• Osteomed LLC v. Stryker European Operations Holdings LLCAll claims unpatentable
  PTAB · Aug 8, 2023 · IPR2022-00488 · APJ Susan L C Mitchell · IPR · Final written decision

  Claims 1–3 and 6–18 are unpatentable as obvious over Arnould and Zahiri, with claim 6 also relying on Myerson; the Board did not reach Grounds 1–3.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “While both parties’ descriptions are similar, we find that Patent Owner’s description is better supported by the record. As Patent Owner points out, the main distinction between the parties’ proposals is that Patent Owner’s description is broader because it includes orthopedic surgeons. The record supports the inclusion of such individuals in the description of a POSITA. See Ex. 2005 ¶¶ 37, 41; Ex. 2009, 38:21–39:7 (Petitioner’s declarant testifying that he would “include an orthopedic surgeon that has some experience developing implants as a person of ordinary skill in the art”). Thus, we apply Patent Owner’s description of a POSITA for our analysis.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “That said, we do not agree with Patent Owner that the Specification defines “bone plate” as it contends. In the background of the invention, the Specification states that “[t]he invention relates to the technical field of orthopedic implants. More particularly, the invention relates to a plate for arthrodesis or osteosynthesis adapted to be fixed between two bone parts.” Ex. 1001, 1:27–31. Contrary to Patent Owner’s argument, this passage does not “define” the term “bone plate” nor otherwise suggest that the patentee acted as its own lexicographer. See Resp. 9. Moreover, nothing in the record suggests that the ordinary meaning of “bone plate” requires the plate to be fixed between two bone parts. The medical dictionaries Patent Owner cites do not include such a requirement in their definitions. See Ex. 2012, 1478 (defining “bone plate” as “a metal bar with perforations for the insertion of screws, used to immobilize fractured segments”); Ex. 2013, 241 (defining “bone plate” as “a metal plate used to reconstruct a bone that has been fractured” and “designed to hold the bone fragments in apposition”). Both of these definitions are consistent with Mr. Sherman’s testimony that a bone plate is “not always” placed across the fracture. See Ex. 2009, 52:9–53:1 (identifying particular instances in which a plate is not placed across the fracture). We credit that testimony over the competing testimony of Patent Owner’s declarant, Mr. Leinsing. Ex. 2005 ¶ 34 (referring to the statements from the Specification and dictionary definitions discussed above). For these reasons, we agree with Petitioner that the term “bone plate” as recited in the challenged claims has its ordinary meaning and that meaning does not exclude plates located on only one side of a joint or fracture.” slip op. at 11

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

    “We do not agree that the ordinary meaning of “between” is as restrictive as Patent Owner contends. First, Patent Owner’s definition of “between” does not require an object that is “between” two others to lie along the same axis defined by the two other objects. A “space separating two objects” is not so restrictive. Instead, a more expansive ordinary meaning of “between” is evidenced by the intrinsic evidence of the ’751 patent as Petitioner explained with reference to Figure 2 of the ’751 patent, which shows a third hole 1a1 between the other holes even though it is “offset” and in a different plane from the longitudinal axis of the bone plate. Patent Owner attempts to draw a distinction between Arnould’s Figure 2 and Figure 2 of the ’751 patent, by asserting “like Arnould, a hand is in a different plane and offset and its axis is not in relation to the body. In contrast, the angled tab shown in Figure 2 of the ’751 patent is not in a different plane and offset from the plate, and the hole axis forms an angle with the plate.” Sur-reply 8. Patent Owner’s distinction here appears to be whether the third hole lies at an angle below or above the bone plate as shown in Figure 2 of the ’751 patent (which would be “between” according to Patent Owner) versus also being positioned to either side of the bone plate as shown in Figure 2 of Arnould (which in Patent Owner’s view would mean that hole is no longer “between” the others). We see no basis for drawing such a fine distinction regarding the meaning of “between,” especially when the narrower definition Patent Owner seeks is not made explicit in the Specification of the ’751 patent. To the extent any further claim construction is necessary to resolve” slip op. at 16

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “contends. A reference is considered to be analogous art if it is in the “same field of endeavor” as the patent at issue. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Here, the Specification states that “[t]he invention relates to the technical field of orthopedic implants.” Ex. 1001, 1:27–28. Zahiri falls squarely within this field, describing “fixation devices for compressing bone fractures of a human being.” Ex. 1007, 1:9–11; see also, e.g., id. at Fig. 1 (depicting the use of Zahiri’s plate as an orthopedic implant to fix two bone parts). The differences Patent Owner identifies in Zahiri’s device do not show otherwise. In this regard, we find the testimony of Mr. Sherman (Ex. 1002 ¶ 245) on this point to be more credible than the competing testimony offered by Mr. Leinsing (see Ex. 2005 ¶¶ 121–29, 238). Mr. Sherman persuasively testifies that “Arnould and Zahiri disclose bone plates with diagonal fixation members configured to compress the intersection of a first and second bone,” demonstrating Arnould and Zahiri “are therefore in analogous fields of invention” to the ’751 patent. Ex. 1002 ¶ 245. Mr. Leinsing, on the other hand, continues to assert that Zahiri discloses only “a guide that directs a lag screw at a precise angle into a humeral head, not a bone plate” because it is located on only one side of the joint or fracture. Ex. 2005 ¶ 238. Therefore, Mr. Leinsing concludes that the “Zahiri device is directed to a completely different function than Arnould,” and is non-analogous art. Id. Because we find Zahiri discloses a “bone plate” according to the ordinary meaning of that term, Mr. Leinsing’s testimony is unconvincing. See supra § III.C.i (explaining that the ordinary meaning of “bone plate” does not exclude plates located on only one side of a joint or fracture). But even if we agreed with Patent Owner’s and Mr. Leinsing’s interpretation of bone plate, Zahiri’s plate is still an orthopedic implant and therefore analogous art because it is within the same field of endeavor as the ’751 patent.” slip op. at 34

  Patent outcomesUS 10,993,751 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,993,751
• Syngenta Crop Protection AG v. Upl Ltd.Instituted
  PTAB · Jul 31, 2023 · PGR2023-00017 · APJ Zhenyu Yang · PGR · Institution

  Instituted PGR on claims 1–10 and all asserted grounds because the Board found it more likely than not that Tobler anticipates and renders obvious at least claim 1.

  RulingsInstitution decision

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

    “We review the Petition under 35 U.S.C. § 324, which provides that a post-grant review may not be instituted unless “it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 324(a). Accordingly, we institute a post-grant review of all challenged claims based on all grounds raised in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); PTAB Consolidated Trial Practice Guide (“Practice Guide”),1 5–6 (Nov. 2019).” slip op. at 2

  • Other 314aInstitution denied discretionary otherDenied

    “We disagree. It is unclear which aspect of the Petition that Patent Owner takes issue with. If it is the “multitudinous grounds” presented in the Petition, Patent Owner points to no authority that permits us to deny institution merely because a petition presents numerous grounds. In any event, on the facts of this case, we do not view eight grounds asserted in the Petition to be excessive.6 To the extent Patent Owner urges that we should deny institution because Petitioner’s grounds are “futil[e],” we understand that to be an argument on the merits, and not related to our discretion. See Prelim. 6 The Petition presents five grounds. See generally Pet. We agree with Patent Owner, however, the ground based on Tobler, in fact, encompasses three grounds, and the ground based on De Oliveira, in fact, encompasses two grounds. See Prelim. Resp. 2. Resp. 45. As explained below, we find Petitioner has established that it is more likely than not that claims 1–10 of the ’727 patent are unpatentable over Tobler. See infra Section II.D.2. Because the grounds based on Tobler apply to all challenged claims,7 at least these grounds are not, as Patent Owner asserts, futile. Thus, we decline to exercise discretion to deny the Petition under § 324(a).” slip op. at 6

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “review, we “may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” Our § 325(d) analysis employs a two-prong framework: (1) whether the arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of those arguments. Advanced Bionics, LLC v. 7 The cases Patent Owner cites do not support its argument on discretionary denial under § 324(a). See Prelim. Resp. 45–46. In those cases, the Board exercised discretion to deny institution because the petitions only met the threshold requirement for institution with regard to a small percentage of the challenged claims. See Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9, 11 (PTAB Nov. 7, 2018) (stating “instituting a trial with respect to all twenty claims based on evidence and arguments directed to dependent claims 3 and 4 is not an efficient use of the Board’s time and resources”); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7, 2 (PTAB Jan. 24, 2019) (denying institution because the petitioner only “demonstrated a reasonable likelihood of prevailing with respect to only two of twenty-three challenged claims as to only one of four asserted grounds of unpatentability”). MED-EL Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6 (“Advanced Bionics”), 8 (PTAB Feb. 13, 2020) (precedential). The parties agree that, during prosecution, the relevant disclosure in Tobler was before the Examiner in U.S. Patent Application Publication 2010/0216640, which was cited in an Information Disclosure Statement (“IDS”). Pet. 12; Prelim. Resp. 46. In other words, the first prong of the Advanced Bionics analysis is satisfied. Thus, we must determine whether Petitioner has shown a material error by the Office. We find Petitioner has met its burden on this issue.” slip op. at 7

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

    “The parties agree that, for purposes of this Decision, all claim terms should be given their plain and ordinary meaning. Pet. 18; Prelim. Resp. 13. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to address the construction of any claim term.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips
  Patents in suitUS 11,445,727
• 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
• 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
• JSR Corporation / JSR Life Sciences, LLC v. Cytiva Bioprocess R&D ABAll claims unpatentable
  PTAB · Apr 19, 2023 · IPR2022-00036 · APJ Ulrike W Jenks · IPR · Final written decision

  The Board held claims 1–7, 10–20, and 23–26 unpatentable as obvious over Linhult, Abrahmsén, and Hober; it did not reach the other asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983).” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “According to the Specification, “a multimeric chromatography ligand (also denoted a ‘multimer’) comprised of at least two Domain C units, or a functional fragments or variants thereof.” Ex. 1001, 7:27–30. The Specification additionally recites that a multimer containing only Domain C units can, however, include linkers. Id. at 7:39–41. In addition, the Specification describes that “the multimer comprises one or more additional units, which are different from Domain C.” Id. at 7:44–45. Based on these disclosures in the Specification, a multimer is composed of at least two or more monomers. Because Petitioner’s construction is consistent with the ’765 patent’s express construction of the term, and because Patent Owner does not contest Petitioner’s construction, we apply it here.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

  Patent outcomesUS 10,213,765 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,213,765
• Ivantis, Inc. / Alcon Research, LLC et al. v. Sight Sciences, Inc.Institution denied
  PTAB · Mar 27, 2023 · IPR2022-01533 · APJ Ulrike W Jenks · IPR · Institution

  The Board denied institution of review of claims 1, 2, 5, 7, 8, 10, 11, 15, 18, 21, 23, 32, 33, 36, 38, 39, 41, 42, 46, 49, 52, 54, 63, 65, 68–70, 73, 77, …

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Id. at 8.” slip op. at 10

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “6 Patent Owner presents an alternative basis for denying institution under 35 U.S.C. § 314(a) based on Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) and the Director’s Memo re Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Vidal Memo”), at 4 (June 21, 2022). Prelim Resp. 76–81. Because we deny institution based on 35 U.S.C. § 325(d) need not separately reach a conclusion based on Fintiv in this decision.” slip op. at 9

  Discretionary denial
  Patents in suitUS 8,287,482
• Ivantis, Inc. / Alcon Research, LLC et al. v. Sight Sciences, Inc.Institution denied
  PTAB · Mar 27, 2023 · IPR2022-01530 · APJ Ulrike W Jenks · IPR · Institution

  The Board denied institution of IPR for claims 1–3, 6–9, 12, 13, 15, and 17–20 under § 325(d), finding the art or arguments substantially similar to those previously considered and no material examiner error.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “4. Summary Considering the above Becton Dickson factors as they are incorporated into the two-part Advanced Bionic framework, we find that the factors weigh in favor of exercising our discretion and denying institution under § 325(d). The asserted art is either the same as, or cumulative to, the prior art that Examiner has already considered during prosecution of the ’742 patent and its parent application. Further, the arguments Petitioner Examiner during prosecution. Thus, we deny institution under § 325(d). III. CONCLUSION Because the same or substantially the same art previously were presented to the Office and Petitioner has not demonstrated that Examiner materially erred when considering the prior art, we exercise our discretion under § 325(d) and decline to institute inter partes review of the ’742 patent.” slip op. at 29

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “A. Discretion Under 35 U.S.C. 325 (d) We first consider Patent Owner’s request that we deny institution7 under 35 U.S.C. § 325(d). Prelim. Resp. 9–52. Patent Owner contends that Petitioner’s alleged prior art was presented previously to Examiner during prosecution of the ’742 patent and its parent applications. Id. In the Patent Owner Response, Patent Owner provides a patent family tree, reproduced below. The patent family tree shows that “[t]he ’443 is a parent and the ’789 is a grandparent of the ’742” patent. Prelim. Resp. 8. Patent Owner argues that the same “Primary Examiner . . . examined all patents in this family. (See 7 Patent Owner presents an alternative basis for denying institution under 35 U.S.C. § 314(a) based on Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) and the Director’s Memo re Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Vidal Memo”), at 4 (June 21, 2022). Prelim Resp. 76–81. Because we deny institution based on 35 U.S.C. § 325(d) need not separately reach a conclusion based on Fintiv in this decision.” slip op. at 8

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied

    “III. CONCLUSION Because the same or substantially the same art previously were presented to the Office and Petitioner has not demonstrated that Examiner materially erred when considering the prior art, we exercise our discretion under § 325(d) and decline to institute inter partes review of the ’742 patent. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s request for an inter partes review, pursuant to 35 U.S.C. § 314(a), of claims 1–3, 6–9, 12, 13, 15, and 17–20 of the ’742 patent is denied, and no trial is instituted.” slip op. at 30

  Discretionary denial
  Patents in suitUS 10,314,742
• 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
• Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution denied
  PTAB · Mar 14, 2023 · IPR2022-01484 · APJ Brian D Range · IPR · Institution

  The Board denied institution because Petitioner did not show that the asserted combinations taught or suggested the claimed force-fitting connection holding the housing cup and top together.

  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) (2020). 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.”” slip op. at 2

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

    “top” that “are held together by a force-fitting connection.” Ex. 3001, 1:28– 29 (claim 1), 2:51–52 (claim 23). The parties disagree about whether the references on which Petitioner relies teach or suggest this limitation. Pet. 28–32, 64–66; Prelim. Resp. 53–61. As discussed more completely below, we are able to determine whether to institute trial without deciding precisely what the ’835 patent means when it describes two parts as “held together by a force-fitting connection.” Accordingly, we need not, and do not, construe this term expressly. See Nidec, 868 F.3d at 1017 (quoting Vivid Techs., 200 F.3d at 803). Although we need not decide the precise meaning of “held together by a force-fitting connection” in order to decide whether to institute trial, we note (1) that, without some evidence to the contrary, a battery casing whose half-parts are “held together by” a particular condition must be a battery casing whose half-parts would no longer be held together if the condition were not present, and (2) that neither party has directed us to any evidence to the contrary. Accordingly, whatever a “force-fitting connection” is, a battery made in accordance with the teachings of the prior art is not a battery that is “held together by a force-fitting connection” unless that battery would cease to be held together in the absence of the “force-fitting connection.”” slip op. at 11

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

    “Even if we accept Petitioner’s position that Kaun suggests radial forces around its seal, Petitioner has not presented sufficient evidence that such forces hold a housing cup and housing top together. With respect to the key “held together” recitation, Petitioner’s only argument or evidence in the Petition is a sole quote purportedly from Patent Owner’s expert, Dr. Peckerar:” slip op. at 19

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,153,835

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.