- Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting v. Cao Lighting, Inc.InstitutedPTAB · Oct 19, 2022 · IPR2022-00848 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 18, 22, 25, 26, 28–30, 32–36, 40–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 70–73, 77, 78, 81, 82, 85, 86, and 88–91 on both asserted §103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to all of the challenged claims of the ’770 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Here, our consideration of relevant factors including the seven Becton, Dickinson factors does not favor discretionary denial. In particular, the reexamination examiner allowed new claims based on prior art not disclosing an LED chip configured to output light at greater than about 40 mW as follows. Pet. 14. In particular, the Examiner distinguishes claim 18 from the prior art as follows: Proposed new claim 18, from which all of the other proposed new claims depend directly or indirectly, includes a feature requiring the semiconductor chip to be “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts. Ex. 1005, 7/9/2014 Notice of Intent to Issue Ex Parte Reexamination Certificate; see also Pet. 1 (explaining same). In the Petition, Petitioner persuasively establishes for purposes of institution that Krames teaches an LED chip that achieves “[a] power output of over 170 mW.” Pet. 53 (quoting Ex. 1008, 10). As explained herein when addressing the merits of Petitioner’s asserted grounds, Petitioner also provides persuasive argument why a person of skill in the art would have reason to combine Krames’s teachings with the teachings of the other cited references with a reasonable expectation of success. Pet. 26–31. Given these circumstances, the seven Becton, Dickinson factors weigh” slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts: As of the ’770 Patent’s claimed priority date (August 24, 2001), a POSITA would have had at least a bachelor’s degree in an engineering discipline with coursework in semiconductors and/or optoelectronics, and three or more years of experience working in the semiconductor and/or optoelectronics fields. Less work experience may be compensated by a higher level of education with the foregoing coursework. Pet. 19–20 (citing Ex. 1006 ¶ 34). Patent Owner does not dispute Petitioner’s definition of one of ordinary skill in the art. See generally Prelim. Resp. Petitioner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Petitioner’s description.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “[t]he terms in the Challenged Claims should receive their ordinary and customary meaning as understood by a POSITA in the context of the patent specification and prosecution history.” Pet. 19 (citing Ex. 1006 ¶ 69). Patent Owner asserts that the petition fails to show a reasonable likelihood that Petitioner would prevail for at least one claims because Petitioner has not identified how the challenged claims are to be construed or how the asserted references apply to any construed claim. Prelim. Resp. 1–4; Prelim. Sur-reply 1–3. Patent Owner further asserts that the petition violates 37 C.F.R. § 42.104(b)(3) because it does not, for each claim challenged, identify “how the challenged claim is to be construed” and “how the construed claim is unpatentable.” Prelim. Sur-reply 1. In particular, Patent Owner emphasizes that two district courts have construed various terms of the ’961 Patent and that Petitioner does not address these constructions. Prelim. Resp. 4–10. Patent Owner’s argument does not persuade us that institution is inappropriate here. Petitioner identified how each challenged claim is to be construed by asserting that “ordinary and customary meaning” applies. Pet. 19. Petitioner also explained how each challenged claim is unpatentable. Id. at 32–111. Patent Owner does not persuasively dispute Petitioner’s position. Under these circumstances, the petition satisfies 37 C.F.R. § 42.104(b)(3). As we explain below, Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim under each of these constructions. Thus, we determine that no claim terms require express construction for purposes of this Decision. See, e.g., Nidec Motor Corp. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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 10
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,634,770 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting v. Cao Lighting, Inc.InstitutedPTAB · Oct 19, 2022 · IPR2022-00847 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 21, 22, 25, 26, 28–30, 32–36, 40–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 on all three § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Office (“USPTO”) issued a Memorandum8 titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation.” The Memorandum states that “the precedential import of Fintiv is limited to the facts of that case.” Memorandum at 2. The Memorandum also states that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Id. at 3. The Memorandum further states that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Id. at 4–5. Further, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. Here, Petitioner stipulates that they “will not assert, in the parallel district court proceeding, that any Challenged Claim is invalid based on (a) the same grounds as those in the Petition, or (b) any grounds that reasonably could have been raised in the Petition.” Pet. Reply 7. The stipulation eliminates the possibility of Petitioner asserting duplicative invalidity grounds in both the Petition and in District Court. The Director’s guidance that “PTAB will not discretionarily deny institution” in view of a stipulation” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[t]he terms in the Challenged Claims should receive their ordinary and customary meaning as understood by a POSITA in the context of the patent specification and prosecution history.” Pet. 19 (citing Ex. 1006 ¶ 71). Petitioner states that “Patent Owner has taken a position as to the scope of certain claim terms through infringement contentions in the district court case.” Id. Specifically, Petitioner avers that Patent Owner proposes claim constructions for the term “reflective layers” and contends that grounds 1 and 3 demonstrate invalidity even under Patent Owner’s interpretation of “reflective layers.” Id. at 20 (citing Ex. 1017, 22– 23; Ex. 1006 ¶ 72). Patent Owner contends that the petition fails to show a reasonable likelihood that Petitioner would prevail for at least one claim because Petitioner has not identified how the challenged claims are to be construed or how the asserted references apply to any construed claim. Prelim. Resp. 4–10; Prelim. Sur-reply 1–3. Patent Owner further contends that the petition violates 37 C.F.R. § 42.104(b)(3) because it does not, for each claim challenged, identify “how the challenged claim is to be construed” and “how the construed claim is unpatentable.” Prelim. Sur-reply 1. In particular, Patent Owner emphasizes that two district courts have construed various terms of the ’961 Patent and that Petitioner does not address these constructions. Prelim. Resp. 4–10. Patent Owner’s argument does not persuade us that institution is inappropriate here. Petitioner identified how each challenged claim is to be construed by asserting that “ordinary and customary meaning” applies. Pet. 19. Petitioner also explained how each challenged claim is unpatentable. Id. at 32–30. Moreover, Petitioner explains that its challenges are sufficient under the District Court’s claim constructions. Pet. Reply 4. Patent Owner does not persuasively identify how the District Court claim constructions undermine Petitioner’s challenges and do not persuasively explain how the assert art fails to disclose or suggest claim 21’s recitations. Under these circumstances, the petition satisfies 37 C.F.R. § 42.104(b)(3). As we explain below, Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim based on ordinary and customary meaning. Thus, we determine that no claim terms require express construction for purposes of this Decision. See, e.g., Nidec Motor Corp. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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))). We also further address claim 8’s recitation of “reflective layers” when addressing that claim recitation in the context of the prior art.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner also asserts that a person of skill in the art would have had reason to combine the teachings of Allen and Krames with Begemann. Pet. 27–32. Based on the current record, we also determine that Petitioner’s assertion is persuasive and supported by evidence. Begemann teaches the use of LED chips for its LED lamp, but it does not describe the details of its LED chips. Ex. 1007, 1:1–4, 4:21–22. A person of skill in the art seeking to implement Begemann’s teachings would have looked to other references, 9 Petitioner mistakenly cites 3:32–35 (Pet. 40), but the quote is easily located on the next page. such as Krames and Allen, to learn more about the structure of high-power LED chips. Ex. 1006 ¶¶ 91–94. Krames teaches a chip that appears suitable for use in Begemann’s package. Pet. 29–30. Krames teaches that its chip “should be able to compete more favorably with conventional lighting technologies in many applications.” Ex. 1008, 6. This matches Begemann’s LED Lamps. Ex. 1007, 2:3–5. A person of ordinary skill in the art would have had a high expectation of success in mounting Krames’s chips within Begemann given, for example, the heat dissipation Begemann teaches (as explained above). Ex. 1006 ¶ 93. On the present record, Petitioner adequately establishes that a person of ordinary skill in the art would have reason to implement Krames’s chip design with Begemann with a high expectation of success. As to Allen, Begemann teaches a “white LED” for at least one embodiment. Pet. 31 (quoting Ex. 1007, 3:6–9). Krames teaches conversion of blue light into white “via phosphors” and Allen teaches that “blue dies with phosphorescent coating” may be used. Ex. 1008, 11; Ex. 1011, 4:11– 12; Ex. 1006 ¶¶ 95–96. Therefore, based on this current record, Petitioner’s position that a person of skill in the art would have combined the teachings of Begemann, Allen, and Krames to reach claim 1’s recited coating is persuasive and supported by evidence.” slip op. at 27
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,465,961 - PTAB · Sep 12, 2022 · IPR2022-00650 · APJ Brian D Range · IPR · Institution
Instituted IPR on claims 1–3, 5–8, 11–14, and 16 based on the asserted grounds, finding a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to all of the challenged claims of the ’304 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Takeda-322 does not explain how to space adjacent turns of its spiral booster and exciting coils. Ex. 1003 ¶ 75. As explained above, however, Ayala-362 explains how this spacing or pitch should be adjusted in order to optimize inductive coupling, resonant frequencies, and communication. Pet. 17; Ex. 1003 ¶¶ 76–77; Ex. 1006, code (57), 25–26. It has long been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955); see also In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.”). The present record supports that a person of ordinary skill in the art would have known to choose a pitch for Takeda-322’s various coils as Ayala-362 suggests. The record also supports that such an implementation would have had a reasonable expectation of success. Pet. 19 (providing citations to evidence providing support); Ex. 1003 ¶ 85. As such, the present record adequately establishes that a person of ordinary skill in the art would have reached the “Takeda-322/Ayala-362 smart card” as Petitioner describes it. Pet. 21.” slip op. at 17
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“The Federal Circuit has held that in an inter partes review there are two distinct burdens of proof: the burden of persuasion and the burden of production. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)). Petitioner bears the ultimate burden of persuasion regarding unpatentability, which never shifts to Patent Owner. Id. at 1379. Dynamic Drinkware, however, also establishes that Petitioner has the initial burden of production to show a reference is prior art. Id. Once Petitioner’s burden of production is satisfied, the burden of production then shifts to Patent Owner to refute Petitioner’s argument by either showing the prior art does not actually render the claims unpatentable or does not qualify as prior art. Id. at 1380. The burden of production then shifts back to Petitioner to respond to Patent Owner’s argument. Id.” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any claim terms for construction and contends that “the prior art meets the claim terms under any reasonable interpretation.” Pet. 9. Petitioner also argues that the plain meaning of “pitch” may refer to interturn gap distance (IGD). See Pet. 35–36; see also id. at 5 (explaining IGD). Petitioner also presents an alternative argument in the event that pitch is limited to average center-to-center distance (CCD). Id. at 36–39. As we explain below, Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim under each of these constructions. Thus, we determine that no claim terms require express construction for purposes of this Decision. See, e.g., Nidec Motor Corp. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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 10
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,633,304 - PTAB · Mar 21, 2022 · IPR2021-01519 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–5, 9–12, 15, 16, and 20–23, finding a reasonable likelihood they would have been obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction under 35 U.S.C. § 314, which provides that 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.” A decision to institute under § 314 “authorize[s] the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelOther
“The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The parties’ dispute regarding level of ordinary skill in the art does not substantively impact our analysis in this decision; our analysis is the same under either parties’ assertion of ordinary skill in the art. We, thus, decline to resolve this dispute at this time.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“For purposes of this Decision, we agree with Patent Owner that the relevant term is a device for stereophotogrammetry and that no construction other than the plain and ordinary meaning for this term is required. We find support for this conclusion in the declaration of Petitioner’s expert, Dr. Otto. For example, Dr. Otto refers to “[p]rior art stereophotogrammetry devices” and a prior art publication “describing prior art stereophotogrammetry devices” having certain characteristics. Ex. 1003, Otto, Decl. ¶ 39. Dr. Otto also testifies that” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“comprises the light that passes through the respective aperture 4 or 5, and traverses different sets of mirrors and lenses to be focused on a different part of a charged coupled device to form respective first and second images. Ex. 1022, 12:14–25, Fig. 1B. At this stage of the proceeding, we agree with Petitioner and find that due to spaced mirrors 11 and 12—which are part of different light paths and which are hit by the light that passes through their respective aperture 4 or 5—the two images are necessarily taken at different angles. Id. at 12:14–25, Fig. 1B; Ex. 1003, Otto Decl. ¶ 235. In addition, at this stage of the proceeding, we find that Plassmann’s Figure 1B and the ’334 patent’s Figure 6 have substantively the same teachings as they relate to this limitation. Compare Ex. 1007, Fig. 1B, with Ex. 1022, Fig. 6 (each showing separate sub-optics for each image with spaced mirrors being hit by the light that passes through the respective apertures). Lastly, we also agree with Petitioner, at this stage of the proceeding, that because the images are captured using a single camera, that they are obtained simultaneously. Ex. 1003, Otto Decl. ¶ 235. At this stage of the proceeding, we find unavailing Patent Owner’s arguments that are premised on Petitioner annotating Figure 1B with blue and red lines that are parallel to each other when entering the adaptor 3. Prelim. Resp. 26–30. Patent Owner overreads the annotations to incorrectly limit the light used to form the images to light having a perpendicular orientation when passing through the respective apertures. Id. Plassmann, however, teaches no such limitation, but rather refers to “[l]ight passing through” the apertures, which includes light of any orientation that passes through the apertures. See Ex. 1007, 12:15–25, Fig. 1B. Thus, each sub-optic will receive light from, for example, the center point of the object to be” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,681,334 - PTAB · Mar 10, 2022 · IPR2021-01518 · APJ John D Hamann · IPR · Institution
Instituted IPR on claims 1–4, 8–12, 15, 16, and 20–23 on all asserted 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
“institution decision, we determine that Petitioner shows a reasonable likelihood that it would prevail in showing that claim 1 would have been obvious to one of ordinary skill in the art in view of the combination of Plassmann, Treuillet, and Staller. E. Challenged Claims 2–4, 8–11, 15, 16, and 20 At this stage in the proceeding, Patent Owner does not address separately Petitioner’s arguments and evidence as to how the combination of Plassmann, Treuillet, and Staller teaches the limitations of claims 2–4, 8–11, 15, 16, and 20. See generally Prelim. Resp. We have reviewed Petitioner’s arguments and evidence regarding these claims, and, on the current record, we find them persuasive for purposes of institution.” slip op. at 29
- Skill levelOther
“The parties’ dispute regarding the level of ordinary skill in the art does not substantively impact our analysis for purposes of institution. Rather, we find that in applying either parties’ definition for what comprises the level of ordinary skill in the art that Petitioner shows that there is a reasonable likelihood that it would prevail in proving the unpatentability of at least one of the challenged claims. Thus, we do not need to choose between the parties’ proposed definitions at this stage of the proceeding. During trial, and in accordance with our Rules, the parties should address what substantive effect, if any, the different proposed definitions for the level of ordinary skill in the art have on analyzing what the prior art teaches or in evaluating unpatentability of the challenged claims.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“The parties agree that the terms of the challenged claims should be afforded their plain and ordinary meaning. Accordingly, we do not provide any express constructions for any terms, and afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Ex. 1017,8 579; Ex. 1011,9 164, Fig. 2, Table 2; Ex. 1008,10 481. Additionally, it was known in the art to vary the focal distance from a subject in selecting a distance for optimal medical measurements. See Ex. 1015,11 4; Pet. 38. Thus, at this stage of the proceeding, we find that one of ordinary skill in the art would have found it obvious to modify Plassmann’s stereophotogrammetry device, based on what was known in the art, which also includes Staller’s teachings, to have multiple predefined distance positions. See KSR Int’l, Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,165,253 - PTAB · Mar 10, 2022 · IPR2021-01511 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–4 and 8–11 because Petitioner showed a reasonable likelihood of proving them obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” As discussed below, we determine that Petitioner shows a reasonable likelihood of prevailing with respect to at least one challenged claim. Accordingly, we institute inter partes review of all challenged claims based on all grounds asserted in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelOther
“The parties’ dispute regarding the level of ordinary skill in the art does not substantively impact our analysis for purposes of institution. Rather, we find that in applying either parties’ definition for what comprises the level of ordinary skill in the art that Petitioner shows that there is a reasonable likelihood that it would prevail in proving the unpatentability of at least one of the challenged claims. Thus, we do not need to choose between the parties’ proposed definitions at this stage of the proceeding. During trial, and in accordance with our Rules, the parties should address what substantive effect, if any, the different proposed definitions for the level of ordinary skill in the art have on analyzing what the prior art teaches or in evaluating unpatentabilty of the challenged claims.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther
“The parties agree that the terms of the challenged claims should be afforded their plain and ordinary meaning. Accordingly, we do not provide any express constructions for any terms, and afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“repeatable distance from the diffuser body.” Pet. 23, Ex. 1006, 2:23-65. The advantage of the plurality of pairs of light beams is taught by Staller: repeatability. Ex. 1006, 6:10–15 (referring a concern for “repeatable scale” to “improve the usefulness of close ranges for medical” applications). Plassmann already teaches use of one pair of light beams for positioning, and a person of skill in the art would have understood that the Plassmann device could benefit from multiple pairs of light beams in the same way the Staller device benefits from the multiple pairs of light beams to enable positioning at more than one repeatable distance from the camera. Ex. 1003 ¶¶ 138–139. As the Supreme Court has explained: [I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. . . . [A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established function. KSR Int’l, Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (emphasis added).” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,070,119 - PTAB · Sep 24, 2021 · IPR2021-00646 · APJ Michelle N Ankenbrand · IPR · Institution
The Board instituted IPR on claim 20 based on a reasonable likelihood that Ter-Hovhannisyan anticipates or renders it obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). 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 Director determines . . . 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 set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we determine the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail with respect claim 20. Accordingly, we institute an inter partes review.” slip op. at 2
- Adverse judgmentAdverse judgmentOther
“After the Petition was filed, Patent Owner disclaimed claims 1–19 of the ’816 patent. See Prelim. Resp. 3; Ex. 2001. Thus, this decision addresses only claim 20 of the challenged patent. 37 C.F.R. § 42.107(e) (“The patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) . . . disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“’816 patent would have [had] at least a bachelor’s degree in an engineering discipline and approximately three years of experience working on LED lighting technology and designs, including experience with thermal design and heat dissipation.” Pet. 7 (citing Ex. 1003 ¶ 53). Petitioner further asserts that “[r]elevant work experience could substitute for formal education and post-graduate education could substitute for work experience.” Id. (citing Ex. 1003 ¶ 53).” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Ter-Hovhannisyan discloses the annulus limitation, we consider claim 20’s remaining limitations. Petitioner asserts that Ter-Hovhannisyan discloses or would have rendered obvious claim 20’s remaining limitations. Pet. 43–44, 46 (citing Pet. 12, 20–28, 40–42 (Petitioner’s analysis for similar claim limitations recited in claim 1)). At this stage of the proceeding, Patent Owner does not separately address these limitations. We have reviewed Petitioner’s arguments (in the context of claim 20) and Dr. Bretschneider’s testimony and find that Petitioner shows sufficiently that Ter-Hovhannisyan anticipates or would have rendered obvious claim 20. Thus, Petitioner demonstrates a reasonable likelihood of prevailing in its challenge.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,985,816
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.