• 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
• Netskope, Inc. v. Fortinet, Inc.Instituted
  PTAB · Apr 26, 2023 · IPR2022-01587 · APJ James P Calve · IPR · Institution

  The Board instituted inter partes review of claims 1–8 and 11–18 on all eight asserted obviousness grounds.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties substantially agree on the level of ordinary skill in the art. Consistent with these proposals, we adopt Petitioner’s proposal for purposes of this Decision, in addition to Patent Owner’s contention that a master’s degree in electrical engineering and/or computer science and one year of relevant experience also suffice. Based on the preliminary record, this level of ordinary skill appears to be consistent with the description of the relevant field and background art in the ’282 patent. See, e.g., Ex. 1001, 1:32–2:24.” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Dr. Mohapatra’s testimony evidences skilled artisans would have had a reasonable expectation of success in combining Nagayama and Crawford. Dr. Mohapatra testifies that Nagayama and Crawford describe improved content filtering systems for data transferred to an open network, and their overlapping objectives and technologies could complement one another to improve content filtering. Ex. 1002 ¶ 95. Dr. Mohapatra also testifies that Nagayama’s system “could be improved by including content-based filtering on a network service into a single policy” to expand the scope of the filtering rules to include parameters in a single filter rule. Id. ¶ 96. Dr. Mohapatra also testifies that Nagayama and Crawford filter network traffic for network services. Id. ¶¶ 119–125. Dr. Mohapatra testifies that skilled artisans know how to filter data at gateways for network services, watermarks, and other data using port numbers and packets. Id. ¶¶ 49, 54–61, 64–66, 70–73, 120. Petitioner cites Dr. Mohapatra’s testimony to support its contentions that skilled artisans could have combined Nagayama and Crawford with a reasonable expectation of success. Pet. 22–23 (citing Ex. 1002 ¶¶ 94–97), 35–37 (citing Ex. 1002 ¶¶ 119–122), 8–11 (citing Ex. 1002 ¶¶ 47–73). Patent Owner’s declarant, Dr. Black, testifies a skilled artisan would not have had a reasonable expectation of success in modifying Nagayama’s network security device (filtering means 60) to filter network traffic for network services and apply filter rules that are active for a network service due to the complexity of firewall systems and myriad design challenges. Ex. 2001 ¶ 45. We do not find this testimony persuasive at least because claims 1 and 11 do not claim a firewall of any particular configuration, much less one with any of the complex features and functions that Dr. Black discusses in his testimony.” slip op. at 26

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

    “Petitioner contends that no claim construction is needed except for the term “watermark.” Pet. 16. Petitioner asserts, “a watermark must include “(1) information indicative of one or more of a source, origin, owner, author of a document or a file, or a company identifier, and (2) a sensitivity level.” Id. at 17. Patent Owner does not dispute this construction but instead contends that the term need not be construed because it does not impact any pending dispute between the parties. See Prelim. Resp. 13. We do not rely on Petitioner’s proposed definition of watermark because an interpretation of this limitation is not necessary for resolving the parties’ dispute in this proceeding.” slip op. at 10

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,237,282
• 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
• Amazon.Com, Inc. / Amazon Web Services, Inc. et al. v. Almondnet, Inc.Institution denied
  PTAB · Apr 6, 2023 · IPR2022-01455 · APJ Lynne H Browne · IPR · Institution

  Institution was denied for claims 11, 13–16, 19, and 20 because Petitioner did not explain why a skilled artisan would combine Merriman’s alternative embodiments.

  RulingsInstitution decision

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

    “Regardless of whether an obviousness argument “is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference,” Petitioner must direct us to “a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan, 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). In this case, Petitioner does not make the required showing. See Pet. 26–29 (relying on both of Merriman’s embodiments to meet limitation 11.b,” slip op. at 17

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

    “We agree with Patent Owner that the Petition relies on two alternative embodiments for its invalidity theory without sufficient explanation of how or why a person of ordinary skill in the art would have combined these embodiments. See Prelim. Resp. 7–12. Merriman discloses a real time embodiment, wherein “the advertiser’s website reports activity in real [wherein] the advertiser’s web site keeps a user log file of visitor activity and reports the user log file back to the advertisement server.” Id. at 3:38– 41. In this latter embodiment, “[r]eporting of user log files may be by email or any other file transfer technique.” Id. at 3:41–42. Merriman further discloses that the real time embodiment uses “spotlight tags placed on specific pages in the advertiser’s web site” to provide feedback of individual user’s activities in real time back to the advertising server 14, whereas the other embodiment provides “data accumulated in a user activity list” via email or a file transfer operation. Ex. 1003, 4:45–48, 4:51–54, Fig. 2. Throughout its specification, Merriman describes these embodiments as mutually exclusive alternatives. See, e.g. Ex. 1003, code (57), 3:35–43, 4:44–5:3, 5:33–54. The Petition, however, “overlooks or ignores Merriman’s clear distinctions and relies on aspects of both alternative embodiments.” Prelim. Resp. 11. Regardless of whether an obviousness argument “is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference,” Petitioner must direct us to “a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan, 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). In this case, Petitioner does not make the required showing. See Pet. 26–29 (relying on both of Merriman’s embodiments to meet limitation 11.b,” slip op. at 16

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

    “F. Discretionary Denial Under 35 U.S.C. § 325(d) As we have determined that Petitioner does not demonstrate a reasonable likelihood of prevailing for any claim on any ground, we need not consider whether application of the Director’s discretionary authority to deny institution in accordance with 35 U.S.C. § 325(d) is appropriate in this proceeding.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’582 patent “would have possessed at least a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 7– 8. (citing Ex. 1002 ¶¶ 30–34). Petitioner asserts further that “[a] person could also have qualified with more formal education and less technical 1 Merriman et al., U.S. Patent No. 8,566,154 B2, issued Oct. 22, 2013 (Ex. 1004) (“Merriman”). 2 Rosenberg et al., U.S. Patent No. 6,073,241, issued June 6, 2000 (Ex. 1005) (“Rosenberg”). definition of the level of skill at this time. Prelim. Resp. 5. For purposes of this Decision, we also adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 5

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,244,582
• Metacluster LT, Uab v. Bright Data Ltd.Instituted
  PTAB · Mar 23, 2023 · PGR2022-00052 · APJ Sheila F Mcshane · PGR · Institution

  Instituted PGR on claims 1–27; the Board found it more likely than not that the claims are obvious over Mithyantha, with claim 19 also challenged over Mithyantha and RFC 2616.

  RulingsInstitution decision

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

    “We may not institute a post-grant review “unless . . . the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Upon consideration of the arguments and evidence, we determine Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we institute a post-grant review of the challenged claims of the ’034 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had at least a bachelor’s degree in Computer Science or related field (or equivalent experience), and at least two years’ experience working with and programming networked computer systems.” Pet. 13 (referencing Ex. 1002 ¶ 33).” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for petitioner

    “The district court considered the issue of whether a client device, for instance, should be construed in a role-based or structural manner, and the evaluation included whether a device could sometimes be operated as a client and at other times could operate as something else. Ex. 1018, 48–51. In support, the district pointed the patent disclosure that: Any network element in the system may be a dedicated device that assumes only a single role, and thus being only a client (using tunnels), a tunnel, a client (using agents/ peers), an agent, or a peer device. Alternatively or in addition, a network element may be capable of assuming two or more roles, either at different times or simultaneously, from the list of roles including a client (using tunnels), a tunnel, a client (using agents/peers), an agent, or a peer device. Alternatively or in addition, a device may be capable of assuming all of the above roles. Ex. 1018, 50 (quoting ’866 patent at 125:33–42, with identical disclosure in ’034 patent (Ex. 1001, 125:24–33)).” slip op. at 10

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

    “At this stage of the proceedings, we do not agree that Mithyantha’s second appliance 200’/200b cannot be considered the claimed “second client device” and its first appliance 200/200a cannot be considered the claimed “third server.” As discussed supra Section II.C, we have adopted the district court’s constructions of claim terms. More specifically, the district court determined, and we concur based on the present record, that “client device” is “a device that is operating in the role of a client by requesting services, functionalities, or resources from other devices” and a “first server” functions as “a server that is not the client device.” On this record, Petitioner has demonstrated that Mithyantha’s second appliance 200’/200b functions as the claimed “second client device,” as it operates as a client by requesting services, functionalities, or resources from other devices, that is, it transmits HTTP web requests over the network to a server. See Pet. 44– 45. Mithyantha also discloses that its first appliance 200/200a functions in a server role, with appliance 200/200a sending back responses to client 102a, that is, content from the web server, and it is a separate element from a client device. See id. at 41–42. Moreover, as discussed above, Petitioner’s assertions are consistent with the role-based nature of the elements as disclosed in the ’034 patent. Further, we do not find that Petitioner’s applications of the claim elements to Mithyantha are arbitrary because they are consistent with the district court’s claim construction of the respective claimed elements and the elements’ functions and roles, as discussed. Moreover, Mithyantha discloses that its appliances can provide different functions (see e.g. Ex. 1009, 5:31–33, 8:65–67, 9:8–21, 9:53–55; 23:58–64), and may be implemented in many forms. That is, the implementation of appliance 200 is generally described as being on any form of computing device such as “computing device 100,” and “computing device 100 can be any workstation, desktop computer, laptop or notebook computer, server, handheld computer, mobile telephone.” See id. at 13:65– 142, 16:58–64. We do not agree with Patent Owner’s allegations regarding a required architecture. Patent Owner does not explain how these requirements are recited in the limitations of claims. Instead, at this juncture, it appears that the arguments are an attempt to impermissibly introduce limitations into the claim that are not recited. Similarly, we do not agree with Patent Owner’s arguments on required anonymity because this requirement is not recited in the claims.” slip op. at 18

  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · KSR · Graham
  Patents in suitUS 11,272,034
• Amazon.Com, Inc. / Amazon Web Services, Inc. et al. v. Almondnet, Inc.Institution denied
  PTAB · Mar 21, 2023 · IPR2022-01454 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–9, 11–14, 16, 17, 19, or 20 obvious over the asserted prior art.

  RulingsInstitution decision

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

    “6. Conclusion Claims 1 and 11 In sum, after considering the arguments presented in the Petition and Patent Owner’s Preliminary Response, we determine that, for the reasons given, Petitioner has failed to demonstrate sufficiently that Mayadas and Katiyar teach or suggest independent claims 1 or 11. Therefore, Petitioner has not demonstrated a reasonable likelihood of prevailing on this challenge to claim1 or 11, or to their dependent claims 4–9, 13, 14, 16, 17, 19, and 20. 7. Dependent Claims 2 and 3 Petitioner’s challenge to these dependent claims relies on Mayadas in combination with Katiyar and Rosenberg. Pet. 61–63. These claims depend from claim 1, and therefore they incorporate disputed claim element 1.c discussed supra, in Section III.E.5. Petitioner’s analysis of these claims therefore relies on Mayadas for the terms disputed by Patent Owner. Rosenberg is cited for the limited teaching of “automatically placing a tag (cookie) without any expression of the visitor’s consent to divulge information.” Pet. 62. For the reasons given in Section III.E.5, therefore, we determine that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge to claims 2 and 3.” slip op. at 23

  • PTAB / AIA Trials › Discretionary denialNot reached

    “IV. DISCRETIONARY DENIAL Patent Owner contends that the Board should exercise its discretion to deny the Petition under 35 U.S.C. § 314(a). Pet. 21–35. Because we have determined that the Petition does not succeed on the merits, we do not need to address the issue of discretionary denial.” slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “According to Petitioner, a person of ordinary skill in the pertinent art “would have possessed at least a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 8 (citing Menascé Decl. ¶¶ 30–34). Petitioner adds that “[a] person could also have qualified with more formal education and less technical experience, or vice versa.” Id. Patent Owner does not provide a description of the person of ordinary skill. For this decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner as consistent with the prior art before us in this proceeding. C. Claim Construction” slip op. at 7

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

    “We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner states that “[f]or the purposes of this Petition, the challenged claims are interpreted according to their plain and ordinary meaning.” Pet. 9. Patent Owner contends that Petitioner has argued for construction of multiple terms of the ’586 patent in parallel district court litigation, and that Petitioner “does not explain how [Petitioner’s] theories in this IPR are consistent with its district court arguments for how these terms should be construed.” Prelim. Resp. 10. But Patent Owner asserts that “[t]his Preliminary Response does not depend on any express claim constructions, and institution should be denied regardless of claim construction issues.” However, “Patent Owner reserves its right to identify terms requiring construction in the event this IPR is instituted.” Id. We determine that no claim terms are in controversy. Therefore, no other claim term needs to be construed at this stage. See Vivid Techs., Inc., 200 F.3d at 803.” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,244,586
• 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
• Meta Platforms, Inc. v. Almondnet, Inc.Institution denied
  PTAB · Mar 2, 2023 · IPR2022-01480 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution because Roth and its combinations did not show a reasonable likelihood of establishing the challenged claims’ obviousness.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We therefore deny institution of inter partes review.” slip op. at 2

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

    “We agree with Patent Owner’s argument that Petitioner has failed to demonstrate that Roth teaches or suggests the claimed “third-party server computer” under our claim construction. In discussing claim construction, we concluded that there is a distinction in the challenged claims between the system performing the claimed process and the “third-party server computer” that is authorized to cause display of the advertisement in claim 1. See supra Section III.C. We concluded from the language of the claims and the prosecution history that the “third-party server computer” cannot be part of the recited “system comprised of one or more computers.” Id. We are persuaded that the Petition fails to establish that Roth’s web server system (identified by Petitioner as the “third-party server computer”) is distinct from the claimed “system comprised of one or more computers,” as is required by our construction. As discussed supra, in discussing the preamble the Petition identifies web server 310 and view server 320 (part of the alleged “third-party server computer”) as part of the “system comprised of one or more computers.” See Pet. 19. As Patent Owner points out, this is not an “isolated or accidental” oversight on the part of Petitioner. Prelim. Resp. 11. In Petitioner’s analysis of claim element 1(b), Petitioner contends that “[t]he HUD [historic user] data is thus ‘received by the computer system,’ i.e., by the system which includes view server 320.” Pet. 34 (emphasis and highlighting omitted) (quoted at Prelim. Resp. 12). Petitioner further argues that the web server computer system in Roth can be separate from the “other computers” in Roth, citing the first and second media properties and the bidding agents. Pet. 24. This argument also is unavailing. Our construction requires the “third-party server computer” to be separate from the “system comprised of one or more computers” recited in the preamble, which according to Petitioner includes servers 310 and 320. Id. at 19. Those computers are also part of the web server system in Roth (id. at 18) identified as the “third-party server computer” (id. at 20), and therefore, the web server system cannot be separate from the “third-party computer system.”” slip op. at 18

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner that construction of this term is necessary and we find that the claimed “third party server computer” in claims 1, 17, and 21 and their dependent claims must be different from the “system [comprised of]/[comprising] one or more computers” recited in the preambles of claims 1 and 21 and the “tangible computer-server device” recited in the preamble of claim 17.3 As Patent Owner points out, the language of the claims compels this construction. Prelim. Resp. 6–7. The Federal Circuit reminds us that “the Supreme Court made clear that the claims are ‘of primary importance, in the effort to ascertain precisely what it is that is patented.’” Phillips, 415 F.3d at 1312 (quoting Merrill v. Yeomans, 94 U.S. 568, 570 (1876)). Claims 1 and 21 recite that the “system” described in each claim’s preamble is programmed to “automatically . . . direct[], to a third-party server computer controlling advertising space on a second media property, indicia of a condition . . . for display of an advertisement.” Ex. 1001, 12:64– 3 We do not express an opinion as to whether the preambles are limiting. 13:1, 14:56–60. Claim 17 similarly recites that the “tangible computer-server device” described in the claim preamble is programmed to “automatically . . . direct[], to a third-party server computer controlling advertising space on a second media property, indicia of a condition . . . for display of an advertisement.” Id. at 14:17–21. If the third-party server computer were not separate from the “system [comprising of/comprising] one or more computers” or “tangible computer-server device,” the system or device would be directing indicia to itself. This is not a reasonable construction. “[T]he context of the surrounding words of the claim . . . must be considered in determining the ordinary and customary meaning of those terms.” Phillips, 415 F.3d at1314 (quoting ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003)).” slip op. at 10

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

    “IV. DISCRETIONARY DENIAL Patent Owner asserts that the Board should exercise its discretion to deny institution of inter partes review under 35 U.S.C. § 325(d). See Prelim. Resp. 13–26. Because we deny institution on the merits of Petitioner’s challenges to patentability, we need not address Patent Owner’s arguments urging denial of institution under § 325(d).” slip op. at 23

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,959,146
• Meta Platforms, Inc. v. Almondnet, Inc.Institution denied
  PTAB · Feb 2, 2023 · IPR2022-01262 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was obvious over the asserted Roth-based grounds.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We therefore deny institution of inter partes review.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “As Patent Owner points out, the language of the claim compels this construction. Prelim. Resp. 6–7. The Federal Circuit reminds us that “the Supreme Court made clear that the claims are ‘of primary importance, in the effort to ascertain precisely what it is that is patented.’” Phillips, 415 F.3d at 1312 (quoting Merrill v. Yeomans, 94 U.S. 568, 570 (1876)). Claim 37 recites that the “system” described in the preamble is programmed to “automatically direct[], to a third-party server computer controlling advertising space on a second media property, indicia of a condition for display of an advertisement.” Ex. 1001, 16:40–44. If the third-party server computer were not separate from the “system comprising one or more computers,” the system would be directing indicia to itself. This is not a reasonable construction. “[T]he context of the surrounding words of the claim . . . must be considered in determining the ordinary and customary meaning of those terms.” Phillips, 415 F.3d at1314 (quoting ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003)).” slip op. at 10

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

    “demonstrate that Roth teaches or suggests the claimed “third-party server computer” under our claim construction. In discussing claim construction, we concluded that there is a distinction in the challenged claims between the system performing the claimed process and the “third-party server computer” that is authorized to cause display of the advertisement. See supra, Section III.C. We concluded from the language of claim 37 and the prosecution history that the “third-party server computer” cannot be part of the “system comprising one or more computers.” Id. We are persuaded that the Petition fails to establish that Roth’s web server system (identified by Petitioner as the “third-party server computer”) is distinct from the claimed “system comprising one or more computers,” as is required by our construction. As discussed supra, in discussing the preamble the Petition identifies web server 310 and view server 320 (part of the alleged “third-party server computer”) as part of the “system comprising one or more computers.” Prelim. Resp. 10 (quoting Pet. 18). As Patent Owner points out, this is not an “isolated or accidental” oversight on the part of Petitioner. Prelim. Resp. 10. In Petitioner’s analysis of claim element 37(c), Petitioner contends that “[t]he HUD [historic user] data is thus ‘received by the system comprising one or more computers,’ i.e., by the system which includes view server 320.” Pet. 37 (emphasis and highlighting omitted) (quoted at Prelim. Resp. 10). Petitioner argues that the web server computer system in Roth can be separate from the “other computers” in Roth, citing the first and second media properties and the bidding agents. Pet. 23–24. This argument is unavailing. Our construction requires the “third-party server computer” to be separate from the “system comprising one or more computers” recited in the preamble, which according to Petitioner includes servers 310 and 320. Id. at 18. Those computers are also part of the web server system in Roth (id. at 17) identified as the “third-party server computer” (id. at 19), and therefore, the web server system cannot be separate from the “third-party computer system.” For the reasons given, we determine that Petitioner has failed to demonstrate a reasonable likelihood of prevailing on its challenge to claim 37 as obvious over Roth.” slip op. at 17

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

    “Because we deny institution on the merits of Petitioner’s challenges to patentability, we need not address Patent Owner’s arguments urging denial of institution under § 325(d).” slip op. at 20

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,671,139

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.