- Fujifilm Corporation v. Sony CorporationSome claims unpatentablePTAB · Nov 7, 2018 · IPR2017-01268 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 15 and 17 are unpatentable as anticipated by Ishikawa; the petitioner did not show claims 1–11, 16, and 18–20 unpatentable over Aonuma or Aonuma and Abe.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) at the time of the ’774 patent would have had “a bachelor’s degree in materials science, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience” in industry or academic research relating to magnetic tape, or “a master’s degree or higher” in the same fields and at least three years of experience relating to magnetic tape. Pet. 13 (citing Ex. 1003 ¶ 65; Ex. 1018 ¶ 60). Patent Owner does not dispute Petitioner’s assessment in its Response, and Dr. Talke agrees that it “is reasonable.” Ex. 2026 ¶¶ 25–26. Petitioner’s assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See 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 a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). Accordingly, we adopt Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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)). For the purposes of the Decision on Institution, we determined that, based on the record at that time, no claim term required express construction (Dec. on Inst. 7), and we see no reason to modify that determination in light of the record developed during trial. C.” slip op. at 9
- Expert testimonyPetitioner expert creditedMixed
“considerably greater than Ishikawa’s stylus load of 50–300 μN (Ex. 1015 ¶ 45). The Talke Declaration does not address this discrepancy, and Dr. Talke stated during his deposition that reducing the stylus load would reduce scratching of the magnetic tape surface. Ex. 1030, 108:14–19 (“Q: Would reducing the contact pressure for the stylus instrument reduce the scratching of the magnetic tape surface by the stylus? A: Yes, it would, but you have to remember the other problem is the diameter and size of the stylus.”). Moreover, Petitioner provides evidence that it was not uncommon to use stylus-type profilometers to measure the properties of magnetic tape, even after Bhushan was published in 1996. See Reply 6. In particular, Petitioner points to Saliba,6 which describes using a stylus-type profilometer, under identical conditions to those used in Ishikawa, to measure the surface characteristics (including peak-to-valley roughness) of the backcoating of magnetic tape. Ex. 1027, 7:28–40, 57–60. Petitioner further points to Ohno,7 which also describes using “a stylus type 3D profilometer in accordance with JIS B0601” to measure the surface roughness characteristics of magnetic tape. Ex. 1028 ¶ 36; see also Ex. 1015 ¶ 45 (Ishikawa explaining that surface roughness characteristics were measured “in accordance with JIS-B0601-1994”); Ex. 1027, 7:28–39 (Saliba explaining that surface roughness characteristics where measured “in accordance with JIS-B0601-1994”). Accordingly, we are persuaded that the 6 US Patent No. 6,558,774 B1, issued May 6, 2003 (Ex. 1027). 7 U.S. Patent App. Pub. No. US 2005/0175866 A1, published Aug. 11, 2005 (Ex. 1028). evidence establishes that a stylus-type profilometer is a suitable device for measuring the surface characteristics of magnetic tape.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner that Ishikawa teaches “peak-to-valley roughness less than about 325 nm” as recited in claim 15. Pet. 24–25; Reply 5–8; Ex. 1003 ¶ 216. In particular, Ishikawa teaches a backcoating layer of a magnetic tape that has a peak-to-valley roughness “Rz of 40 to 250 nm, particularly 50 to 200 nm.” Ex. 1015 ¶ 44. Ishikawa provides five example embodiments of its magnetic tape, and reports the measurements of a number of characteristics of the backcoat layer for each example, including peak-to-valley roughness Rz. Id. ¶¶ 120–134, Table 1. Ishikawa discloses that peak-to-valley roughness Rz was measured using a stylus-type profilometer under the following conditions: Stylus: diameter: 1.5 to 2.5 μm; curvature: 60º Contact pressure: 50 to 300 μN Cut-off length: 80 μm Sampling length: 80 μm Assessment length: 400 μm Id. ¶¶ 45, 49. The reported peak-to-valley roughness Rz values for the five examples ranged from 58 to 87 nm, as shown in the annotated portion of Ishikawa Table 1 from the Petition, reproduced below: Pet. 24 (citing Ex. 1015, Table 1). The annotated portion of Ishikawa Table 1 shows the results for the measured characteristics of the backcoat layer of Examples 1–5, with the peak-to-valley roughness Rz values highlighted by a red box. Id. Because Ishikawa teaches that the backcoating layer of its magnetic tape should have a peak-to-valley roughness “Rz of 40 to 250 nm, particularly 50 to 200 nm,” and because Ishikawa presents examples of magnetic tape with backside surfaces having a peak-to-valley roughness of 87 nm or less, Ishikawa discloses “a peak-to-valley roughness less than about 325 nm” as recited in claim 15.” slip op. at 16
Patent outcomesUS 7,029,774 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,029,774 - Power Integrations, Inc. v. Semiconductor Components Industries, LLCAll claims unpatentablePTAB · Nov 7, 2018 · IPR2017-01329 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 16–18 and 21 are unpatentable as obvious over the combination of Yang ’089 and Yang ’824.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“In consideration of the above, we recognize a programmable signal can be selected to be constant or variable over time. Therefore, in this Decision, we apply the same construction applied in the Decision to Institute, i.e., we construe “programmable signal” to mean a selectable or potentially variable voltage or current signal. We address whether the combination of the references discloses a correlation between the claimed “programmable signal” and the claimed “input of the LED drive circuit” in our analysis of the combination of Yang ’089 and Yang ’824 that appears later in this Decision.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“motivated to combine the programmable LED driver of Yang ’089 with the current loop disclosed in Yang ’824 to generate the signal that switches the transistor switch. Pet. 40–41. Yang ’089 controls the current on the primary side on the magnetic device and uses that controlled primary side current to drive the LEDs. Ex. 1004, Fig. 3. Yang ’824 also controls the current on the primary side of the magnetic device (i.e., transformer 10), but provides the output current to the LEDs on the secondary side of the magnetic device. Ex. 1003, Fig. 1. Specifically, “[t]he secondary side switching current IS is determined by the primary side switching current IP and the winding turns of the transformer 10.” Id. at 3:28–30. Petitioner argues that the primary side regulator of Yang ’824 provides safety enhancing galvanic isolation and that Yang ’824 states “it is desirable to provide a control circuit for controlling output current of the power converter at the primary side of the power converter.” Id. at 40 (citing Ex. 1003, 1:18–20). Thus, Petitioner asserts that it would have been desirable to make a primary side controller for controlling LEDs with a programmable input by combining the teachings of Yang ’824 and Yang ’089. Id. (citing Bohannon Decl., Ex. 1008 ¶¶ 101, 105). According to Petitioner, using a programmable input such as that disclosed in Yang ’089 to modulate the output current of the switching signal of the controller, as shown in Yang ’824, uses a known technique to modify a known controller and yields predictable results. Id. at 41.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“of the LED by programming delay time T D. PO Resp. 44 (citing Pet. 48– 49). In Yang ’089, there is no clear correlation between the value of VCNT and the input of the LED drive circuit. Although delay T D is a function of the value of VCNT, VCNT in Yang ’089 appears to be a function of the desired LED brightness, independent of an input of the LED drive circuit. Although Petitioner explains that VCNT is programmable and that claim 16 does not recite how the programmable signal is generated, as is the case with all but the embodiment of Figure 2 of the ’764 patent, it remains unclear how VCNT in Yang ’089 is correlated to an input of the LED drive circuit. Pet. Reply 22–24.” slip op. at 21
- ExcludeMotion to exclude, deniedDenied
“Mr. Bohannon’s testimony. There need not be a perfect match between the expert’s qualifications and the patent at issue. See SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). It is not necessary for Mr. Bohannon to demonstrate that he spent the bulk of his career designing power supplies. Indeed, to testify as an expert under FRE 702, a person need not be one of ordinary skill, but may be “‘qualified in the pertinent art.’” See B/E Aerospace, Inc. v. MAG Aerospace Indus. LLC, Case IPR2014-01513 (PTAB March 18, 2016) slip op. at 13–14 (Final Written Decision) (sustaining consideration of testimony of expert witness that lacked hands-on experience with the claimed subject matter). We agree with Petitioner that Mr. Bohannon’s experience over 25 years, including his work on “buck and boost” converters and flyback power supplies provides him sufficient experience and knowledge of the claimed subject matter for his opinion to remain of record. Indeed, although the academic background of Patent Owner’s expert, Dr. Holberg, is extensive, his CV and declaration state only that he has “experience with the technology described in the ’764 Patent” including various electrical components and circuits involved (resistors, transformers, switching circuit). Ex. 2001 ¶ 8. Patent Owner’s expert, Dr. Holberg, states that he has designed high frequency synthesizers for hard-disk read-channel applications and started a company where he designed A/D converters, and other circuits, but does not state explicitly that he designed power supplies. Id. ¶ 11. We further note that neither expert’s testimony has been a significant factor in determining the outcome of this proceeding. Our citations to Mr. Bohannon’s testimony mostly concern Patent Owner’s criticism of Mr. Bohannon’s testimony in the Patent Owner Response. For example, Petitioner points out that Patent Owner’s discussion of the “input circuit” limitation in claim 16, alleging that Mr. Bohannon did not appreciate the difference between a wire and a circuit with buffers and other circuit elements, takes Mr. Bohannon’s testimony out of the context of the combination of the references. Opp. To Mot. To Exclude 4–5. Policy considerations for excluding expert testimony, such as those implemented by the gatekeeping framework established by the Supreme Court in Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579 (1993), are less compelling in bench proceedings such as inter partes reviews than in jury trials. See, e.g., Volk v. United States, 57 F. Supp. 2d 888, 896 n.5 (N.D. Cal. 1999); In re Bay Area Material Handling, Inc., No. C 95-1163 VRW, 1995 WL 729300, at *6 (N.D. Cal. Dec. 4, 1995). In the context of this proceeding, we can assess adequately each expert’s testimony and assign it appropriate weight.” slip op. at 34
Patent outcomesUS 9,049,764 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 9,049,764 - PTAB · Nov 6, 2018 · IPR2017-01328 · APJ Kamran Jivani · IPR · Final written decision
The Board canceled claims 14 and 15 and denied entry of substitute claims 16 and 17 because their feedback-signal limitation introduced unsupported new matter.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“must determine whether the motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. A motion to amend “may not enlarge the scope of the claims of the patent or introduce new matter.” 35 U.S.C. § 316(d)(3). Further, our rules provide that “[a] motion to amend may be denied where . . . [t]he amendment seeks to enlarge the scope of the claims of the patent or introduce new subject matter.” 37 C.F.R. § 41.121(a)(2)(ii). In the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), the lead plurality opinion explains that “the patent owner must satisfy the Board that the statutory criteria in § 316(d)(1)(a)–(b) and § 316(d)(3) are met and that any reasonable procedural obligations imposed by the Director are satisfied.” Id. at 1305– 06; see also id. at 1341 (“There is no disagreement that the patent owner bears a burden of production in accordance [with] 35 U.S.C. § 316(d).” (Reyna, J., writing for a majority)). We, therefore, must determine whether Patent Owner has made a showing sufficient to establish that its Motion to Amend complies with Section 316(d)(3).” slip op. at 10
- ExcludeMotion to exclude, deniedDenied
“V. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner moves to exclude Petitioner’s Exhibits 1015 and 1017, which are declarations of Mr. Bohannon, “on the basis that Mr. Bohannon is not qualified to testify as an expert with respect to the technology in this [proceeding].” Paper 29, 2. We dismiss as moot Patent Owner’s motion because we did not rely on Exhibits 1015 and 1017 in our determination above that Patent Owner did not show adequate support for proposed substitute claims 16 and 17. See supra Section III.B.” slip op. at 15
NonePatents in suitUS 6,845,019 - Reshape Medical LLC v. Fulfillium, Inc.Institution deniedPTAB · Nov 6, 2018 · IPR2018-00957 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–30 would be unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority 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 “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; see also 37 C.F.R. § 42.4(a). Upon consideration of the Petition, Preliminary Response, and the associated evidence, we determine that Petitioner has failed to demonstrate a reasonable likelihood it would prevail with respect to at least one of the challenged claims. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- BurdenNot shown unpatentable
“We, therefore, conclude that Petitioner has not provided adequate explanation or reasoning for the proposed combination of Bangs and Foster. 37 C.F.R. § 42.104(b)(4),(5); KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Petitioner does not rely on Lai, Jambor, or Gottschalk to remedy the deficiency. Accordingly, Petitioner has not shown a reasonable likelihood of success of prevailing on this combination.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Viewing the evidence as a whole, we determine that Petitioner has not provided adequate motivation for modifying Bang’s dual balloon device to space its balloons apart such that it would “assume[] a curved shape conforming to a natural three-dimensional kidney shape of the gastric cavity,” as required by independent claim 1. This would require a substantial reconstruction of Bang’s design and Petitioner has not provided sufficient countervailing rationale for doing so.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner
“Patent Owner responds again that neither Petitioner nor Dr. Alverdy explains how the resulting modified Bangs device would be constructed, and as such, the Petition relies purely upon hindsight. Prelim. Resp. 30. Patent Owner asserts that Bangs expressly teaches a different mechanism to prevent the device from passing through the pyloric valve. Prelim. Resp. 30–31. We agree with Patent Owner. In making this determination we note that Bangs discloses “proximal balloon 15 prevents accidental withdrawal of the catheter associated with deflation of the distal balloon” and “[p]assage of the balloon distally into the small bowel is avoided because the catheter is anchored to the abdominal wall.” Ex. 1005, 6:4–9. Thus, we agree with Patent Owner that “Petitioner’s assertion that a ‘POSITA would have recognized that one benefit of the double balloon construction of the intragastric device of Bangs is that deflation of one of the balloons would not affect the inflated volume of the other balloon’ is entirely contrary to the teaching of Bangs.” Prelim. Resp. 31.” slip op. at 20
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,456,915 - Reshape Medical LLC v. Fulfillium, Inc.Institution deniedPTAB · Nov 6, 2018 · IPR2018-00958 · APJ James A Worth · IPR · Institution
Institution was denied for claims 1–30 because the Petition did not adequately explain the proposed prior-art combinations or show a reasonable likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted unless the information presented in the Petition shows “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. Upon consideration of the Petition, Preliminary Response, and the associated evidence, we determine that Petitioner has failed to demonstrate a reasonable likelihood it would prevail with respect to at least one of the challenged claims. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We are persuaded by Patent Owner that Petitioner’s proposed modification of Bangs with Foster would result in a substantial reconstruction of Bang’s design. See Ratti, 270 F.2d at 813 (modification would require a substantial reconstruction and redesign of its elements as well as a change in the basic principles under which its construction was designed to operate). We also agree with Patent Owner that Petitioner and Alverdy fail to explain how the balloons, lumens, valves and other structures of Bangs might be modified in size, shape, and/or design to allow for the device of Bangs to be inserted into the patient and filled through the esophagus as disclosed in Foster as opposed to the percutaneous method disclosed in Bangs.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached
“Patent Owner responds again that neither Petitioner nor Dr. Alverdy explains how the resulting modified Bangs device would be constructed, and as such, the Petitioner relies purely upon hindsight. Prelim. Resp. 30. Patent Owner asserts that Bangs expressly teaches a different mechanism to prevent the device from passing through the pyloric valve. Prelim. Resp. 30–31. We agree with Patent Owner that the Petition is deficient in these respects. In particular, Bangs discloses that “proximal balloon 15 prevents accidental withdrawal of the catheter associated with deflation of the distal balloon” and “[p]assage of the balloon distally into the small bowel is avoided because the catheter is anchored to the abdominal wall.” Ex. 1005, 6:4–9. We agree with Patent Owner that “Petitioner’s assertion that a ‘POSITA would have recognized that one benefit of the double balloon construction of the intragastric device of Bangs is that deflation of one of the balloons would not affect the inflated volume of the other balloon’ is entirely contrary to the teaching of Bangs.” Prelim. Resp. 31.” slip op. at 21
- PTAB / AIA Trials › Real party in interest / privityNot reached
“The parties’ other arguments, including Patent Owner’s arguments regarding the presence of additional real parties-in-interest (Prelim. Resp. 4– 22) are rendered moot.” slip op. at 40
§ 103 obviousnesscites KSRPatents in suitUS 9,445,930 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentablePTAB · Nov 6, 2018 · IPR2017-01149 · APJ Karl D Easthom · IPR · Final written decision
Claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 are unpatentable as obvious over Young ’801, Young ’121, Strubbe, and the respective additional reference in each trial.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“observations from that deposition or seek authorization to file a sur-reply. In view of these circumstances, we deny Patent Owner’s Motion to Exclude.” slip op. at 126
Patent outcomesUS 6,418,556 unpatentableNonecites PhillipsPatents in suitUS 6,418,556 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentablePTAB · Nov 6, 2018 · IPR2017-01150 · APJ Karl D Easthom · IPR · Final written decision
Claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 are unpatentable as obvious over Young ’801, Young ’121, Strubbe, and Moro, Reiter, or Remillard.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“III. CONCLUSION For the foregoing reasons, Petitioner has shown, by a preponderance of the evidence, that the subject matter of claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 would have been obvious over the combination of Young ’801, Young ’121, Strubbe, and either Moro (48Pet.), Reiter (49Pet.), or Remillard (50Pet.).” slip op. at 126
- ExcludeMotion to exclude, deniedDenied
“12. Motion to Exclude Patent Owner moves to exclude paragraphs 8, 24, 27–30, 32 and 38 of” slip op. at 123
Patent outcomesUS 6,418,556 unpatentable§ 103 obviousnesscites PhillipsPatents in suitUS 6,418,556 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentablePTAB · Nov 6, 2018 · IPR2017-01148 · APJ Karl D Easthom · IPR · Final written decision
Claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 are unpatentable as obvious over the stated combinations in each of the three trials.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“of the evidence, that the subject matter of claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 would have been obvious over the combination of Young ’801, Young ’121, Strubbe, and either Moro (48Pet.), Reiter (49Pet.), or Remillard (50Pet.). IV. ORDER ORDERED that 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 of U.S. Patent No. 6,418,556 B1 are unpatentable as a result of each trial as a separate matter, IPR2017-01148, IPR2017-01149, and IPR2017-01150;” slip op. at 126
- ExcludeMotion to exclude, deniedDenied
“observations from that deposition or seek authorization to file a sur-reply. In view of these circumstances, we deny Patent Owner’s Motion to Exclude.” slip op. at 126
Patent outcomesUS 6,418,556 unpatentable§ 103 obviousnesscites PhillipsPatents in suitUS 6,418,556 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentablePTAB · Nov 6, 2018 · IPR2017-01151 · APJ Karl D Easthom · IPR · Final written decision
Claims 23 and 25–27 are unpatentable as obvious over Young ’801, Young ’121, Strubbe, and any one of Moro, Reiter, or Remillard.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“would not have interpreted Young ’801’s system as restricted to a single page limited to time slots ranging from 11:00 am to 12:30 pm as depicted in Figure 6 of Young ’801. See Ex. 1720 ¶ 24 (describing Dr. Bovik’s restricted view of Young ’801 as unreasonable). This restricted reading of Young ’801 unreasonably constrains the use of the guide to 1.5 hours, something the Petitions do not do, contrary to Patent Owner’s arguments that the Reply shifts to new theories. See Rep. Opp. Mot. Exc. 2–5. To elaborate and address Patent Owner’s arguments and Dr. Bovik’s testimony, Mr. Wechselberger responds with a citation documenting well-known cursor navigation aspects of the same concept involved in spreadsheets (Ex. 1722) and elaborates about minimal program guide layout or format changes that go hand-in-hand with the Petitions’ assertions of guide size reduction. See Ex. 1720 ¶ 24; Opp. Mot. Exc. 9–11 (discussing Ex. 1720 ¶¶ 36–37, 129– 131, 136–137, 158), 11 (noting Dr. Bovik stated in his deposition “a user would have been ‘confined to the visible screen’”) (citing Ex. 1721, 56:16– 23, 108:25–109:8, 116:17–117:2; Ex. 2706 ¶¶ 51–52). In summary, the Petition cites to portions of Young ’801 that describe the page mode and generally advance the theory of moving a cursor across, upward, and to the right to obtain consecutively displayed and successive portions of schedule information, citing portions that describe new pages and cursor jumps. Petitioner did not create a new theory about how the page guide operates but responded to Patent Owner’s arguments. Patent Owner chose not to avail itself of the opportunity to depose Dr. Wechselberger about his second declaration and thereafter file observations from that deposition or seek authorization to file a sur-reply. In view of these circumstances, we deny Patent Owner’s Motion to Exclude.” slip op. at 92
- Skill levelSkill level petitioner adoptedDecided for petitioner
“materially similar description of a person of ordinary skill in the art. See PO Resp. 14–15 (citing Ex. 2706 ¶¶ 1–19). During the Oral Hearing, Patent Owner indicated any differences between Petitioner’s and Patent Owner’s descriptions do not create a dispositive issue. See Tr. 66:11–18. On this record, Petitioner’s description comports with the level of ordinary skill implied by the prior art references discussed further below. Accordingly, we adopt it.” slip op. at 38
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“8. Young ’801, Young ’121, Strubbe, and Moro Petitioner persuasively shows that claims 23 and 25–27 the” slip op. at 47
Patent outcomesUS 6,418,556 unpatentable§ 103 obviousnessPatents in suitUS 6,418,556 - Hengdian Group Dmegc Magnetics Co., Ltd. / Zhejiang Innuovo Magnetics Co., Ltd. et al. v. Hitachi Metals, Ltd.No claims unpatentablePTAB · Nov 2, 2018 · IPR2017-01312 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Petitioner did not prove claims 1–12 unpatentable: Zhou-based combinations lacked a supported motivation to combine, and Ren did not anticipate or render the claims obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not observe meaningful differences between the parties’ assessment of a person having ordinary skill in the art. We further note that both assessments appear consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See 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 a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Our determination regarding the patentability of the challenged claims does not turn on the differences between these definitions. We adopt Petitioner’s assessment, but note that our conclusions would be the same under Dr. Moran’s assessment. B.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“reasonable construction in light of the specification of the patent in which [the claims] appear[].” 37 C.F.R. § 42.100(b) (May 2, 2016); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).9 Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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)). 9 The revised claim construction standard for interpreting claims in inter partes review proceedings as set forth in the final rule published October 11, 2018 does not apply to this proceeding, because the new “rule is effective on November 13, 2018 and applies to all IPR, PGR and CBM petitions filed on or after the effective date.” Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). For purposes of the Institution Decision, we construed “controlled environment” as set forth in independent claims 1 and 2 to mean “an air environment in which one or more conditions are controlled.” Dec. on Inst. 10. The parties do not contest our construction of the term “controlled environment” (see PO Resp. 3; Pet. Reply 1; Supp. PO Resp. 3–5; Supp. Pet. Reply 2), and we see no reason to modify that construction in light of the record developed at trial. C.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“that Zhou is unclear as to whether its test atmosphere is an air or inert environment. Much of the evidence, as described above, could support either interpretation. It is Petitioner’s burden, however, to establish facts supporting its challenge that claims 1, 2, 6, and 8–12 would have been obvious over the combined teachings of Zhou and Young by a preponderance of the evidence. 35 U.S.C. § 316(e); see also Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). “Failure to prove the matter as required by the applicable standards means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden loses.” Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008). Because Petitioner’s argument that a POSA would have been motivated to apply the environmental conditions of Zhou’s retention step to Young’s open-to-the air pressing step is based on its contention that Zhou’s test atmosphere was air, and because Petitioner has not established that Zhou’s test atmosphere was air, we are not persuaded that Petitioner has made a sufficient showing that a POSA would have combined the teachings of Zhou and Young in the manner proposed. Accordingly, we find that Petitioner has not shown by a preponderance of the evidence that claims 1, 2, 6, and 8–12 of the ’565 patent are unpatentable under 35 U.S.C. § 103 as obvious over the combined teachings of Zhou and Young. F.” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. As set forth above, we interpreted “controlled environment” to mean “an air environment in which one or more conditions are controlled.” See supra Section II.B. Ren discloses controlling the conditions of an isolated, inert gas environment. See, e.g., Ex. 1003, 2:48–54 (“The isolated environment generally comprises . . . means for supplying inert gas into the enclosure and desiccating agents disposed between the inert gas supply means and the enclosure, along with desiccating agents within the enclosure.”), 7:53–57 (“Pumping an inert gas, such as nitrogen, into a sealed environment is an effective means for reducing the oxygen content from in [sic] the surrounding environment, but this does not reduce or eliminate H2O from the surrounding environmental humidity.”), 9:16–20 (“After placing the individually-wrapped packages of magnetic powder into the isolated environment, a flow of inert gas” into the isolated environment is activated, and “[t]he inert gas purges humidity and/or oxygen from the isolated environment.”). Consequently, we are not persuaded that Petitioner has established that Ren teaches “providing a controlled environment having a temperature ranging from 5° C. to 30° C. and a relative humidity ranging from 40% to 65%” as recited in independent claims 1 and 2. Therefore, based on our review of the record, we find that Petitioner has not established by a preponderance of the evidence that claims 1 and 2, and claims 6 and 8 that depend directly therefrom, are anticipated by Ren. H.” slip op. at 26
Patent outcomesUS 6,461,565 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,461,565
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.