- Lenovo (United States) Inc. v. Intellectual Ventures I LLCInstitution deniedPTAB · Feb 6, 2025 · IPR2024-01224 · APJ Larry J Hume · IPR · Institution
The Board denied institution because Petitioner did not show Dammann was prior art, defeating both obviousness grounds against claims 1-3, 7-11, 13-16, and 18.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “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 [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.4 (2024). Having reviewed the parties’ papers and the evidence of record, and applying those standards, we determine that Petitioner has not shown a reasonable likelihood it would prevail in establishing the unpatentability of at least one challenged claim. Therefore, we decline to institute an inter partes review of any of challenged claims 1–3, 7–11, 13–16, and 18 of the ’439 patent, based on the grounds raised in the Petition.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Supported by the testimony of Dr. Ding, Petitioner asserts the level of ordinary skill in the art corresponds to a person having “a bachelor’s degree in electrical engineering, computer engineering, or the equivalent, from an accredited program, and two or more years of experience with wireless communications networks.” Pet. 21 (citing Ex. 1003 ¶ 38). Petitioner contends that “[m]ore practical experience could qualify one not having the aforementioned education as a [person of ordinary skill in the art (POSITA)], while a higher level of education could offset lesser experience.” Id. See generally Prelim. Resp. We note that the open-ended “or more” language set forth by Petitioner expands the range of experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation. Based on the record before us, and as modified above, we adopt Petitioner’s position as to the level of ordinary skill in the art at the time of the claimed invention, as articulated above. On this record, we are satisfied that Petitioner’s proposed definition, apart from the “or more” language, generally comports with the level of ordinary skill as reflected by the ‘439 patent and the asserted prior art. This definition also is supported by the testimony of Dr. Ding. See Ex. 1003 ¶ 38.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“cyclically advancing the first OFDM packet by shifting the samples in a first direction” in claims 1 and 8. Pet. 22. According to Petitioner, “[d]uring the Underlying Litigation, Petitioner explained that this term should be construed to mean ‘cyclically advancing the first OFDM packet by shifting the samples in the direction of transmission.’ Patent Owner argued that the correct construction is plain and ordinary meaning.” Id. Petitioner contends “[t]he construction Petitioner presented during the Underlying Litigation is correct, because that construction is the plain and ordinary meaning,” but “the scope of the claims includes the prior art under any reasonable construction” so “the Board does not need to construe any claim term for purposes of evaluating whether the claims cover the prior art addressed in this Petition.” Id. Patent Owner takes no position on the meaning of any claim terms; however, Patent Owner indicates that the district court construed “cyclically advancing the first OFDM packet by shifting the samples in a first direction” as “cyclically advancing the first OFDM packet by shifting the samples in the direction of transmission” (i.e., Petitioner’s proposed construction). Prelim. Resp. 22 n.2 (citing Ex. 2005, 8; Ex. 2006, 25–26). We do not find it necessary to address the construction of any claim terms or phrases to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 16
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As our reviewing court has held, “public accessibility” requires more than technical accessibility. Acceleration Bay, 908 F.3d at 773. “A reference is considered publicly accessible if it was ‘disseminated or skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Id. at 772. Because there is no evidence of record that Dammann was actually physically disseminated to the public, such as at the conference site, our inquiry is focused on whether an interested skilled artisan, using reasonable diligence, would have found Dammann on the “docenti.ing.unipi.it” website.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,623,439 - TCL Electronics Holdings Ltd. / TCL Industries Holdings Co., Ltd. v. Intellectual Ventures I, LLCInstitution deniedPTAB · Jan 28, 2025 · IPR2024-01244 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–21 obvious over either asserted prior-art combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner’s reasoning is misplaced and unpersuasive. Per limitation 1[b][ii], which modifies limitation 1[b][i], it is the cyclic advance in limitation 1[b][i] that must be “an amount less than a sample duration of the guard interval portion to generate a shifted version of the first OFDM packet for transmission.” Ex. 1001, 9:37–41. Petitioner has shown the amount of the 1-sample delay in Larsson’s Figure 8 is “an amount less than a sample duration of the guard interval portion to generate a shifted version of the first OFDM packet for transmission.” But that is not what is required by the claim. Petitioner has not shown the amount of the cyclic advance relied upon by Petitioner to satisfy the cyclic advance requirement of limitation 1[b][i] meets the duration requirement of limitation 1[b][ii].” slip op. at 34
- Skill levelSkill level petitioner adoptedDecided for petitioner
“POSITA”) “would have at least a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, with at least two or more years of experience in the field of wireless communication systems and protocols, with more education substituting for work experience and vice versa.” Pet. 7 (citing Ex. 1003 ¶ 31). Patent Owner does not make any averment with respect to the level of ordinary skill in the art and also does not dispute Petitioner’s assertion regarding the level of ordinary skill in the art. See generally Prelim. Resp. slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“A court in W.D. Tex. construed the term “cyclically advancing the first OFDM packet by shifting the samples in a first direction” as “cyclically advancing the first OFDM packet by shifting the samples in the direction of transmission.” See EX1009 at 8. Although that construction was adopted in a different case, Petitioners and Patent Owner agreed in their Joint Claim Construction Statement in the parallel litigation (the “Texas Litigation” as defined below) that this construction is appropriate. See EX1010.” slip op. at 19
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“We agree with Petitioner that limitations 19[a], 19[b], 19[c], and 19[d] are means-plus-function elements under 35 U.S.C. § 112, sixth paragraph, and we have no reason to disagree with Petitioner’s identification of corresponding structure in the ’439 patent’s specification. We adopt Petitioner’s statement of construction for these means-plus-function elements. D.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,623,439 - Mianyang Boe Optoelectronics Technology Co., Ltd. / Wuhan China Star Optoelectronics Semiconductor Display Technology Co., Ltd. et al. v. Samsung Display Co., Ltd.No claims unpatentablePTAB · Jan 6, 2025 · IPR2023-01075 · APJ Terrence W Mcmillin · IPR · Final written decision
Petitioner failed to show claims 1–6, 10, 12, 17–19, 21–23, 40–47, 51, and 52 unpatentable because the cited art did not teach or suggest a pixel defining layer.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we again adopt Petitioner’s definition of the level of ordinary skill in the art. It is supported by the testimony of Dr. Pattison, and appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). We find Patent Owner’s articulation of the level of ordinary skill to be imprecise, because Patent Owner does not specify the amount of experience possessed by an ordinarily skilled artisan. The unbounded reference to “experience” is vague and overly broad, as it could mean 1 year of experience or over 30 years of experience, for example. In addition, the ’578 patent is directed to “a pixel arrangement structure of an (OLED) [organic light emitting diode] display” (Ex. 1001, 1:22–23), whereas Patent Owner’s proposed experience is tied to “active-matrix displays.” PO Resp. 5. Given that the field of OLED displays includes both passive and active matrix designs (see generally Ex. 2009 ¶¶ 40–56), we see no reason to restrict the relevant experience to active matrix displays. For these reasons, we do not adopt Patent Owner’s definition of the level of ordinary skill in the art.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Petitioner has failed to show that the cited art teaches or suggests a “pixel defining layer” as recited. Neither party in this proceeding or in the ITC Investigation argued that “pixel defining layer” as recited in the challenged claims required construction, and neither party presented any arguments regarding the construction or meaning of this term.6 Pet. 13; PO Resp. 4–5. 5 37 C.F.R. § 42.104(b)(3) requires that a petition contain a statement identifying how a challenged claim is to be construed. 6 In our Decision instituting trial, we stated that “[i]f either party contends that explicit claim construction is necessary in order to make a final determination whether or not any challenged claim is unpatentable based on the arguments and evidence presented, it should clearly explain why during We give the term “pixel defining layer” as recited its plain and ordinary meaning. For purposes of this decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D. Petitioner Has Not Shown That the Cited Art Teaches or Suggests All the” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“or suggestion in Matthies of a pixel defining layer, because there is none.” PO Resp. 31 (citing Ex. 2009 ¶ 187); see also PO Sur-reply 15–17. Petitioner contends that “[a] POSITA would have understood that Matthies employs (or at least could obviously employ) the claimed ‘pixel defining layer.’” Pet. 23. An allegation that a skilled artisan would have understood that the prior art “could obviously” be modified to include an element of the claimed invention does not establish that the prior art teaches or suggests such recited element. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“require for the same reasons set forth above.”). And, in discussing motivation to combine the teachings of Matthies and Yamada, Petitioner articulates no reasoning to support modifying Matthies’ structure based on Yamada to yield a “pixel defining layer.” See Pet. 69–75. Patent Owner argues that “[t]he Petition failed to identify any teaching or suggestion in Matthies of a pixel defining layer, because there is none.” PO Resp. 31 (citing Ex. 2009 ¶ 187); see also PO Sur-reply 15–17. Petitioner contends that “[a] POSITA would have understood that Matthies employs (or at least could obviously employ) the claimed ‘pixel defining layer.’” Pet. 23. An allegation that a skilled artisan would have understood that the prior art “could obviously” be modified to include an element of the claimed invention does not establish that the prior art teaches or suggests such recited element. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 24
Patent outcomesUS 11,594,578 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,594,578 - Mianyang Boe Optoelectronics Technology Co., Ltd. / Wuhan China Star Optoelectronics Semiconductor Display Technology Co., Ltd. et al. v. Samsung Display Co., Ltd.Some claims unpatentablePTAB · Jan 6, 2025 · IPR2023-00988 · APJ John A Hudalla · IPR · Final written decision
Claims 1, 4–10, 13, and 15 are unpatentable over Phan; claim 2 was not shown unpatentable over the asserted grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“experience or over 30 years of experience, for example. In addition, the ’683 patent is directed to “a pixel arrangement structure of an organic light emitting diode (OLED) display” (Ex. 1001, 1:19–21), whereas Patent Owner’s proposed experience is tied to “active-matrix displays.” PO Resp. 5. Given that the field of OLED displays includes both passive and active matrix designs (see generally Ex. 2009 ¶¶ 40–56), we see no reason to restrict the relevant experience to active matrix displays. For these reasons, we do not adopt Patent Owner’s definition of the level of ordinary skill in the art.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed
“Invention” section, Phan states that “[t]he invention [of Phan] relates to a display comprising pixels and dots, including but not limited to” various “display technologies” including “Organic Light Emitting Diode (OLED).” Ex. 1005, 1:17–29 (emphasis added). Accordingly, we find that Phan fairly suggests that the pixel arrangements disclosed in Phan—which are part of Phan’s “invention”—may be applied to OLEDs. See Twitter, Inc. v. VidStream LLC, 825 F. App’x 844, 850 (Fed. Cir. 2020) (quoting Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019)) (“[W]hen conducting an obviousness analysis, the Board must consider a prior art reference ‘not only for what it expressly teaches, but also for what it fairly suggests.’”). In making this finding, we note that obviousness is determined from the perspective of a person of ordinary skill in the art (see 35 U.S.C. § 103(a)), who in this case would have had “2 years of professional experience working with display design, including OLED displays.” See supra § II.B. In light of this specific experience, we find that an ordinarily skilled artisan would have been inclined to link Phan’s disclosed pixel arrangements with OLEDs based on the plain statement about related “display technologies” in Phan’s “Field of the Invention” section. See, e.g., Ex. 1003 ¶¶ 321, 410–414. For these reasons, we disagree with Patent Owner’s assertion that “Phan does not teach about OLED displays.” PO Resp. 32.” slip op. at 20
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“6 In its Opposition to Petitioner’s first motion to strike, which was filed after the Patent Owner Response, Patent Owner implies that the teardown images in the Response speak for themselves and, as such, are entitled to a presumption of nexus. See 1st Strike Opp. 3–4; see also Tr. 102:19–103:15 (similar argument by Patent Owner’s counsel at the oral hearing). Petitioner argues that Patent Owner did not assert an entitlement to a presumption of nexus in the Response, and that Patent Owner’s Opposition is an improper vehicle to introduce such an argument. 1st Strike Reply 1. We agree with Petitioner that Patent Owner did not address in the Response whether the Samsung Galaxy S22 Ultra smartphone is coextensive with the claims of the ’683 patent. See id.; Pet. Reply 20. Accordingly, we decline to consider any argument that Patent Owner is entitled to a presumption of nexus.” slip op. at 34
- Strike new argumentNew argument disregardedGranted in part
“6 In its Opposition to Petitioner’s first motion to strike, which was filed after the Patent Owner Response, Patent Owner implies that the teardown images in the Response speak for themselves and, as such, are entitled to a presumption of nexus. See 1st Strike Opp. 3–4; see also Tr. 102:19–103:15 (similar argument by Patent Owner’s counsel at the oral hearing). Petitioner argues that Patent Owner did not assert an entitlement to a presumption of nexus in the Response, and that Patent Owner’s Opposition is an improper vehicle to introduce such an argument. 1st Strike Reply 1. We agree with Petitioner that Patent Owner did not address in the Response whether the Samsung Galaxy S22 Ultra smartphone is coextensive with the claims of the ’683 patent. See id.; Pet. Reply 20. Accordingly, we decline to consider any argument that Patent Owner is entitled to a presumption of nexus.” slip op. at 34
Patent outcomesUS 10,854,683 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,854,683 - Mianyang Boe Optoelectronics Technology Co., Ltd. / Wuhan China Star Optoelectronics Semiconductor Display Technology Co., Ltd. et al. v. Samsung Display Co., Ltd.Some claims unpatentablePTAB · Jan 6, 2025 · IPR2023-00987 · APJ Jameson Lee · IPR · Final written decision
Claims 1–4 and 19–21 are unpatentable as obvious; claim 5 was not shown unpatentable because the Phan-based challenge did not establish its limitations.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d at 988.” slip op. at 14
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“9 In its Opposition to Petitioner’s first motion to strike, which was filed after the Patent Owner Response, Patent Owner implies that the teardown images in the Response speak for themselves and, as such, are entitled to a presumption of nexus. See 1st Strike Opp. 3–4; see also Tr. 102:19–103:15 (similar argument by Patent Owner’s counsel at the oral hearing). Petitioner argues that Patent Owner did not assert an entitlement to a presumption of nexus in the Response, and that Patent Owner’s Opposition is an improper vehicle to introduce such an argument. 1st Strike Reply 1. We agree with Petitioner that Patent Owner did not address in the Response whether the Samsung Galaxy S22 Ultra smartphone is coextensive with the claims of the ’803 patent. See id.; Reply 21. Accordingly, we decline to consider any argument that Patent Owner is entitled to a presumption of nexus.” slip op. at 63
- Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersObjective indicia outweighedDecided for petitioner
“For these reasons, we accord Patent Owner’s evidence of long-felt” slip op. at 70
- Strike new argumentNew argument disregardedGranted in part
“9 In its Opposition to Petitioner’s first motion to strike, which was filed after the Patent Owner Response, Patent Owner implies that the teardown images in the Response speak for themselves and, as such, are entitled to a presumption of nexus. See 1st Strike Opp. 3–4; see also Tr. 102:19–103:15 (similar argument by Patent Owner’s counsel at the oral hearing). Petitioner argues that Patent Owner did not assert an entitlement to a presumption of nexus in the Response, and that Patent Owner’s Opposition is an improper vehicle to introduce such an argument. 1st Strike Reply 1. We agree with Petitioner that Patent Owner did not address in the Response whether the Samsung Galaxy S22 Ultra smartphone is coextensive with the claims of the ’803 patent. See id.; Reply 21. Accordingly, we decline to consider any argument that Patent Owner is entitled to a presumption of nexus.” slip op. at 63
Patent outcomesUS 9,818,803 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,818,803 - Google LLC v. Buffalo Patents, LLCAdverse judgmentPTAB · Dec 3, 2024 · IPR2023-01387 · APJ Mahshid D Saadat · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed all challenged claims 1–16 and 19.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“II. Discussion Per 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Also, actions which are construed to be a request for adverse judgement include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. at § 42.73(b)(2). With the filing by Patent Owner of a statutory disclaimer of all challenged claims 1–16 and 19 in this proceeding, there are no remaining claims in this trial.” slip op. at 2
NonePatents in suitUS 8,204,737 - Google LLC v. Buffalo Patents, LLCAdverse judgmentPTAB · Dec 3, 2024 · IPR2023-01386 · APJ Jameson Lee · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed all challenged claims 1–12 and did not respond to the show-cause order.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“at any time during a proceeding. Also, actions which are construed to be a request for adverse judgement include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. at § 42.73(b)(2). With the filing by Patent Owner of a statutory disclaimer of all challenged claims 1–12 in this proceeding, there are no remaining claims in this trial. Because Patent Owner did not respond to the Show Cause Order, we construe Patent Owner’s statutory disclaimer of all challenged claims 1–12 as a request for entry of adverse judgment against Patent Owner. The request is granted.” slip op. at 2
NonePatents in suitUS 6,904,405 - PTAB · Nov 22, 2024 · IPR2024-00687 · APJ Lisa L Tsang · IPR · Institution
The Board instituted IPR on claims 1–4 and 7–12, finding a reasonable likelihood that claims 1–4 and 9 are anticipated by Winkler.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized when “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.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we conclude that the information presented shows there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’017 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends a person of ordinary skill in the art (“POSITA”) “would have had at least a bachelor’s degree in electrical engineering or a similar field and at least two years of experience working with electrical circuits or electrical connectors, including power connectors. Additional relevant work experience can compensate for less education, and vice versa.” Pet. 19 (citing Ex. 1003 ¶¶ 24–26). At this juncture, Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 7. For purposes of this Decision, we adopt the level of ordinary skill in the art as articulated by Petitioner because, based on the current record, it is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’017 patent and prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that the open-ended language “at least” expands the range of education and experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“At this juncture, we preliminarily agree with Patent Owner’s proffered claim construction. In particular, we agree with Patent Owner’s argument that the insulating barriers would be unable to be configured to “block[] substantially all through-air arcing paths between the first and second electrical contacts,” as claimed, unless they were electrically insulating. See Ex. 1001, 4:36–44. Moreover, as Patent Owner avers, our interpretation of “insulating” as it applies to the first and second insulating barriers should be the same as for the first and second housings. See Digital Biometrics, 149 F.3d at 1345 (“whatever interpretation we assign [to a word used in a claim] should encompass both uses because the same word appearing in the same claim should be interpreted consistently” (citation omitted)). Although “a patent’s written description can set forth more than one definition of a claim term,” we do not discern that to be the case here. See Pitney Bowes, 182 F.3d at 1310. The portions of the Specification of the ’017 patent that Patent Owner cites use “insulating” and its associated tenses to mean suppressing electrical arcing and protecting from electrical burns, i.e., electrically insulating. See, e.g., Ex. 1001, code (57), 1:58–2:3, 2:42–44, 3:2–6, 3:30–40, 3:63–4:10, cited in Prelim. Resp. 12–14. Accordingly, for purposes of this Decision, we interpret “insulating” as recited in the claims to mean “electrically insulating.”” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Petitioner’s reliance on the modified Figure 2 diagram not explicitly shown in Winkler is not per se improper, so long as the skilled artisan would have reasonably understood that that is what Winkler discloses. See Acoustic Tech., Inc. v. Itron Networked Solutions, Inc., 949 F.3d 1366, 1373 (Fed. Cir. 2020) (“In an anticipation analysis, the dispositive question is whether a skilled artisan would ‘reasonably understand or infer’ from a prior art reference that every claim limitation is disclosed in that single reference. . . . Expert testimony may shed light on what a skilled artisan would reasonably understand or infer from a prior art reference.” (citations omitted)). Dr. Eldering testifies that the diagram was “created based on FIG. 2 of Winkler and developed by taking the components of each half of the connector and recreating them in a separated state.” Ex. 1003 ¶ 80. On the current record, Patent Owner does not dispute Dr. Eldering’s testimony or that Petitioner’s diagram reflects what the skilled artisan would have reasonably understood by looking at Figure 2 of Winkler. See generally Prelim. Resp.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,808,017 - Zebra Technologies Corporation v. Intellectual Ventures I LLCInstitution deniedPTAB · Nov 20, 2024 · IPR2024-00883 · APJ Larry J Hume · IPR · Institution
The Board denied institution because Zebra did not show Dammann was a publicly accessible printed publication, so it was unavailable as prior art for either obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “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 [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.4 (2024).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As our reviewing court has held, “public accessibility” requires more than technical accessibility. Acceleration Bay, 908 F.3d at 773. “A reference is considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Id. at 772. Because there is no evidence of record that Dammann was actually physically disseminated to the public, such as at the conference site, our inquiry is focused on whether an interested skilled” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“presented. For the reasons explained above, including Patent Owner’s arguments, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that the subject matter of claims 1, 3, 7–10, 13, 14, and 16 would have been obvious over Dammann and Hervin in view of the knowledge of a person of ordinary skill in the art. We reach this conclusion because, under our case law discussed above, we conclude that Petitioner has not sufficiently shown that Dammann is a printed publication. Accordingly, Dammann is not available in this proceeding as prior art to the claims of the ʼ439 patent. Because all of” slip op. at 32
- Obviousness (§103) › Analogous artNot reached
“b) Hervin’s Status as Analogous Art Patent Owner contends the Petition fails to show that Hervin is analogous art. Prelim. Resp. 38–40. The Petition does not address whether Hervin is analogous art to the invention claimed in the ʼ439 patent. See generally Pet. For purposes of our decision declining to institute trial, we need not reach a determination as to whether Hervin is analogous art to the claimed invention. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (explaining that an administrative agency “is at perfect liberty” to reach a decision based on a “single dispositive issue”); Bos. Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x 984, 990 (Fed. Cir. 2020) (non-precedential) (recognizing that the “Board need not address issues that are not necessary to the resolution of the proceeding”).” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,623,439 - PTAB · Nov 7, 2024 · IPR2024-00605 · APJ Jameson Lee · IPR · Institution
Instituted review of claims 9–14, 23–28, and 30 on all petition grounds; Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.§ 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’714 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’714 patent on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Based on the foregoing arguments, which lack specifics and do not sufficiently map the particular teachings from Rusert relied on by Petitioner to the disclosures of Han, Tai, and Huang, we do not find Rusert to be cumulative of these references. Further, even if all of Rusert’s teachings 13 Han, Woo-Jin, et al., Improved Video Compression Efficiency Through Flexible Unit Representation and Corresponding Extension of Coding Tools, 20 IEEE Transactions on Circuits and Systems for Video Technology 1709 (2010). 14 Tai, Shen-Chuan, et al., A Multi-Pass True Motion Estimation Scheme with Motion Vector Propagation for Frame Rate Up-Conversion Applications, 4 Journal of Display Technology 188 (2008). 15 Huang, Ai-Mei, et al., A Multistage Motion Vector Processing Method for Motion-Compensated Frame Interpolation, 17 IEEE Transactions on Image Processing 694 (2008). relied on by Petitioner can be found in Han, Tai, and Huang as a collection of separate partial teachings from each, that still does not demonstrate Rusert as a cumulative reference. The quality of disclosure simply is not the same if three references have to be combined to yield what Rusert itself discloses. Patent Owner also does not explain how it combines Han, Tai, and Huang to provide the same teachings relied on from Rusert by Petitioner.16” slip op. at 65
- Parallel petitionsDenied
“Although we do not think 30 claims are too numerous for one petition to cover, many claims in the ’714 patent are extraordinarily lengthy and include numerous limitations. For example, claim 6, which depends from claim 5 which depends from claim 1, is more than one column long in the ’714 patent. The length of claim 20, which depends from claim 19, which depends from claim 15, also is more than one column long in the ’714 patent. Additionally, we agree with Petitioner that the subject matter of the ’714 patent is complex. We further agree with Petitioner that the division of claims among the two petitions, i.e., encoder claims in IPR2024-00604 and decoder claims in IPR2024-00605, is a structured division which helps to facilitate the handling of two petitions. Patent Owner has not presented arguments urging that the filing of two petitions by Petitioner against the ’714 patent is excessive. For the foregoing reasons, we determine that the filing of two petitions by Petitioner against the ’714 patent is reasonable under these circumstances. We decline to exercise discretion to deny either petition on the ground of the Petitioner filing an excessive number of petitions against the ’714 patent.” slip op. at 69
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Creusere, Petitioner asserts a person of ordinary skill in the art (hereinafter “POSITA”) “would have had (1) a bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study such as physics, and (2) approximately two to three years of practical experience with video encoding/decoding.” Pet. 21 (citing Ex. 1003 ¶¶ 57–59). Patent Owner states that it “has applied Petitioner’s POSITA for the sake of this Response.” Prelim. Resp. 31. On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Creusere and not 11 The record does not include any evidence of secondary considerations of nonobviousness. disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,536,714
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.