- Semiconductor Components Industries, LLC D/B/A As On Semiconductor v. Power Integrations, Inc.All claims unpatentablePTAB · Feb 14, 2018 · IPR2016-01595 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 3, 6–8, 13, 25, 27, 29–31, 34, and 35 are unpatentable under § 103 over the stated combinations of Skatulla, Leman, the ’369 patent, Liaw, and Ichisa.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner’s argument ignores the functional nature of the claim elements. As to structure, representative claim 1 recites a control circuit and a switch coupled to the control circuit and the input terminals. As detailed above, Skatulla describes a structure with a control circuit and a switch. Thus, Skatulla meets this limitation. Claim 1 next recites two operating modes that perform specific functions. In the second operating mode “a capacitance coupled between input terminals of the input of the power converter is discharged through the switch to a threshold voltage in less than a maximum period of time from when the electrical power source is uncoupled from the input terminals of the power converter.” In the first operating mode “the control circuit is coupled to drive the switch to have a high average impedance.” Skatulla describes a device that performs these claimed functions. Ex. 1007, 6. To the extent a particular level of skill is required to carry out the claimed limitations, the level of skill required to carry out the same functions as described in Skatulla is no different. Thus, we are persuaded that to the extent a person of ordinary skill could implement the invention recited in representative claim 1, that same person could implement the design taught by Skatulla. We also are unpersuaded by Patent Owner’s arguments that Skatulla does not provide sufficient information for a person of ordinary skill to carry out the claimed invention. PO Resp. 21–22. For example, Patent Owner argues that Skatulla does not describe how terminal 3 of microcontroller U1 operates or how a programmed output of U1 applied to the gate terminal of transistor Q1 controls the switching. Id. at 21. Microcontrollers used to control analog circuits had been ubiquitous for years at the time of the claimed invention,and we find that a person of ordinary skill would have been capable of using a microcontroller to perform the simple task of comparing a voltage to a reference to detect mains disconnection or to drive a transistor, as described in Skatulla. Dec. to Inst. 18. We note this conclusion is supported by the testimony of Petitioner’s expert, Dr. Madisetti, that it was well known in the art that mixed signal microcontrollers including a digital microcontroller unit (MCU) as well as analog peripherals are well suited for performing functions, such as the voltage comparison mentioned by Skatulla, and that such controllers could be used to control switch mode power converters. Pet. Reply 8–9 (citing Ex. 1062, Supplemental Declaration of Dr. Vijay Madisetti (“Madisetti Suppl. Decl.”) ¶ 16, Ex. 1063, 1). Exhibit 1063 is application note AN1047 describing how to use the PIC16F785 MCU as a buck-boost LED driver. Although not cited as part of the challenge, application note AN1047 demonstrates that one of ordinary skill in the art would have known how to use an MCU as disclosed by Skatulla. Thus, we agree with Petitioner that it was not necessary for Skatulla to describe specific programming features of the microcontroller to teach the claimed invention to one of ordinary skill.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We are not persuaded by these arguments or Patent Owner’s contention that “[t]here is no comparator shown in Skatulla at all, much less an analog PWM comparator comparing two analog signals (i.e., feedback and a ramping oscillator signal).” PO Resp. 40 (citing Ex. 2010, Kelley Decl. ¶ 80). Given Skatulla’s explicit disclosure that an analog DC voltage indicative of the mains voltage is divided down and applied to an input of the microcontroller to be compared to a threshold, i.e., a well-known and simple function to implement either in analog hardware or using a microcontroller, we find that Skatualla discloses detecting removal of the AC source. We are persuaded by Dr. Madisetti’s testimony that mixed-signal microcontrollers typically included a digital MCU, as well as on-chip analog peripherals, that were well suited for performing functions like comparing a sensed voltage against a threshold and driving the power switch of a switching converter. Pet. Reply 20 (citing Ex. 1062, Supplemental Declaration of Dr. Vijay Madisetti, (“Supp. Madisetti Decl.”) ¶ 27; Ex. 1063, 1). Exhibit 1063 is application note AN1047 describing how to use the PIC16F785 MCU as a buck-boost LED driver. Although not cited as part of the challenge, application note AN1047 further demonstrates that one of ordinary skill in the art would have known how to use an MCU as disclosed by Skatulla. In view of Dr. Madiseti’s testimony, we are not persuaded by Patent Owner’s argument that a person of ordinary skill would not have combined a microcontroller with analog circuitry in the manner disclosed by Skatulla and Leman. We also note that Patent Owner’s arguments ignore the functional nature of the disputed limitations, i.e., a control function that switches from one operational mode when an AC source is present to a second operational mode to facilitate X capacitor discharged within a maximum period of time when the AC source is removed. Noting that the combination at issue merely combines Leman with the control functions taught by Skatulla, Petitioner notes that Patent Owner’s argument is based on a legally incorrect premise because “[i]t is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” Pet. Reply 18–19 (citing In re Mouttet, 686 F. 3d 1322, 1332 (Fed. Cir. 2012)).” slip op. at 25
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“For the reasons presented by Petitioner, we are not persuaded that the Petition should be barred under 35 U.S.C. § 315(b). Panels of the Board have interpreted this statute (and associated rule 37 C.F.R. § 42.101(b)) to mean, “it is only privity relationships up until the time a petition is filed that matter.” Synopsys, Inc. v. Mentor Graphics Corp., Case IPR2012-00042, slip op. at 12 (PTAB Feb. 19, 2014) (Paper 60); see also ARRIS Group, Inc. v. TQ Delta LLC, Case IPR2016-00430, slip op. at 6 (PTAB July 1, 2016) (Paper 9). We agree with the reasoning of those decisions. Patent Owner argues nothing in the statute “implies when privity/RPI status must exist, and general rules of statutory construction indicate that the present includes the future.” PO Resp. 48. According to Patent Owner, the “decision point” is the date of institution, not the date of filing. Id. Under Patent Owner’s interpretation, we should have denied institution of this Petition because Fairchild, barred under § 315(b), became a real party in interest on September 19, 2016 —several months before our Decision on Institution was entered on February 17, 2017. Id. at 49. Patent Owner concedes that it is unaware of any decisions addressing this particular issue. Id. We are not persuaded by Patent Owner’s argument that the result we reached in our Institution Decision is “contrary to statute.” PO Resp. 48. We do not perceive any such inconsistency. The statute in question, 35 U.S.C. § 315(b), suggests that privity must exist at the time the complaint was served. There is no allegation of privity at the time the complaint was served on Fairchild, in 2009, or that Petitioner controlled or could have controlled the lawsuit between Fairchild and Patent Owner. See Aruze Gaming Macau, Ltd. v. MGT Gaming, Inc., Case IPR2014-01288, 2015 WL 780607, at *8 (PTAB Feb. 20, 2015) (“In the context of § 315(b), the goal of the preclusion is to prevent successive challenges to a patent by those who previously have had the opportunity to make such challenges in prior litigation. As such, the focus of our privity inquiry is on the relationship between the parties during the prior lawsuit.”). Although not the exclusive factor for establishing privity, control of” slip op. at 33
- ExcludeMotion to exclude, deniedDenied
“We also are unpersuaded by Patent Owner’s argument that Petitioner did not properly request Exhibits 2015–2017 or seek additional discovery. Opp. To Mot. To Exclude 3–4. Routine Discovery includes “relevant information that is inconsistent with a position advanced during the proceeding.” 37 C.F.R. §42.51(b)(1), Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48761 (Aug. 14, 2012). Petitioner formally requested such information and explained in correspondence with Patent Owner that the information sought was within the ambit of routine discovery to the extent that it is inconsistent with Patent Owner’s positions advanced in this proceeding concerning the maximum period of time. Ex. 1066, Ex. 1067, 2. Patent Owner replied that the documents were not relevant and not inconsistent with any position Patent Owner has taken. Id. at 1. As discussed above, the documents were indeed relevant if Patent Owner intended to dispute that Dr. Kelley has testified that the details missing from the schematic, including the time/threshold information, were “insubstantial.” The documents were also the subject matter of routine discovery in light of Patent Owner’s position in this proceeding concerning non-obviousness of the claimed maximum period of time and Dr. Kelley’s still undisputed District Court testimony that looking at the schematic that Patent Owner argues has been recreated in the patent “ a person of ordinary skill would have understood that the intent of the circuit design was to discharge the X capacitor to a threshold (i.e. safe) voltage within a maximum amount of time when the power converter was unplugged, consisted (sic) with the safety standards in place at the time of conception.” Ex. 1015, 19 Patent Owner argues that “[t]hese exhibits are offered only to demonstrate the falsity of Petitioner and Petitioner’s expert’s assertion that Dr. Kelley did, in fact, use the word ‘insubstantial’ to describe an element of the claims.” Opp to Mot. To Exclude 3. Whether Dr. Kelley used the word “insubstantial” or not, we do not rely on that word and need not consider Exhibits 2015–2017 for the purpose of demonstrating that he did not use that expression. Instead, to the extent we rely on it at all, we rely only on Dr. Kelley’s undisputed testimony, which is but one factor in our assessment of the merits in this Decision. Dr. Madisetti’s testimony is based on the language in the District Court’s Memorandum Opinion that, incorrectly or not, states that “he [Dr. Kelley] opines that the missing elements are ‘insubstantial’ because they would have been understood by a person of ordinary skill in the art.” Ex. 1015, 19. There is nothing to support an assertion that Petitioner or Dr. Madisetti engaged in any mis-representation. Dr. Madisetti’s deposition transcript from page 81, line 15 to page 93, line 5 includes such questions as “Do you know what facts are?” (Ex. 2018 81:15) and asks him to explain “the difference between a true fact and a not true fact” (id. at 84:3–7). In the context of this proceeding, these questions were inappropriate harassment of the witness and the objections of Petitioner’s counsel were proper. We caution counsel and the parties to conduct further proceedings in a more civil tone.” slip op. at 41
Patent outcomesUS 8,115,457 unpatentable§ 103 obviousnessPatents in suitUS 8,115,457 - Semiconductor Components Industries, LLC D/B/A As On Semiconductor v. Power Integrations, Inc.All claims unpatentablePTAB · Feb 14, 2018 · IPR2016-01594 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1, 2, 9, 12, 14–19, 21–24, 26, and 28 are unpatentable as obvious over Sasaki, Skatulla, and the combination of Skatulla and Shirato.
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“For the reasons presented by Petitioner, we are not persuaded that the Petition should be barred under 35 U.S.C. § 315(b). Panels of the Board have interpreted this statute (and associated rule 37 C.F.R. § 42.101(b)) to mean, “it is only privity relationships up until the time a petition is filed that matter.” Synopsys, Inc. v. Mentor Graphics Corp., Case IPR2012-00042, slip op. at 12 (PTAB Feb. 19, 2014) (Paper 60); see also ARRIS Group, Inc. v. TQ Delta LLC, Case IPR2016-00430, slip op. at 6 (PTAB July 1, 2016) (Paper 9). We agree with the reasoning of those decisions.” slip op. at 30
- ExcludeMotion to exclude, deniedDenied
“We also are unpersuaded by Patent Owner’s argument that Petitioner did not properly request Exhibits 2015–2017 or seek additional discovery. Opp. To Mot. To Exclude 3–4. Routine Discovery includes “relevant information that is inconsistent with a position advanced during the proceeding.” 37 C.F.R. §42.51(b)(1), Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48761 (Aug. 14, 2012). Petitioner formally requested such information and explained in correspondence with Patent Owner that the information sought was within the ambit of routine discovery to the extent that it is inconsistent with Patent Owner’s positions advanced in this proceeding concerning the “maximum period of time” limitation. Ex. 1066; Ex. 1067, 2. Patent Owner replied that the documents were not relevant and not inconsistent with any position Patent Owner has taken. Id. at 1. As discussed above, the documents were indeed relevant if Patent Owner intended to dispute that Dr. Kelley has testified that the details missing from the schematic, including the time/threshold information, were “insubstantial.” The documents were also the subject matter of routine discovery in light of Patent Owner’s position in this proceeding concerning non-obviousness of the claimed “maximum period of time” and Dr. Kelley’s still undisputed District Court testimony that looking at the schematic that Patent Owner argues has been recreated in the patent, “ a person of ordinary skill would have understood that the intent of the circuit design was to discharge the X capacitor to a threshold (i.e. safe) voltage within a maximum amount of time when the power converter was unplugged, consisted (sic) with the safety standards in place at the time of conception.” Ex. 1015, 19. Patent Owner argues that “[t]hese exhibits are offered only to demonstrate the falsity of Petitioner and Petitioner’s expert’s assertion that Dr. Kelley did, in fact, use the word ‘insubstantial’ to describe an element of the claims.” Opp. To Mot. To Exclude 3. Whether Dr. Kelley used the word “insubstantial” or not, we do not rely on that word and need not consider Exhibits 2015–2017 for the purpose of demonstrating that he did not use that expression. Instead, to the extent we rely on it at all, we rely only on Dr. Kelley’s undisputed testimony, which is but one factor in our assessment of the merits in this Decision.” slip op. at 38
- Expert testimonyPatent owner expert discountedOther
“We are not persuaded by Dr. Kelley’s testimony that this time is indeterminate because Sasaki does not specify the values of the load, the resistors, and the capacitors. Ex. 2010 ¶ 42. First, Dr. Kelley’s statement that “it is only after light-emitting elements 26a and 26a transmit light and ‘thus the FETS within the photodetecting circuits turn ON’” appears to be inconsistent with Sasaki’s disclosure that the FETs turn ON when light emitting elements 24a and 26a cease transmitting light because VC24 has discharged. More importantly, for any given application, the range of load values is predictable and the corresponding values to be chosen to meet the relevant safety standard (i.e., to discharge the capacitors to the requisite level before the maximum time specified by the relevant safety specification) would have been a matter of design choice well within the level or ordinary skill. There is nothing to suggest that selecting the appropriate values for Sasaki’s circuit that detects removal of the AC power source requires any more skill than that required to select the values of the capacitors and resistors for Sasaki’s discharge circuit.” slip op. at 14
- Skill levelSkill level board ownOther
“LEVEL OF ORDINARY SKILL IN THE ART Petitioner’s expert, Dr. Vijay Madisetti, who taught engineering students at Georgia Institute of Technology at the time of the invention of the ’457 Patent, describes a person of ordinary skill as having a B.S. in 3 English Translation of Japanese Unexamined Patent Application Publication JP-A 2001-306160 by Keiji Shirato (Ex. 1004). Electrical Engineering or a related field with at least two years of experience in designing power electronics, or having an M.S. in Electrical Engineering or a related field. Ex. 1009, Declaration of Dr. Vijay Madisetti (“Madisetti Decl.”) ¶ 39. Patent Owner’s expert, Dr. Arthur Kelley, states that a person of ordinary skill would have had a bachelor’s degree in electrical engineering, physics, or a related discipline, and at least two to three years of relevant experience in the field of power electronics or similar circuitry and that additional education, such as an advanced degree in electrical engineering or a related field, might substitute for some of the experience, and substantial experience might substitute for some of the educational background. Ex. 2010, Declaration of Dr. Arthur Kelley, (“Kelley Decl.”) ¶ 16. We do not consider the level of ordinary skill proposed by Dr. Madisetti and Dr. Kelley to be materially different and our conclusions are the same applying either standard.” slip op. at 6
Patent outcomesUS 8,115,457 unpatentable§ 103 obviousnessPatents in suitUS 8,115,457 - Semiconductor Components Industries, LLC D/B/A On Semiconductor v. Power Integrations, Inc.All claims unpatentablePTAB · Feb 14, 2018 · IPR2016-01589 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 14–19 are unpatentable: claims 14–16 as obvious and claims 17–18 as anticipated and obvious, and claim 19 as obvious; the motion to amend is denied.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner’s witness, Dr. Kelley, testified “Stone is silent on its implementation, so it doesn’t actually tell you any of this is being done with current or any circuit structure.” Ex. 1030, Kelley Tr. 68:3–6. We agree. We determine that Stone studies the effect of modulating sequences on the resultant spectral power density of the square edged PWM waveform. Ex. 1020, 2, Figs 1–2. Stone’s disclosure of storing the modulation sequence for the frequency hopping spread spectrum in EPROM is not limited to any particular circuit implementation. Petitioner cites Dobkin as disclosing the relevant implementation— i.e., an implementation that reduces switching noise in a switched power regulator by generating a time varying secondary current to charge a capacitor that causes the output of VCO to vary the switching frequency of the regulator. Ex. 1004, 2:53–3:4. Dobkin varies the switching frequency by a constant amount, e.g., by 50 kHz between 75 kHz and 125 kHz, thereby spreading the noise over a broader spectrum. Id. Stone examines the effect of various switching frequency modulations. Referring to Patent Owner’s TNY256 device, Dr. Kelley testified, “you jitter somewhere around that baseline, but not very far” and “I think the prior reference Stone suggests varying the frequency very, very widely. And then if you read further on, it sort of confirms what I said about the practical difficulties in doing such an implementation.” Id. at 66:16–18, 67:21–68:3. Petitioner’s witness, Dr. Holberg, agrees with Patent Owner’s witness, Dr. Kelley, that Stone identifies potential problems of using large amounts of jitter and asserts that Stone provides a reason for a person of ordinary skill to select the low jitter embodiment of Stone. Ex. 1029, Holberg Suppl. Decl. ¶ 20 (citing (Ex. 1020, 4). Dr. Holberg further testified that a person of ordinary skill would have been motivated to adapt the magnitude of Dobkin’s primary and secondary current sources to implement Stone’s example of a small range of jitter. Ex. 1029, Suppl. Holberg Decl. ¶ 21. In view of the testimony of both Dr. Kelley and Dr. Holberg, we find that Petitioner has demonstrated that a person of ordinary skill would have been motivated to apply the teachings of Stone to jitter by a small amount the switching frequency in a power converter as configured by Dobkin, where the switching frequency is varied by changing a secondary current supplied to a circuit that drives a VCO by an amount less than the primary current.” slip op. at 12
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Petitioner responds that prior litigation concerned only claim 1 of the ’876 Patent, and Patent Owner has failed to show a nexus between the secondary considerations and the merits of the subject matter recited in claim 14. Pet. Reply 16–17. Petitioner argues that “any presumption of a nexus in the IPR is overcome by the fact that PO previously attributed the same evidence of secondary considerations to features of Claim 1 that are not present in Claims 14 or 17.” Id. at 16. Specifically, Petitioner contends that the “digital jitter” feature recited in claim 1 is not recited in claims 14 and 17. Id. at 17. Petitioner notes that Patent Owner’s Vice President of marketing, David Mathews, and Patent Owner’s expert, Dr. Kelley, both agreed that the counter and the digital to analog converter in claim 1 that are not recited in claim 14 make claim 1 digital. Id. at 17–18 (citing Ex. 1031, Transcript of Deposition of David Matthews (“Matthews Tr.”) 11:7–12:9; Ex. 1030, Transcript of Deposition of Dr. Arthur Kelley (“Kelley Tr.”) 59:20–60:16, 62:15–23). Petitioner further notes that, although Mr. Matthews stated he had no knowledge of patent matters and could not speak to the patent claims (Hrg.. Tr. 43:21–45:24), Dr. Kelley acknowledged that claims 1 and 14 are distinguished from each other because claim 1 recites a counter and a digital to analog converter that are not recited features of claim 14 (Pet. Reply 18). Thus, the very features Patent Owner relies upon to demonstrate non-obviousness of the invention recited in claim 1 are not features of the claims that are the subject of the challenges in this proceeding. In view of the above, we agree that the evidence is insufficient to show a nexus between the claimed subject matter and purported secondary or objective considerations as to claims 14–16. In consideration of the above, we are persuaded that there is insufficient persuasive evidence of objective considerations of non-obviousness for claim 14 and dependent claims 15 and 16. Having determined that Petitioner has demonstrated all the limitations of claims 14– 16 are taught in the prior art and that a person of ordinary skill would have been motivated to combine the references as discussed above, we conclude that Petitioner has shown by a preponderance of the evidence that claims 14 and 16 are unpatentable as obvious over Dobkin and Stone and that claim 15 is unpatentable as obvious over the combination of Dobkin, Stone and Manlove.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“The dispositive question is “whether one skilled in the art would reasonably understand or infer” that a reference teaches or discloses all of the elements of the claimed invention. In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991). 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. In re Petering, 301 F.2d 676, 681 (CCPA 1962), Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015); see also In re Preda, 401 F.2d 825, 826 (CCPA 1968) (noting that “in considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom”). We are persuaded by Petitioner’s arguments concerning Habetler. A conventional implementation of a triangle wave generator uses known VCO circuitry that responds to a voltage control signal—Petitioner notes that Danstrom, discussed in the Petition, discloses such an oscillator where internal charging current, and thereby the slope of the triangle wave, is controlled by an input voltage. Pet. Reply 5–6 (citing Ex. 1011, 3:38–55, fig. 2). Patent Owner points out that voltage summing circuits are well-known. PO Resp. 16–17. But the notation in Habetler is not a standard circuit diagram with a junction or node, where the sum of the incoming and outgoing currents are equal. Instead, Habetler’s description of the implementation in Figure 4 explicitly discloses summing voltages using the same notation in Figure 4 that Habetler uses in Figure 5. In view of Habetler’s explicit disclosure and use of identical notation in Figures 4 and 5, we agree that in Figure 5 Habetler illustrates a summing block, and that a person of ordinary skill could reasonably infer the use of a well-known voltage summing amplifier to implement this function to supply a control voltage to Habetler’s triangle wave generator. Thus, we are persuaded that Petitioner has shown Habetler discloses all the limitations of method claim 17. Claim 18 recites the further limitation of clocking a counter with the output of the oscillator. Figure 5 of Habetler, as shown in Petitioner’s annotations, includes a triangle generator and a peak detector used to clock a counter. Thus, we are persuaded that Petitioner has demonstrated that Habetler discloses the further limitation recited in claim 18. For these reasons, we find that Petitioner has shown by a preponderance of the evidence that claims 17 and 18 are unpatentable as anticipated by Habetler.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“CLAIM CONSTRUCTION In our Decision to Institute, we construed the term “cycling one or more secondary current [voltage] sources” to mean the application of secondary current [voltage] sources to generate a time-varying secondary 2 U.S. Pat. No. 5,929,620, issued Jul. 27, 1999 (Ex. 1004). 3 D.A. Stone, B. Chambers, D. Howe, Easing EMC problems in switched mode power converters by random modulation of the PWM carrier frequency, IEEE 1996 (Ex. 1020). 4U.S. Patent No. 5,699,024, issued Dec. 16, 1997 (Ex. 1016). 5 Thomas Habetler, Acoustic Noise Reduction in sinusoidal PWM Drives Using a Randomly Modulated Carrier, IEEE Transactions on Power Electronics, vol. 6, No. 3, July 1991 (Ex. 1019). 6 European Patent Application EP0321794A2, filed Dec. 8, 1988 (Ex. 1006). current [voltage] in a manner that repeats over time. Dec. to Inst. 17. As neither party disputes this claim construction, we apply the same construction in this Decision. No other terms require construction.” slip op. at 7
Patent outcomesUS 6,249,876 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,249,876 - Emerson Electric Co. v. IP Co., LLCAll claims unpatentablePTAB · Jan 9, 2018 · IPR2016-01602 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1, 2, 4, 5, 10, 11, 13, and 14 are unpatentable under § 103 as obvious over the stated combinations of Burchfiel, Schwartz, and Heart, with Online Encyclopedia for claims 2, 5, and 11.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties differ on the level of ordinary skill applicable to this case. Petitioner contends the person of ordinary skill “would have a minimum of a bachelor’s degree in Electrical Engineering and 2-3 years of experience in the development and design, or technical marketing, of radio communications and computer network systems, or the equivalent.” Pet. 11. Patent Owner’s expert, Dr. Almeroth, responds: “a person of ordinary skill in the art for the patent-in-suit would have the equivalent of a four-year degree from an accredited institution (usually denoted as a B.S. degree) in computer science, computer engineering or the equivalent and experience with, or exposure to, computer networks and routing. A person of ordinary skill in the art would also have approximately two years of professional experience with computer networking, routing, and wireless networks.” Almeroth II Decl. ¶ 74. Dr. Almeroth takes issue with Petitioner’s definition “since it does not specifically list Computer Science as a possible degree.” Id. at ¶ 78. We adopt Patent Owner’s slightly more inclusive definition. As the definitions do not differ substantially, however, under either we would reach the same result. C. Claim Construction” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“transmission paths from a particular client to the server. Pet. Reply 5–6. Petitioner responds that Patent Owner’s dictionary definition relates to “a physical map, not a structure for organizing data in mathematics or computer science.” Id. at 6. We agree with Petitioner that this particular definition of “map” is not pertinent to the subject matter of the ’516 patent, and therefore give Patent Owner’s argument based on this definition little weight. See id. If anything, the dictionary entry cited by Patent Owner supports Petitioner’s view that the construction of “map” should not be limited to multiple paths from one client. Thus, the second definition of “map” in the dictionary entry is not limited to multiple elements: “The correspondence of one or more elements in one set to one or more elements in the same set or another set.” Ex. 2001, 827 (“map,” definition 2; emphasis added). We deem this second definition, identified as pertaining to mathematics (“Math.”), to be more pertinent to the technology of the ’516 patent than that chosen by Petitioner. Nor are we persuaded by Patent Owner’s other argument, based on the reference in the ’516 patent claims to plural “paths.” PO Resp. 11–12. As Petitioner points out, claims 1 and 13 recite “changing the transmission path [singular] from the client to the gateway so that the path to the gateway is chosen.” Pet. Reply 6. We are, therefore, not persuaded by the arguments presented that the construction of this term in our Institution Decision requires modification. We therefore construe the term “map” as containing the paths or links to a node in the network, including a single path.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededOther
“We agree with Petitioner that this term needs no express construction. However, we determine that it is necessary to address Patent Owner’s proposed construction, as it is central to its defense to Petitioner’s challenge. Patent Owner’s construction of this term is related to its proffered construction of “map of data packet transmission paths,” discussed supra. According to Patent Owner, “[t]he claim language itself . . . requires the server to change the selection of a transmission path including an identification of an entire path from the client to the server.” PO Resp. 13 (emphasis added). We disagree with this interpretation. The claim uses the word “chosen,” not “select.” We agree with Petitioner that this is a significant difference, in that “chosen” does not necessarily imply a selection among alternative paths. Pet. Reply 7. Further support for this conclusion is found in our discussion of “map of data packet transmission paths,” supra. There, we conclude that “map” should not be limited to multiple paths from a client. See supra. In the same way, the claim language should not be construed as requiring choosing from a selection of alternative paths. Patent Owner points to a decision in which another panel of the Board, in IPR2015-01901, construed the word “select” in a “related patent.” PO Resp. 13–14. We are not persuaded by that decision that we are misconstruing the claims at issue here, which do not use the word “select.” In the context of the ’516 patent claims, we do not regard “chosen” as having the same meaning as “select.”” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We find that Petitioner has demonstrated that Burchfiel’s connectivity matrix meets this claim limitation. Pet. 35–35; 54. We are not persuaded by Patent Owner’s arguments in rebuttal. First, addressing the “plurality of descriptions” argument, we have construed the term “map” as not limited to storing multiple paths from one client to the server. Thus, Patent Owner’s argument calling for a “plurality of descriptions” of a path from a client to the server is contrary to our construction. Moreover, we are not persuaded that a map must contain the “entire path.” We have construed “map” as containing the paths or links to a node in the network, including a single path. See infra. Thus, the “entire path” argument fails for this reason alone. We find, however, that even under Patent Owner’s construction of map as requiring a “description of the entire path,” Burchfiel would meet this limitation. Ex. 1005, 246. Burchfiel teaches a map containing both the path from the station to the server and from the server to the station. According to Burchfiel, a connection table provides a map of path information: Once a station has labelled all PRU’s and established connections to them, the information for maintaining these connections is entered into the station’s connection table. This contains the status information described above for handling the connection protocol. Ex. 1005, 247 (emphasis added). As Petitioner points out, Burchfiel specifically describes these connections as “bidirectional.” Pet. Reply 9 (citing Ex. 1005, 246 (“Since most expected uses of the PRN will require bidirectional communication, the PRN connection is bi-directional.”)). Petitioner provides persuasive expert testimony to the effect that “it would have been obvious to recompute the route in both directions, to the extent not disclosed by Burchfiel, based on Burchfiel’s disclosure that, e.g., the ‘PRN connection is [a] bidirectional’ ‘data transmission path.” Geier II Decl. ¶ 69. We find that at the very least, therefore, Burchfiel’s reference to “bi-directional” connections suggests such a computation. “Even if a reference’s teachings are insufficient to find anticipation, that same reference’s teachings may be used to find obviousness.” CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1345 (Fed. Cir. 2017). We find based on the foregoing that Burchfiel’s disclosure would teach or suggest to a person of ordinary skill that the connection table stores bidirectional path information.” slip op. at 18
Patent outcomesUS 6,249,516 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,249,516 - On Semiconductor Corporation / Semiconductor Components Industries, LLC (D/B/A On Semiconductor) v. Power Integrations, Inc.All claims unpatentablePTAB · Sep 22, 2017 · IPR2016-00809 · APJ Daniel N Fishman · IPR · Final written decision
Claims 31, 32, 34, 38, 39, and 42 are unpatentable as obvious over Oda and Nakamura because the combination teaches the claimed features, including varying pulse frequency and on-time in the second feedback range.
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Panels of the Board have interpreted 315(b) (and our associated rule 37 C.F.R. § 42.101(b)) to mean that “it is only privity relationships up until the time a petition is filed that matter.” Synopsys, Inc. v. Mentor Graphics 5 Patent Owner entered the Merger Agreement into the record as Exhibit 2018. Corp., Case IPR2012-00042, slip op. at 12 (PTAB Feb. 19, 2014) (Paper 60); see also ARRIS Group, Inc. v. TQ Delta LLC, Case IPR2016-00430, slip op. at 6 (PTAB July 1, 2016) (Paper 9). Although not the exclusive factor for establishing privity, control of the requested review procedure is an important factor to establish privity in this context. Our Office Patent Trial Practice Guide explains that “[w]hether a party who is not a named participant in a given proceeding nonetheless constitutes a . . . ‘privy’ to that proceeding is a highly fact-dependent question.” 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012). “There are multiple factors relevant to the question of whether a non-party may be recognized as a . . . ‘privy.’” Id. “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” Id. However, it is recognized that there is no definitive test regarding the degree of participation required to establish such control and, hence, to establish a privity relationship. Id.” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Similarly, Patent Owner’s arguments regarding the Confidentiality Agreement (Ex. 2026) are insufficient to demonstrate that Fairchild exercised, or could have exercised, any control over this proceeding. PO Resp. 65. The mere exchange of unidentified confidential information and recitations of the Confidentiality Agreement that the parties could be joint defendants in the future, without more, do not provide sufficient evidence that Fairchild has exercised, or could have exercised, any control over this proceeding. Thus, the record lacks sufficient evidence to demonstrate even the opportunity to control this review and, thus, to establish privity between Petitioner and Fairchild.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In our Decision on Institution, we agreed with Petitioner that nothing in the claims or the specification of the ’079 patent limits the term “energy transfer element” to only transformers in a flyback architecture converter and, more specifically, nothing in the claims defines a particular direction of current flow through the terminals of the power switch. Dec. 15–16. Thus, we determined that, in accordance with the broadest reasonable interpretation, “energy transfer element” should not be construed so narrowly as to include only a transformer (flyback topology converter) and to exclude an inductor (buck topology converter). Id. at 16. Instead, we determined “energy transfer element” is at least as broad as to encompass either a transformer or an inductor as utilized in flyback and buck architecture power converters, respectively. Id. After considering all evidence and assertions anew, we discern no persuasive reason to alter our preliminary interpretation and conclude, for the reasons given in our Decision on Institution and this Decision, that “energy transfer element” is at least as broad as to encompass either a transformer or an inductor as utilized in flyback and buck architecture power converters, respectively. See id. at 14–16.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Thus, although we discern no need to expressly construe the phrase “corresponds to” as used in the claims, we determine “corresponds to” as used in the claims is at least as broad as to encompass non-overlapping first 9 Patent Owner’s narrow interpretation demands a one-to-one relationship between the feedback values and the pulse on-time values, i.e., a reversible function in mathematical terms. The ’079 patent Specification does not support such a narrow interpretation. and second ranges of feedback values corresponding to first and second ranges of on-time values regardless of overlap of feedback values in the first and second ranges of feedback values.” slip op. at 25
Patent outcomesUS 6,212,079 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,212,079 - Qualcomm Incorporated v. Bandspeed, Inc.Some claims unpatentablePTAB · Aug 23, 2017 · IPR2016-00623 · APJ James B Arpin · IPR · Final written decision
Claims 1–5, 8–12, 14–20, 23–27, and 29–31 are unpatentable under the asserted § 103 grounds; claims 13 and 28 were not shown unpatentable.
RulingsFinal written decision- Expert testimonyOther
“of a “clear” channel is “a channel that is not already in use by a non-frequency hopping communications system” and that the broadest reasonable interpretation of an “occupied” channel is “a channel that already is in use by a non-frequency hopping communications system.”” slip op. at 21
- Skill levelSkill level petitioner adoptedOther
“would have a B.S. degree in Electrical and/or Computer Engineering, or an equivalent field, as well as at least 3-5 years of academic or industry experience in the wireless communications field.” E.g., 620 Pet. 11 (citing 620 Ex. 1002 ¶¶ 10–13); see 620 Ex. 1002 ¶ 14. Patent Owner and Patent Owner’s declarant, Dr. Melendez,7 adopt this assessment for purposes of this proceeding. PO Resp. 5–6; Ex. 2001 ¶ 29. We note that both Petitioner’s declarant and Patent Owner’s declarant exceed this assessment (Ex. 1002 ¶¶ 3–8; Ex. 2001 ¶¶ 10–16) and are competent to testify regarding the lower assessment of a person of ordinary skill in the art, and, for purposes of this Final Written Decision and to the extent necessary, we adopt this assessment of a person of ordinary skill in the relevant art. slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Id. Thus, Petitioner argues that, because multiple tests must be applied to determine the continued presence of interference regardless of the source, limiting “occupied” to NFH communications systems is overly narrow. Nevertheless, the words chosen by the patentee to describe its invention have significance. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (“It is the applicants’ burden to precisely define the invention, not the PTO’s.”). As noted above, “occupied” is only used in the Specification with respect to NFH communications systems, and neither claims 4 and 19 nor their base claims nor the intervening claims specify a single or multiple tests. Therefore, we find Petitioner’s arguments, which attempt to incorporate the teachings of “bad” and “good” channels from elsewhere in the Specification into the interpretation of these claim limitations, unpersuasive. See Intervet America, Inc. v. Kee-Vet Laboratories, Inc., 887 F.2d 1050, 1053 (Fed. Cir. 1989) (“[I]nterpreting what is meant by a word in a claim ‘is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.’”); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“4. Other Claim Terms For purposes of this Decision, we discern no other claim terms that require express interpretation. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (explaining that “claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (quoting to allow us to construe the terms “occupied” and “clear,” we relied less on Dr. Ding’s testimony regarding how a person of ordinary skill in the art would understand these terms. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’”). Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)); see PO Resp. 7.” slip op. at 21
Patent outcomesUS 8,873,500 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,873,500 - Qualcomm IncorporatedSome claims unpatentablePTAB · Aug 23, 2017 · IPR2016-00620 · APJ James B Arpin · IPR · Final written decision
Claims 1–5, 8–12, 14–20, 23–27, and 29–31 are unpatentable under the asserted § 103 grounds; claims 13 and 28 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“F. Assessment of Person of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the relevant art “would have a B.S. degree in Electrical and/or Computer Engineering, or an equivalent field, as well as at least 3-5 years of academic or industry experience in the wireless communications field.” E.g., 620 Pet. 11 (citing 620 Ex. 1002 ¶¶ 10–13); see 620 Ex. 1002 ¶ 14. Patent Owner and Patent Owner’s declarant, Dr. Melendez,7 adopt this assessment for purposes of this proceeding. PO Resp. 5–6; Ex. 2001 ¶ 29. We note that both Petitioner’s declarant and Patent Owner’s declarant exceed this assessment (Ex. 1002 ¶¶ 3–8; Ex. 2001 ¶¶ 10–16) and are competent to testify regarding the lower assessment of a person of ordinary skill in the art, and, for purposes of this Final Written Decision and to the extent necessary, we adopt this assessment of a person of ordinary skill in the relevant art.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “hopping sequence” (Claims 1, 14, 16, and 29 and others) In the institution decisions, we determined that, in light of the Specification of the ’500 patent, the broadest reasonable interpretation of the phrase “hopping sequence” is “the order in which the communications network hops among the set of frequencies.” E.g., 620 Dec. on Inst. 10–11 (citing 620 Pet. 11–12). Patent Owner does not contest this construction. PO Resp. 6–7. For the reasons set forth in the Decision on Institution in Case IPR2016-00620, we remain persuaded that Petitioner’s proposed construction is the broadest reasonable interpretation of the phrase “hopping sequence.”” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner also provides a persuasive rationale for combining the teachings of Dabak and Kockmann. Id. at 39–40. Petitioner asserts that they are both references directed to the same problem, namely, “to communication performance improvements through adapted frequency hopping to avoid channels disturbed by interference.” Id. at 40 (citing Dabak, Abstract; Kockmann, 2:49–3:20; 620 Ex. 1002 ¶ 113). In addition, according to Petitioner, a person of ordinary skill in the art would have had reason to modify the teachings of Dabak regarding the MSD technique in view of the teachings of Kockmann “to utilize multiple channels to communicate with the slave device over the subset of communication channels according to an adapted hopping sequence” in order to accomplish the shared goals of these references. Id. at 40 (citing 620 Ex. 1002 ¶ 113); see In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (“The normal desire of artisans to improve upon what is already generally known can provide the motivation to optimize variables such as the percentage of a known polymer for use in a known device.”). According to Petitioner, the combination of these teachings “is a simple use of known teachings to yield predictable results.” Id. (citing KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”)). Based on our review of Petitioner’s arguments and evidence, we find that Petitioner demonstrates that combined teachings of Dabak and Kockmann teach or suggest all of the limitations of independent claims 1 and 16 and find that a person of ordinary skill in the art would have had reason to combine the teachings of Dabak and Kockmann to achieve the methods of claim 1 and the devices of claim 16. See 620 Pet. 17–20, 33–35, 38–40, 48–49. We conclude that Petitioner has shown by a preponderance of the evidence that independent claim 1 would have been obvious over the combined teachings of Dabak and Kockmann. Moreover, because Petitioner’s arguments for the obviousness of independent claim 16 over Dabak and Kockmann rely on the arguments and evidence presented with respect to independent claim 1, we also conclude that Petitioner has shown by a preponderance of the evidence that independent claim 16 would have been obvious over the combined teachings of Dabak and Kockmann, as well as on its related challenges to dependent claims 2, 3, 5, 8, 9, 12, 14, 15, 17, 18, 20, 23, 24, 27, and 29–31. See 620 Pet. 25–26, 40 (claim 2; citing Dabak, 7:57–60, 8:1–2, Fig. 1; 620 Ex. 1002 ¶ 51, 52), 26–27, 40 (claim 3; citing Dabak, 2:39–40, 3:1–5, 3:50–54, 3:60–62; 620 Ex. 1002 ¶¶ 54, 55), 27–28, 42 (claim 5; citing Dabak, 7:57–67; 620 Ex. 1002 ¶ 57), 28, 44 (claim 8; citing Dabak, 2:58–59; 620 Ex. 1002 ¶ 59), 44–47 (claim 9; citing Kockmann, 7:44–47, 8:39–48; 620 Ex. 1002 ¶¶ 136, 137), 31, 47 (claim 12; citing Dabak, Fig. 3B; 620 Ex. 1002 ¶ 65), 31–32, 47 (claim 14; citing 620 Ex. 1002 ¶¶ 69–75, 152), 32–33, 48 (claim 15; citing Dabak, 3:1–5, 7:57–” slip op. at 31
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner contends, however, that the combined teachings of Dabak and Kockmann fail to teach or suggest all of the limitations of claim 4. In particular, Patent Owner contends that, “[a]s described in Kockmann, ‘disturbed’ does not in fact mean ‘occupied,’ but rather it only means that ‘[a] disturbed carrier frequency is thus a carrier frequency onto which a signal is modulated that exceeds a specific threshold.’” PO Resp. 14 (citing Kockmann, 6:43–49). Patent Owner contends that determining whether a channel is “occupied” “requires analysis beyond the measurements called for by Kockmann (i.e.[,] determining more than just the mere presence of a modulated signal ‘that exceeds a specific threshold,’ but rather whether its source was FH or NFH).” Id. at 15; see 620 Ex. 2001 ¶¶ 33–37. Initially, Petitioner again states that Kockmann discloses that “[d]isturbance thereby means that either a disturbance in the actual sense or an occupancy by some other transmitter is present.” Kockmann, 6:41–43 (emphasis added). Patent Owner contends, however, “that a channel ‘occupied’ by an NFH system and a channel ‘disturbed’ by another transmitter are somehow different because an occupancy determination requires additional ‘analysis.’” Reply 10. Nevertheless, we agree with Petitioner that Patent Owner does not show where the claims recite one type of analysis or prohibit another. Id. Thus, we find that the combined teachings of Dabak and Kockmann teach or suggest all of the limitations of claim 4. Petitioner’s arguments with respect to claim 4 apply equally to claim 19. Based on our review of the arguments and evidence, we conclude that Petitioner has established by a preponderance of the evidence that claims 4 and 19 would have been obvious over the combined teachings of Dabak and Kockmann.” slip op. at 34
Patent outcomesUS 8,873,500 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,873,500 - Texas Association Of Realtors v. Uber Technologies, Inc.All claims unpatentablePTAB · Aug 4, 2017 · IPR2016-00615 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–28 are unpatentable under § 103(a); the contingent motion to amend is denied because substitute claims are obvious and lack written-description support.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“II. ANALYSIS Petitioner bears the burden of proving unpatentability of the challenged claims, and that burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must establish the facts supporting its challenge by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Petitioner relies on the Declaration of Michael Goodchild, Ph.D. (Ex. 1010) and the Reply Declaration of Dr. Goodchild (Ex. 1020). Patent Owner does not rely on any supporting declaration or cross-examination testimony. Below, we discuss whether Petitioner has met its burden with respect to claims 1–28. A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Obviousness is resolved based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness,2 i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“First, Petitioner argues that based on the dictionary definition of “demarcate,” the broadest reasonable interpretation of “demarcating” is “‘to determine or mark off the boundaries or limits of’ something.” Id. (quoting Ex. 1013, RANDOM HOUSE WEBSTER’S UNABRIDGED DICTIONARY, (2d ed. 2001), 5); Ex. 1010 ¶¶ 35, 36. Next, Petitioner contends that the broadest reasonable interpretation of “delimiting” is “determining or marking off the boundaries or limits of something, such as by providing a perimeter line or highlighting.” Pet. 7; Ex. 1013, 4; Ex. 1010 ¶¶ 37–39. Petitioner reasons that the Specification provides examples of delimiting “via a perimeter line in any graphical way” and by highlighting. Pet. 7 (citing Ex. 1001, 6:34–39, 8:13–19). Patent Owner does not address these interpretations in its Response, but at oral hearing Patent Owner agrees that Petitioner’s interpretations were “a fair assessment.” Tr. 92:19–94:3. Patent Owner also responds that there was no substantive difference between the two terms – “demarcating” and “delimiting.” Id. at 93:19–29. Petitioner’s proposed interpretations for “demarcating” and “delimiting” are consistent with the claim language, written description of the ’045 patent, and the plain meaning of each term. We therefore interpret “demarcating” to mean “determining or marking off the boundaries or limits of something,” and interpret “delimiting” to mean “determining or marking off the boundaries or limits of something, such as by providing a perimeter line or highlighting.”” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art The parties do not argue in the Petition or Patent Owner Response that we should adopt a specific formulation regarding the level of ordinary skill in the art. Dr. Goodchild, however, testifies that a person of ordinary skill in the art at the time of the ’045 patent “would have had a Bachelor of Science degree (or its equivalent), and three years’ experience in the development, management, and use of geographic information systems and related geospatial technologies.” Ex. 1010 ¶ 14. Based on the record presented, including our review of the ’045 patent and the types of problems and solutions described in the ’045 patent and cited prior art, we agree with Dr. Goodchild’s assessment of the level of ordinary skill in the art and therefore adopt it for purposes of this Decision. As noted, we have also considered the cited references as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner also provides a persuasive rationale for combining the teachings of O’Clair and Tadman. Id. at 9–10, 14–15. Specifically, Petitioner contends both references are in “similar fields,” with both references referring to the mapping application Google Maps, and [a] person of ordinary skill in the art would have found it obvious and desirable at the time of the ’045 Patent’s filing to combine the features of Tadman into O’Clair to achieve, for example, the ability for a “user to conduct a joint query by using both spatial and non-spatial searches” and the other “advanced features” described by Tadman. Id. at 9–10 (quoting Ex. 1010 ¶¶ 50–51). As further explained by Dr. Goodchild, “[t]he combination of O’Clair’s systems and methods with Tadman’s teachings of polygon-based search would yield the predictable and desirable result of a GIS [geographic information] system which allowed a user to obtain search results located with a polygon-shaped area of interest.” Ex. 1010 ¶ 52; see also Tr. 17:17–19:19. In its Response, Patent Owner does not contest Petitioner’s rationale for combining features of Tadman and O’Clair, nor does Patent Owner challenge Petitioner’s rationale for combining any of the prior art. See Tr. 38:21–39:33 (counsel for Patent Owner agreeing lack of motivation to combine is not argued in the Patent Owner Response). We find persuasive Petitioner’s arguments as to why a person of ordinary skill in the art would have had reason to combine the references’ teachings in the manner asserted.” slip op. at 15
Patent outcomesUS 8,510,045 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 8,510,045 - LG Display Co., Ltd. / LG Electronics, Inc. v. Innovative Display Technologies LLCAll claims unpatentablePTAB · May 23, 2017 · IPR2015-00493 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 15 and 27 are unpatentable under § 103(a) as obvious over Pristash and over Kobayashi in combination with Pristash.
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. 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
- Skill levelSkill level petitioner adoptedOther
“relevant to the ’370 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 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“On this issue, however, we credit Dr. Escuti’s testimony over Mr. Werner’s. Dr. Escuti testified that he has over 16 years of experience in the fields of liquid crystal display technologies, backlight design, optical physics, and electronic materials. Escuti Decl. ¶ 5. In comparison, Mr. Werner testified that since 1971, he has not been involved in the design or engineering of liquid crystal displays or backlighting units. Werner Dep. 16:5–17. Mr. Werner was unable to say whether two light rays crossing paths in a light guide plate would be an example of mixing. Werner Dep. 80:17–81:8. Furthermore, at his deposition he would not provide an opinion as to whether Pristash discloses the transition region called for in the claims. Id. at 116:19–117:8. Instead of discussing what is disclosed in Pristash, Mr. Werner’s declaration focuses on alleged deficiencies in the Petition. Werner Decl. 39. Under our rules, expert testimony that does have a proper basis is entitled to little or no weight. 37 C.F.R. § 42.65(a). Dr. Escuti, on the other hand, does provide such an opinion, both in his declaration and at his deposition. Escuti Decl. ¶¶ 109–13; 131–33; Escuti Dep. 103:11–104:9. We find that Dr. Escuti’s qualifications and experience are superior to those of Mr. Werner, and that his testimony on this issue is more credible and helpful than Mr. Werner’s.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner provides detailed claim charts and expert testimony through the Escuti Declaration. Pet. 22–25; Escuti Decl. ¶¶ 67–70, 114–33. Through the claim charts and expert testimony, Petitioner asserts that Pristash discloses the challenged claims. Moreover, Petitioner contends that a person of ordinary skill “would have been motivated to combine elements of a particular embodiment [of Pristash] with other elements of other embodiments disclosed in Pristash for several reasons.” Pet. 11. Those reasons are set forth in the Petition. Id. at 11–12. In response, Patent Owner challenges the sufficiency of Petitioner’s proofs in several respects that we will discuss infra. We note, however, that most of the claim elements are undisputed. Patent Owner challenges Petitioner’s assertions only as to certain claim elements, and does not challenge Petitioner’s presentation of the rationale to combine various embodiments of Pristash. We have considered Petitioner’s proffered rationale in light of Pristash’s description of various disclosed embodiments as alternatives. See infra. We are persuaded, therefore, that Petitioner has set forth a convincing rationale for why a person of ordinary skill would have combined features from various embodiments of Pristash as discussed infra.” slip op. at 8
Patent outcomesUS 7,537,370 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,537,370 - Walgreen Co. / Ahold USA, Inc. et al. v. Advanced Marketing Systems, LLCAll claims unpatentablePTAB · May 11, 2017 · CBM2016-00012 · APJ Mitchell G Weatherly · CBM · Final written decision
Claim 9 is unpatentable as anticipated by Nichtberger and, independently, by Ovadia under 35 U.S.C. § 102(b).
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“must establish facts supporting its challenges by a preponderance of the evidence. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). In proceedings under the AIA, “the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326– 27 (Fed. Cir. 2008)) (discussing the burden of proof in AIA proceedings). “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). With this standard in mind, we address each challenge below.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Petitioner persuasively argues that we should apply the general rule that a preamble which merely recites an intended purpose for an apparatus does not limit the apparatus. Reply 2–3. The preamble of claim 9 recites, in pertinent part, a “distributed discount vehicle for use with a data processing system for tracking and processing a plurality of in-store discounts to potential purchasers of plural products during the checkout process.” Ex. 1001, 11:46–49. By its plain terms, the phrase “during the checkout process” modifies “for tracking and processing,” which in turn modifies the “data processing system.” As explained in Part II.B.1 above, claim 9 is directed to a “discount vehicle” and not to the “data processing system” that is recited in the preamble of claim 9. By its plain terms, therefore, at best, “during the addressing only “during the checkout process” from among phrases recited in the preamble). checkout process” describes an intended use of the unclaimed “data processing system,” namely, by stating when that system is intended to perform “tracking and processing . . . of in-store discounts.” For the same reasons, even if we were to accept Patent Owner’s argument that “during the checkout process” is limiting, the limitation would relate to when the unclaimed “data processing system” tracks and processes discounts, and not to when the “select code” was “selectively deactivated” for particular discounts. As Patent Owner acknowledges, the Specification describes a “computer” that deactivates discounts after the items are scanned and purchased, as follows: As promoted items listed on the MDV are scanned during checkout, the system flags these items as purchased and applies a discount to the price provided to the customer. The computer may thereafter deactivate the promotion for that product to insure that the MDV is not used again to duplicate the discount for the purchased item. The MDV, however, remains active to the extent promoted items were not purchased by the customer during this or previous shopping visits, and the time period set for the promotion has not expired (typically 45 to 90 days). PO Resp. 7 (quoting Ex. 1001, 10:20–29) (emphasis added). This portion of the Specification describes two events occurring “[a]s promoted items listed on the MDV are scanned during checkout,” namely, flagging items as purchased and applying a discount to the price. This passage also indicates that the data processing system with which the discount vehicle is used (i.e., the computer) may “thereafter deactivate” discounts. Thus, the Specification makes it clear that selective deactivation need not occur during checkout, as argued by Patent Owner, but may occur “thereafter.” Patent Owner also cites three other portions of the Specification as describing “what occurs during checkout,” but those portions fail to demonstrate that deactivation must occur “during the checkout process.” See id. at 4 (citing Ex. 1001, 4:43–47, 4:56–58, 5:1–9). The first and third cited portions describe the checkout process as using a Point-Of-Sale (“POS”) processor that may include a barcode reader and as involving “data processing performed locally within the retail outlet and/or remotely via network connections.” Ex. 1001, 4:43–47, 5:1–9. The second cited portion explains that the discount vehicle may include “coded data located in separate locations [other than a “single code”] for reading during the checkout process.” Id. at 4:56–58. We are not persuaded that these cited portions of the Specification” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). With this standard in mind, we address each challenge below. slip op. at 18
Patent outcomesUS 8,219,445 unpatentableClaim construction§ 102 anticipationPatents in suitUS 8,219,445
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.