• LG Display Co., Ltd / LG Electronics, Inc. v. Innovative Display Technologies LLCAll claims unpatentable
  PTAB · Mar 1, 2016 · IPR2015-00489 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–3, 5–7, 9, 10, 13–15, 19, 21, 23–25, and 27 are unpatentable over Melby under § 103(a); claims 1, 2, 6, 7, 9, 10, 13–15, 19, 21, 23, 24, and 26 are unpatentable over …

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “name two real parties-in-interest: LG Electronics Inc. and LG Electronics U.S.A. Inc. PO Resp. 20–21. Patent Owner also contends that the Petition is barred under 35 U.S.C. § 315(b). Id. at 21–27. The same arguments were raised in Patent Owner’s Preliminary Response. Prelim. Resp. 26–34. We determined in our Institution Decision that Patent Owner failed to provide convincing evidence that LG Electronics Inc. and LG Electronics U.S.A. Inc. are real parties-in-interest. Paper 12, 5–6. We also determined that Patent Owner failed to provide sufficient evidence of a bar under § 315(b). Id. at 6–7. Patent Owner’s Response relies on the same evidence and arguments that we considered in our Institution Decision. For the reasons stated in our Institution Decision, we determine that Patent Owner fails to prove that the Petition does not name the real parties-in-interest or that it is barred under § 315(b). Paper 12, 5–7.” slip op. at 17

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “name two real parties-in-interest: LG Electronics Inc. and LG Electronics U.S.A. Inc. PO Resp. 20–21. Patent Owner also contends that the Petition is barred under 35 U.S.C. § 315(b). Id. at 21–27. The same arguments were raised in Patent Owner’s Preliminary Response. Prelim. Resp. 26–34. We determined in our Institution Decision that Patent Owner failed to provide convincing evidence that LG Electronics Inc. and LG Electronics U.S.A. Inc. are real parties-in-interest. Paper 12, 5–6. We also determined that Patent Owner failed to provide sufficient evidence of a bar under § 315(b). Id. at 6–7. Patent Owner’s Response relies on the same evidence and arguments that we considered in our Institution Decision. For the reasons stated in our Institution Decision, we determine that Patent Owner fails to prove that the Petition does not name the real parties-in-interest or that it is barred under § 315(b). Paper 12, 5–7.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have taken into account. In this determination, we were aided by expert testimony. According to Dr. Escuti, “a person of ordinary skill in the art relevant to the ’177 patent would have at least an undergraduate degree in physics, optics, electrical engineering, or applied mathematics AND 3 years of work experience (or a graduate degree) in a field related to optical technology.” Escuti Decl. ¶ 23. Mr. Werner does not take issue with this testimony, and in fact proposes a similar standard: In this declaration, I rely on the following definition of a person of ordinary skill in the art: “a person of ordinary skill in the art of the patents would hold an undergraduate degree in physics, material science, electrical engineering, or mathematics and have one or both of the following: (1) three or more years of work experience in a field related to optical technology; or (2) a graduate degree in a field related to optical technology.” Werner Decl. ¶ 36. We find that Mr. Werner’s definition is too limited, in that it does not include a person with an undergraduate degree in optics. We, therefore, do not accept his standard and adopt instead Dr. Escuti’s more complete definition.” slip op. at 7

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “credited on this issue. PO Reply 15. Specifically, Mr. Werner admitted that his testimony was intended to rebut the Petition, and, therefore, it was not necessary for him to determine whether Nakamura shows four continuous walls. Werner Dep. 141:1–16. Instead of discussing what is disclosed in Nakamura, Mr. Werner’s declaration focuses on alleged deficiencies in the Petition. Werner Decl. ¶¶ 54–55. Under our rules, expert testimony that does not have a proper basis is entitled to little or no weight. 37 C.F.R. § 42.65(a). Under the circumstances, we credit Dr. Escuti’s opinion on this issue over Mr. Werner’s. We determine that for the reasons presented by Petitioner, a person of ordinary skill would understand Nakamura’s holder shown in Figure 2 to have a back wall and continuous side walls. We conclude, therefore, that claims 1 and 15 are anticipated by Nakamura.” slip op. at 15

  Patent outcomesUS 7,384,177 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,384,177
• Google Inc. v. Visual Real Estate, Inc.All claims unpatentable
  PTAB · Feb 25, 2016 · IPR2014-01340 · APJ Beverly M Bunting · IPR · Final written decision

  Claims 1–4, 10, 11, 13–15, and 18 are unpatentable as anticipated by Di Bernardo and obvious over Di Bernardo and Kumar.

  RulingsFinal written decision

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

    “To begin with, Patent Owner’s arguments ignore the full phrase of claim 1 that we are construing. Indeed, their arguments focus on the term “positional data” in isolation, without the context of the rest of the claim. Claim 1 does not recite “positional data,” by itself, rather it recites that the “positional data” is “descriptive of the respective locations of each of the two or more images.” Thus, the claim language informs us that the “positional data” provides information about the “respective location” of the images being captured, not necessarily the subject matter of the images being captured. Moreover, we are not persuaded by Patent Owner’s unsupported attorney argument that camera position alone is insufficient to determine the location of the subject, and associate the composite image with a particular portion of the subject based on positional data. See Tr. 100:2–101:6. As for the specification, we agree with Petitioner that the passages of the specification cited by Patent Owner do not define expressly or implicitly the term “‘positional data’” as “data that is ‘indicative of where the subject matter of the images is located.’” Nor do these passages in the specification exclude the use of the camera location alone as indicative of the position of the subject matter being captured, as Patent Owner contends. Pet. Reply 3 (citing PO Resp. 10). In fact, the specification uses several different variations of “positional data.” For instance, in the Summary of the Invention section, the specification discusses how “positional data is recorded that is descriptive of a respective location of each of the two or more images.” Ex. 1001, 2:20–22. In that discussion, the specification provides different examples of such “positional data,” including latitude and longitude coordinates or the altitude of the camera. Id. at 2:22–27.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “A claim is anticipated if each limitation of the claim is disclosed in a single prior art reference arranged as in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). As recently reiterated by the Federal Circuit, “a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)). We analyze this ground based on anticipation in accordance with the above-stated principles in mind.” slip op. at 16

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

    “The Supreme Court has held that an obviousness evaluation “cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR, 550 U.S. at 419. Instead, the relevant inquiry here is whether Petitioner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. When describing examples of what may constitutes a sufficient rationale to combine, the Supreme Court elaborated that, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. As the Supreme Court further recognized, in many cases a person of ordinary skill “will be able to fit the teachings of multiple patents together like pieces of a puzzle,” recognizing that a person of ordinary skill “is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420–21.” slip op. at 34

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

    “Response that Di Bernardo itself teaches away from the use of 3D scene geometry and from determining a location of the actual subject. PO Resp. 20 (citing Ex. 1003 ¶ 8). As noted in the Decision on Institution, a reference teaches away from a claimed invention if it “criticize[s], discredit[s], or otherwise discourage[s]” modifying the reference to arrive at the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We will not, however, “read into a reference a teaching away from a process where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Now, with the record fully developed, we remain unpersuaded. Patent Owner is reading into Di Bernardo a teaching away where no such language exists. Although the Background of the Invention section in Di Bernardo discloses a need for a system that “should not require the reconstruction of 3-D scene geometry,” this disclosure, by itself, does not mean that teachings from Di Bernardo are incapable of being combined with Kumar’s system that requires 3-D geometry. See Ex. 1004 ¶ 8. We agree with Petitioner that the cited passages “specifically refer to prior art practices (considered to be ‘cumbersome and inefficient’ in 2000) of generating a high quality composite image due to a high image sampling density and reconstruction of 3D scene geometry—all of which relate to image quality of a final composite image, not to determining a location of an image.” Pet. Reply 20 (citing Ex. 1012 ¶¶ 17-18; Ex. 1005 ¶¶ 7–8). Moreover, as we determined in the Decision on Institution, and Petitioner agrees, the cited passages from the background of the specification of the ’800 patent do not mean that Kumar’s suggestion for improved location determination “is incapable of being implemented in Di Bernardo’s system or that a POSITA in 2007 would have avoided implementing Kumar’s suggestion.” Id. at 21 (citing Dec. on Inst. 18–20). As such, we conclude that Patent Owner has in essence read into each reference a teaching away where no such language exists.” slip op. at 31

  Patent outcomesUS 7,929,800 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,929,800
• Google Inc. v. Visual Real Estate, Inc.All claims unpatentable
  PTAB · Feb 22, 2016 · IPR2014-01338 · APJ Beverly M Bunting · IPR · Final written decision

  Claims 1 and 3–11 are unpatentable: claims 1, 3–5, 7, and 9 as anticipated by Yoichi; claims 6, 10, and 11 as obvious over Yoichi and Di Bernardo; and claim 8 as obvious over Yoichi …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. Petitioner’s expert witness, Dr. Fuchs, attests that a person with ordinary skill in the art in the relevant time frame would be an individual who possesses a combination of experience and education in computer science, computer graphics, and imaging technology. Ex. 1001 ¶ 14. According to Dr. Fuchs, this would consist of the following: (1) a minimum of a bachelor degree in computer science or a related engineering filed; and (2) 2–5 years of work or research experience in the field of computer science and its sub-field of imaging technology.2 Id. Additionally, we note that the prior art of record in this proceeding— namely, Yoichi, Di Bernardo, and Lachinski—is indicative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 7

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

    “In our Decision on Institution, we expressly construed the claim term “video drive-by data” as “street-level video data.” Dec. to Inst. 7. Patent Owner, in its Patent Owner Response, does not challenge expressly our construction of this term. Now, based on the full record developed during trial, we adopt our initial construction and analysis of “video drive-by data” for purposes of this Decision. Id. See Paper 12, 3 (“The patent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.”). We also determined in our Decision on Institution that there was no need to expressly construe the claim term “geographic location of interest” because Patent Owner’s narrow construction proposed in its Preliminary Response (i.e.,“a subject property in relation to parcel boundaries or a subject property at a specific street address”) was not supported by the specification, which uses the term “broadly and generically, and consistent with its plain and ordinary meaning.” Dec. to Inst. 8. In its Patent Owner Response, Patent Owner did not challenge expressly our construction of “geographic location of interest.” Nevertheless, Patent Owner’s arguments surrounding this claim term still rely upon the definition proposed in its Preliminary Response. See e.g., PO Resp. 36 (“Yoichi is not concerned with returning “images” from the actual “geographic location” that matches the “geographic location of interest.”). Based on the full record developed during trial, and for purposes of this Decision, our position and analysis regarding the claim term “geographic location of interest” remains unchanged.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “We agree with Petitioner that the corresponding structure that performs the claimed function may include any computer system programmed to perform the identified function.3 Cf. WMS Gaming, 184 F.3d at 1349 (“In a means-plus-function claim in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” (citation omitted)). In Eon Corp. IP Holdings LLC, the Federal Circuit confirmed that, on this point, WMS Gaming remains correctly decided and elaborated that: the disclosure of a general purpose computer or a microprocessor as corresponding structure for a software function does nothing to limit the scope of the claim and “avoid pure functional claiming.” [Aristocrat Techs. Australia Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).] As such, when a patentee invokes means-plus-function claiming to recite a software function, it accedes to the reciprocal obligation of disclosing a sufficient algorithm as corresponding structure. Eon Corp. IP Holdings, 785 F.3d at 623.” slip op. at 17

  Patent outcomesUS 7,389,181 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,389,181
• Google Inc. v. Visual Real Estate, Inc.All claims unpatentable
  PTAB · Feb 19, 2016 · IPR2014-01341 · APJ Michael R Zecher · IPR · Final written decision

  Claims 1, 2, 5, and 8–13 are anticipated by Fruh; claims 1, 2, 5, 8, 9, 11–13, and 16 are obvious over Fruh and Di Bernardo.

  RulingsFinal written decision

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

    “Given that the claim term “aligned” is a commonly understood word, we consult a general purpose dictionary to ascertain its meaning. See Agfa Corp. v. Creo Prods., Inc., 451 F.3d 1366, 1376 (Fed. Cir. 2006). Neither Google nor VRE provides a dictionary definition that would help us ascertain the meaning of this claim term. THE MERRIAM-WEBSTER DICTIONARY (New ed. 2005) defines “align” as “to bring into line.” Ex. 3001. Applying the broadest reasonable interpretation standard, we construe the claim term “aligned” to mean “brought into line.” We note, however, that “aligned” in the context of independent claim 1 does not require necessarily common and overlapping features in order to bring into line portions of two or more of the multiple 2-D image data sets in a dimension consistent with the continuum. This claim construction is consistent with 12 the ordinary and customary meaning of “aligned,” as would be understood by one with ordinary skill in the art in light of the ’396 patent. See, e.g., Ex. 1002, 7:1–8:2 (disclosing how some embodiments process image data by aligning or bringing into line some or all of the images to form a composite image).” slip op. at 12

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “Although the burden of persuasion with respect to the unpatentability of the challenged claims remains with Google, the burden of production of 13 demonstrating that the challenged claims of the ’396 patent are entitled to the earlier priority dates of the ’465 application, the ’708 application, and the ’707 application lies with VRE. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015). In its Patent Owner Response, VRE does not dispute that the earliest effective filing date of the challenged claims of the ’396 patent is February 21, 2008. We, therefore, discern no reason to address or alter our determination in this regard for the purposes of this Final Written Decision.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “VRE’s argument that Fruh does not disclose multiple data sets at a single point on a continuum is predicated on the following two notions: (1) the multiple 2-D image data sets must overlap the captured subject matter, such that a first image data set shares common subject matter with a second image data set; and (2) each image data set must be captured from a single point on a continuum. First, we are not persuaded by VRE’s argument that the multiple 2-D image data sets must overlap the captured subject matter, such that a first image data set shares common subject matter with a second image data set, because this argument is not commensurate in scope with the first “receiving” step at issue. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (stating that limitations not appearing in the claims cannot be relied upon for patentability). The disputed first “receiving” step simply recites, in relevant part, “receiving multiple two-dimensional image data sets of a subject.” Ex. 1002, 10:45–46. VRE does not direct us to, nor can we find, language in this step that requires receiving multiple 2-D image data sets 17 that overlap the captured subject, such that a first image data set shares common subject matter with a second image data set. We, therefore, decline VRE’s invitation to narrow the scope of this disputed step by incorporating an extraneous overlapping requirement.” slip op. at 17

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

    “The Supreme Court has held that an obviousness evaluation “cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR, 550 U.S. at 419. Instead, the relevant inquiry here is whether Google has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. When describing examples of what may constitute a sufficient rationale to combine, the Supreme Court elaborated that, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. Based on the record developed during trial, we are satisfied that Google’s rationales for combining the teachings of Fruh and Di Bernardo 31 suffice as articulated reasoning with rational underpinnings to justify the legal conclusion of obviousness. For instance, both Fruh and Di Bernardo disclose similar systems for generating visualizations of geographic locations from multiple 2-D images. Compare Ex. 1004, Abstract, 6, with Ex. 1005, Figs. 1, 2. To the extent Fruh does not teach the first “generating” method step recited in independent claim 1, Di Bernardo discloses a system that uses image and position sequences to synthesize acquired images of a geographic location to create a composite image of that location. See, e.g., Ex. 1005, 2:16–21 (disclosing “a computer-implemented system and method for synthesizing images of a geographic location to generate composite images of the location”), 5:46–48 (disclosing that “post-processing computer 28 uses the image and position sequences to synthesize the acquired images and create composite images of the location that was filmed”).” slip op. at 31

  Patent outcomesUS 8,078,396 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,078,396
• LG Display Co., Ltd / LG Electronics, Inc. v. Innovative Display Technologies LLCAll claims unpatentable
  PTAB · Feb 8, 2016 · IPR2014-01362 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–3, 5–7, 9, 10, 13–15, 19, 21, 23–25, and 27 are unpatentable as obvious over Melby; claims 1, 2, 6, 7, 9, 10, 13–15, 19, 21, 23, 24, and 26 are anticipated by Nakamura.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “name two real parties-in-interest: LG Electronics Inc. and LG Electronics U.S.A. Inc. PO Resp. 20–21. Patent Owner also contends that the Petition is barred under 35 U.S.C. § 315(b). Id. at 21–27. The same arguments were raised in Patent Owner’s Preliminary Response. Prelim. Resp. 26–34. We determined in our Institution Decision that Patent Owner failed to provide convincing evidence that LG Electronics Inc. and LG Electronics U.S.A. Inc. are real parties-in-interest. Paper 12, 5–6. We also determined that Patent Owner failed to provide sufficient evidence of a bar under § 315(b). Id. at 6–7. Patent Owner’s Response relies on the same evidence and arguments that we considered in our Institution Decision. For the reasons stated in our Institution Decision, we determine that Patent Owner fails to prove that the Petition does not name the real parties-in-interest or that it is barred under § 315(b). Paper 12, 5–7.” slip op. at 17

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “name two real parties-in-interest: LG Electronics Inc. and LG Electronics U.S.A. Inc. PO Resp. 20–21. Patent Owner also contends that the Petition is barred under 35 U.S.C. § 315(b). Id. at 21–27. The same arguments were raised in Patent Owner’s Preliminary Response. Prelim. Resp. 26–34. We determined in our Institution Decision that Patent Owner failed to provide convincing evidence that LG Electronics Inc. and LG Electronics U.S.A. Inc. are real parties-in-interest. Paper 12, 5–6. We also determined that Patent Owner failed to provide sufficient evidence of a bar under § 315(b). Id. at 6–7. Patent Owner’s Response relies on the same evidence and arguments that we considered in our Institution Decision. For the reasons stated in our Institution Decision, we determine that Patent Owner fails to prove that the Petition does not name the real parties-in-interest or that it is barred under § 315(b). Paper 12, 5–7.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have taken into account. In this determination, we were aided by expert testimony. According to Dr. Escuti, “a person of ordinary skill in the art relevant to the ’177 patent would have at least an undergraduate degree in physics, optics, electrical engineering, or applied mathematics AND 3 years of work experience (or a graduate degree) in a field related to optical technology.” Escuti Decl. ¶ 23. Mr. Werner does not take issue with this testimony, and in fact proposes a similar standard: In this declaration, I rely on the following definition of a person of ordinary skill in the art: “a person of ordinary skill in the art of the patents would hold an undergraduate degree in physics, material science, electrical engineering, or mathematics and have one or both of the following: (1) three or more years of work experience in a field related to optical technology; or (2) a graduate degree in a field related to optical technology.” Werner Decl. ¶ 36. We find that Mr. Werner’s definition is too limited, in that it does not include a person with an undergraduate degree in optics. We, therefore, do not accept his standard and adopt instead Dr. Escuti’s more complete definition.” slip op. at 7

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “credited on this issue. PO Reply 15. Specifically, Mr. Werner admitted that his testimony was intended to rebut the Petition, and, therefore, it was not necessary for him to determine whether Nakamura shows four continuous walls. Werner Dep. 141:1–16. Instead of discussing what is disclosed in Nakamura, Mr. Werner’s declaration focuses on alleged deficiencies in the Petition. Werner Decl. ¶¶ 54–55. Under our rules, expert testimony that does not have a proper basis is entitled to little or no weight. 37 C.F.R. § 42.65(a). Under the circumstances, we credit Dr. Escuti’s opinion on this issue over Mr. Werner’s. We determine that for the reasons presented by Petitioner, a person of ordinary skill would understand Nakamura’s holder shown in Figure 2 to have a back wall and continuous side walls. We conclude, therefore, that claims 1 and 15 are anticipated by Nakamura.” slip op. at 15

  Patent outcomesUS 7,384,177 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,384,177
• Vtech Communications, Inc. / Uniden America Corporation v. Spherix IncorporatedAll claims unpatentable
  PTAB · Feb 3, 2016 · IPR2014-01431 · APJ Joni Y Chang · IPR · Final written decision

  Claims 1–7 and 18 are unpatentable under § 103(a) over Figa and Martensson.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “The preambles of claims 1 and 18 recite essential structural elements of the claimed method pertaining to the cordless handset, base station, and memory device, rather than merely stating the purpose or intended use of the claimed method or apparatus. For instance, the recitation of “said memory device comprises first and second submemories” in the preambles of the claims sets forth the structural limitation that the first and second submemories are portions of the same memory device. Although the bodies of the claims recite first and second submemories, they do not recite a memory device, much less the structural relationship between the submemories and the memory device. It is apparent that the bodies of the claims do not recite the complete invention, and that the claim drafter of the ’599 patent chose to use both the preamble and the body of each claim to define the subject matter of the claimed method. See Bell Commc’ns Research v. Vitalink Commc’ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (noting that if the claim drafter “chooses to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the one the patent protects.” (emphasis in original)). Moreover, the recitation of a “cordless handset in user-interactive radio communication with an associated base station” in the preambles of 10 claims 1 and 18 describes a fundamental characteristic of the claimed method—namely, the handset referenced in the bodies of the claims is a cordless handset. The Specification states that “a principal objective of the present invention is to provide a digital data display in the cordless handset.” Ex. 1001, 1:51–53 (emphasis added). Essentially, the preambles of the claims recite structural elements that are important to the claimed invention. See Vizio, Inc. v. ITC, 605 F.3d 1330, 1340 (Fed. Cir. 2010) (“[T]he ‘for decoding’ language . . . is properly construed as a claim limitation, and not merely a statement of purpose or intended use for the invention, because ‘decoding’ is the essence or a fundamental characteristic of the claimed invention.”); Poly-America, L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303, 1309-10 (Fed. Cir. 2004) (“blown-film” in the preamble was limiting where the specification was “replete with references to the invention as a ‘blown-film’ liner” and described it as a fundamental characteristic of the invention). In consideration of the foregoing, we determine that the preambles of claims 1 and 18 are entitled to patentable weight.” slip op. at 10

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

    “supports its current proposed claim constructions. We observe that adopting those constructions would import improperly an extraneous feature into the claims—namely, “logically distinct portion of a physical memory.” It is well-settled that if a feature is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). More importantly, Spherix does not provide sufficient evidence or reasoning to overcome the 12 “heavy presumption” that a claim term carries its ordinary and customary meaning. See CCS Fitness, 288 F.3d at 1366.” slip op. at 12

  • Prior constructionPrior construction not adoptedDecided for petitioner

    “Although a district court’s interpretation of a claim term recited in the involved patent is instructive, we nevertheless are not bound by that construction. See Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015) (“There is no dispute that the board is not generally bound by a prior judicial construction of a claim term.”). We note that patent claims have a presumption of validity in a district court proceeding. In contrast, there is no presumption of validity in an inter partes review, and, therefore, we will not be applying a rule of construction with an aim to preserve the validity of claims. Further, we observe that the parties’ arguments and supporting evidence submitted here are different than those presented in the district court proceeding. For instance, Spherix argued in the district court proceeding that the claim elements “first processor means” and “second processor means” are not means-plus-function limitations.” slip op. at 7

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached

    “With regard to the issue of whether the “processor means” claim elements should be construed as means-plus-function limitations in this inter partes review, we observe at the outset that this claim construction determination does not affect the patentability determination of claims 1–7 18 and 18 of the ’599 patent, based on the prior art in this record. In other words, our determination on patentability of claims 1–7 and 18 of the ’599 patent is the same whether or not we adopt the District Court’s claim constructions as to these claim terms. For convenience, we reproduce those District Court’s claim constructions below (Ex. 2012, 104).” slip op. at 18

  Patent outcomesUS 5,581,599 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,581,599
• Vtech Communications, Inc. / Uniden America Corporation v. Shperix IncorporatedAll claims unpatentable
  PTAB · Feb 3, 2016 · IPR2014-01432 · APJ Joni Y Chang · IPR · Final written decision

  Claims 1–5 and 8–23 are unpatentable under § 103(a) over Pickering in view of Wood; claims 2, 3, 9–11, and 15–16 are also unpatentable over Pickering in view of Guan.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner

    “structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citations omitted). “Conversely, a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” Id. In other words, the preamble is regarded as limiting if it recites essential structure that is important to the invention or necessary to give meaning to the claim. NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1305–06 (Fed Cir. 2005). When the limitations in the body of the claim “rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).” slip op. at 6

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

    “Having considered the relevant portions of the District Court’s Claim Construction Order and the evidence in this record, we are persuaded that each of the “updating” claim phrases requires a comparison step. That being said, we nevertheless are not persuaded that the comparison step must include “comparing an entry in the local telephony directory with an entry in the updated telephony directory information,” as construed by the District Court. Ex. 2004, 89–90, 105 (emphases added). Notably, the Specification of the ’899 patent makes clear that the comparison step does not necessarily include such an entry-by-entry comparison. Ex. 1001, 6:34–42. As explained in the Specification, the directory update device determines whether a corresponding listing is present in the local directory by, “for example, using a simple filename comparison” or, alternatively, “a more complex comparison taking into account actual data values within the files.” Id. (emphases added). The District Court’s claim construction is based on the exemplary embodiments shown in Figures 5 and 12 of the ’899 patent. Ex. 2004, 86–88; Ex. 1001, 2:24–30, 2:42–44 (“FIG. 5 is an exemplary diagram of a graphical user interface for comparing a local directory listing and a directory server listing according to the present invention”), 2:62–63 (“FIG. 12 is a flowchart outlining an exemplary operation of the directory update device of FIG. 3”), 3:1–2, 12:35–47. Our reviewing court “has repeatedly cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015). “[I]t is the claims, not the written description, which define the scope of the patent right.” Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998); see also id. (“[A] court may not import limitations from the written description into the claims.”). Therefore, we decline to adopt the District Court’s claim construction that requires an entry-by-entry comparison because such a construction would import improperly a limitation from a preferred embodiment or specific example into the claims. Rather, in light of the Specification, we conclude that each of the “updating” claim phrases requires no more than a comparison step for determining whether there is a corresponding listing or entry in the local directory. The comparison step may encompass a filename comparison or other comparison methods for such a determination.” slip op. at 12

  • Prior constructionPrior construction not adoptedDecided for petitioner

    “Construction Order and the evidence in this record, we are persuaded that each of the “updating” claim phrases requires a comparison step. That being said, we nevertheless are not persuaded that the comparison step must include “comparing an entry in the local telephony directory with an entry in the updated telephony directory information,” as construed by the District Court. Ex. 2004, 89–90, 105 (emphases added). Notably, the Specification of the ’899 patent makes clear that the comparison step does not necessarily include such an entry-by-entry comparison. Ex. 1001, 6:34–42. As explained in the Specification, the directory update device determines whether a corresponding listing is present in the local directory by, “for example, using a simple filename comparison” or, alternatively, “a more complex comparison taking into account actual data values within the files.” Id. (emphases added). The District Court’s claim construction is based on the exemplary embodiments shown in Figures 5 and 12 of the ’899 patent. Ex. 2004, 86–88; Ex. 1001, 2:24–30, 2:42–44 (“FIG. 5 is an exemplary diagram of a graphical user interface for comparing a local directory listing and a directory server listing according to the present invention”), 2:62–63 (“FIG. 12 is a flowchart outlining an exemplary operation of the directory update device of FIG. 3”), 3:1–2, 12:35–47. Our reviewing court “has repeatedly cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015). “[I]t is the claims, not the written description, which define the scope of the patent right.” Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998); see also id. (“[A] court may not import limitations from the written description into the claims.”). Therefore, we decline to adopt the District Court’s claim construction that requires an entry-by-entry comparison because such a construction would import improperly a limitation from a preferred embodiment or specific example into the claims. Rather, in light of the Specification, we conclude that each of the “updating” claim phrases requires no more than a comparison step for determining whether there is a corresponding listing or entry in the local directory. The comparison step may encompass a filename comparison or other comparison methods for such a determination.” slip op. at 12

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

    “As evidenced by Wood, using an applet in a computer-telephony integrated system to facilitate the communication between a telephony device and network directory server, downloading updated information from the server, was well known in the art at the time of the invention. Ex. 1008, Abs, 2:28–30, 8:14–25, 8:45–65. Spherix does not provide sufficient or credible evidence that using an applet in Pickering’s computer-telephony integrated system would have been “uniquely challenging” or otherwise beyond the level of an ordinary skilled artisan. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).” slip op. at 32

  Patent outcomesUS 6,614,899 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,614,899
• Google Inc. v. Visual Real Estate, Inc.All claims unpatentable
  PTAB · Jan 25, 2016 · IPR2014-01339 · APJ Beverly M Bunting · IPR · Final written decision

  Claims 1 and 3–11 are unpatentable: claims 1, 3–7, and 9–11 as anticipated by Di Bernardo and obvious over Di Bernardo and Kawabe; claim 8 as obvious over Di Bernardo and Lachinski.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. Petitioner’s expert witness, Dr. Fuchs, attests that a person with ordinary skill in the art in the relevant time frame would be an individual who possesses a combination of experience and education in computer science, computer graphics, and imaging technology. Ex. 1001 ¶ 14. According to Dr. Fuchs, this would consist of the following: (1) a minimum of a bachelor degree in computer science or a related engineering filed; and (2) 2–5 years of work or research experience in the field of computer science and its sub-field of imagining technology. Id. Petitioner’s rebuttal witness, Dr. John R. Grindon, offers testimony as to the knowledge level of a person with ordinary skill in the art at the relevant time frame that is essentially the same as Dr. Fuch’s assessment. Ex. 1010 ¶ 12. Additionally, we note that the prior art of record in this proceeding— namely, Di Bernardo, Kawabe, and Lachinski—is indicative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 6

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

    “We also determined in our Decision on Institution that there was no need to expressly construe the claim term “geographic location of interest” because Patent Owner’s narrow construction proposed in its Preliminary Response was not supported by the specification, which uses the term “broadly and generically, and consistent with its plain and ordinary meaning.” Id. at 7–8. Patent Owner did not challenge expressly our construction of “geographic location of interest” during trial. Nevertheless, Patent Owner’s arguments surrounding this claim term were based on their proposed definition. See e.g., PO Response 27–28 (“Accordingly, as taught and claimed by ’181 Patent, and consistent with the Institution Decision, a geographic location of interest specified in a user query must be able to be limited to a street address.”). Based on the full record developed during trial, and for purposes of this Decision, our position and analysis regarding the claim term “geographic location of interest” remains unchanged.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “Here, it is unclear as to what limitation in the body of the claim, if any, would “refer back to” “server farm,” nor what “meaning and life” the recitation of “server farm” would add to independent claim 1. Patent Owner argued at oral hearing that: the video and data server farm includes at least one video data -- one video storage server that stores video image files containing video drive-by data that corresponds to geographic location; a database server that processes as data query received from the user over the Internet and corresponds to a geographic location; and an image server. Those are the three elements. When it says in the claim a video and data storage server comprising and then it gives those three elements as the composition, that’s perfectly consistent with saying that’s an important part of the claim. Id. at 48:20–49:9. Despite Patent Owner’s argument to the contrary, we observe that the body of independent claim 1 appears to recite a complete structure that includes the elements cited by Patent Owner of “at least one video storage server,” “a database server,” and “an image processing server.” Ex. 1002, 18:4–10. We further observe that the term “server farm” is not recited in the body of claim 1, nor in dependent claims 3–11. Thus, it does not appear to provide any antecedent basis support for any elements of the claims. Indeed, all the term “server farm” appears to do is to give a descriptive name to the set of limitations that completely set forth the invention. In such an instance, the preamble does not limit the claims. See IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000) (“The phrase ‘control apparatus’ in the preamble merely gives a descriptive name to the set of limitations in the body of the claim that completely set forth the invention. Its use does not limit the claims. . .”). For these reasons, we do not accord patentable weight to the recitation of “server farm” in the preamble of claim 1.” slip op. at 10

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “We agree with Petitioner that the corresponding structure that performs the claimed function may include any computer system programmed to perform the identified function. See WMS Gaming at 1339, 1349 (“In a means-plus-function claim in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” (citation omitted)). In Eon Corp. IP Holdings LLC, the Federal Circuit confirmed that, on this point, WMS Gaming remains correctly decided and elaborated that the disclosure of a general purpose computer or a microprocessor as corresponding structure for a software function does nothing to limit the scope of the claim and “avoid pure functional claiming.” [Aristocrat, 521 F.3d at 1336.] As such, when a patentee invokes means-plus-function claiming to recite a software function, it accedes to the reciprocal obligation of disclosing a sufficient algorithm as corresponding structure. Eon Corp. IP Holdings 785 F.3d at 623. Patent Owner’s efforts to limit the structure to the algorithms found in certain open source computer software is unavailing. Patent Owner does not point us to, nor have we found, where the specification of the ’181 patent adequately describes the algorithms used by the open source computer software. The mere disclosure of the name of the software is ineffective because “material incorporated by reference cannot provide the corresponding structure necessary to satisfy the definiteness requirement for a means-plus-function clause.” Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1301 (Fed. Cir. 2005) (citing Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1381 (Fed. Cir. 1999)). Instead, “[t]he inquiry under § 112, ¶ 2, does not turn on whether a patentee has ‘incorporated by reference’ material into the specification relating to structure, but instead asks first ‘whether structure is described in specification, and, if so, whether one skilled in the art would identify the structure from that description.’” Id. (quoting Atmel, 198 F.3d at 1381). We find that the only structure disclosed and linked to the recited function in this way are the structures identified by Petitioner. Thus, for the reasons discussed above, we do not agree with Patent Owner that the algorithm alone represents the requisite structure. Instead, based on the specification, claim language and evidence on the complete record before us, we adopt Petitioner’s proposed structures for the means-plus-function claim limitations recited in claim 7–10.” slip op. at 16

  Patent outcomesUS 7,389,181 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,389,181
• Spectrum Brands, Inc. v. Assa Abloy ABInstitution denied
  PTAB · Jan 15, 2016 · IPR2015-01563 · APJ Beverly M Bunting · IPR · Institution

  The Board denied institution for claims 1, 4, 6, 8, 10-14, 16-18, 22-25, 28-31, 33, and 34 because neither asserted §103 ground showed a reasonable likelihood of unpatentability.

  RulingsInstitution decision

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

    “Upon consideration of the information presented in the Petition, and for the reasons explained below, we determine that Petitioner has not established a reasonable likelihood that the challenged claims are unpatentable. Accordingly, we decline to institute an inter partes review of the challenged claims of the ’778 patent.” slip op. at 2

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

    “Petitioner does not provide sufficient articulated reasoning with rational underpinning explaining why one with ordinary skill in the art would modify the teachings of the applied references to address the noted differences. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). Petitioner’s observation that both references were published in the same year and are from the same field of endeavor falls short of an adequate rationale. The same field of endeavor analysis is merely the jumping-off point in the determination of whether a claimed invention is obvious. See K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (to qualify as prior art in an obviousness analysis, references must be analogous art—either from the same field of endeavor, or reasonably pertinent to the problem with which the inventor is involved). Moreover, as explained in KSR, “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Here, Petitioner’s arguments do not provide the required articulated reasoning with rational underpinning, based on the evidence, to support the legal conclusion of obviousness. Petitioner’s conclusory argument regarding the general feasibility of incorporating the features of Karkas into Nielsen do not explain adequately how or why a person of ordinary skill in the art would attempt to improve Nielsen by looking to Karkas. Thus, having considered Petitioner’s arguments, we are not persuaded Petitioner has provided an articulated reasoning with rational underpinning sufficient to support the legal conclusion of obviousness. 4. Summary” slip op. at 18

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

    “Having considered Petitioner’s argument in this regard, we are not persuaded that Petitioner’s articulated reasoning has a rational underpinning and is sufficient to justify the proposed combination of Nielsen and the knowledge of the POSITA. See Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013): Where, as here, the necessary reasoning is absent, we cannot simply assume that ‘an ordinary artisan would be awakened to modify prior art in such a way as to lead to an obviousness rejection.’ It is in such circumstances, moreover, that it is especially important to guard against the dangers of hindsight bias.” (citation omitted) See also KSR, 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”).” slip op. at 21

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,706,778
• LG Display Co., Ltd. / LG Electronics, Inc. v. Innovative Display Technologies LLCAll claims unpatentable
  PTAB · Dec 18, 2015 · IPR2014-01096 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 15 and 27 are unpatentable as obvious over Pristash and over Kobayashi in view of Pristash.

  RulingsFinal written decision

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

    “persuaded us that applying the Phillips standard would affect our determination of this case. In fact, throughout this proceeding, Patent Owner has taken no position on claim construction. Prelim. Resp. 4; PO Resp. 6. The only claim term the Board construed in its Institution Decision is the term “deformities,” appearing in both challenged claims. Paper 11, 4. It was Petitioner who asserted that the ʼ370 patent “expressly defines” the term to mean “any change in the shape or geometry of the panel surface and/or coating or surface treatment that causes a portion of light to be emitted.” Pet. 7 (citing Ex. 1001, col. 4, ll. 36–40). Patent Owner did not oppose that construction. Hearing Tr. 45:20–25. In fact, Patent Owner pointed out that the construction of “deformities” proffered by Petitioner was agreed to and adopted by the district court. PO Resp. 7; Hearing Tr. 47:7–15. Patent Owner’s counsel agreed at the oral hearing that the expiration of the ʼ370 patent has no impact on that construction. Id. at 47:1– 18. Nor does Patent Owner seek any other particular constructions in light of the ʼ370 patent’s expiration. Id. at 46:9–19. In short, Patent Owner points to nothing that would change if the Phillips standard were applied. In light of the foregoing, we see no reason to modify our previous construction of “deformities” based either on the expiration of the ʼ370 patent or positions of the parties as developed during the trial, and adopt that construction for this Final Written Decision. Nor do we see the need to make any further constructions of the claims for the purposes of this decision that would be affected by the expiration of the ʼ370 patent or the Phillips standard.” slip op. at 5

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

    “2. Analysis Petitioner contends that it would have been obvious to combine Pristash’s transition region with Kobayashi. Pet. 47. Petitioner asserts that this combination would have been obvious because “transition devices were known at the time for mixing and spreading light from the light source to the light guide.” Id. The Escuti Declaration (¶¶ 230–33) provides additional support for this contention.” slip op. at 22

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

    “We are not persuaded by Patent Owner’s arguments attempting to distinguish Pristash. Instead, we are convinced by Petitioner’s arguments, citations to the Pristash disclosure, and the testimony of its expert, Dr. Escuti, that Pristash describes a panel that meets this limitation. Specifically, Pristash, taken as a whole, discloses in Figures 5 and 6 the combination of prismatic deformities with other deformity types (e.g., lenticular) on the same side of the light emitting panel as this claim requires. We are supported also in this conclusion by the testimony of Mr. Werner, who agreed that a lens is a different type of deformity than a prism. Werner Dep. 111:12–17. At oral argument, Patent Owner’s counsel asserted that Pristash does not meet this limitation because prismatic surface 48 in Figure 6 is not a “deformity” as the claims require, but is itself the surface of the panel. Hearing Tr. 49:7–10. We are not persuaded by this argument. There is no requirement in the claims that the deformities be on separate surfaces, only that they be on the same side of the panel. Moreover, the ʼ370 patent specifically refers to “prismatic surfaces, depressions or raised surfaces of various shapes” as examples of light extracting deformities. Ex. 1001, col. 5, ll. 57–60. We credit also Petitioner’s evidence, summarized supra (which Patent Owner does not challenge), that the other elements of claim 15 are found in Pristash. We conclude, therefore, that Petitioner has demonstrated, by a preponderance of the evidence that claim 15 would have been obvious over Pristash.” slip op. at 15

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “D. Real Party-in-Interest Patent Owner contends that the Petition is insufficient for failure to name two real parties-in-interest: LG Electronics Inc. and LG Electronics U.S.A. Inc. PO Resp. 15. The identical argument was raised in Patent Owner’s Preliminary Response. Prelim. Resp. 18. We determined in our Institution Decision that Patent Owner failed to provide convincing evidence that LG Electronics Inc. and LG Electronics U.S.A. Inc. are real parties in interest. Paper 11, 16–17. Patent Owner’s Response relies on the same arguments and evidence that we considered in our Institution Decision. For the reasons stated there, we determine that Patent Owner fails to prove that the Petition does not name the real parties-in-interest.” slip op. at 24

  Patent outcomesUS 7,537,370 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,537,370

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.