• Samsung Electronics Co., Ltd. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · Mar 15, 2023 · IPR2021-01346 · APJ Scott Raevsky · IPR · Final written decision

  Claims 3–16 are unpatentable as obvious under §103 over the seven combinations of prior art listed in the decision.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “These definitions are very similar, but we are persuaded that Patent Owner’s proposal is more consistent with the problems and solutions in the ’466 patent and prior art of record. Petitioner’s use of the term “and/or” is problematic because it makes experience with LED devices optional. In contrast, Patent Owner’s definition requires two or more years of experience with LED devices and related LED circuit design. We therefore adopt Patent Owner’s definition of the level of skill. Had we adopted Petitioner’s level of skill, however, the outcome here would not have changed.” slip op. at 6

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

    “Neither party proposes any claim constructions. Pet. 6; PO Resp. 8–9; Reply 1. We determine that no terms require construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “We agree with Petitioner. Patent Owner indeed relies on an improper bodily incorporation argument. Petitioner does not propose bodily incorporating Siwinski and Srivastava together, but rather taking certain teachings from these references and applying them to Hack. Reply 11, 14. For example, Petitioner argues that a POSITA would have relied on Siwinski’s teachings “to configure Hack’s device to implement a circuit configured to detect touch via capacitive sensing.” Pet. 28 (citing Ex. 1002 ¶ 124). And Petitioner relies on Srivastava for the teaching that a POSITA would have configured Hack’s device with a lens doped with particles configured to receive and transmit light from a plurality of LEDs. Id. at 29– 30 (citing Ex. 1002 ¶¶ 126–32). Patent Owner’s argument that Srivastava’s shell is not combinable with Siwinski’s touch screen misdirects our attention to a combination that Petitioner did not propose, and is a bodily incorporation that fundamentally misapplies the law of obviousness. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Regardless, Petitioner’s arguments are not conclusory. The Reply persuasively argues that “Srivastava’s express applicability to OLEDs and display backlights is consistent with Hack’s OLED backlight features.” Reply 11 (citing, e.g., Ex. 1052, 1:10–12, 5:29–38). We are further persuaded by Petitioner’s evidence supporting that “the use of a lens with LED backlight configurations was known,” which undercuts Mr. Credelle’s testimony that Srivastava’s lens would be incompatible with a touch screen backlight. Id. (citing, e.g., Ex. 1090 (depicting a lens over multiple OLED color elements), Fig. 13; Ex. 1098, code (57) (“display back lighting system” with an “entrance lens” and a “reflecting lens”); Ex. 1099, code (57) (“backlight assembly” with “a closely packed array of hemispherical or spherical lenses”)); see Ex. 2001 ¶¶ 96–97. And contrary to Mr. Credelle’s testimony that “[i]t would be illogical to form Srivastava’s shell over Siwinski’s touch screen because the shell would prevent touching the touch screen, which is the function of the touch screen,” Petitioner persuasively argues that “Srivastava explains that it was known that LEDs are used as a backlight in liquid crystal displays.” Reply 11. In other words, Petitioner’s reliance on Srivastava’s backlight teachings would not prevent a user from touching a screen (in front of the backlight) in the modified device. Accordingly, we agree with Petitioner that one of ordinary skill in the art would have combined Hack, Siwinski, and Srivastava to achieve this limitation.” slip op. at 16

  • Strike new argumentNew argument disregardedDecided for petitioner

    “We start our analysis with the Sur-reply because it exposes several weaknesses in Patent Owner’s arguments. First, contrary to what the Sur-reply contends, the Patent Owner response did not argue that “Srivastava’s LED shell is incompatible with Hack’s touch screen because the hard shell would interfere with the functionality of the touchscreen.” Id. This is a new argument first made in the Sur-reply, and we do not consider it. See 37 C.F.R. § 42.23(b). What Patent Owner actually argued in its Response was that “[a] POSITA would not combine Srivastava’s LED shell for a single LED with Hack’s flexible display.” PO Resp. 24. There is no mention of a “hard shell” interfering with the functionality of the touch screen in the Patent Owner Response. See id. At most, Patent Owner contends that the shell would “prevent touching the screen,” and that the “curvature of the shell” would be incompatible, not that any hardness of the shell would present a problem. Id. at 25–26 (quoting Ex. 2001 ¶ 97). Regardless, even if we consider this argument, it is inapposite because as the Reply correctly notes, “Srivastava explains that it was known that LEDs are used as a backlight in liquid crystal displays,” and we accordingly find that a backlight with a hard shell would not interfere with a user touching a display. See Reply 11 (citing Pet. 30–33; Ex. 1052, 1:10–12).” slip op. at 28

  Patent outcomesUS 10,499,466 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,499,466
• 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
• Samsung Electronics Co. Ltd. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · Mar 13, 2023 · IPR2021-01347 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–17 and 21–25 are unpatentable: claims 6 and 24 are anticipated by Birrell; the remaining challenged claims are obvious over the stated combinations.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner contends there are “several problems” with Petitioner’s proposed definition. PO Resp. 11. In particular, Patent Owner contends the “and/or” qualifier and addition of “or a related field” could be read to allow an individual with no experience with LED devices to be a person of ordinary skill in the art. Id. Upon review of the parties’ arguments, the prior art of record, and the ’298 patent, we agree with Patent Owner that one of ordinary skill in the art would have had experience working with LEDs and/or LED circuit design. Thus, we adopt Patent Owner’s definition of one of ordinary skill in the art. We note, however, that neither party asserts that the outcome of this case rests on resolving the small differences between the parties’ definitions of the ordinarily skilled artisan.” slip op. at 8

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

    “C. Claim Construction In this proceeding, the claims of the ’298 patent are construed “using the same claim construction standard that would be used to construe the claim 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 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party contends any terms of the ’298 patent require construction. Pet. 5–6; PO Resp. 12. Upon review of the parties’ arguments and supporting evidence, we agree that no 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. 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 Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “By its express language, the claim term “wirelessly” is best understood as “without the use of a wire.” We are directed to no disclosure in the written description or prosecution history that would contradict this conclusion or otherwise shed light on the meaning of this claim term. There is no dispute that capacitive coupling does not use a wire or any other form of direct contact to transmit power. Thus, the plain meaning of “wirelessly” encompasses capacitive coupling. This conclusion is supported 6,336,031 states that “[c]onnectionless (i.e., wireless) transmission of analog and digital signals has previously been accomplished using . . . [c]apacitive coupling.” Ex. 1131, 1:10–18. Likewise, U.S. Patent No. 6,988,026 describes a “power receiving system which receive[s] power wirelessly (inductively, through radio frequency energy transfer and/or capacitively).” Ex. 1133, 113:64–114:2. Mr. Credelle’s counter-testimony is not persuasive because he does not explain in any detail why one of ordinary skill in the art would not understand a capacitive coupling that transfers power to be a wireless system. See Ex. 2001 ¶ 80.” slip op. at 50

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

    “KSR instructs that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. Here, Petitioner proposes to substitute one known method of transmitting power for another (an inductor in place of two capacitors), according to known methods (Logan), and Patent Owner does not dispute that the combination would yield a predictable result of wirelessly providing power from one device to another. This suggests that the proposed combination would have been obvious. Id. point to a specific problem discussed in Birrell for which Logan’s method of using inductive coupling would be a solution. See In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.”) (internal quotations omitted). What the Petition must demonstrate is that there was some reason why one of ordinary skill in the art would have sought to combine the elements in the manner proposed. KSR, 550 U.S. at 418. The Petition provides multiple, persuasive reasons (discussed above) as to why one of ordinary skill in the art would have sought to use inductors, as disclosed in Logan, to wirelessly transmit power to a lighting device, such as that disclosed in Birrell.13 (d) Conclusion For the reasons set forth above, we find that Petitioner presents multiple, persuasive reasons as to why one of ordinary skill in the art would have sought to implement the wireless power transmission system of Logan in the lighting device of Birrell.” slip op. at 19

  Patent outcomesUS 10,966,298 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,966,298
• Samsung Electronics Co. Ltd. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · Mar 13, 2023 · IPR2021-01300 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–22 are unpatentable as obvious under §103 over the asserted combinations of Oba and the additional references listed for each ground.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner provides a very similar definition of the ordinarily skilled artisan, but removes the “and/or” qualifier for experience with LED devices, as well as the allowance for individuals to have experience in an unspecified “related field.” PO Resp. 5. Patent Owner contends these modifications are appropriate because Petitioner’s proposed definition would allow an individual with no experience with LEDs to be a person of ordinary skill in the art. Id. art of record, we adopt Patent Owner’s definition of the ordinarily skilled artisan as it is consistent with the disclosures of the ’697 patent and with the prior art of record. We note, however, that neither party asserts that any arguments in this proceeding rise or fall based on the definition that is adopted.” slip op. at 7

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

    “Neither party contends any terms of the ’697 patent require construction. And, upon review of the parties’ arguments and supporting evidence, we determine that no terms require construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[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

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

    “Petitioner provides uncontroverted testimony from Dr. Baker, which we credit, that: (1) Oba’s laptop computer necessarily has a battery ground (Ex. 1002 ¶ 102); (2) it was known in the art, for example as disclosed in Hara, that a capacitor could be coupled between a battery ground and the circuit elements powered by the device in order to serve as a filter for noise (id. ¶¶ 103, 108; Ex. 1090 ¶ 3 (asserting that AC power is a known source of noise)); and (3) capacitively coupling Oba’s battery ground to the conductor connecting the battery poles and the circuit components of the laptop computer would “smooth delivered power,” thereby “facilitating a steady supply of power” (Ex. 1002 ¶¶ 104–106). As argued by Patent Owner, Hara uses a capacitive coupling to battery ground in order to mitigate standing waves caused by the extended length of the conductors connecting the laptop battery to circuit components. PO Resp. 15. The capacitive-coupling to battery ground, however, need not be used in Oba to solve the same problem identified in Hara, and Dr. Baker persuasively explains why the system of Oba would benefit from a ¶¶ 103–104; Ex. 1090 ¶ 3–10 (asserting that AC power is a known source of noise). As such, Petitioner persuasively explains why one of ordinary skill in the art would have sought to combine Oba and Hara to arrive at a battery ground that is capacitively coupled to the circuit components of the laptop computer. c)” slip op. at 18

  Patent outcomesUS 11,019,697 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,019,697
• Ricetec, Inc. v. BASF SEAll claims unpatentable
  PTAB · Mar 8, 2023 · PGR2021-00114 · APJ Tina E Hulse · PGR · Final written decision

  Claims 1–17 are unpatentable: they lack written description support and are anticipated by Hinga; the Board also found the challenged dependent claims obvious over the listed combinations.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “As explained in our Institution Decision (Dec. Inst. 5–6), we do not discern a substantive difference between the parties’ respective definitions for the level of ordinary skill in the art. Although Petitioner states a POSITA must have one to two years of postdoctoral research experience and Patent Owner’s definition requires at least five years of “research experience,” Patent Owner’s definition does not indicate a specific time for that research (i.e., it could include research during or after a doctoral program). Neither party addresses or contests the other party’s definition in their post-institution papers. See generally PO Resp.; Pet. Reply; PO Sur-reply. Accordingly, we find the parties’ respective definitions to be equivalent and consistent with the level of ordinary skill in the art as reflected by the prior art in this proceeding. 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))). Moreover, we find that Dr. Shaner and Dr. Somers are both qualified to opine from the perspective of a skilled artisan as both are persons of at least ordinary skill in the art, based on either party’s definition. See Ex. 1002 ¶¶ 4–15; Ex. 2036 ¶¶ 5–11, App’x A; see also Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F. 4th 1369, 1376–77 (Fed. Cir. 2022) (“To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.”).” slip op. at 8

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

    “amount.” Pet. Reply 14. Patent Owner, however, argues that we erred in our construction because the Specification explicitly defines “effective amount” to mean “the amount of herbicide required to achieve at least about 65% phytotoxicity of conventional [i.e., wild, non-mutant] rice (e.g., red rice) in field applications.” PO Resp. 10 (quoting Ex. 1001, 6:34–37). Because the inventors served as their own lexicographers, Patent Owner asserts the Specification’s express definition controls. Id. at 10–11 (citing Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1380 (Fed. Cir. 2009) (“When a patentee explicitly defines a claim term in the patent specification, the patentee’s definition controls.”)). Nevertheless, Patent Owner acknowledges that the “less than 10% injury” language “is indeed a limitation of the ’346 Patent claims.” Id. at 11. Having considered the arguments and evidence presented at trial, we agree with Patent Owner that the inventors acted as their own lexicographer to define “effective amount” and that that definition governs its meaning. Phillips, 415 F.3d 1316 (“[O]ur cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor’s lexicography governs.”). We, therefore, construe the term “effective amount” to mean “the amount of an herbicide required to achieve at least about 65% phytotoxicity of conventional rice (e.g., red rice) in field applications.” As explained further below, however, whether incorporated into the construction of “effective amount” or not, the claim language itself further requires that the “effective amount” encompass a specific range of amounts of herbicide (i.e., 14 g AI/Ha to 40 g AI/Ha of quizalofop) and cause “less than 10% injury” to the mutant rice. See Ex. 1001, claim 1.” slip op. at 10

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateUnpatentable

    “Mankin would derive the herbicide range suggested by Patent Owner and Dr. Somers from the “rules of thumb,” that range is much broader than the claimed range. Claim 1 recites that the effective amount is 14 g AI/Ha–40 g AI/Ha of quizalofop, but, according to Dr. Somers’s calculations from the Assure II herbicide label, a POSITA would understand the effective amount to be 19.25–154 (or 19.25–184.8) g AI/Ha. Ex. 2036 ¶ 54; PO Resp. 38. Patent Owner does not identify anything in the specification that would allow a POSITA to “immediately discern” the specific range limitations of the claims. See General Hospital, 888 F.3d at 1372. As the Federal Circuit has stated, “one cannot disclose a forest in the original application, and then pick a tree out of the forest and say here is my invention.” Purdue Pharma, 230 F.3d at 1326. Thus, we are not persuaded that the disclosure of a broad range of effective amounts via the Assure II herbicide label coupled with Dr. Somers’s undisclosed “rules of thumb” provide written description support for the narrower range limitations of the claims. Moreover, we agree with Petitioner that Patent Owner is impermissibly working backward from the claimed ranges to determine whether Dr. Somers’s “rules of thumb” can be used to re-create the claimed range from the herbicide label. Pet. Reply 15. That is not the test for written description. Written description “requires a statement of an invention, not an invitation to go on a hunting expedition to patch together after the fact a synthetic definition of an invention.” Indivior UK Ltd. v. Dr. Reddy’s Labs. S.A., 18 F. 4th 1323, 1329 (Fed. Cir. 2021). Accordingly, we are not persuaded that Dr. Somers’s “rules of thumb” applied to the extrinsic herbicide label would be understood by a POSITA as a description in Mankin of the range limitation of the claims. Rather, as Dr. Somers concedes, his “rules of thumb” in conjunction with the herbicide label represent a starting point for a POSITA to test plants to determine what the effective amount range should be. See Ex. 2036 ¶ 53 (referring to a “dose response analysis” between 0.5x and 4x). But “a ‘mere wish or plan’ for obtaining the claimed invention is not sufficient.” See Centocor Ortho Biotech, Inc. v. Abbott Labs., 636 F.3d 1341, 1351 (Fed. Cir. 2011).” slip op. at 30

  • Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)EnabledNot shown unpatentable

    “We are not persuaded. Given the state of the art in 2017, and the known availability of the G2096S seeds at that time, we find the ’346 patent specification enables the claims. The ’346 patent specification clearly describes the G2096S mutant ACCase rice and its use in the claimed method for treating rice. See, e.g., Ex. 1001, 2:37–45, 57:51–61. Contrary to Petitioner’s assertion, the ’346 patent specification has not omitted the G2096S herbicide tolerant rice. Rather, the ’346 patent specification expressly identifies the G2096S mutant rice that possesses the phenotype of tolerance to the effective amounts of herbicides, and describes the method for treating that mutant rice with those effective amounts. See, e.g., id. at 8:8–12; 57:51–61. Thus, we are not persuaded that we erred in relying on Hinga’s seed deposits to determine that Petitioner has failed to meet its burden to prove that the ’346 patent specification fails to enable the challenged claims. Cf. Wands, 858 F.2d at 736 (stating “[n]o deposit is necessary if the biological organisms can be obtained from readily available sources.”).” slip op. at 46

  Patent outcomesUS 11,096,346 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,096,346
• Ricetec, Inc. v. BASF SEAll claims unpatentable
  PTAB · Mar 8, 2023 · PGR2021-00113 · APJ Tina E Hulse · PGR · Final written decision

  Claims 1–15 are unpatentable: they lack written-description support, and claims 1–3, 7, and 11–15 are anticipated by Hinga or Hinga2013.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “As explained in our Institution Decision (Dec. Inst. 6–7), we do not discern a substantive difference between the parties’ respective definitions for the level of ordinary skill in the art. Although Petitioner states a POSITA must have one to two years of postdoctoral research experience and Patent Owner’s definition requires at least five years of “research experience,” Patent Owner’s definition does not indicate a specific time for that research (i.e., it could include research during or after a doctoral program). Neither party addresses or contests the other party’s definition in their post-institution papers. See generally PO Resp.; Pet. Reply; PO Sur-reply. Accordingly, we find the parties’ respective definitions to be equivalent and consistent with the level of ordinary skill in the art as reflected by the prior art in this proceeding. 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))). Moreover, we find that Dr. Shaner and Dr. Somers are both qualified to opine from the perspective of a skilled artisan as both are persons of at least ordinary skill in the art, based on either party’s definition. See Ex. 1002 ¶¶ 5–15; Ex. 2036 ¶¶ 5–11, App’x A; see also Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F. 4th 1369, 1376–77 (Fed. Cir. 2022) (“To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.”).” slip op. at 8

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

    “Having considered the arguments and evidence presented at trial, we agree with Patent Owner that the inventors acted as their own lexicographer to define “effective amount” and that that definition governs its meaning. Phillips, 415 F.3d 1316 (“[O]ur cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor’s lexicography governs.”). We, therefore, construe the term “effective amount” to mean “the amount of an herbicide required to achieve at least about 65% phytotoxicity of conventional rice (e.g., red rice) in field applications.” As explained further below, however, whether incorporated into the construction of “effective amount” or not, the claim language itself further requires that the “effective amount” encompass a specific range of amounts of herbicide and cause “less than 10%” injury to the mutant rice. See Ex. 1001, claim 1. We determine it is unnecessary to expressly construe any other claim terms for purposes of this Decision. See Wellman, 642 F.3d at 1361.” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateUnpatentable

    “labels is akin to relying on literature that clearly provides, on its face, the missing disclosure, as in Falkner. Id. On the contrary, Patent Owner’s argument makes clear that the herbicide labels, by themselves, are insufficient to describe the claimed range limitation. Specifically, because the label ranges do not align with the claimed ranges, Dr. Somers had to make additional assumptions and inferences to support Patent Owner’s written description argument. For example, to calculate the potential effective amount range of herbicides, Dr. Somers applied several different “rules of thumb,” none of which are disclosed in the Mankin specification. See Ex. 2036 ¶¶ 34, 54. According to Dr. Somers, to determine the effective amount for a plant with an unknown response to an herbicide, a POSITA “would naturally test the lowest label (1X) rate of the herbicide, along with a few rates below (starting at about half-X) and above the 1X rate (up to 4X) of the herbicide, to determine the effective dose for this ‘uncharacterized’ plant.” Id. ¶ 34. Dr. Somers refers to this as a “dose response analysis.” Id. ¶ 53. In other words, to determine what the actual effective amount of herbicides should be, Dr. Somers explains that a POSITA would have to test the plants at these “rule of thumb” amounts to determine the effective range. Id. ¶ 34. Given the additional assumptions and inferences that must be made to the herbicide labels to arrive at the range limitations, we are not persuaded that relying on the extrinsic herbicide labels for written description support is proper in this case. That said, even if we were to allow Patent Owner to rely on the herbicide labels and the “rules of thumb” for determining the effective herbicide dose, Patent Owner admits that the ranges calculated from the herbicide labels are broader than the range limitations of the claims. See PO Resp. 39. As Petitioner notes, however, the Mankin Application does not provide any guidance as to whether the effective amount range of herbicide would include a 0.5x dose, a 2x dose, or the 4x dose, such that a POSITA could immediately discern the claimed range from the herbicide label.17 Pet. Reply 16.” slip op. at 30

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Dr. Somers, however, relies on the label for Fusilade II, which is a different fluazifop-P-butyl herbicide with a different range of 52.98–103.96 g AI/Ha, which—not surprisingly—aligns more closely with the claimed range of at least 56–150 g AI/Ha. Ex. 2036 ¶ 52. We note that Fusilade II does not appear to be one of the listed herbicides in Table 1, whereas Fusilade DX is. Ex. 2034 ¶ 219 (listing “Fusilade, Fusilade 2000, Fusilade DX, ICI-A 00009, ICI-A 00005, SL-236, IH-773B, TF-1169, and Fusion” as examples of synonyms and trade names for fluazifop-P-butyl). Regardless, that the dose range differs for the same herbicide calls into question the credibility of Dr. Somers’s assertion that a person of ordinary skill in the art would have been able to discern the claimed range limitation by simply looking at the EPA-approved herbicide labels (and applying his “rules of thumb”).18, 19” slip op. at 33

  Patent outcomesUS 11,096,345 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,096,345
• Samsung Electronics Co., Ltd. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · Mar 7, 2023 · IPR2021-01299 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1–11, 13, 14, 16, 17, 19, and 20 are unpatentable as obvious over the asserted combinations of Oba, Gillespie, and the respective additional references.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree that there is little or no material difference between these definitions. We are persuaded, on the present record, that Patent Owner’s proposal is consistent with the problems and solutions in the ’674 patent and prior art of record. We adopt Patent Owner’s definition of the level of skill. However, 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 neededOther

    “The parties propose no constructions. Pet. 5; PO Resp 9–10; Reply 3. Based on our review of the full record, we determine that no terms require construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms that are in controversy, and only to the extent necessary to resolve the controversy.”) (internal quotation omitted).” slip op. at 7

  • Strike new argumentNew argument consideredDecided for petitioner

    “We find that the Reply does not present improper new arguments. The Reply does not change the challenged ground; Petitioner maintains the obviousness of claims 1, 3–5, 8–14, 16–18, and 20 over Oba and Gillespie. Reply 3; Pet. 6. Petitioner also still proposes modifying Oba with the same touchscreen in Gillespie that it relies on in the Petition. Reply 4; Pet. 10. Rather than setting forth a new position, the Reply responds directly to Patent Owner’s argument that “Oba already provides robust user input capabilities and therefore would not introduce Gillespie’s complicated and expensive touchscreen.” PO Resp. 27; Reply 5–7. Specifically, the Reply provides responsive reasons why one of ordinary skill in the art would have introduced Gillespie’s touchscreen into Oba despite Oba already possessing other input capabilities. Reply 5–7. For example, Petitioner highlights Gillespie’s touchscreen functionality in Oba’s notebook, including displaying additional content to avoid obstructing or cluttering the main display, such as with auxiliary information and pop-ups. Id. at 7 (citing, e.g., Ex. 1071 ¶¶ 49, 53, 59, 77, 80–83, 85, 89, 91, 99–103; Ex. 1106 ¶¶ 5, 11). In so arguing, Petitioner’s Reply argument permissibly elaborates on the contention in the Petition that Gillespie’s touch screen “would have expanded Oba’s computer 51’s user input capabilities.” Pet. 11; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). As explained in the Petition, the combination “would have allowed the touch pad/panel to display information and provide mechanisms for a user of computer 51 to provide touch input to control functionalities of computer 51 and/or display 66.” Pet. 10 (citing Ex. 1002 ¶ 86). The Reply’s references to Gillespie’s touch pad functionality merely provide further examples of the “touch input to control functionalities of computer 51” discussed in the Petition. Reply 6. “It is unreasonable to hold petitioners to such a high standard that, if they choose to rely on one example . . ., they must either discuss all potential permutations . . . or risk waiving the opportunity to further discuss other relevant examples in their reply.” Apple Inc. v. Andrea Elec’s. Corp., 949 F.3d 697, 706 (Fed. Cir. 2020).” slip op. at 20

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

    “We have two general concerns with Patent Owner’s arguments. First, Patent Owner’s assertions are speculative. Although Patent Owner presents testimony that “implementing Gillespie’s touch screen 106 into Oba would (1) increase power consumption, (2) unnecessarily introduce complexity to Oba’s computer 51, (3) increase weight, (4) decrease reliability, and (5) would be very costly,” PO Resp. 32 (citing Ex. 2001 ¶ 104), Patent Owner does not quantify how much power consumption would increase, does not quantify vague qualities of increased “complexity” and “reliability,” does not quantify how much weight might increase, and presents no figures that would allow us to determine whether costs would increase. Such speculative arguments are therefore unpersuasive. Secondly, even if Patent Owner were correct that there are some disadvantages to adding Gillespie’s touch screen to Oba’ computer, we agree with Petitioner that there are tradeoffs or advantages in the proposed combination that would have led one of ordinary skill in the art to make it. Reply 10–14. We have discussed these advantages of adding Gillespie’s touchscreen to Oba at length above, including the ability to display additional content to avoid cluttering the main display, enhancing game controls, and including applications such as a calculator, magnification tool, and debugging tool. Ex. 1071 ¶¶ 89, 83, 85, 91, 99–100, 101–103; Ex. 1106 ¶¶ 5, 11. At the end of the day, Patent Owner does not argue that Gillespie teaches away from combining with Oba or that the combination would have rendered Oba inoperable. Patent Owner merely argues that Oba would be worse with Gillespie and disagrees that Gillespie provides any benefits. But weighing the benefits of the combination, both lost and gained, we determine that the advantages explained by Gillespie and Dr. Baker would have outweighed the (speculative) disadvantages described by Patent Owner and Mr. Credelle. See Winner Int’l Royalty, 202 F.3d at 1349 n.8; Ex. 1002 ¶¶ 20, 83–90, 99, 103; Ex. 1106 ¶¶ 5–10. Dr. Baker testifies that the advantages of having a second touchscreen display are numerous, such as providing an additional mechanism for a user to control computer functionalities, eliminating special dedicated LED status displays, displaying additional content to avoid obstructing or cluttering the main display, enhancing game controls, and including applications such as a calculator, magnification tool, and debugging tool. Ex. 1002 ¶ 86; Ex. 1106 ¶¶ 5, 11; Ex. 1071 ¶¶ 49, 53, 59, 77, 80–83, 85, 89, 91, 99–103. Weighing these advantages against the possible (but speculative) disadvantages of increased power consumption, increased complexity, increased weight, decreased reliability, and cost, we find that one of ordinary skill in the art would have viewed the advantages as motivating making the combination. Ultimately, we agree with Dr. Baker’s opinion that “a person of ordinary skill in the art would have been aware and had the skills and capabilities to design and implement a capacitive touchscreen for Oba’s touchpad using known and conventional configurations with form factors that minimized weight, power consumption, costs, complexity, and reliability issues.” Ex. 1106 ¶ 8. Dr. Baker testifies further testifies, and we agree, that these are “common design issues,” and one of ordinary skill in the art “certainly was capable of addressing them in the design when striving to achieve the benefits that would have been provided through enhanced functionalities like those Gillespie taught to such a person at the time.” Id.” slip op. at 28

  Patent outcomesUS 10,506,674 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,506,674
• Home Depot USA, Inc. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · Feb 14, 2023 · IPR2021-01369 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1, 11, and 13 are unpatentable as obvious over the respective combinations of Deese, Kuo, and Obeck; Deese and Kuo; and Okuno and Teshima.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art In determining the level of ordinary 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 petitioner

    “C. Claim Construction In this proceeding, the claims of the ’251 patent are construed “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b) (2001). 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).” slip op. at 7

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

    “a) Analogous Art To resolve whether art is analogous we must determine “(1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).” slip op. at 16

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

    “c) Reason to Combine As noted above, Petitioner contends one of ordinary skill in the art would have sought to add data signal preemption capabilities in Deese and Kuo because (1) Deese, Kuo, and Obeck are analogous art to the ’251 patent (i.e., are all in the field of lighting systems), (2) “[t]he need for signal preemption was well-known in the art,” and (3) Obeck expressly teaches that its use of a data receiver solves the need for signal preemption in traffic lights. Pet. 15–16. Petitioner contends one of ordinary skill in the art would have had a reasonable expectation of success in implementing Obeck’s data receiver and signal preemption method in Deese because Deese’s signal controller 70 is a “conventional” controller for selectively energizing the red, yellow, and green traffic lights and this is “precisely the same type of ‘regular signal control 71’ that Obeck teaches should be supplemented with 5:45–63; 1006, 6:36–48; Ex. 1002 ¶ 51).” slip op. at 23

  Patent outcomesUS 10,492,251 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,492,251
• Home Depot USA, Inc. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · Feb 14, 2023 · IPR2021-01367 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1, 3, 4, 5, 7, and 8 are unpatentable as obvious over the Deese-based grounds; the Board did not reach the Lys- and Worley-based grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “February 25, 2004, 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 light-emitting diodes (LEDs) and circuits in the context of lighting control systems.” Pet. 14 (citing Ex. 1002 ¶ 24). For purposes of this proceeding, Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art. PO Resp. 11. Upon review of the prior art of record and Petitioner’s arguments, we adopt Petitioner’s undisputed definition of a person of ordinary skill in the art for purposes of this Final Written Decision, as it is consistent with the disclosures of the ’551 patent and the prior art of record.” slip op. at 6

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

    “In the Institution Decision, we construed “driver” to mean “a program, circuitry, or device used to power other programs, circuits, or devices.” Inst. Dec. 14. We also asked the parties to address whether the term “mounted,” as used in independent claims 1 and 5, permits indirect contact between the various components and the reflective substrate. Id. at 32 n.11. Patent Owner contends the Board’s adopted construction of “driver” is too broad, but because the arguments presented in Patent Owner’s Response to do not turn on a narrower construction of “driver,” it does not propose an alternate construction of the claim term. PO Resp. 12–13. Patent Owner does not address the scope of the term “mounted” in its Response or ask that any other claim terms be expressly construed. Upon review of the parties’ arguments and supporting evidence, we adopt our previous construction of “driver” and determine that we need not construe any additional claim terms for purposes of this Final Written Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). We note, however, that we do provide” slip op. at 7

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

    “Kuo discloses a “high efficiency light” that uses LEDs to emit light, as well as different lenses to amplify the intensity of the light emitted from the LEDs. See Ex. 1013, 1:6–9. Although Kuo focuses primarily on using its light as a traffic signal, Kuo is not limited to this embodiment and broadly claims “[a] high efficiency light.” Id. at 3:14–4:23 (Compare claim 1 directed to “[a] high efficiency light,” with claim 2 directed to use of the light of claim 1 “as a signal light”). Thus, we find that Kuo is in the same field of endeavor as the ’551 patent, i.e., LED lighting systems. that Kuo meets the “reasonably pertinent” prong of the analogous art test. KSR instructs that “familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill in the art often will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. 398, 402 (2007). Given this instruction, the Federal Circuit has explained that when considering whether prior art is reasonably pertinent we must look beyond the primary problem the inventor was seeking to solve. See Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (explaining that in analyzing whether the prior art is reasonably pertinent we must construe the scope of analogous art “broadly”); see also Donner Tech., LLC. V. Pro Stage Gear, LLC, 979 F.3d 1353, 1360 (Fed. Cir. 2020) (explaining that the “reasonably pertinent” analysis must look to all of the problems to which the claimed invention relates, and must not be analyzed so narrowly as to effectively collapse the “field-of-endeavor and reasonablepertinence inquiries”). Here, although the ’551 patent is primarily focused on ways to efficiently drive LEDs using AC power, the ’551 patent is also concerned with methods of assembling an LED lighting system, including the use of: an insulating substrate, a heat sink, a reflective material on which to mount the LEDs, a lens for directing light, and a light changing or enhancing substance(s). Ex. 1001, 5:6–31, code (54) (noting that the ’551 patent is directed to both AC LED drive methods and an apparatus). Kuo expressly discloses the design of a housing that uses a lens and a light reflecting surface to maximize the light obtained from LEDs. These disclosures are reasonably pertinent to at least one problem the ’551 patent was intended to solve, e.g., what techniques and materials should be used to construct an analogous art to the ’551 patent under both prongs of the analogous art test.” slip op. at 15

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

    “5. Conclusion For the reasons set forth above, and upon review of the record as a whole, we determine that Petitioner persuasively identifies where Deese and Kuo teach or suggest every limitation of independent claims 1 and 5 of the ’551 patent. Petitioner also provides a reasoned explanation as to why one of ordinary skill in the art would have combined the teachings of Deese and Kuo to arrive at the subject matter of claims 1 and 5 with a reasonable expectation of success. Accordingly, Petitioner demonstrates by a” slip op. at 18

  Patent outcomesUS 10,154,551 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,154,551
• Home Depot U.S.A., Inc. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · Jan 27, 2023 · IPR2021-01368 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1, 4, 8, 11, and 16 are unpatentable as obvious over Grajcar and Walter; the Board did not reach the remaining grounds.

  RulingsFinal written decision

  • 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. 9 (citing Ex. 1002 ¶ 35). Patent Owner does not dispute the level of skill in the art. See PO Resp. 32 (referring to, but not disputing, Petitioner’s proposed level of skill). We are persuaded that Petitioner’s proposal is consistent with the problems and solutions in the ’783 patent and prior art of record. We adopt Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 5

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

    “1. “connection lead” Petitioner proposes only one construction, for the term “connection lead” in claim 17. Pet. 13–14. As Patent Owner disclaimed claim 17 and this term does not appear in the remaining challenged claims, we do not need to construe it. Ex. 2003.” slip op. at 6

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

    “2. “a switch configured to enable user selection” Prior to Institution, Patent Owner asserted that Petitioner applied an incomplete claim construction of the phrase “a switch configured to enable user selection.” Prelim. Resp. 19–22. Patent Owner contended that the switch must be “physical” and that a user must “be able to directly select an outcome.” Id. at 19. Our Institution Decision preliminarily construed “a switch configured to enable user selection of the different color temperatures of light” to permit a user to select the color temperature through direct or indirect use of the switch. Dec. 21. Patent Owner no longer disputes the construction of this term and applies our preliminary construction in its Response. PO Resp. 6. Having reviewed the complete record developed during trial, we determine that the record supports maintaining our preliminary construction of this term for the reasons set forth in our Institution Decision.” slip op. at 6

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

    “We view Petitioner’s combination to be sufficiently clear, setting forth sufficiently “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. Petitioner explains that “Grajcar discloses a switch (switch 2115) configured to enable user selection” and that “[t]o the extent [Patent Owner] argues that switch 2115 does not explicitly show ‘a switch configured to enable user selection,’ it would have been obvious to modify Grajcar by adding a switch that allows user input, as taught by Walter.” Pet. 26–27 (citing Ex. 1004, ¶¶ 107, 102–112, 192–195, Fig. 21; Ex. 1002 ¶¶ 72–73). This combination would have involved “integrat[ing] the LED circuits and switch of [Grajcar] Figure 21 with the LED bulb disclosed in Walter.” Id. at 21 (emphasis added). That is, the proposed combination simply aims to use Grajcar’s LED circuit in Walter’s bulb, so that Walter’s switch may actuate Grajcar’s LED circuit. See id. at 21–23, 27. Petitioner confirmed this position at the oral hearing, explaining, “so the proposed combination, looking again at Slide 13, it’s taking all of the circuits in [Grajcar] Figure 21 and putting them into the bulb of [Walter] Figure 2 where any user selection of color temperature is done using [Walter’s] Switch 170.” Tr. 11:20–23. Not only is Petitioner’s proposed combination sufficiently clear, but by arguing that Petitioner provides no “explanation of how the resulting combination would operate” or “what specific elements of Walter would be incorporated into Grajcar,” Patent Owner essentially attacks the Petition for not explaining how to bodily incorporate Grajcar into Walter. But “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Patent Owner’s bodily incorporation argument fails to undermine Petitioner’s persuasive showing. In any event, Petitioner contends, and Patent Owner does not dispute, that “[i]t would have been well within the skill of a POSITA to implement Grajcar’s LED light with the user interface of Walter,” as “[t]he circuits described in Grajcar and claimed in claim 1 are extremely basic.” Pet. 23; see also Ex. 1002 ¶ 66 (Dr. Lebby testifying the same).” slip op. at 15

  Patent outcomesUS 10,757,783 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,757,783

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.