely aligns with the level of skill reflected in the ’400 patent and the prior art of record. However, if we were to apply Petitioner’s proposed level of skill, our Decision would not be affected.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner contends that “no special constructions are necessary.” Pet. 8; Pet. Reply 2. “Patent Owner has applied the plain and ordinary meaning of the claim terms.” PO Resp. 8. Upon review of the record, we determine that no claim terms require express construction. 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 controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). D. Patent Owner’s Contention that Martin is not Available as Prior Art” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “We agree with Petitioner. The statute governing the formerly available CBM proceeding explicitly limits challenges based on “prior art that is described by section 102(a).” AIA § 18(a)(1)(C). In contrast, § 311(b) permits challenges “on the basis of prior art consisting of patents or printed publications.” The language in § 311(b) implies that, unlike CBMs, IPRs are not limited to prior art challenges solely under § 102(a). Patent Owner relies, inter alia, on Infobridge, but that case deals with public accessibility under § 102(b). Infobridge, 929 F. 3d at 1368–69. The parties do not cite to any Federal Circuit decisions that squarely address this issue. However, the Federal Circuit applied § 102(e) patent application publication prior art in an appeal from an IPR. See, e.g., Purdue Pharma L.P. v. Iancu, 767 Fed. App’x 918, 920–21, 926 (Fed. Cir. 2019) (nonprecedential) (determining that a § 102(e) patent application publication, “Joshi”, was available as prior art in an IPR).” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “provide a specific numerical analysis of the number of LEDs necessary to match a value of the DC output voltage in Nerone. PO Resp. 31–32. Based on Dr. Baker’s testimony, Petitioner provides several factors that a person of ordinary skill in the art would have considered when designing Nerone’s circuitry to satisfy the “matching” requirement of limitation 7(f). Pet. 18 (citing Ex. 1002 ¶ 120). Dr. Baker supports his testimony concerning the knowledge of these factors by one of ordinary skill with reference to disclosures in Cross and Martin. Ex. 1002 ¶¶ 121–123. Neither Patent Owner nor Dr. Ducharme dispute that a person of ordinary skill in the art would have known to consider these factors when designing Nerone’s circuit. See PO Resp. 30–43; Ex. 2001 ¶¶ 89–106. Petitioner then explains how a person of ordinary skill in the art would have used these factors to apply the teachings of Martin to configure Nerone’s circuitry so that “the forward voltage of the series-connected LEDs [] approximately match[es] the rectified AC voltage output of the above-described LED driver circuit.” Pet. 21; id. at 20–21; see also Ex. 1107 ¶ 29 (“a person of ordinary skill in the art would have understood and would have been capable of determining the appropriate number of LEDs based on the application and design of Nerone’s system such that the forward voltage drop of the LEDs . . . matches the rectified AC voltage output . . . to mitigate against overdriving or underdriving the LEDs.” (citing Ex. 1074 ¶¶ 30–31, Fig. 2)). For these reasons, we find that it was not necessary for Petitioner to provide a specific numerical calculation of the number of LEDs in its proposed modification of Nerone. We also agree with Petitioner that “matching the input voltage to the forward voltage of the LEDs had become a matter of routine optimization.” Pet. 19. Patent Owner contends that this statement is “vague and conclusory.” Sur-reply 12–13. Petitioner, however, supports this statement with the testimony of Dr. Baker. Ex. 1002 ¶¶ 120–123. Dr. Baker’s testimony, which we credit, is corroborated by both Cross and Martin. See id. (citing Ex. 1015 ¶¶ 2, 21, 22 Fig. 5; Ex. 1074 ¶ 30). In particular, Cross specifically discloses that “[t]he number of LEDs employed will vary with the intended lighting application and the value of the rectified DC voltage, wherein optimization of such is well within the skill of those in the art.” Ex. 1074 ¶ 30. Patent Owner does not dispute Cross’s statement that optimizing the number of LEDs is within the skill of an ordinarily skilled artisan. See PO Resp. 40. Martin chooses the number of LEDs “such that the maximum voltage across each individual LED . . . is low enough so as to not damage the LEDs.” Ex. 1015 ¶ 22. It also specifically discloses that “[t]he voltage across each of the individual LEDs in the array is the line voltage divided by the number of LEDs in series.” Id. (emphasis added). Consequently, Martin uses “voltage matching” to determine the number of LEDs so as not to damage the individual LEDs. See also Ex. 1002 ¶¶ 120–124 (Dr. Baker explaining that a skilled artisan “configuring Nerone’s circuit 400 would have recognized that the forward voltage of the series-connected LEDs should approximately match the rectified AC voltage output of the above-described LED driver circuit.” Id. ¶ 124.). Martin’s disclosure, thus, aligns with the reason for “matching” described in the ’400 patent. Ex. 1001, 2:24–35.” slip op. at 36

  Patent outcomesUS 10,687,400 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,687,400
• Samsung Electronics Co. Ltd. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · Jun 2, 2023 · IPR2022-00052 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 2–5, 7, 11–13, 21, and 23 are unpatentable: claims 2–5, 7, 13, 21, and 23 as obvious over Birrell and Schultz; claims 11–12 as obvious over Piepgras and Kasegi.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986).” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “the same claim construction standard that would be used to construe the claim[s] in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under that standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have had to a person of ordinary skill at the time of the invention in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party contends that any terms of the ’251 patent require express construction, with each party relying on the plain and ordinary meaning of each claim term. PO Resp. 13–14; Pet. Reply 1. Upon review of the parties’ arguments and evidence, we agree that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 7

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “10A–C, the reflective coating is folded and shaped to form non-planar reflectors. Ex. 1046 ¶ 49; PO Resp. 15–16; Sur-Reply 4–5. We agree with Petitioner, however, that the reflector embodiments depicted in Figures 10A–C are just one potential way of utilizing a reflective layer in Schultz, and one of ordinary skill in the art would have understood that use of an unfolded reflective layer is contemplated, and would be beneficial in, the planar embodiments of Schultz, such as the planar embodiment depicted in Figure 1. Pet. Reply 3–4, 7; Ex. 1046 ¶ 49 (“By using reflective surfaced materials, such as multilayered optical film, for the insulative layer 34 in the embodiments described herein, the light reflected from the attached LED dies has a higher probability of being reflected toward” a focusing element) (emphasis added).” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “to use a reflective coating or substrate in Birrell because “the use of a reflective substrate to provide mechanical support for an array of LEDs was well known in the art.” Pet. 14. Petitioner further contends that Schultz expressly discloses that reflective coatings are beneficial as they prevent light from an LED die being “unutilized due to absorption or scattering of the light.” Id. at 14–15 (quoting Ex. 1046 ¶ 48); Ex. 1046 ¶ 49 (Schultz explaining that “reflective surfaced materials” provide a “higher probability” that light reflected from the LEDs will reach the focusing element). Petitioner further contends that one of ordinary skill in the art would have used a reflective substrate in Birrell in view of Birrell’s expressed desire for a uniform optical reflection to provide a uniform light source. Pet. 15 (citing Ex. 1002 ¶ 104; Ex. 1018, 6:6–18; Ex. 1022 ¶ 81; Ex. 1023, 16:16–45). Petitioner contends one of ordinary skill in the art would have had a reasonable expectation of success in using a reflective substrate in Birrell because this would have entailed “the use of known components and mounting techniques to produce the predictable result of an LED circuit that benefited from known properties of reflective base structures, as suggested by Schultz and the knowledge of a [person of ordinary skill in the art].” Id. at 16.” slip op. at 16

  Patent outcomesUS 10,492,251 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,492,251
• Florida Food Products, LLC v. Kerry Group Services Int’L Ltd.All claims unpatentable
  PTAB · Apr 26, 2023 · IPR2022-00006 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1–5 are unpatentable as obvious over Voorde and Hara; the Board did not reach the remaining obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “the invention would have had: a master’s or doctorate degree in food science, biology, chemistry, or a similar field; or a bachelor’s degree in food science, biology, chemistry, or a similar field along with at least 2-3 years of experience in food preservatives generally or more specifically 2-3 years of experience in the chemistry associated with food preservation and nitrates/nitrites [and] would have known that the USDA regulated nitrites for curing meat and would have been able to find these USDA regulations affecting meat products. Pet. 23–34 (citing Ex. 1002 ¶ 48). Kerry’s recitation of the level of ordinary skill in the art is nearly identical. Prelim. Resp. 13–14 (citing Ex. 2001 ¶¶ 43–44). To the extent the parties’ formulations of the level of skill differ, the differences do not appear to be material to any dispute between the parties or any issue of patentability that we must resolve. We determine that the level of ordinary skill the parties propose is consistent with the challenged patent and the asserted art, and adopt that level for purposes of this Decision.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “In the Petition, FFP addressed the construction of only one claim phrase, but also submitted that the construction of that phrase does not affect our decision in this case. Pet. 24. Specifically, FFP asked us to adopt a construction that “clarifies that the nitrite results from the added organism reducing the plant nitrate.” Id. at 25. Kerry does not address this construction, and we agree with FFP that construction of that claim phrase has no effect on our decision herein. Thus, we need not adopt it. See Nidec, 868 F.3d at 1017; Vivid Techs., 200 F.3d at 803.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Upon review, we do not believe it is proper to adopt a blanket approach that would assign weight to the entirety of Dr. Baldwin’s 12 In its Sur-Reply, Kerry raises for the first time that, under its definition of the level of skill in the art, Dr. Baldwin is not himself a person of ordinary skill and therefore is not allowed to offer expert testimony from the perspective of a skilled artisan, citing Kyocera Senco Indus. Tools Inc. v. ITC, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022). See Sur-Reply 15 n.1. To the extent that Kerry is seeking to disqualify Dr. Baldwin’s testimony in its entirety under Kyocera, we consider this to be a new argument that differs from Kerry’s initial argument that Dr. Baldwin’s testimony should be afforded little or no weight due to his lack of familiarity with the field of the ’304 patent. Because new arguments made for the first time in sur-reply are not permitted, we will only focus on Kerry’s initial challenge to the testimony of Dr. Baldwin. testimony, regardless of the subject of his particular opinions. It is clear that Dr. Baldwin has expertise in some areas of chemistry, while Dr. Milkowski’s experience is focused on other areas and emphasizes food chemistry. These differences in expertise may impact how we weigh the testimony of both witnesses, but that determination should be made in the context of a specific subject and based on the applicability of each witness’s background to the opinions. Therefore, we decline to adopt Kerry’s proposed approach of giving Dr. Baldwin’s testimony “little to no weight,” and instead will weigh the expertise of both witnesses in evaluating their testimony on specific areas of dispute, if necessary.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Upon review, we find that a person of ordinary skill in the art would have had reason to modify Voorde in the manner FFP suggests. Voorde explicitly discloses the advantages of heating the medium, and there is no disagreement that heating to 50–52°C would have resulted in at least some reduced microbial load, which is all that the claims require.13 Indeed, Voorde describes that as a result of heating to 50–52°C, its medium is “(partially) sterilized.” Ex. 1003, 7. Kerry’s argument that Voorde does not disclose starting with a “sterile medium” (PO Resp. 25) is unavailing; as discussed above, we do not interpret anything in claim 1 or the ’304 patent 13 At oral argument, Kerry raised for the first time a claim construction argument that “heat treating,” as recited in the claims, requires heating to a level in excess of what is required in Voorde, and a person of ordinary skill would have understood the term to refer to sterilization. Tr. 33:4–34:19, 55:3–9. We decline to address this late-arising argument fully, but note that we find that the ’304 patent does not support such a limited interpretation of the term “heat treating.” to require a sterile medium, and Kerry does not direct us to anything in the record that would persuade us otherwise.” slip op. at 18

  Patent outcomesUS 11,071,304 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,071,304
• Home Depot U.S.A., Inc. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · Apr 26, 2023 · IPR2021-01541 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1–4, 6–8, 11–13, 15–17, and 19 are unpatentable as obvious over the cited combinations of Dowling, Mueller, Okuno, Nortrup, Yan, and Martin.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “After considering the evidence and arguments of the parties, we determine that Petitioner has proven by a preponderance of the evidence that claims 1– 4, 6–8, 11–13, 15–17, and 19 are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that [a] person of ordinary skill in the art (“POSITA”) . . . would have had a bachelor’s degree in electrical engineering, or similar technical field, with two years of relevant experience in the field of design and/or development of LEDs and circuits in the context of lighting control systems. An increase in experience could compensate for less education. Pet. 10–11 (citing Ex. 1002 ¶ 22). Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill. PO Resp. 14. We are persuaded that Petitioner’s proposal is consistent with the problems and solutions in the ’001 patent and prior art of record. We therefore adopt Petitioner’s definition of the level of skill.” slip op. at 6

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Under the correct claim construction, Dowling discloses this limitation because Dowling discloses several examples of two-way switch 190 turning on or off LED circuits, independent of other LED circuits. For example, Dr. Neikirk persuasively testifies that Dowling’s color wash mode (selected by switch 190) discloses this limitation by referring to LEDs that “cycle . . . through the full color spectrum,” turning different colored LEDs on or off. Ex. 1033 ¶ 26 (citing Ex. 1004 ¶¶ 44, 103 (“If two LEDs were used . . . with circuitry to turn each color on or off, four colors could be produced.”) (emphasis added)). As another example, Dr. Neikirk persuasively testifies that switch 190 can be used to select a “static color mode to produce, for example, the color red, then only the red LED will be turned on and the remaining LEDs will be turned off.” Id. ¶ 28 (citing Ex. 1004 ¶ 103). Finally, Dr. Neikirk persuasively testifies that switch 190 can select a strobing mode to cause LEDs to “alternate[] green and red,” which a POSITA would have understood to cause “at least one color LED circuit to be turned on or off independent of other LED circuits.” Id. ¶ 29 (citing Ex. 1004 ¶ 47). Patent Owner does not rebut these assertions of Dr. Neikirk. See Sur- reply 7–10. Accordingly, we determine that Petitioner has established that Dowling discloses this limitation.” slip op. at 26

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “We begin our analysis with the claim language. Claim 1 requires a switch to “independently switch on or off at least one of the first LED circuit or the at least one additional LED circuit.” There is no express requirement in the claim that any switching occur independently “of other switches.” In effect, Patent Owner appears to imply that “independently” modifies only the word “switch.” Yet the plain reading of this phrase is that the word “independently” modifies the entire phrase that follows—“switch on or off at least one of the first LED circuit or the at least one additional LED circuit.” As such, the plain language of the claim encompasses switching one of the LED circuits on or off independently of another LED circuit. In other words, the switch can turn on or off either LED circuit by itself, without affecting the other LED circuit. Patent Owner even appears to have had the same understanding pre-institution, arguing that one of Dowling’s modes “is simultaneously controlling all the LEDs, not independently switching one LED circuit on or off.” Prelim. Resp. 19. The specification does not inform the meaning of this limitation because it does not include the word “independently”—this term only appears in the claims. And Patent Owner points us to no discussion of independent switching in the specification by another name. At most, Patent Owner refers to two separate claims and a few specification references that possibly mention two separate switches. Sur-reply 3–4. But Patent Owner’s references to claims 11 and 15 are unavailing, as even if claims 11 and 15 mention different switches, Patent Owner does not sufficiently explain how this compels the meaning it ascribes to “independently switch.” This is true even though claim 11 itself recites a similar “independently switch” limitation. Further, the specification’s mere mention of different switches is also insufficient to draw any conclusion about whether those switches are independently switched from one another. We therefore find no disavowal, lexicography, or any context that would counsel departing from the plain and ordinary meaning of this limitation. As such, we construe “a switch . . . configured to at least one of independently switch on or off at least one of the first LED circuit or the at least one additional LED circuit” in claims 1, 6, and 11 to encompass a switch that switches an LED circuit on or off independently of another LED circuit.” slip op. at 11

  Patent outcomesUS 10,537,001 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,537,001
• Samsung Electronics Co., Ltd. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · Mar 15, 2023 · IPR2021-01345 · APJ Scott Raevsky · IPR · Final written decision

  Claims 4, 9–11, 13, 17, 18, and 20 are unpatentable as obvious over Hack and Garcia, Hack, Garcia, and Cordelli, or Hack and Porter.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner contends that a person of ordinary skill in the art (“POSITA”) would mean someone who, at the time of the invention in February 2004, had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and two or more years of experience with LED devices and related LED circuit design. PO Resp. 7 (citing Ex. 2001 ¶¶ 41–48). Petitioner contends that there is little difference between these definitions and that Patent Owner does not tie any of its arguments to the minor differences. Reply 1–2. We agree. However, we adopt Patent Owner’s definition of the level of skill because we are persuaded that it is consistent with the problems and solutions in the ’252 patent and prior art of record, except that we delete the phrase “or more” to avoid including ambiguity in the definition of the level of skill. The outcome of this decision would not have changed had we adopted Petitioner’s definition.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Because the intrinsic record7 does not assist us with interpreting the term “folded,” we turn to the extrinsic evidence, including Patent Owner’s proffered dictionary definitions and expert testimony. As mentioned above, Patent Owner supplied two dictionary definitions for “fold.” See Exs. 2006, 2007. But these definitions are from non-technical sources and are non-contemporaneous with the ’252 patent’s priority date, and are thus of limited relevance to our analysis. Reply 14 n.7. As for expert testimony, Patent Owner’s expert submits that “[a] POSITA would understand that folding a substrate requires bending the substrate so that one part of the substrate is in full contact with another part of the substrate.” Ex. 2001 ¶ 81. However, Patent Owner’s expert provides no evidence or explanation for this conclusory assertion, so we give it little weight. See id.; PO Resp. 18–19; 37 C.F.R. § 42.65(a). Further, as we will discuss in detail below, the prior art upon which 7 The parties do not address the prosecution history. Petitioner relies explicitly discloses a substrate that is flexible enough to be folded. See, e.g., Pet. 40; Ex. 1005 ¶ 76 (“[T]he display 106 could be thin and flexible enough to . . . fold into a housing 102[.]”). Thus, apart from explaining the errors in Patent Owner’s proposed construction, we determine that it is unnecessary for us to further analyze the proper scope of this term. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

  • Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for petitioner

    “Because the intrinsic record7 does not assist us with interpreting the term “folded,” we turn to the extrinsic evidence, including Patent Owner’s proffered dictionary definitions and expert testimony. As mentioned above, Patent Owner supplied two dictionary definitions for “fold.” See Exs. 2006, 2007. But these definitions are from non-technical sources and are non-contemporaneous with the ’252 patent’s priority date, and are thus of limited relevance to our analysis. Reply 14 n.7. As for expert testimony, Patent Owner’s expert submits that “[a] POSITA would understand that folding a substrate requires bending the substrate so that one part of the substrate is in full contact with another part of the substrate.” Ex. 2001 ¶ 81. However, Patent Owner’s expert provides no evidence or explanation for this conclusory assertion, so we give it little weight. See id.; PO Resp. 18–19; 37 C.F.R. § 42.65(a).” slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “We agree with Petitioner that Garbuzov discloses stacked LEDs, with a coating on one of those LEDs, notwithstanding Patent Owner’s arguments to the contrary, which we discuss in detail below. To briefly summarize, first, we agree with Petitioner (and Patent Owner does not dispute) that Figure 39 (above) of the ’252 patent depicts an OLED. Second, we agree that each of the sets of layers Petitioner identifies in Garbuzov as an OLED has a similar structure as the OLED in Figure 39 of the ’252 patent, and is therefore an OLED. See, e.g., Ex. 1089, 48:3–6. Third, we agree with Petitioner that the phosphor layer 114 is applied to one of Garbuzov’s OLEDs within the stacked set of OLEDs, as shown in Garbuzov Figure 2, and therefore, that Garbuzov discloses coating an LED with a phosphor. Finally, we agree with Petitioner that phosphor layer 114 produces a change in color because Garbuzov describes phosphor layer 114 as “red downconversion phosphor layer 114.” See Ex. 1016, 3:32–33.” slip op. at 25

  Patent outcomesUS 10,492,252 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,492,252

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.