- Commscope Technologies LLC. v. Belden Inc.All claims unpatentablePTAB · Dec 18, 2024 · IPR2023-01061 · APJ Kimberly Mcgraw · IPR · Final written decision
Claims 19, 20, and 22 are unpatentable as obvious over Yanagita, Jachimowicz, and, for claims 20 and 22, Gingue; alternative grounds were not reached.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedOther
“Based on the record before us and crediting this testimony by Mr. Cornelison, we agree that a POSITA would have understood that Yanagita” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Petitioner argues that a “person of ordinary skill in the art of the ’537 patent would have had a bachelor’s degree in electrical engineering and a minimum of 3–4 years of industry experience in connection with designing, manufacturing, and testing of twisted-pair data cables.” Pet. 14 (citing Ex. 1007 ¶ 12). Petitioner also argues an “individual with a master’s degree in electrical engineering would require less industry experience (e.g.,1–2 years).” Id. (citing Ex. 1007 ¶ 12). Patent Owner did not dispute this proposed definition prior to institution. See generally Prelim. Resp. In our Decision on Institution, we adopted Petitioner’s proposal. During the trial, neither party expressly disputed our definition of a POSITA or explicitly argued that the outcome of this case would differ based upon our adoption of any particular definition of a POSITA. See generally Pet. Reply; PO Resp. Upon review of the full record, we see no reason to modify, and we thus maintain, the definition of a POSITA applied in our Decision on Institution.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownPlain and ordinary meaningDecided for patent owner
“After institution, Patent Owner argued that the plain and ordinary meaning of twisted pairs requires “two insulated conductors twisted together around one another to form a balanced transmission line” as shown in Figure 4 of the ’537 patent. PO Resp. 13. Petitioner replied that Patent Owner’s addition of “balanced transmission line” to the Board’s preliminary construction is unnecessary as the dispute is whether the conductors of the asserted art are “twisted together” (i.e., twisted around each other) and that neither Petitioner nor Patent Owner dispute that if a pair of conductors are twisted around one another, they form a balanced transmission line. See Pet. Reply 1. Based upon a full record, we maintain our construction of the term “twisted pairs,” which both parties agree require a “pair of insulated conductors that are twisted together,” (i.e., “two insulated conductors twisted around each other”). We agree with Petitioner that no further construction of the term is required as there is no dispute between the parties that if a pair of insulated conductors are twisted together (i.e., two insulated conductors are twisted around each other), that they form a balanced transmission line. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“c) Motivation to Combine Based upon review of the full record, we determine Petitioner has articulated a sufficient reason a POSITA would have added the foamed polymer tape of Jachimowicz to Yanagita’s cable between core material 2 (separator) and at least one set of twisted pairs. See Pet. 40–42. In particular, Petitioner states that additing a foamed polymer tape to Yanagita’s separtor core material 2 would have been expected to improve the electrical perforamce of the cable by reducing the capitance between twisted pairs on one side of Yanagita’s separator and twisted pairs on the other side, thus reducing current leakage between them and reducing the transmission loss due to such leakage. Pet. 42 (citing Ex. 1007 ¶¶ 45, 139). Petitioner asserts that a POSITA would have been motivated to add a foamed polymer tape, such as Jachimowicz’s foamed polyethlyene tape to Yangida’s core, because it would have been expected to beneficially lower the dielectic contsant of the material between twisted pairs on either side of the separator due to the addition of low-dielectric constant foamed material. Pet. 42–43.” slip op. at 26
Patent outcomesUS 6,998,537 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,998,537 - Commscope Technologies LLC v. Belden Inc.All claims unpatentablePTAB · Dec 18, 2024 · IPR2023-01062 · APJ Kimberly Mcgraw · IPR · Final written decision
Claims 27–33 are unpatentable: claims 27–29 are anticipated by GmbH-866, and claims 30–33 are obvious over GmbH-866, Jachimowicz, and Gingue.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham, 383 U.S. at 17–18. Petitioner argues that a “person of ordinary skill in the art of the ’095 patent would have had a bachelor’s degree in electrical engineering and a minimum of 3–4 years of industry experience in connection with designing, manufacturing, and testing of twisted-pair data cables.” Pet. 11 (citing Ex. 1007 ¶ 13). Petitioner also argues an “individual with a master’s degree in electrical engineering would require less industry experience (e.g., 1–2 years).” Id. (citing Ex. 1007 ¶ 13). Patent Owner did not dispute this proposed definition prior to institution. See generally Prelim. Resp. In our Decision on Institution, we adopted Petitioner’s proposal. During the trial, neither party expressly disputed our definition of a POSITA or explicitly argued that the outcome of this case would differ based upon our adoption of any particular definition of a POSITA. See generally Pet. Reply; PO Resp. 7 Patent Owner does not rely on evidence of secondary considerations to support its patentability arguments. See generally PO Resp.; PO Sur-reply. thus maintain, the definition of a POSITA applied in our Decision on Institution.” slip op. at 9
- Expert testimonyPatent owner expert creditedDecided for patent owner
“To the extent Petitioner argues that Dr. Eldering does not meet the minimum qualifications of a POSITA, we disagree. First, our definition of a POSITA requires 3–4 years of industry experience for those holding only a bachelor’s degree and that less years of industry experience is required for those with additional education. Inst. Dec. 8–9. Dr. Eldering holds a Ph.D. in electrical industry and, thus, less than 3–4 years of industry experience is required. Moreover, Dr. Eldering’s declaration, testimony, and CV demonstrate that Dr. Eldering has many years of industry experience with twisted pair data cables. See, e.g., Ex. 2001 ¶ 13 (discussing his 1990–1993 industry experience with twisted wire pairs, including research regarding delivery of high-speed digital data services over twisted wire pair cable), ¶ 14 (discussing industry experience at General Instrument, including the development of products using twisted wire pair cable for distribution of voice signals), ¶ 15 (discussing additional industry experience including evaluation of crosstalk in systems using twisted pair wire cabling and optimizing modulation format), App’x A; Ex. 1070, 201:1–202:7. We thus determine that Dr. Eldering’s education and industry experience qualifies him to testify regarding the perspective of a POSITA. experience of Dr. Eldering, Petitioner does not allege that Dr. Eldering is not qualified to opine from the perspective of a POSITA and did not file an objection to Dr. Eldering’s testimony under 37 C.F.R. § 42.64(b) or a motion to exclude Dr. Eldering’s testimony under 37 C.F.R. § 42.64(c). See Kyocera Senco Industrial Tools Inc. v. International Trade Commission, F.4th 1369, 1376–77 (Fed. Cir. 2022) (stating that an expert witness in a patent case must have at least an ordinary skill in the art to offer expert testimony from the perspective of a skilled artisan). We address how much weight should be given to Dr. Eldering’s testimony, as well as to Mr. Cornelison’s testimony, throughout our Decision below.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownNo construction neededDecided for petitioner
“After institution, Patent Owner argued that the plain and ordinary meaning of “twisted pair of insulated conductors” requires “two insulated conductors twisted together around one another to form a balanced Petitioner replied that Patent Owner’s addition of “balanced transmission line” to the Board’s preliminary construction is unnecessary as the dispute between the parties centered only on whether the conductors of the asserted art are “twisted together” (i.e., twisted around each other) and that neither Petitioner nor Patent Owner dispute that if a pair of conductors are twisted around one another, they form a balanced transmission line. See Pet. Reply 1. Based upon a full record, we maintain our construction of the term “twisted pairs,” which both parties agree require a “pair of insulated conductors that are twisted together,” (i.e., “two insulated conductors twisted around each other”). We agree with Petitioner that no further construction of the term is required as there is no dispute between the parties that if a pair of insulated conductors are twisted together (i.e., two insulated conductors are twisted around each other), that they form a balanced transmission line. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“GmbH-866 discloses a first and second “twisted pair of insulated conductors” as required by claim 27. Anticipation is assessed from the perspective of a person of ordinarily skill in the art. Dayco Prods., 329 F.3d at 1368. The “dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching” that every claim element was disclosed in that single reference. Id. (quoting Baxter Travenol Labs., 952 F.2d at 390). Thus, the understand or infer that the “stranded” conductors in GmbH-866 constitute “twisted pairs,” not whether the term “stranded” or “stranding” conductors could have another meaning in another context.” slip op. at 21
Patent outcomesUS 6,570,095 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,570,095 - PTAB · Dec 13, 2024 · IPR2024-00896 · APJ Andreas Baltatzis · IPR · Institution
The Board instituted review of claims 25–29 on all petitioned grounds, finding a reasonable likelihood that the claims would have been obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review to be instituted unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-Reply, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of claims 25–29 of the ’120 patent, based on all of the grounds identified in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“raised in the petition and in the parallel proceeding.” Fintiv, Paper 11 at 12. Petitioner stipulates that “[i]f the PTAB institutes the pending IPR in IPR2024-00896 challenging the patentability of claims 25–29 of the ’120 Patent, then Samsung will not pursue as to the challenged claims any ground raised or that could have been reasonably raised in the IPR” in the co-pending district court litigation. Ex. 1046 (citing Sotera, Paper 12, 16–19) (emphasis added). Petitioner’s stipulation is not identical to that in Sotera and we decline to expand the categorical resolution of Fintiv outside the Director’s clear language. See Fintiv Guidance. Nevertheless, Petitioner’s stipulation here mitigates certain concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions. Thus, factor 4 weighs strongly in favor of not exercising discretion to deny institution.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“For this reason, we find there is a material difference between the asserted art (Li) and the prior art involved during examination (Xu). See Becton, Dickinson, 17–18. Additionally, we do not agree with Patent Owner that substantially the same argument—that Li teaches the “idle power consumption” limitation—was considered by the Examiner. Rather, the Examiner’s finding that the prior art did not teach the “idle power consumption” limitation in the reasons for allowance (Ex. 1004, 189) indicates the absence of overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art. See Becton, Dickinson, 17–18. Because there is a material difference between Li and Xu, and Li raises an issue not previously identified by the Examiner, we are not persuaded that the same or substantially the same art or the same or substantially the same arguments previously were presented to the Office.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“On this record and for the purposes of institution, we preliminarily adopt Petitioner’s interpretation of the plain and ordinary meaning of the claims as consistent with the intrinsic evidence. Specifically, we preliminarily interpret “idle power consumption” as including power consumption during which the transceiver may be waiting to send data, whether the transceiver is on or off. The ’120 patent Specification refers to idle time as time during which the transceiver may be waiting to send data, whereby “[e]ven if the idling transceivers turn off their transmission chains, some idle power may be consumed due to leakage current or other effects.” Ex. 1001, 2:60–66, 3:5–7. The ’120 patent does not appear to define “idle power consumption” as requiring the circuitry to be powered on while “waiting to send data” nor exclude circuitry that is powered off while claims. We invite the parties to further address this issue at trial.13” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,798,120 - Commscope Technologies LLC v. Belden, Inc.No claims unpatentablePTAB · Dec 11, 2024 · IPR2023-01056 · APJ Kimberly Mcgraw · IPR · Final written decision
CommScope did not prove claims 1–3, 9–14, and 16–18 unpatentable; the asserted anticipation and obviousness grounds failed on the barrier tape’s conductive material extending to the lateral edges.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“would have had a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in connection with designing, manufacturing, and testing of twisted-pair data cables,” and an “individual with a master’s degree in electrical engineering would require less industry experience (e.g., 1-2 years).” Pet. 15 (citing Ex. 1006 ¶ 12). Prior to institution, Patent Owner’s declarant asserted that a POSITA would have had at least a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in the telecommunications industry and disagreed that industry experience specifically with respect to twisted-pair data cables was necessary to qualify as having ordinary skill in the art. Ex. 2001 ¶ 26 (cited at Prelim. Resp. 22 n.6). Patent Owner stated, however, that any differences between the parties’ proposed definitions “are insubstantial and do not impact the analysis of the issues presented.” Prelim. Resp. 22 n.6. In our Decision on Institution, we adopted Petitioner’s proposal of a person of ordinary skill in the art (POSITA) as someone that “would have had a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in connection with designing, manufacturing, and testing of twisted-pair data cables,” and an “individual with a master’s degree in electrical engineering would require less industry experience (e.g., 1-2 years).” Inst. Dec. 7–8. During the trial, neither party disputed our definition of a POSITA nor argued that the outcome of this case would differ based upon our adoption of any particular definition of a POSITA. See generally Reply; PO Resp. 12 n.4 (agreeing the POSITA definition does not impact analysis of issues presented). Upon review of the full record, we see no reason to modify, and we thus maintain, the definition of a POSITA applied in our Decision on Institution.” slip op. at 10
- Expert testimonyDecided for patent owner
“Petitioner’s arguments are not persuasive. Mr. Cornelison’s testimony that a POSITA would understand that the tape shown in Figure 13C “has three layers aligned along the side edges” is not credible. See, e.g., Ex. 1006 ¶ 138. Mr. Cornelison’s testimony that Figure 13C is only “intended to identify and illustrate the three different layers of the multi-layer tape,” not to show the relative positions of the layers relative to each other (id. ¶ 137), is belied by his own testimony, in which he states that Figure 13C shows “metallic layer 133 extends to the front edges of dielectric layers 135 and 137 (id. ¶ 136). Additionally, neither Petitioner nor Mr. Cornelison provide persuasive evidence to support the contention that it would take “much more time and be more complex to make all three layers” in Figure 13C offset from each other or that it would be more costly to make than using the customary slitting processes. See Ex. 1006 ¶ 138. Although Mr. Cornelison provides evidence as to how the slitting process can be used to manufacture barrier tape, he does not provide any evidence to support his contention that the proposed slitting processes is in fact less expensive or complex than other methods. See Ex. 1006 ¶ 138. Indeed, Mr. Cornelison does not address the particular methods disclosed in Glew to manufacture the disclosed multi-layer tapes nor persuasively explain why these disclosed methods would be more costly or complex as compared to the “slitting” process. Ex. 1008 ¶¶ 199–201 (stating the multi-layer tapes can be manufactured in a “variety of ways” including bonding the various layers using adhesive or other bonding agents,” mechanically affixing or bonding the layers, needlepunching, thermal bonding, ultrasonic welding, or calendar bonding). We determine that this portion of Mr. Cornelison’s testimony is conclusory and unsupported and is entitled to little weight. Accordingly, Petitioner has not sufficiently shown that Glew discloses conductive material that extends to the lateral edges of the dielectric material as required by claims 1 and 18. As such, Petitioner has not shown a by a preponderance of the evidence that Glew anticipates independent claims 1 or 18 or the challenged claims that depend therefrom.” slip op. at 42
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Thus, although the Specification does not use the term “lateral edge,” the Specification and figures of the ’030 patent make clear, that in the embodiments having a conductive layer that extends to the edges of the dielectric layers of the tape, the referred to “edge” is the edge of the “long side” of the tape that extends in the longitudinal direction. See, e.g., Ex. 1001, 7:49–51 (stating in some embodiments conductive layer 302 may not extend to the edge of tape 110), 8:1–25 (stating, inter alia, pairs 102 could electrically couple to the corresponding edge 306 resulting in increased ANEXT), 8:41–46, 10:30–36 (stating that the tape edge lies over a pair of conducts and the pair generates more ANEXT). Our construction of term “lateral edge” is supported by Roberts, which also refers to the edges of the long side of the tape extending in the longitudinal direction as the “lateral edges.” See, e.g., Ex. 1009, 2:20–24 (“a shield made from a plurality of tapes helically disposed, the lateral edges of which overlap adjacently lying tapes”), 2:42–46 (“a shield composed of a plurality of …, the lateral edges of which overlap adjacently disposed tapes”), 4:27–33 (“the plastic-coated metal foil shield (15) [FIG. 2] has lateral edges that overlap,” “the lateral edges of the shield overlapping one another”), 4:34–40 (“The lateral edges of the helically disposed tapes [of FIG. 3] overlap adjacently lying tapes.”), 5:65-75 (“the shield (15) [of FIG. 10] is made up of a plurality of tapes, the lateral edges of which overlap adjacently disposed like tapes”), Figs. 2, 3, 10. We credit Dr. Eldering’s testimony that these disclosures of Roberts shows that a POSITA would understand that a tape’s “lateral edges” are the edges running along the sides of the tape parallel to the longitudinal direction. See Ex. 2001 ¶¶ 64–65; see also Thales Visionix, Inc. v. United States, 415 F.3d 1335, 1348 (Fed. Cir. 2020) (considering whether the proposed claim construction is “consistent with the prior art’s usage of that term”).” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“contentions set forth in its Petition are insufficient to show that Cook discloses a barrier tape having a conductive material contained between two layers of dielectric material where the conductive material extends to each lateral edge of the two layers of the dielectric material, as required by claims 1 and 18, and further that the conductive material be continuous as required by claim 1. We agree with Patent Owner that Petitioner relies on multiple disparate embodiments of Cook for each of these limitations without sufficiently articulating how a single embodiment satisfies the requirements of claim 1 or 18 or articulating how the disparate embodiments may be combined to arrive at claim 1 or 18. See, e.g., PO Resp. 18–25; Pet. 18–21; see also NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (stating in order to establish anticipation, “it is not enough that the prior art reference . . . include multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention” and that the “reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference”).” slip op. at 29
Patent outcomesUS 9,991,030 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,991,030 - PTAB · Nov 26, 2024 · IPR2024-00932 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on all challenged claims, 1 and 4–20, and all asserted grounds, finding a reasonable likelihood of prevailing on obviousness over Prusik and over Prusik with Vaillant.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Based on the current record and for the reasons explained below, Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’818 patent. We institute this inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“degree in computer science, electrical engineering, systems engineering, biomedical engineering (or a related or equivalent field), and two . . . years of experience researching, developing, designing and/or evaluating embedded systems, graphically encoded icons, or diagnostic systems that provide dynamic information,” and that “less or different education but more relevant practical experience, or vice versa, may also meet this standard.” Pet. 7. Petitioner also asserts that “[a] POSITA may be part of an interdisciplinary team with others having the relevant experience set forth above,” and that the prior art evidences the level of skill in the art. Id. (citing Ex. 1003 ¶¶ 16–21). Patent Owner did not file a Preliminary Response and thus does not currently dispute Petitioner’s level of ordinary skill in the art. For purposes of this Decision, we find Petitioner’s formulation sufficient at this stage, except that we need not decide at this stage whether a POSITA would have been “part of an interdisciplinary team with others having the relevant experience,” or who would have been part of such a team. With or without that provision, Petitioner’s proposal appears at this stage to be generally consistent with the technical background described in the ’818 patent, and with the prior art of record. See Ex. 1001, 1:31–2:43; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). To the extent that we may need to further characterize the level of ordinary skill, the parties may develop this issue at trial.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Based on the teachings cited by Petitioner, discussed above, we preliminarily determine that Petitioner has sufficiently demonstrated that Prusik teaches or suggests each of the limitations 8pre–8e to an ordinarily skilled artisan. Thus, at this stage, we determine that Petitioner is reasonably likely to prevail in showing that claim 8 is unpatentable.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“provide temperature exposure information to a user for product preservation purposes,6 and that a POSITA would have been motivated to combine Prusik with Vaillant’s marketing management system to systematically and automatically control a product whose preservation in a distribution circuit depends on the temperature. Pet 34–35 (citing Ex. 1006, 6:58–51; Ex. 1003 ¶ 174). For example, according to Petitioner, a POSITA would have been motivated to modify Prusik’s system with Vaillant “to prevent the sale of a 6 Petitioner indicates that Vaillant is cited on the face of the patent issued from Prusik (Ex. 1022). Pet. 34. product where the dynamic data in the two-dimensional barcode indicates that the product has been exposed to a temperature exceeding a predetermined threshold.” Pet. 36 (citing Ex. 1003 ¶ 177). Petitioner also contends that “applying a sale acceptance/rejection functionality to Prusik’s barcode reader is a mere application of a known method of product handling and processing to Prusik’s system to achieve the predictable result of preventing sale of products that have been exposed to hazardous or improper environmental conditions.” Pet. 35–36 (citing Ex. 1003 ¶ 176). Based on the forgoing, we determine that Petitioner has provided sufficient evidence and reasoning to demonstrate that the combination of Prusik and Vaillant would have rendered claim 1 obvious to an ordinarily skilled artisan. Thus, at this stage, we determine that Petitioner is reasonably likely to prevail in showing that claim 1 is unpatentable.” slip op. at 18
§ 103 obviousnesscites GrahamPatents in suitUS 11,392,818 - PTAB · Nov 22, 2024 · IPR2024-00885 · APJ Jamie T Wisz · IPR · Institution
The Board instituted review of claims 1–4 and 15–25 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), the Board “may not authorize an inter partes review to be instituted unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Preliminary Reply and Sur-Reply, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of claims 1–4 and 15–25 of the ’515 patent, based on all of the grounds identified in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSA”) as of the claimed priority date would have “had at least a bachelor’s degree in animal science, biological engineering, electrical engineering, or computer science, or a related or equivalent field, and three or more years of experience researching, developing, designing and/or evaluating RFID tracking and sensor systems for livestock management.” Pet. 5–6 (citing” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“c) Analysis At this preliminary stage, we agree with Patent Owner’s arguments as to the plain and ordinary meaning of “implanted in an animal,” meaning implanted within the animal rather than on the animal. Although we agree encompassing RFIDs attached or implanted “on or within” an animal, the plain language of the claim expressly recites “in,” which, on the present record, we determine corresponds to “within” as described by the ’515 patent Specification. We apply that understanding to our discussion of Petitioner’s challenges below.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2. Additional Claim Terms For purposes of this Decision, we determine that no other claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,823,515 - PTAB · Nov 22, 2024 · IPR2024-00875 · APJ Andreas Baltatzis · IPR · Institution
The Board instituted IPR on claims 1–4, 6, and 17–20 on all petitioned grounds, finding a reasonable likelihood that at least one claim would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), the Board “may not authorize an inter partes review to be instituted unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Preliminary Reply and Sur-Reply, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of claims 1–4, 6, and 17–20 of the ’206 patent, based on all of the grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSA”) as of the claimed priority date would have “had at least a bachelor’s degree in animal science, biological engineering, electrical engineering, or computer science, or a related or equivalent field, and three or more years of experience researching, developing, designing and/or evaluating RFID tracking and sensor systems for livestock management.” Pet. 6 (citing 4 In the present record, neither party presents arguments or evidence relating to secondary considerations. characterization. See Prelim. Resp. 13. On this record and for the purposes of institution, we determine this level of skill, with the exception of the open-ended phrases “at least” and “or more,” which we remove from Petitioner’s proposal, comports with the qualifications a person would have needed to understand and implement the teachings of the ’206 patent and the prior art of record.” slip op. at 18
- BurdenDecided for petitioner
“regarding alternative constructions of limitation 1[E].6 See Prelim. Resp. 13– 15. Instead, Patent Owner asserts that Petitioner’s presentation of arguments relating to alternative constructions is an independent reason to deny the Petition under 37 C.F.R. § 42.104(b). Id. at 14–15 (citing 37 C.F.R. §42.104(b)(3)–(4) (“[E]very petition must identify ‘[h]ow the challenged claim is to be construed’ and ‘[h]ow the construed claim is unpatentable.’”)). Patent Owner argues that Petitioner does “not inform the Board which of the two constructions they believe to be correct, nor do they provide any substantive argument as to how the Board should proceed with construing the terms.” Id. at 14. c) Analysis We are not persuaded by Patent Owner’s argument to deny the Petition under 37 C.F.R. § 42.104(b). Rule 42.104(b) requires identifying how the challenged claims are to be construed and how the construed claims are unpatentable. Petitioner presents arguments and evidence alleging claims 1 and 17 are unpatentable under either of the constructions it discusses.7 Accordingly, on this record and for the purposes of institution, Petitioner has met the requirements of Rule 42.104(b).” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningTerm construed patent owner constructionDecided for patent owner
“Patent, the ‘sensed animal information’ must be retrieved from an ‘RFID device’ that is ‘implanted in an animal’ or ‘implanted in a plurality of animals.’” Prelim. Resp. 51; see e.g., Ex. 1001, 18:45 (claim 2), 20:29 (claim 17). Patent Owner asserts that “implanted in an animal” requires “implantation inside of an animal.” Prelim. Sur-Reply 2. Patent Owner argues that this interpretation is consistent with the plain meaning of the claims and the ’206 patent Specification. See id. at 2–3. For example, Patent Owner argues that the ’206 patent Specification “distinguishes between implanted ‘on’” and “implanted ‘within’ (i.e., ‘in,’ as recited in the claims).” Id. at 3 (citing Ex. 1001, 8:8–13).” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,844,206 - PTAB · Nov 22, 2024 · IPR2024-00723 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–12 on both asserted obviousness grounds, finding a reasonable likelihood that Petitioner would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review unless the information in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’384 patent on all grounds of unpatentability presented.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Hunleth are natural extensions of Kim that provide additional details about user interface design and generation, and that it would have been obvious for one of ordinary skill in the art to use the teachings of the other references on Kim’s apparatus for details regarding the selection of a CP provider, with predictable results and a reasonable expectation of success. Id. at 19–21 (citing Ex. 1003 ¶¶ 112–119). Additionally, Petitioner argues that the combination uses metadata to provide a user interface appropriate to the type of content selected by a user that would have been made by one of skill in the art, and that the user would have had a reasonable expectation of success in this combination. Id. at 55 (citing Ex. 1003 ¶¶ 185–186, 197–200). At this time, Patent Owner does not dispute Petitioner’s assertions regarding the combination of Kim, TechnoBuffalo, MissingRemote, Hunt, and Hunleth. Nor, at this time, does Patent Owner rebut Petitioner’s assertion that one of ordinary skill in the art would have been motivated to make this combination and would have had a reasonable expectation of success in doing so. reasonable likelihood that it will prevail in showing one of ordinary skill in the art would have combined and used the details regarding a content provider user interface provided in TechnoBuffalo, MissingRemote, Hunt, and Hunleth, and would have used the relevant teachings of these references to provide details relating to the user interfaces provided by a CP provider on an intelligent television, such as that of Kim. See Ex. 1003 ¶¶104–106, 109–110, 112. We additionally determine that Petitioner has shown a reasonable likelihood that it will prevail in showing that one of ordinary skill in the art would have been motivated to make this combination, and would have had a reasonable expectation of success in doing so. See id. ¶¶ 113– 119.” slip op. at 23
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“On the preliminary record, no claim construction of “digest view” has been requested, and to the extent Patent Owner indirectly presents a claim construction argument, we decline to read the exemplary description of a digest view in the ’384 patent specification into limitations 1.6 and 1.7. Rather, in our view, the plain language of claim 1 controls because it recites that a digest view “presents information about a set of the VOD content that are associated with a series,” as recited in limitation 1.6. Ex. 1001, 56:55– 57. We find that Petitioner has sufficiently shown on this record that each of the TechnoBuffalo 1:03 view, the TechnoBuffalo 1:09 view, and the MissingRemote 1:54 view teaches or suggests the presentation of series,” as recited. Patent Owner agrees that the TechnoBuffalo 1:03 view is a digest view. Petitioner sufficiently shows the TechnoBuffalo 1:09 view is a digest view as it presents the “year, rating, number of episodes . . . , [and] episode lengths” for the displayed series. See Pet. 42 (citing Ex. 1003 ¶ 165). Similarly, Petitioner sufficiently shows that MissingRemote 1:54 view presents episode titles about episodes in the displayed season. See id. at 44 (citing Ex. 1003 ¶ 171). Petitioner argues alternatively that each of these would have been presented upon selection of a series in its proposed combination. Pet. 42–43, 44. We determine, in both cases, that presenting information regarding multiple individual episodes to be a sufficient showing that each presents “information about a set of the VOD content that are associated with a series,” as required by claim 1 for a digest view. Additionally, even if we were to adopt Patent Owner’s proposed strictures on “digest view,” the TechnoBuffalo 1:03 view constitutes a digest view under such a construction, as, for example, the “synopsis of entire season” on that view teaches the presentation of information about a set of the VOD content that are associated with the series. Ex. 1003 ¶ 164 (cited at Pet. 41); see Prelim. Resp. 15 (acknowledging that this view is a digest view). The Petition does not assert that the proposed combination would result in a system in which either the TechnoBuffalo 1:03 or the TechnoBuffalo 1:09 view would be displayed upon the selection of a series (as Patent Owner asserts, Prelim. Resp. 19), but rather that the TechnoBuffalo 1:03 view is taught as being presented in TechnoBuffalo as a result of a series selection and, that, “[a]lternatively,” one of ordinary skill would have made the design choice to display the TechnoBuffalo 1:09 view as a direct result of the selection of a series. Pet. 42–43; Ex. 1003 ¶ 167.” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) in August of 2012 would have been knowledgeable and familiar with [user interfaces] in consumer products that are pertinent to the ’384 Patent. A POSITA would have had a bachelor’s degree in Electrical, Software, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television and/or digital video systems, human-computer interaction, or related technologies. Lack of professional experience can be remedied by additional education, and vice versa. Pet. 15 (citing Ex. 1003 ¶ 21). At present, Patent Owner does not dispute this definition. Prelim. Resp. 9–10. The definition proposed by the Petitioner appears to be consistent with the problems and solutions in the ’384 patent and prior art of record and is supported by expert testimony. We adopt this definition for the purpose of this Decision.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,578,384 - Vizio, Inc. v. Multimedia Technologies Pte. Ltd.Institution deniedPTAB · Nov 22, 2024 · IPR2024-00722 · APJ Sharon Fenick · IPR · Institution
The Board denied institution because it could not determine with reasonable certainty the scope of “a different user interface device” to assess the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“an analysis to assess “whether the prior art discloses rendering something other than the second navigation bar” if a second user interface cannot contain that second navigation bar. Prelim. Reply 3–4. But our goal would not be to determine whether the prior art teaches or suggests “rendering something other than the second navigation bar” (Prelim. Reply 3), but rather whether the prior art teaches or suggests “rendering a different user interface device” (Ex. 1001, 55:26–29). In Samsung, the Federal Circuit notes that “the proper course for the Board to follow, if it cannot ascertain the scope of a claim with reasonable certainty for the purposes of assessing patentability, is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on keeping with this general direction from our reviewing court, and because no exception curing the impossibility of reaching a determination regarding unpatentability appears in this case, we do not institute an inter partes review. Given our conclusion that we cannot determine the scope of the claim term “a different user interface device” with reasonable certainty for purposes of assessing patentability, we decline to institute inter partes review on the grounds presented.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“After considering the determinations in the District Court Order, we agree with the district court that we cannot ascertain with reasonable certainty the scope of the claim term “a different user interface device.” See Ex. 2001, 25 (the district court explaining that “‘user interface device’ in the claim and in view of the intrinsic evidence, as emphasized by counsel’s 3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated . reasonable certainty those skilled in the art about the scope of the invention.”). As the district court found, the ’168 patent specification uses the term “user interface device” inconsistently, for example, describing “four different user interface devices” in a navigation bar including the “movies user interface device 2204” in Figure 22A. Id. at 23 (citing Ex. 1001, 45:19–20, 45:27–29). Additionally, the specification appears to describe user interface devices with reference to the rows in Figure 22B, and other parts of the specification also describe selectable interface elements as “user interface device[s].” Ex. 1001, 45:33–37 (cited at Ex. 2001, 23–24), 41:31– 45, 46:67–47:2, 47:18–21, 48:18–20. Still further, the specification appears to describe a menu as a type of user interface device. Id. at 49:3–5 (cited at Ex. 2001, 24), 51:17–19 (same). In addition to these citations from the District Court Order, we note that the term “user interface device” is used when describing a user selecting a specific year from a display of years provided on a user interface: “If user selection 1460 is selected by the user using a user interface device, a new user interface presentation is provided.” Id. at 40:39–46 (emphasis added). On the record before us, we agree with the district court that, based on the ambiguity in the specification, “it is indiscernible what subset of the user interface, if any, is the user interface device.” Ex. 2001, 24. Therefore, we conclude that we cannot determine the scope of the claim term “a different user interface device” with reasonable certainty for purposes of assessing patentability.” slip op. at 13
- BurdenNot reached
“an analysis to assess “whether the prior art discloses rendering something other than the second navigation bar” if a second user interface cannot contain that second navigation bar. Prelim. Reply 3–4. But our goal would not be to determine whether the prior art teaches or suggests “rendering something other than the second navigation bar” (Prelim. Reply 3), but rather whether the prior art teaches or suggests “rendering a different user interface device” (Ex. 1001, 55:26–29). In Samsung, the Federal Circuit notes that “the proper course for the Board to follow, if it cannot ascertain the scope of a claim with reasonable certainty for the purposes of assessing patentability, is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on keeping with this general direction from our reviewing court, and because no exception curing the impossibility of reaching a determination regarding unpatentability appears in this case, we do not institute an inter partes review. Given our conclusion that we cannot determine the scope of the claim term “a different user interface device” with reasonable certainty for purposes of assessing patentability, we decline to institute inter partes review on the grounds presented.” slip op. at 16
Claim constructioncites KSR · GrahamPatents in suitUS 9,232,168 - Motorola Mobility LLC v. Largan Precision Co., Ltd.Institution deniedPTAB · Oct 28, 2024 · IPR2024-00688 · APJ Jon M Jurgovan · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 would have been obvious over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We determine, on the record before us, that Petitioner does not have a likelihood of success of showing that the “prolonged” etching process that Petitioner proposes to arrive at the structure of limitation 1.6 to be “unusually simple” nor is “the technology particularly straightforward.” CN182’s etching process uses an alkali (sodium bicarbonate) solution with a concentration from 5% to 35% at a temperature of 35 to 55°C stirred for a period of 3 to 5 hours in an ultrasonic generator with power of 300 to 500 watts. Ex. 1004 ¶¶ 7–12. This is done in CN182 to create a matte structure on the inner surface of the body composed of plastic material (polyethylene terephthalate (PET)) between two antistatic coatings comprised of carbon powder layers. See, e.g., Ex. 1004 ¶¶ 5–6. Petitioner does not indicate how much time beyond CN182’s stated range of 3 to 5 hours would be required for the “prolonged” etching process it proposes to achieve a minimum depth of 2.0 μm relative to the outer carbon powder layer, nor whether a POSITA would have considered the prolonged time to be practically viable. Petitioner also does not explain what the reaction is, what its etch rate is, whether its effect would be diminished or exhausted as reactants are consumed or affected by other substances present, or whether other variables, such as the alkali concentration, temperature, or power and frequency of the ultrasonic generator, would need to be changed and how much over the course of the “prolonged” etching process.” slip op. at 30
- Skill levelSkill level petitioner adoptedOther
“Petitioner states as follows: The person of ordinary skill in the art in November 2016 (“POSITA” or “POSA”) would have held a bachelor’s degree in physics, optical sciences, or a closely related field, and approximately three years’ experience in optical system design, including stray light suppression. More education would compensate for less work experience and vice versa. POSITAs understood the fundamentals of stray light suppression. Pet. 35–36 (citing Ex. 1008, 587:18–20, 167, 595:32–33, xiii:24–26; Ex. 1003 ¶¶ 31–37). Petitioner further asserts that various texts in the record reflect the knowledge of a POSITA. Id. at 36 (citing Exs. 1007–1010). Petitioner alleges that a POSITA could be part of a team that includes a lens designer and a stray light specialist. Id. (citing Ex. 1007, 120; Ex. 1003 ¶¶ 33, 36, 38–41). Patent Owner states that Patent Owner “does not dispute Motorola’s articulation of the level of skill in the art in November 2016.” Prelim. Resp. 12–13 (citing Pet. 35–36). For this Decision, we adopt Petitioner’s undisputed proposal for the level of ordinary skill in the art as consistent with the evidence of record, including the ’660 patent and the prior art references on which Petitioner relies. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 9
- Expert testimonyPetitioner expert discountedOther
“Patent Owner correctly argues that the evidence does not show that Petitioner’s declarant, Dr. Milster, has expertise in etching of plastic materials such as PET which CN182 discloses for use as the inner substrate layer. Prelim. Resp. 15 (citing Ex. 1003 ¶¶ 31–37). Dr. Milster states that he has “education, knowledge, skills, and experience in the fields of optics and lens design.” Ex. 1003 ¶ 29. This statement does not provide any evidence of expertise in etching plastic materials. Nor does he indicate that he has any expertise in this field in his curriculum vitae. Ex. 1003, Appendix A. Consequently, on this record, Dr. Milster’s testimony on the subject of etching plastic materials is entitled to little or no weight.” slip op. at 33
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes that the plain and ordinary meaning of the claim terms applies, and does not propose any specific construction for any claim term. Pet. 36. Patent Owner agrees with Petitioner’s statement regarding claim construction, i.e., that the plain and ordinary meaning applies and no express construction is required. Prelim. Resp. 12 (citing Pet. 36–37; Ex. 1003 ¶¶ 82–87). As Petitioner and Patent Owner do not dispute the meaning of any claim term, we decline to expressly construe any claim term, and instead apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b). See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,997,660
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.