- Canon U.S.A., Inc. / Canon Inc. v. Slingshot Printing LLCAll claims unpatentablePTAB · Apr 9, 2024 · IPR2022-01416 · APJ Garth D Baer · IPR · Final written decision
Claims 1–3, 5–7, 10–12, and 14–16 are unpatentable: claims 1, 3, 5, 10, 12, and 14 as anticipated by Studer ’708, and claims 2, 6, 7, 11, 15, and 16 as obvious over Studer ’708 …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “at least a Bachelor’s or Master’s level college degree in Mechanical Engineering, Materials Science, Physics, Electrical Engineering, or a related field, and at least two years of training or experience in the design of inkjet cartridges and printheads.” Pet. 17 (citing Ex. 1011 ¶¶ 19–20). Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. PO Resp. 20. We agree with and adopt Petitioner’s description as it is consistent with the asserted prior art and the challenged patent’s specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“as a “physical structure other than the convoluted passageways inherently present in a capillary material such as felt, providing a more direct path for air to move from a space in the exit port of the fluid supply tank to the vent in the cover of the tank.” PO Resp. 20. Petitioner does not propose any express constructions for any claim terms. Pet. 17. We determine that no 3 US 5,671,001, issued Sept. 23, 1997 (Ex. 1006, “Elliot”). 4 US 2005/0212878 A1, published Sept. 29, 2005 (Ex. 1005, “Studer ’878”). claim terms require express construction for us to determine unpatentability. 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))).” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We disagree with Patent Owner’s arguments. As Petitioner notes, Studer ’708 discloses airflow in the claimed direction because it teaches “methods of the present invention . . . include venting a fluid container to ambient air with a vent located on the upper portion of the container.” Pet. 11 (quoting Ex. 1003, 7:39–41) (emphasis added). Studer ’708’s overall emphasis on venting air towards, rather than away from, its fluid interconnect port does not undermine Petitioner’s assertion that the system vents in the opposite direction, as well. Petitioner’s expert, Dr. Pond, presents testimony explaining why that is so: “Studer 708’s air vents, air channels, and air spaces are open to the ambient atmosphere for the movement of air both to and from all such spaces.” Ex. 1011 ¶ 109. Further, “a PHOSITA would understand that the direction of this air flow is governed by air pressure inside and outside of the container and necessarily flows both internally and externally.” Id. ¶ 110. In addition, Dr. Pond explains conditions when “air from inside the container 12 must also be vented outside the container” including during “changes in temperature or pressure, jostling or dropping during shipping, or installation of the container into the printer.” Id. ¶ 89. With this explanation, Petitioner has shown sufficiently that Studer ’708 discloses the claimed internal vent conduit for removing and releasing air, as the challenged claims require. (2) Claims 1 and 10 Summary Other than the argument addressed above, Patent Owner does not additionally challenge Petitioner’s anticipation challenge to claims 1 and 10. We have reviewed Petitioner’s arguments and evidence (see Pet. 18–34) and, based on that analysis as outlined above, we find Petitioner has shown by a preponderance of the evidence that Studer ’708 anticipates independent claims 1 and 10.” slip op. at 11
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“additional elements in claims 2, 6, 7, 11, 15, and 16, Patent Owner raises two arguments in contesting whether it would have been obvious to combine the two references. See PO Resp. 47–50. First, Patent Owner argues Studer ’708 and Studer ’471 are not analogous art because “Studer ’471 addresses the problem of air pockets being trapped within the capillary material, while Studer ’708 is directed to the entirely different issue of channeling air toward a fluid interconnect port to prevent leakage.” Id. at 48. We disagree with Patent Owner’s argument because Studer ’708 and Studer ’471 are both within the same field of endeavor and address the same problem as the ’523 patent. Specifically, as Petitioner explains, “[j]ust like the ’523 patent, Studer 708 and Studer 471 are generally directed to capillary-filled ink containers that are removably connected to a printhead, and more specifically, to managing the air pressure and air pockets within capillary-filled ink containers.” Pet. 57; see In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).” slip op. at 13
Patent outcomesUS 7,938,523 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,938,523 - Canon U.S.A., Inc. / Canon Inc. v. Slingshot Printing LLCAll claims unpatentablePTAB · Apr 9, 2024 · IPR2022-01414 · APJ Garth D Baer · IPR · Final written decision
Claims 1–5 and 8 are unpatentable as obvious over Torgerson and Bruce; the Board did not reach the alternative Furukawa and Torgerson ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“had “at least a Bachelor’s or Master’s level college degree in Mechanical Engineering, Materials Science, Physics, Electrical Engineering, or a related field, and at least two years of training or experience in the design of inkjet printheads or semiconductor circuit layout.” Pet. 17–18 (citing Ex. 1007 1 US 6,412,917 B1, issued July 2, 2002 (Ex. 1004, “Torgerson”). 2 US 7,240,997 B2, issued July 10, 2007 (Ex. 1005, “Bruce”). 3 Certified English Translation of JP 1996-108536 A, published Apr. 30, 1996 (Ex. 1006, “Furukawa”). ¶ 58). Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. PO Resp. 27. We agree with and adopt Petitioner’s description as it is consistent with the asserted prior art and the challenged patent’s specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction Neither party proposes an express construction for any claim terms. Pet. 18; PO Resp. 28. We determine that no claim terms require express construction for us to determine unpatentability. 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))).” slip op. at 6
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Patent Owner argues that Petitioner’s rationale for its combination fails for several reasons, none of which we find persuasive. First, Patent Owner argues “[t]he primary goals of Torgerson and Bruce are quite different” because Torgerson teaches a power transistor configuration that addresses “varying parasitic resistance,” whereas Bruce’s configuration addresses “avoiding electrical noise.” PO Resp. 44. We disagree with Patent Owner’s argument. To the extent Patent Owner is asserting Torgerson and Bruce are non-analogous art, clearly both are from the same field of endeavor as the ’341 patent because they, like the ‘341 patent, describe semiconductor substrates for ink-jet printheads. Pet. 42; Ex. 1007 ¶ 117. Thus, Torgerson and Bruce are analogous to the ’341 patent. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“These arguments, however, do not undermine that Bruce’s approach is an obvious design choice because it is one of just two basic options for placing the ground bus. In addition, Patent Owner’s arguments do not undermine Bruce’s benefits related to energy variation, even if those benefits might come at the potential cost to flexibility as Patent Owner contends. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another.”). Lastly, we disagree with Patent Owner because Petitioner does not need to show that Bruce’s ground-layer design “was an improvement in a categorical sense” over Torgerson’s, so long as Bruce’s technique was known and one skilled in the art would understand that implementing it had advantages. See Intel Corp. v. Pact XPP Schweiz AG, 61 F.4th 1373, 1381 (Fed. Cir. 2023) (quotation marks omitted); In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[O]ur case law does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art.”). In sum, given the benefits related to energy variation, size, and cost, Petitioner has articulated sufficient reasoning with rational underpinning to support the legal conclusion that its proffered combination would have been obvious to one skilled in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We also agree with Petitioner that Bruce’s approach would have been one of “a finite number” of known, “predictable solutions,” and therefore obvious. See id. at 420.” slip op. at 11
Patent outcomesUS 7,195,341 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 7,195,341 - PTAB · Apr 2, 2024 · IPR2023-01414 · APJ Jeffrey W Abraham · IPR · Institution
The Board instituted IPR on claims 1–4 and 9–12 across all asserted grounds, finding a reasonable likelihood that claims 1–4 and 9–12 are obvious over Li-748, Tong, and Mao.
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) (2023). 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.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a Bachelor’s degree in Electrical Engineering, Computer Engineering, Computer Science, or a related field, and at least 2 years of experience in the field of wireless communication, or had equivalent education, work, or” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“After considering the arguments and information presented in the Petition, we determine that it is not necessary to construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). We do note, however, that limitation [9f] refers to producing “the transmitter beamforming information,” but the phrase “transmitting beamforming information” does not appear earlier in claim 9. We, therefore, question whether there is proper antecedent basis for “the transmitter beamforming information” in [9f]. We invite the parties to address this issue to clarify the language in claim 9 during the course of the proceeding.” slip op. at 9
Claim constructioncites PhillipsPatents in suitUS 8,416,862 - PTAB · Apr 2, 2024 · IPR2023-01410 · APJ Barbara A Parvis · IPR · Institution
Instituted IPR of claims 1–7 and 9–12 on all asserted grounds after finding a reasonable likelihood of success on at least one claim under either §103 combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “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). Upon consideration of the contentions and the evidence of record at this preliminary stage, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’075 patent. Accordingly, we grant Petitioner’s request and institute an inter partes review of all challenged claims of the ’075 patent and with respect to all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had at least a graduate degree in mechanical engineering, physics, materials science, electrical engineering, or a related discipline, coupled with at least four years’ experience in designing backlighting systems for displays; the level of ordinary skill in the art is approximate and additional education could make up for a lack of experience or vice-versa. Pet. 8 (citing Ex. 1003 ¶ 28). Patent Owner argues that a person of ordinary skill in the art would have [had] (a) a Bachelor’s of Science degree in a technical field and at least four years of experience in the field of design and/or manufacture of display systems; (b) a Master’s of Science degree in a technical field and at least two years of experience in the field of design and/or manufacture of display systems; or (c) a PhD in a technical field relating to the design and/or manufacture of display systems. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. 4 Neither party presents objective evidence of nonobviousness at this stage of the proceeding.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“We preliminarily find that column 6, lines 47 through 51 of the ’075 patent provides a meaning of the term “on.” That disclosure in the ’075 patent states that “[i]t will be understood that when an element such as a layer, region or substrate is referred to as being ‘on’ or extending ‘onto’ another element, it can be directly on or extend directly onto the other element or intervening elements may also be present.” Ex. 1001, 6:47–51 (emphasis added). Our preliminary finding is consistent with both parties’ constructions proposed in the parallel district court case. Prelim. Resp. 4; Ex. 2003, 4. We agree with Patent Owner that the disagreement between the parties in the parallel district court case appears to be of form, rather than substance. Prelim. Resp. 5. We decline to resolve that dispute here. We also preliminarily find that Patent Owner’s construction in this proceeding prohibiting airgaps is not consistent with the meaning of the term “on” based on the intrinsic record as understood based on the arguments made at this early juncture. Because intervening elements, such as a diffuser sheet, may be present, the intrinsic record does not support a narrow meaning of the term “on.” As will be discussed further below, the ’075 patent describes in “contrast” to the term “on,” the term “directly on” means “there are no intervening elements present.” Ex. 1001, 6:51–53. We, therefore, preliminarily find that construing “on” such that airgaps may be present is consistent with the claim language and patent disclosure. Ex. 1001, 6:47–51, 21:51–22:3.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We also preliminary find that Mok does not teach away from Petitioner’s proposed combination. We agree with Patent Owner to the extent that Mok discloses that “[g]enerally speaking, larger spaced-distances 48 will improve the uniformity of the light produced by the panel, but at the expense of panel thickness and some loss of efficiency.” Ex. 1005 ¶ 23. Mok’s description, however, continues as follows “[b]y way of example, in one embodiment, the diffuser 16 is separated from the base panel 12 by a distance 48 of about 50 millimeters (mm) or less.” Id. Our reviewing court has explained that “[t]he fact that [a] motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another.” See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). We preliminarily find that the relative advantages (e.g., reduced panel thickness) and disadvantages (e.g., reduced light uniformity) of modifying Mok’s lighting panel to include Holman’s stacking arrangement amount to a tradeoff is a decision within the level of an ordinarily skilled artisan. Indeed, Mok acknowledges this tradeoff. See Ex. 1005 ¶ 23 (“Generally speaking, larger spaced-distances 48 will improve the uniformity of the light produced by the panel, but at the expense of panel thickness and some loss of efficiency.”). For the reasons given, we determine that Petitioner has shown sufficiently that each of Mok alone and the combination of Mok and Holman teaches element 1D for purposes of institution. We also preliminarily find Petitioner’s reasons for combining the asserted art are sufficiently persuasive for institution. Petitioner’s arguments that a person having ordinary skill in the art would have had a reasonable expectation of success (see § III.E.1) also are sufficient for purposes of institution. We preliminarily find that Petitioner’s showing is not undermined by Patent Owner’s arguments at this early stage.” slip op. at 28
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,294,075 - PTAB · Mar 20, 2024 · IPR2023-01401 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 17–25 on all asserted grounds, finding a reasonable likelihood that Hisense would prove at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute 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) (2018); see 37 C.F.R. § 42.108 (2023). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’331 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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 in applying either parties’ definition for what comprises the level of likelihood that it would prevail in proving the unpatentability of the challenged claims. At this stage of the proceeding, however, we adopt Petitioner’s proposed definition of the level of skill for one of ordinary skill in the art. Pet. 9. This definition for the level of ordinary skill is consistent with the ’331 patent and the asserted prior art, and we apply it in our analysis below. During trial, and in accordance with our Rules, the parties should address what substantive effect, if any, different proposed definitions for the level of ordinary skill in the art have on analyzing what the prior art teaches or in otherwise evaluating unpatentability of the challenged claims.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b); 83 Fed. Reg. 51,340, 51,340–41, 51,343 (Oct. 11, 2018). In applying such standard, claim terms generally are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Pet. 9; Prelim. Resp. 5–6. Thus, for purposes of our Decision on Institution, we afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We agree with Petitioner and find that one of ordinary skill in the art would have been motivated to combine Lys and Grootes’s teachings to have a current supply circuit for each LED string in Lys’s lighting unit to achieve better color and brightness control and uniformity, and to achieve a desired white point. Pet. 18–20 (citing Ex. 1003 ¶¶ 82–84, 89), 24 (citing Ex. 1003 ¶ 61). At this stage, we find persuasive Mr. Betancourt’s cited testimony on this issue as it is consistent with Lys and Grootes’s teachings. For example, Lys teaches with respect to a lighting unit 102 that “[t]he sources 300 can also be mixed, including sources 300 of varying wavelength, intensity, power, quality, light output, efficiency, efficacy or other characteristics,” allow light of different colors or color temperatures, including color temperatures of white.” Ex. 1005, 37:3–8 (emphasis added). And Grootes explains, for example, that “[e]ach current source 40–42 is controllable to control the brightness of its associated LEDs to achieve the desired white point.” Ex. 1006 ¶ 41. We also agree with Petitioner and find that one of ordinary skill in the art would have had a reasonable expectation of success in combining Lys and Grootes’s teachings to produce a lighting system having separate circuits for supplying each of the currents for the LED strings. Pet. 18; Ex. 1003 ¶ 88. Nor at this stage do we find that Lys’s lighting units having separate current supply circuits for each LED string would have been uniquely challenging or difficult for one of ordinary skill in the art. See Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419–20) (finding that obviousness was supported because there was no evidence that making the combination was uniquely challenging or difficult for one of ordinary skill in the art). Accordingly, at this stage, we find that Petitioner has provided sufficiently articulated reasoning with rational underpinning to support combining Lys and Grootes in the manner Petitioner proposes. See In re Kahn, 441 F.3d at 988; see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374 (Fed. Cir. 2019) (“A motivation to combine may be found ‘explicitly or implicitly in market forces; design incentives; . . . and the background knowledge, creativity, and common sense of the person of ordinary skill.’”) (quoting ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1371 (Fed. Cir. 2018)).” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,941,331 - PTAB · Mar 14, 2024 · IPR2023-01385 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1–7, 10–12, 14–21, and 23 on all asserted grounds, finding a reasonable likelihood that Chou renders claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary 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.” 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 of the ’812 patent. We therefore institute inter partes review as to all of the challenged claims of the ’812 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Based on the current record, we determine that Petitioner has established compliance with the statutory requirement under 35 U.S.C. § 312(a)(2) to identify all real parties in interest. C. The ’812 Patent” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We regard Petitioner’s definition as consistent with the complexity of the technology described in the ’812 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Patent Owner’s use of the term “technical field” is unduly vague. Therefore, for the purpose of this Decision, we adopt Petitioner’s proposed formulation. C. Claim Construction” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“On this record, we preliminarily agree with Patent Owner that the ’812 patent shows alternative ways for a reflector sheet “to conform to a shape of a protruding feature” on a lighting tile that does not demand the reflector sheet have “the same shape, outline, or contour of a protruding feature” as Petitioner’s proposed construction in the Underlying Litigation would require. To illustrate this, Figures 3 and 4 from the ’812 patent are shown in their entirety below.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,690,812 - Intel Corporation v. Ax Wireless, LLCInstitution deniedPTAB · Mar 5, 2024 · IPR2023-01146 · APJ Michael T Cygan · IPR · Institution
The Board denied institution on all grounds because Petitioner did not show Huang or Sun was prior art to claims 1–10, which it argued were obvious over those references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS A. Legal Standards Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). For purposes of institution, Petition bears the burden to establish, by a reasonable likelihood that at least one of the challenged claims would have been obvious over the cited art. See 35 U.S.C. § 314(a). Where unpatentability rests on a document that is prior art to a challenged patent but for that patent’s priority claim to an earlier effective filing date, such a priority claim is not presumed valid. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008) (noting that the USPTO does not routinely determine whether such priority claims meet the requirements of 35 U.S.C. § 120).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art would have had at least a Master’s degree in electrical engineer-ing or a similar discipline, and/or at least two to three years of experience working or conducting research in wireless commu-nication protocols, or an equivalent combination of education and experience. Pet. 6 (citing Ex. 1003 ¶¶ 71, 72). Patent Owner does not contest Petitioner’s assertion as to the level of ordinary skill in the art. Prelim. Resp. 6. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’146 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b) (2022). The Board is required to construe “only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner and Patent Owner, in extended briefing, contest the construction of the phrase “detecting, from the received wireless packet, the second header field which repeats the first header field,” as it appears in claim 1. Pet. 9; Prelim. Resp. 1; Pet. Reply 3; PO Sur-Reply 3. However, both parties appear to agree that the plain and ordinary meaning of the term should apply. See Pet. 6; Prelim. Resp. 15. Further, Petitioner has clarified that its statements as to the scope of the term are directed to its assertions that the ’146 patent lacks support for the claimed subject matter in its parent applications. Pet. Reply. 5–6. Consequently, we address claim construction arguments in their context of the parties’ priority contentions. See infra at II.D.1.” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“Patent Owner has shown sufficient written description support for the claims, including the disputed “detecting” limitation. The “decode-to-learn- ‘D’” description in the specification of the ’146 patent and in the provisional application to which the ’146 patent claims priority describe a specific procedure for the claimed “detecting, from the received wireless packet, the second header field which repeats the first header field.”3 See Ex. 1001, 2 Petitioner specifically asserts that Huang qualifies under 35 U.S.C. §102(b). Pet. 2, 19 (“by more than a year”). However, Huang’s patent issuance date of April 28, 2020 does not qualify under § 102(b) because it is less than one year before the December 29, 2020 filing date of the ’146 patent. Nevertheless, Petitioner has made an effective showing that Sun would qualify as prior art sufficient to shift the burden of production to Patent Owner. 3 Patent Owner does not explicitly show support for each of the applications in the priority chain. Patent Owner also cites to a Pre-Grant Publication rather than the underlying application despite the fact that such a Publication may include amendments to the originally filed application that would not evidence written description. See 37 C.F.R. § 1.215 (a); MANUAL OF PATENT EXAMINING PROCEDURE §1121; Ex. 2003, 7 (showing amendments 3:1–11; Ex. 2001 ¶ 35; Ex. 1008, 5–6; PO Sur-Reply 6. The “D” information is received in the wireless packet, and the receiver determines therefrom whether there is a second header field that repeats the first header field. See Ex. 1008, 5–6; PO Sur-Reply 6. The written description further includes descriptions of other embodiments for receiver detection with variable repetition, including detection “without knowing D a priori.” Ex. 1001, 2:18–3:59.” slip op. at 9
Claim construction§ 112 disclosurePatents in suitUS 11,212,146 - Intel Corporation v. Ax Wireless, LLCInstitutedPTAB · Mar 5, 2024 · IPR2023-01145 · APJ Michael T Cygan · IPR · Institution
The Board instituted inter partes review of claims 1–10 on both asserted § 103 grounds: Yu and Hansen with WWiSE.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“The touchstone in determining whether a reference constitutes a printed publication is whether it was publicly accessible at the critical time. SRI Int’l v. Internet Security Systems, Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Public accessibility exists where the reference document “has been 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. (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Patent Owner argues that a relevant person of ordinary skill using reasonable diligence would not reasonably have located the paper residing on the TGn ftp site. Prelim. Resp. 9–10. We discern three potential avenues for public availability in the assertions set forth by Petitioner: (1) availability to the members of TGn through the Wireless World website; (2) availability to others through the ftp site; and (3) availability to others through Mentor. We address each in turn, taking into account Patent Owner’s arguments.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art [“POSITA”] at the critical time “would have had at least a master’s degree in electrical engineering or similar discipline, and/or two to three years of experience working or conducting research in the field of wireless communication protocols, or an equivalent combination of education and experience.” Pet. 8 (citing Ex. 1003 ¶ 71). Patent Owner does not contest this assessment. Prelim. Resp. 3. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’146 patent and the prior art of record.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Here, neither party sets forth any claim construction. Pet. 9; Prelim. Resp. 3. Therefore, we construe the claims pursuant to § 42.100(b).” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner argues, and we agree at this stage, that a general desire to combine two competing proposals as expressed in Hansen does not specifically motivate incorporating ER header bits into the standard, as asserted by Petitioner. Prelim. Resp. 43–45. Although insufficient by itself to support the asserted combination, such an expressed desire to combine proposals provides some impetus to consider features from each proposal as a compromise to create the new IEEE standard, and we consider that in our consideration of Petitioner’s other reasons.” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,212,146 - PTAB · Feb 27, 2024 · IPR2023-01311 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted IPR on claims 1–20 based on all petitioned challenges, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the asserted prior art. We analyze Petitioner’s asserted challenges with the above-noted principles in mind.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that it “believes that no claim term requires construction.” Pet. 8–9. Patent Owner similarly asserts that it “does not believe any claim construction is necessary.” Prelim. Resp. 5. For purposes of this Decision, we conclude that no claim term requires express interpretation to resolve any controversy in this proceeding. 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 10 At this stage, neither party presents any objective indicia of non-obviousness. 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 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this stage, we disagree with Patent Owner. Regarding the arrangement of optical components in its backlight unit, Kobayashi specifies, for example, distance a from LED 1 to diffusing plate 5 and distance c from LED 1 to diffusing plate 4. Ex. 1006 ¶¶ 19–20, Fig. 1. Tabito teaches using optical stud members 25 to keep light diffusing plate 23 at a preset distance from light diffusing conducting plate 21. Ex. 1007 ¶ 60. That Kobayashi and Tabito both describe specific arrangements of optical components, and that the use of Tabito’s optical stud members was a known way to provide for such specific arrangements, is sufficient reason for combining Kobayashi and Tabito. Petitioner need only show that Tabito’s optical stud members would have been a “suitable option” for implementation in Kobayashi’s backlight unit. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1381 (Fed. Cir. 2023). We note Patent Owner’s contention that combining Kobayashi and Tabito “would result in completely different optical characteristics of [Kobayashi’s] lighting panel.” Prelim. Resp. 23. This contention, however, is unavailing. Our reviewing court has explained that “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference,” but, “[r]ather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Additionally, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Here, Kobayashi teaches keeping its diffusing plates 4, 5 and LED 1 separated by specific distances. Ex. 1006 ¶¶ 19–20. Tabito teaches using its optical stud members 25 to keep optical elements separated by a preset distance. Ex. 1007 ¶ 60. We find that an ordinarily skilled artisan, in implementing Tabito’s optical stud members in Kobayashi’s backlight unit, would have made any necessary modifications (e.g., selecting different materials for the optical stud members) to maintain Kobayashi’s desired backlight performance in order to realize the advantages of using Tabito’s optical stud members as a way to support Kobayashi’s diffusing plates. On the record before us, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that its proposed combination of Kobayashi and Tabito teaches the recited limitations of claims 4–6 and 17, including the recited “diffuser supports.” See Pet. 34–41. We also are persuaded that Petitioner’s proffered reasoning for modifying Kobayashi’s backlight unit to include Tabito’s optical stud members, namely, to provide a way to implement Kobayashi’s specific arrangement of optical elements, is sufficient for purposes of this Decision. See Pet. 33; Intel, 61 F.4th at 1381 (explaining that the petitioner need only show that the proposed combination would have provided a “suitable option”).” slip op. at 37
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,177,382 - Intel Corporation v. Ax WirelessInstitution deniedPTAB · Feb 14, 2024 · IPR2023-01140 · APJ John D Hamann · IPR · Institution
The Board denied institution of review for claims 11–13, 15, and 17–19, exercising its discretion because the second petition was unnecessary given the substantial overlap between the challenged claim groups.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherInstitution denied
“are justified because of “the length of the independent claims.” Explan. 1. We do agree, however, with Petitioner that the independent claims are lengthy, with claim 1 comprising 59 lines and claim 11 comprising 54 lines. Ex. 1001, 12:52–13:43, 14:9–63. But Petitioner fails to address that independent claims 1 and 11 are largely identical, except where claim 1 is directed to transmitting and modulation, and claim 11 is directed to receiving and demodulation. Compare Ex. 1001, 12:52–13:43, with id. at 14:9–63. Patent Owner provides a redline comparison of claim 1 and claim 11, which readily shows that these claims substantially overlap. Ex. 2024. Patent Owner also correctly points out that the respective sets of dependent claims (i.e., (i) claims 2, 3, 5, and 7–9 and (ii) claims 12, 13, 15, and 17–19) also substantially overlap (except as to transmit versus receive), providing for “two nearly identical groups of just seven claims each.” Explan. Resp. 2 (citing Ex. 2024). We also agree with Patent Owner that Petitioner does not argue that transmitting versus receiving, or modulating versus demodulating, is a material difference for patentability. Explan. Resp. 2. Rather, Petitioner recognizes that they are merely opposite functions taught by Hansen’s transceiver. For example, Petitioner relies on Hansen’s transceiver for teaching both transmitting and receiving. E.g., -1139 pet. 27–28 (citing the transceiver illustrated in Hansen’s Fig. 2b for transmitting); Pet. 32–33 (citing the transceiver illustrated in Hansen’s Fig. 2b for receiving). Similarly, Petitioner relies on Hansen’s transceiver for teaching both modulating and demodulating. E.g., -1139 pet. 45–46 (citing Hansen’s transceiver in Fig. 2b for modulation); Pet. 50–52 (citing Hansen’s transceiver in Fig. 2b for demodulation). Although even similar claims of Petitioner’s assertions against the two sets of claims does not show such necessity here. Petitioner does not address why in one petition it could not point to the different portions of Hansen’s transceiver, and accompanying text, for both (i) transmitting and modulating, and (ii) receiving and demodulating. In fact, the almost 500 words that remained unused in the -1139 petition may alone have been sufficient. See -1139 pet. 84 (certifying that the number of words in the -1139 petition is 13,510); 37 C.F.R. §42.24(a) (allowing for 14,000 words). Looking at both petitions, we find that one petition would have been sufficient to address all of the limitations of the two subsets of seven claims.” slip op. at 8
Discretionary denialPatents in suitUS 10,917,272
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.