• Masimo Corporation v. Apple Inc.No claims unpatentable
  PTAB · Oct 15, 2024 · IPR2023-00745 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–4 and 8–22 were not shown unpatentable because Mills did not disclose the required embedded structure and Markel combined with Mills did not teach it; the revised motion to amend was dismissed as moot.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “Patent Owner’s Revised Contingent Motion to Amend asserts that in “the event the Board finds at least one challenged [Revised Motion to Amend] claim unpatentable, [Patent Owner] respectfully requests that the Board grant this Motion with respect to the corresponding proposed substitute claim(s).” Paper 27, 1. Because we determine that Petitioner has not established that any of the challenged claims 1–4 and 8–22 are unpatentable, Patent Owner’s Revised Contingent Motion to Amend is moot.” slip op. at 61

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. Patent Owner’s proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. We adopt Petitioner’s level of the level of ordinary skill in art because it is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). Our analysis and the end result are the same under either proposed definition.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “structure where a lead is embedded in a portion of the enclosure from other embodiments where a lead is merely positioned against or in parallel contact with a portion of the enclosure. See Ex. 2003 ¶¶ 36–37. The Specification describes distinct embodiments such as “lead 472 of the heart sensor can be positioned against the back surface of bezel 460,” or “[a]lternatively, lead 472 can be placed within the thickness of bezel 460 (e.g., in a pocket within the bezel wall), but underneath the outer surface of the bezel.” Ex. 9:44–48. We agree with Patent Owner, and Dr. Kenny, that “[t]his passage distinguishes a lead that is embedded in a portion of the enclosure from a lead that is merely ‘positioned against’ or in parallel contact with a portion of the enclosure.” PO Resp. 6–7 (citing Ex. 2003 ¶¶ 33–35). See also Ex. 2008, 31:10–33:18, 109:18–110:19 (Petitioner’s expert, Mr. Oslan, suggesting that a first component or object in parallel contact with and positioned under a second component or object would not necessarily indicate that the first component or object is embedded in the second component or object). Similarly, we also agree that “the claims of the ’257 use the term ‘embedded in’ while also using the word ‘embedded’ in other contexts, which” indicates distinct claim scope for “the term ‘embedded in,’” versus “the broader term ‘embedded.’” Ex. 2003 ¶ 38. For instance, claim 9 distinctly requires “embedded with,” which is a broader term that, according to Dr. Kenny, encompasses embodiments where a lead may be adjacent/parallel to the first portion of the enclosure. Id.” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “under the exterior of the first portion” (see Pet. 21–22, 24–25; Pet. Reply 4); and (3) leaf spring 62 is embedded in housing 12 and electrode 14 (see Pet. 22–24). None of Petitioner’s mappings disclose every element of claim 1 and Petitioner improperly jumps between these various mappings without fully examining a single mapping for each and every limitation of claim 1. See Pet. 18–25. In essence, Petitioner invites the Board to piece together a single theory that meets all claim elements from these disparate theories that each require distinct structure within Mills. See Amazon.com, Inc., et al. v. Avago Technologies General IP (Singapore) PTE. LTD., IPR2017-01112, Paper 11, at 13 (PTAB Aug. 23, 2017) (“Petitioner is inviting us to assume the role of archeologist of the record, which invitation we decline.”).” slip op. at 36

  Patent outcomesUS 10,076,257 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,076,257
• Chanel, Inc. v. Molo Design, Ltd.No claims unpatentable
  PTAB · Aug 9, 2023 · IPR2022-00543 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–3, 5–11, 13, 16, 18, 20–25, and 27 were not shown unpatentable under any of three §103 grounds because Petitioner failed to establish the claimed foldable supports and fastener arrangement.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues, with support from its declarant, Mr. Rake, that one skilled in the art during the relevant time frame “would have a bachelor’s degree and at least two years of relevant experience working as an industrial designer, interior designer, furniture designer, architect, or other similar professional” and “would be knowledgeable regarding furniture design and/or the design of exhibit and display systems, and would have a general understanding of related manufacturing processes.” Pet. 24 (citing Ex. 1003 ¶¶ 41–44). Patent Owner does not contest Petitioner’s proposal, and Patent Owner’s declarant agrees with it. Ex. 2010 ¶ 34 (“I believe this is an accurate definition of a POSITA and have used this for my analysis.”); see also Pet. Reply 1 (“The parties agree on the POSITA and level of ordinary skill in the art.”). We adopt Petitioner’s asserted level of ordinary skill because it is consistent with the problems identified and solutions provided in the ’366 patent and the prior art.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Because the issue of whether Petitioner has proven unpatentability by a preponderance of the evidence can be resolved without expressly construing the claim terms “supports,” “self-supporting,” “operable,” and “flaccid,” we reject the notion that Petitioner somehow violated our rules by not developing a more explicit construction of those terms. In addition, because Patent Owner does not dispute Petitioner’s position that we need not formally construe any of the terms to address the issues in this proceeding or offer a competing construction, we need not construe any of these terms. See, e.g., Nidec, 868 F.3d at 1017 (approving Board decision not to construe claim language where the construction is not material to the dispute).” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Even if we consider an argument that claim 1 would have been obvious without considering whether a POSITA would have been motivated to fold the SoftHousing end panels into a tubular configuration, we would not find that argument convincing. None of the prior art at issue here discloses partition end panels that are semi-circular as in the design the ’366 patent discloses, much less flexible panels folded into that configuration. Instead, both SoftHousing and Arens disclose end panels having unfolded, planar surfaces, and the Velcro reference does not teach partitions at all. See Ex. 1005, 2; Ex. 1006, 11; Ex. 1007, 2; Ex. 1012, 2; Ex. 1013, Fig. 3; PO Resp. 34–35; Ex. 2010 ¶ 124. Further, merely adding the Velcro teachings from SoftHousing III, Arens, or the Velcro reference to the planar end panels of SoftHousing would not necessarily satisfy the claim limitation requiring a fastener capable of securing supports in a tubular configuration, and Petitioner does not explain how that modification meets that aspect of the fasteners limitation without the premise that a POSITA would have been motivated to form a tubular configuration. See Pet. 34–35 (citing Ex. 1003 ¶¶ 86–88, 118). The cited declarant testimony repeats the same language from the Petition when addressing why modifying SoftHousing to include fasteners would have been obvious (i.e., the fasteners would have been obvious only when a POSITA already “wanted” to form the tubular configuration). See Ex. 1003 ¶ 118. Neither the Petition nor supporting declarant set forth a coherent argument that adding fasteners capable of securing a folded support in a tubular configuration would have been obvious merely by adding Velcro to the end panels of the honeycomb core in SoftHousing’s partitions.” slip op. at 25

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “4. Conclusion We find that Petitioner’s proposed modifications to and combination of SoftHousing I, SoftHousing II, SoftHousing III, Arens, and Velcro do not disclose all of the limitations of independent claim 1. We find that we need not reach Patent Owner’s alleged objective indicia of nonobviousness arguments because even if Patent Owner submitted no such evidence or failed to establish a nexus or any persuasive objective indicia evidence, our conclusion as to the obviousness of claim 1 would not change. Based on the foregoing, we are not persuaded that Petitioner proved by a preponderance of the evidence that claim 1 of the ’366 patent is unpatentable as obvious based on the combination of SoftHousing I, SoftHousing II, SoftHousing III, Arens, and Velcro.” slip op. at 29

  Patent outcomesUS 7,866,366 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,866,366
• Nabors Drilling Technologies USA, Inc. v. Motive Drilling Technologies, Inc.No claims unpatentable
  PTAB · Jul 5, 2023 · IPR2022-00327 · APJ Matthew S Meyers · IPR · Final written decision

  Claims 15–17 and 22 were not shown unpatentable because the Pirovolou-based combinations did not establish the comparison required by limitation 15.3.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts a person of ordinary skill in the art would have had a bachelor’s degree in mechanical engineering or petroleum engineering, or a closely related scientific field, and three-five years of work experience related to the design, performance, and control of components and systems used in oil and gas exploration and production, including downhole tools used in drilling applications. A lack of experience can be remedied with additional education, and vice versa. Pet. 7 (citing Ex. 1007 ¶¶ 37–41). Patent Owner does not provide its own assessment regarding the level of skill in the art or otherwise dispute Petitioner’s assertion in its Patent Owner Response. See generally PO Resp.; cf. Prelim. Resp. 29 (Patent Owner indicates that it “has adopted Petitioner’s articulation of the level of skill in the art.”). However, Patent Owner’s declarant, Dr. Hilbert, notes that he is familiar with Petitioner’s definition of the person of ordinary skill in the art, and opines that “the Petition’s articulation of the level of skill accurately reflects that of [one of ordinary skill in the art] with respect to the ’283 [p]atent.” Ex. 2010 ¶ 44 (citing Pet. 7). Based on this record, we apply Petitioner’s definition of the level of skill, which also was applied in our Institution Decision, because it is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art of record. See Okajima, 261 F.3d at 1355.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “After reviewing the full record, we determine that it is unnecessary to construe the term “estimated position of the drill bit in the formation,” to reach a determination in this proceeding. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). However, we address the parties’ dispute regarding the meaning of limitation [15.3], i.e., “comparing . . . the estimated position of the drill bit to a desired position of the drill bit along a planned path of the borehole,” within our merits analysis below. See Pet. Reply 14–15; PO Sur-reply 16.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “construes limitation [15.3] to require that “the comparison [be] performed on two positions ‘along a planned path of the borehole.’” Pet. Reply 14 (emphasis omitted). Petitioner’s proposed construction is inconsistent with the ’283 patent’s Specification and the language of limitation [15.3]. Figure 7C of the ’283 patent, reproduced below, is an illustration of “one embodiment of a convergence plan diagram with multiple convergence paths.” Ex. 1001, 1:56–57. Figure 7C illustrates “the estimated bit position is indicated by arrow 743 relative to the desired bit position 741 along the planned path 742.” Id. at 18:12–14.6 Contrary to Petitioner’s argument that limitation [15.3] “clearly recites that the comparison is performed on two positions ‘along a planned path of the borehole’” (Pet. Reply 14 (emphasis omitted)), we understand limitation [15.3] to recite that only one position, i.e., “a desired position,” is “along a planned path of the borehole.” See Ex. 1001, 36:12–14 (“comparing . . . the estimated position of the drill bit to a desired position of the drill bit along a planned path of the borehole”).” slip op. at 25

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Ex. 2010 ¶ 95. We find to be credible Dr. Hilbert’s testimony that, if two points are both along a planned path, a comparison would not indicate whether the drill is outside a margin of error. We also credit Dr. Hilbert’s declaration testimony that the purpose of limitations 15.3 and 15.4 is to compare the estimated position of the drill bit to a desired position of the drill bit along a planned path of the borehole and calculate more than one solution defining a path from the estimated position of the drill bit to the planned path if the drill bit is off course (i.e., outside a defined margin of error relative to the desired position). Id. ¶ 96. During his deposition, when asked whether “the step of comparing the estimated position of the drill bit to a desired position of the drill bit along a planned path of the borehole is used to determine whether the bit is off course,” Dr. Schubert agreed. Ex. 2013, 73:17–22. Dr. Schubert also agreed that in order “to determine that [the bit]’s off path, you have to look at the planned path, not the projected trajectory.” Id. at 87:16–19. Based on the full record, we agree with Patent Owner that “both parties’ experts agree that the alleged comparison in Pirovolou—a comparison of two points on the same projected trajectory (i.e., a trajectory that has not yet been drilled)— will not be indicative of whether a correction is presently necessary.” PO Sur-reply 18 (citing Ex. 2010 ¶¶ 96–97; Ex. 2013, 73:17–22, 87:16–19). Therefore, Petitioner fails to establish that Pirovolou discloses or renders obvious the comparison recited by limitation [15.3] when read in context with limitation [15.4].” slip op. at 31

  Patent outcomesUS 8,210,283 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,210,283
• Zillow Group, Inc. / Zillow, Inc. v. International Business Machines Corp.No claims unpatentable
  PTAB · Mar 3, 2022 · IPR2020-01656 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1–5 and 7–10 were not shown unpatentable because Reuning did not disclose the ordered selection and assignment steps required by claim 1.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a skilled artisan “would have had a bachelor’s degree in computer science or a closely related field, along with two or more years of programming experience in application development, including familiarity with accessing databases and implementing user interfaces, as well as familiarity with marketing concepts and marketing workflows.” Pet. 7–8 (citing Ex. 1004 ¶ 22). Patent Owner contends a skilled artisan “would have had a degree in computer science, information systems, or a similar discipline, or equivalent work experience.” PO Resp. 2. In addition to the educational attainment, Patent Owner contends a skilled artisan would have had “one to two years of work experience implementing networked systems with user interfaces, including familiarity with databases and computerized marketing.” Id. (citing Ex. 2004 ¶ 46). Patent Owner acknowledges that Petitioner offers “a slightly different level of ordinary skill in the art” but that “it is not materially different.” Id. at 2–3. For the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art because it appears consistent with the problems addressed in the ’904 patent and the prior art of record. Our Decision, however, would not be impacted if we adopted Patent Owner’s proposed level of skill in the art.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Our decision in this case does not turn on whether or not a promotion instance is limited to one used in a marketing campaign or whether a list of contacts constitutes a promotion instance or whether the preamble is limiting. The parties also do not dispute that the cited prior art discloses promotion instances. Thus, we need not reach these issues. Consequently, we need not formally construe this term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Patent Owner next contends that “promotion list” should be construed as “a collection of one or more promotion instances” but the term “does not apply to a collection of contact information.” PO Resp. 3–4 (citing Ex. 2004 ¶¶ 50–51). Petitioner, in turn, contends Patent Owner “fails to explain why the word ‘collection’ should replace ‘list’ or how ‘a collection’ clarifies the plain and ordinary meaning of ‘list.’” Pet. Reply 1–2. Petitioner further contends, based on deposition testimony by Dr. Shamos, that Patent Owner “imposes intent––‘an express act of making a list’––into ‘promotion list.’” Id. at 2 (citing Ex. 1020, 70:10–71:3). Patent Owner denies “there is an element of intent in the claims of the ’904 Patent.” Sur-Reply 9. We apply the plain and ordinary meaning of “promotion list” as “a list of one or more promotion instances.” We note that our Decision would be the same even if we adopted Patent Owner’s construction, i.e., “a collection of one or more promotion instances.”” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Owner Response that steps 1[c] through 1[h] must be performed in order. PO Resp. 4. Patent Owner provides a step-by-step analysis showing that the language of claim 1 shows that “step 1f . . . refers back to step 1e,” “step 1e . . . refers back to step 1d,” and “step 1d . . . refers back to step 1c.” Id. at 5–6 (emphasis omitted). Petitioner’s basis for its contention that the steps do not have to be performed in order is Mr. Hochman’s testimony concerning prefetching and indexing. Pet. Reply 4–7. As discussed above in connection with step 1[d], we find this testimony by Mr. Hochman to be entitled to no weight because it is entirely unsupported. We also note that Mr. Hochman’s credibility in regard to his testimony that the steps of claim 1 are not required to be performed in order is further undercut by his testimony that he is not familiar with the “the term ‘antecedent basis’ in patent law.” Ex. 2003, 52:22–24. For all of these reasons, we agree with Patent Owner that the plain language of claim 1, including the antecedent basis recited in steps 1[c] to 1[h] requires the steps to be performed in order.” slip op. at 32

  Patent outcomesUS 8,315,904 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,315,904
• LKQ Corporation / Keystone Automotive Industries, Inc. v. GM Global Technology Operations LLCNo claims unpatentable
  PTAB · Oct 8, 2021 · PGR2020-00054 · APJ Robert L Kinder · PGR · Final written decision

  The sole claim was not shown unpatentable: it is definite, and neither asserted obviousness combination renders the design unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. The Designer of Ordinary Skill in the Art (“DOSA”) LKQ contends that: a designer of ordinary skill would be an individual who has at least an undergraduate degree in transportation or automotive design experience in the field of transportation design, or someone who has several years’ work experience in transportation or automotive design. Pet. 51 (citing Ex. 1003 ¶ 42; Ex. 1004 ¶ 41). Based on the final record, which includes testimony by LKQ’s witnesses, we adopt LKQ’s proposed definition of the ordinary designer.” slip op. at 19

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Based on the final record, the purported issues related to a double line on the convex crease and the length of the single line do not create internally inconsistent drawings that would preclude the overall understanding of the drawing as a whole. We have considered the testimony of each witness and we find Mr. Peters’ explanation most convincing that “the claimed design describes the convex band consistently because each of the figures presents at least one of the ways that a convex band can be represented. . . . Figure 1 illustrates the two intersecting lines of the convex band, while Figures 2-4 illustrate the single max height line of the convex band.” Ex. 2004 ¶ 58. Thus, we agree with GM that these figures are not inconsistent, but rather complementary because both connecting lines (as shown in Figure 1) and the max height line (as shown in Figure 2) are accurate depictions of the convex band of the claimed design. Further, GM has presented persuasive evidence that the varied length of the line between figures is also understandable depending on the point of reference of a particular figure. Ex. 2004 ¶¶ 55, 56; Ex. 2006, 143:11–16, 144:4–7.” slip op. at 27

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “7. Overall Indefiniteness Analysis The figures of the ’065 patent are not perfect and the issues discussed above demonstrate that attention to detail matters when conveying the scope of a three-dimensional object in two dimensions. The proper standard for indefiniteness does not, however, require perfection, but instead requires that an invention is shown with “reasonable certainty.” Nautilus, Inc., 572 U.S. at 910. The purpose of the definiteness standard is “to ensure that the disclosure is clear enough to give potential competitors (who are skilled in the art) notice of what design is claimed – and therefore what would be infringed.” Maatita, 900 F.3d at 1376. Based on the totality of the evidence before us, we determine that the claimed design of the ’065 patent is reasonably understandable and gives potential competitors, and the public, notice of the scope of the claim. As analyzed above, LKQ has not shown that most of the alleged inconsistencies are, in fact, inconsistent features within the claim. Further, we determine that the inconsistencies argued by LKQ do not in the aggregate “preclude the overall understanding of the drawing as a whole.” Id. at 1375–76.” slip op. at 45

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “The Petition fails to adequately address the differences between the claimed ornamental fender design and the Fiat Toro in several important areas, including: the distinct upper portions of each design, the claimed design’s inwardly folded (L-shaped) top edge, and the rear lateral edge. Based on the final record, these differences combined with the other differences noted by LKQ (Pet. 81) are substantial and prevent the Fiat Toro from having design characteristics that are basically the same as that claimed in the ’065 patent – as required for a Rosen reference.” slip op. at 67

  Patent outcomesUS D864,065 not shown unpatentable
  § 103 obviousness§ 112 disclosurecites Nautilus
• Netflix Inc. / Hulu, LLC v. Divx, LLCNo claims unpatentable
  PTAB · Sep 9, 2021 · IPR2020-00646 · APJ Iftikhar Ahmed · IPR · Final written decision

  Claims 1, 5, 8, 9, 13–15, 18, and 21–23 were not shown unpatentable because Kaku was not established as analogous art.

  RulingsFinal written decision

  • Obviousness (§103) › Analogous artNot shown unpatentableNon analogous artNot shown unpatentable

    “A reference is considered analogous prior art: (1) if the reference is from the same field of endeavor as the claimed subject matter, or (2) if “the reference still is reasonably pertinent to the particular problem with which the inventor is involved,” even though the reference is not within the field of the inventor’s endeavor. In re Bigio, 381 F.3d at 1325. The field of endeavor test asks if the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art because of the similarity to the structure and function of the claimed invention. Bigio, 381 F.3d at 1325–27. A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. In re Clay, 966 F.2d at 659.” slip op. at 19

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner proposes constructions for three claim terms, including the term “trick play functionality.” Pet. 22–23. Patent Owner argues for construction of the related claim term “the first and second indexes enabling trick play functionality.” See PO Resp. 41–49. We determine that it is not necessary to provide an express interpretation of any of those claim terms because construction of the proposed terms does not impact our determination that Petitioner has not shown that one of the prior art references is analogous to the claimed invention. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 9

  • ExcludeMotion to exclude, deniedNot reached

    “Under the particular circumstances in this case, we need not assess the merits of Patent Owner’s Motion to Exclude. As discussed above, we have determined that Petitioner has not demonstrated by a preponderance that Kaku is analogous prior art to the ’792 patent and do not reach Petitioner’s arguments on the motivation to combine Kaku with Zetts or Seo. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 34

  • Strike new argumentNew argument disregardedGranted

    “As discussed above (supra § III.E.4.a), Petitioner’s papers fail to link Dr. Reader’s declaration testimony on the level of ordinary skill in the art to the analogous art inquiry and fail to identify a field of endeavor for the ’792 patent. We therefore agree with Patent Owner that Petitioner’s demonstrative slide 53 presents improper new arguments that have not been previously made. See Paper 38, 2 (“The parties may only rely upon evidence that has been previously submitted in the proceeding and may only present arguments that have been previously made in the submitted papers. No new evidence or arguments may be presented at the hearing.”), 5 (“Demonstratives are not a mechanism for making new arguments.”). We therefore sustain Patent Owner’s objections. We note, however, that demonstratives are not evidence. See id. at 5 (“Demonstrative exhibits used at the hearing are not evidence, nor will they be relied upon as evidence. Rather, demonstratives are visual aids to a party’s oral presentation regarding arguments and evidence previously presented and discussed in the papers”); CTPG 84 (“Demonstrative exhibits used at the final hearing are aids to oral argument and not evidence.”). In this Final Written Decision, we rely solely on the arguments properly presented in the parties’ briefs and the evidence of record, not on the demonstratives.” slip op. at 35

  Patent outcomesUS 8,472,792 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,472,792
• Hamamatsu Photonics K.K. v. Semicaps Pte Ltd.No claims unpatentable
  PTAB · Mar 18, 2019 · IPR2017-02112 · APJ Ken B Barrett · IPR · Final written decision

  Claims 2, 3, and 8–20 were not shown unpatentable because Hamada did not disclose the claimed sampling and accumulation, the obviousness theories were insufficient, and Quah was not proven prior art.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “adequately address the pertinent issue—whether Petitioner’s proposed hypothetical person of ordinary skill in the art would lack the requisite experience and understanding of the art. Patent Owner does not identify adequately a substantive difference between Petitioner’s hypothetical person of ordinary skill in the art and Patent Owner’s. See PO Resp. 17–20. For example, Patent Owner does not argue that an electrical engineer or physicist with two years of experience utilizing electronic circuit testing equipment would lack adequate knowledge of the use of lasers in circuit testing. To the contrary, Patent Owner’s expert, Dr. Woods, “generally agree[s] with petitioner’s definition of a [person of ordinary skill in the art]”—including the type of education and level of experience—and testified that “[t]hese techniques [of OBIRCH and TIVA] were known and widely used around the time of the invention of the ’982 patent to determine the location of defects in a semiconductor device and would have been known to those of ordinary skill in the art.” Ex. 2029 ¶¶ 30–31. To the extent that Patent Owner’s proposed definition of the level of ordinary skill is more than merely an elaboration upon Petitioner’s, we find it to be directed to a super-expert in a very narrowly defined field and calculated to undermine Dr. Mercer’s credibility while simultaneously promoting the credentials of its own experts. We do not find this litigation-induced argument persuasive. We determine that the definition offered by Dr. Mercer comports with the qualifications a person would have needed to understand and implement the teachings of the ’982 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art). Accordingly, we apply Dr. Mercer’s definition of the level of ordinary skill in the art.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “Thus, the parties agree that accumulating encompasses, at least, adding values together. This understanding is consistent with the specification’s discussion of accumulated samples. See, e.g., Ex. 1001, 8:20–29. Petitioner initially asserted, in the Petition, that “accumulating” should be construed to include the act of averaging. Pet. 4–5. In the Institution Decision, we declined to construe “accumulating” as necessarily including the act of averaging. Inst. Dec. 7–8. In its Reply, Petitioner no longer advocates this as a matter of claim construction. See Pet. Reply 6. As discussed below, the parties address the issue as a factual matter, and specifically as to whether a prior art reference’s use of the term “average” discloses “accumulating” within the meaning of the claims of the ’982 patent. We again, as we did in the Institution Decision, Inst. Dec. 8, construe the term “accumulating” merely as encompassing the process of addition.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We do not find Petitioner’s dictionary-based “[b]y definition” argument to be persuasive as it is disconnected from the technology at issue. We cannot find that a person of ordinary skill in the art would apply, in this context, a lay dictionary’s general definition and thereby understand Hamada to disclose determining a plurality of samples. We credit the opinion of Dr. Woods, containing persuasive reasoning, and find that Hamada’s use of the word “average” does not disclose “determining a plurality of samples,” as Petitioner contends. We now turn to Petitioner’s arguments that are more closely related to the technology.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “In support of its case, Petitioner reasons that “a POSITA would have considered it obvious to have configured Hamada’s electrical current meter 6 to determine a plurality of samples of the response signal, and to have configured signal processing and display 9 to add up this plurality of samples, in order to optimize Hamada’s averaging process.” Pet. at 23 (emphasis added) (citing Ex. 1004 ¶ 24; Ex. 1014 ¶ 205). Neither Petitioner nor its expert elaborates on the conclusory assertion that performing the claimed determining and accumulating steps would have “optimize[d]” Hamada’s averaging process. Petitioner further reasons that: it would have been obvious for a POSITA at the time of the invention to have configured electrical current meter 6 and signal processing and display unit 9 to respectively measure and add multiple samples of the response signal to allow Hamada’s averaging process, in turn, to be performed on multiple samples. Id. at 24 (citing Ex. 1014 ¶ 206). This reasoning is circular in that it is, effectively, an assertion that it would have been obvious to perform operations on multiple samples in order to perform the process on multiple samples. We also have considered Petitioner’s arguments in the Petition that the “motivation” comes from the “teaching or suggestion” provided by the disclosure of “averaging,” along with Petitioner’s string of reasons from KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). See Pet. 24, 43–44 (citing Ex. 1014 ¶¶ 206, 306). Petitioner does not develop adequately any of these reasons. An obviousness analysis requires more than “mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In its Reply, Petitioner repackages its “[b]y definition” argument as purportedly an obviousness argument. Pet. Reply 19–20. Petitioner argues that, “to the extent that Hamada does not explicitly disclose this limitation, a POSITA would have considered the act of configuring Hamada to measure and add multiple samples to have been obvious because that is what the definition of ‘averaging’ requires.” Id. (citing Pet. 23–26; Ex. 1014 ¶¶ 204– 208). Although possibly an obviousness theory, this argument reads more like an assertion that the claimed determining and accumulating of a plurality of samples either is inherently or implicitly disclosed in Hamada (offered as an alternative if it is deemed not explicitly disclosed). Thus, Petitioner appears to take the position that the disputed limitation is not absent from Hamada, and Petitioner fails to explain why a person of ordinary skill would have seen a reason to modify Hamada. For the reasons discussed above, we do not find Petitioner’s “[b]y definition” argument persuasive in the anticipation context and, for those same reasons, do not find it persuasive when couched as an obviousness ground. We determine that Petitioner has failed to demonstrate that independent claim 1 would have been obvious over Hamada. Petitioner’s arguments as to dependent claims 2, 3, 8–16, 19, and 20 (Pet. 24–26, 44–45, 47) do not cure the underlying defect in its obviousness theory with regard to independent claim 1. Accordingly, Petitioner also has not demonstrated that those dependent claims would have been obvious over Hamada. F. The Remaining Obviousness Grounds Based on Hamada in Combination” slip op. at 29

  Patent outcomesUS 7,623,982 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,623,982
• Skechers U.S.A., Inc. v. Nike, Inc.No claims unpatentable
  PTAB · Jun 28, 2018 · IPR2017-00621 · APJ Grace Karaffa Obermann · IPR · Final written decision

  The sole challenged claim was not shown unpatentable because Petitioner failed to identify a qualifying Rosen reference for its obviousness challenges.

  RulingsFinal written decision

  • BurdenFwd all claims patentableNot shown unpatentable

    “Petitioner bears “the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). Our rules require a successful petition to include “a detailed explanation of the significance of the evidence including material facts.” 37 C.F.R. § 42.22(a)(2)). An issue bearing on the challenge is whether and how the claimed channel element impacts the “visual impression created by the patented design as a whole.” Durling, 101 F.3d at 103; see Ex. 1001, Fig. 1 (depicting an elongated region, of relatively darker shading, superimposed over about two thirds of a sipe that bisects the claimed heel region).” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art would have had either (1) a degree in Industrial Design combined with some work experience as a designer of footwear designs; or (2) two years of direct experience creating footwear designs. 9 The Petition asserts U.S. Patent No. 6,115,945 (Ex. 1006, “the ’945 patent”) as a background reference. See, e.g., Pet. 5, 34. Dec. 7. That definition is consistent with Petitioner’s proposed definition. Pet. 36 (Petitioner’s definition); Reply 2 (Petitioner, reasserting that definition). Patent Owner, for its part, raises no persuasive information tending to establish a different definition. Resp. 2 (Patent Owner, essentially acquiescing to Petitioner’s definition). That definition also is consistent with the disclosures reflected in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 4

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “D. Claim Construction The claim of the ’781 patent does not require express construction for the purposes of this decision. On that point, we observe that Figures 1–3 of the ’781 patent (Ex. 1001) reflect the scope of the patented design. To the extent any explanation of that scope is necessary to our decision, we provide it below in our analysis of the asserted challenge. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 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

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Conclusions Regarding the First Prong of the Durling Test A preponderance of the evidence supports a conclusion that Petitioner fails to take account adequately of the channel element of the patented design and, therefore, fails also to identify “the correct visual impression created by the patented design as a whole”—a required first step in identifying a Rosen reference. Durling, 101 F.3d at 103. That failure, standing alone, justifies our conclusion that Petitioner fails also to prove by a preponderance of the evidence that the challenged claim of the ’781 patent is unpatentable.” slip op. at 20

  Patent outcomesUS D723,781 not shown unpatentable
  Claim construction§ 103 obviousness
• Skechers U.S.A., Inc. v. Nike, Inc.No claims unpatentable
  PTAB · Jun 28, 2018 · IPR2017-00620 · APJ Grace Karaffa Obermann · IPR · Final written decision

  The Board held the challenged claim not shown unpatentable because Petitioner failed to identify a Rosen reference creating basically the same overall visual impression.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. The Designer of Ordinary Skill As we did in our institution decision, we find that a designer of ordinary skill in the art would have had either (1) a degree in Industrial Design combined with some work experience as a designer of footwear designs; or (2) two years of direct experience creating footwear designs. 9 The Petition asserts U.S. Patent No. 6,115,945 (Ex. 1006, “the ’945 patent”) as a background reference. See, e.g., Pet. 5, 33. Dec. 7. That definition is consistent with Petitioner’s proposed definition. Pet. 35 (Petitioner’s definition); Reply 2 (Petitioner, reasserting that definition). Patent Owner, for its part, raises no persuasive information tending to establish a different definition. Resp. 2 (Patent Owner, essentially acquiescing to Petitioner’s definition). That definition also is consistent with the disclosures reflected in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 4

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “D. Claim Construction The claim of the ’783 patent does not require express construction for the purposes of this decision. On that point, we observe that Figures 1–3 of the ’783 patent (Ex. 1001) reflect the scope of the patented design. To the extent any explanation of that scope is necessary to our decision, we provide it below in our analysis of the asserted challenge. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 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

  • BurdenFwd all claims patentableNot shown unpatentable

    “Petitioner bears “the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). Our rules require a successful petition to include “a detailed explanation of the significance of the evidence including material facts.” 37 C.F.R. § 42.22(a)(2)). An issue bearing on the challenge is whether and how the claimed channel element impacts the “visual impression created by the patented design as a whole.” Durling, 101 F.3d at 103; see Ex. 1001, Fig. 1 (solid concentric ovals, which depict a channel element near the center of the claimed grid-like pattern of pads).” slip op. at 16

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “As a starting point, to make out a successful obviousness challenge, Petitioner must identify “a reference, a something in existence, the design characteristics of which are basically the same as the claimed design in order to support a holding of obviousness. Such a reference is necessary whether the holding is based on the basic reference alone or on the basic reference in view of modifications suggested by secondary references.” Rosen, 673 F.2d at 391. Accordingly, “the first step in an obviousness analysis for a design patent requires a search of the prior art for a primary reference,” which requires the tribunal “to: (1) discern the correct visual impression created by the patented design as a whole; and (2) determine whether there is a single reference that creates ‘basically the same’ visual impression.” Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996). We address the two prongs of the Durling test in turn below.” slip op. at 6

  Patent outcomesUS D723,783 not shown unpatentable
  Claim construction§ 103 obviousness
• Qualcomm Incorporated / Qualcomm Atheros, Inc. v. Parkervision, Inc.No claims unpatentable
  PTAB · Mar 7, 2017 · IPR2015-01832 · APJ Bart A Gerstenblith · IPR · Final written decision

  The Board found claims 1, 18, 81–84, 86, 88–91, 93, 94, 251–254, 256, 258–261, 263, and 264 not proven unpatentable under either asserted obviousness ground.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “ordinary meaning of “bias signal” is “a signal having a steady predetermined level.” Resp. 28; Reply 6–7. The parties also agree that at least some information signals may be considered “bias signals.” The crux of the parties’ disagreement is which type of information signal. The ’940 patent defines “information signal” as “[t]he signal that contains the information that is to be transmitted. As used herein, it refers to the original baseband signal at the source.” Ex. 1001, 8:48–50 (emphasis added). Thus, the ’940 patent clearly defines “information signal” as “the original baseband signal at the source.” The ’940 patent defines “baseband signal” as: Any generic information signal desired for transmission and/or reception. As used herein, it refers to both the information signal that is generated at a source prior to any transmission (also referred to as the modulating baseband signal), and to the signal that is to be used by the recipient after transmission (also referred to as the demodulated baseband signal). Ex. 1001, 7:41–47. The ’940 patent clearly gives a broad meaning to “baseband signal” such that it encompasses any signal desired for transmission and/or reception, but the definition of “information signal,” as quoted above, does not refer to any baseband signal. Rather, it refers to “the original baseband signal at the source.” Ex. 1001, 8:48–54. By including the terms “original” and “at the source,” the meaning of information signal, as defined by the ’940 patent, is more limited than the definition of a baseband signal. Thus, Petitioner’s contention that the meaning of “information signal,” and, hence, “bias signal” should be expanded to include any “baseband signal” (Reply 4) improperly takes “information signal” out of context. Petitioner’s contention eliminates the terms “original” and “at the source” from the ’940 patent’s definition of “information signal,” without providing any reason why those terms should not be considered. Accordingly, we agree with Patent Owner and construe “bias signal” to mean “(1) a signal having a steady, predetermined level or (2) the original baseband signal at the source.”” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Further, Patent Owner explains that “[t]he parties agree on the portion of the ‘to gate’ construction that is material to this IPR, i.e., that ‘to gate,’ the switch module must change between connecting and disconnecting the bias signal from the switch module’s output.” Id. at 37 (citing Pet. 13–14). Patent Owner’s proposed construction is consistent with the construction proposed by Petitioner. See Dec. 11 (discussing Petitioner’s construction of “to gate [a signal]” as “to change . . . between (i) connecting a signal at an input to an output such that the input and output have an equal voltage, and (ii) disconnecting the signal from the output” (quoting Pet. 14)). In light of the consistency between the proposed constructions, and in light of the lack of an actual controversy between the parties with respect to the impact of the minor differences in the proposed meanings of this term, we need not construe expressly the term further.4 Petitioner’s Reply does not challenge Patent Owner’s arguments regarding these claim terms. Accordingly, we adopt the construction of “switch module,” as reproduced above, for the reasons explained in our Decision to Institute. See Dec. 8–11. Additionally, we decline to construe expressly the terms “summer” and “to gate,” for the reasons discussed above.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “3. Level of Ordinary Skill in the Art Petitioner contends that one of ordinary skill in the art as of October 1998 would possess, at a minimum, either (a) a master of science degree in electrical engineering and two or more years of experience in radio frequency circuit design, or (b) a bachelor of science degree in electrical engineering with three or more years of experience with the design and development of RF circuits. Pet. 11 (citing Ex. 1002 ¶¶ 24–29). Petitioner’s argument is supported by Dr. Larson’s testimony. Ex. 1002 ¶¶ 24–29. Patent Owner does not contest Petitioner’s designation of the level of ordinary skill in the art as of the date of the invention. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “High Level Radio Frequency (“RF”) Source 10. The RF signal contains the information that television watchers see and hear.” Pet. 29 (citing Ex. 1023, 1:14–17). Petitioner asserts that Dobrovolny’s “RF Source signals are information signals that constitute ‘bias signals’ as that term is defined by the ‘940 patent.” Id. (citing Ex. 1002 ¶¶ 154, 210). Petitioner’s position is based on its claim construction of “bias signals” as “encompassing information signals.” Id. Notably, in the Petition,5 Petitioner does not assert that the recited “bias signal[s]” would have been obvious to one of ordinary skill in the art in light of Dobrovolny’s RF Source signals; rather, Petitioner’s position is that “bias signal[s]” are disclosed expressly. See id. (“RF Source signals . . . constitute ‘bias signals’”) (emphasis added).6 Patent Owner’s primary argument is as follows: [E]ven accepting [Petitioner’s] assertion that the ’940 patent expanded the ordinary meaning of ‘bias signal’ to include ‘information signal’ as defined in the patent . . . . [Petitioner] does not even allege, much less prove, that the purported ‘bias signal’—Dobrovolny’s high frequency Radio Frequency (RF) television signal—meets either of these definitions. Resp. 38–39. Patent Owner reiterates that Petitioner’s “only attempt to prove that the Dobrovolny RF television signal satisfies the claimed first and second bias signals is its assertion that Dobrovolny’s ‘RF signal contains the information that television watchers see and hear.’” Id. at 39 (quoting 5 As discussed infra, see Section III.C., Petitioner’s additional argument that bias signals would have been obvious in light of Dobrovolny’s RF Source signals constitutes a new argument, set forth only in Petitioner’s Reply, and we do not consider it here for the reasons explained below. 6 With respect to independent claim 18, Petitioner relies upon its arguments directed to the similar claim limitations of claim 1. See Pet. 44–45 (referring to Petitioner’s arguments directed to claim 1). Pet. 29). Patent Owner contends, however, that “an ‘information signal’ is not just any signal containing information . . . as [Petitioner’s] argument implicitly presumes. Rather, as defined in the ’940 patent, an information signal is restricted to ‘the original baseband signal at the source.’” Id. (quoting Ex. 1001, 8:48–54). Petitioner’s argument in its Reply is based on its incorrect claim construction of “bias signal” as encompassing any information signal. See, e.g., Reply 7 (asserting that the “bias signal” is met by Dobrovolny’s disclosure because it teaches “an information carrying High Level RF Source for reception”) (citing Ex. 1023, 1:14–17; Ex. 1002 ¶¶ 154, 210). As explained above, “bias signal” is understood to mean “(1) a signal having a steady, predetermined level or (2) the original baseband signal at the source.” See supra Section II.A. Petitioner does not argue, and has not established, that Dobrovolny’s RF Source signal is either at a steady, predetermined level or is the original baseband signal at the source. Thus, Petitioner has not shown that Dobrovolny discloses the “bias signal” limitations recited in claims 1 and 18, and the claims that depend from each.7 Accordingly, Petitioner has not shown, by a preponderance of the” slip op. at 19

  Patent outcomesUS 6,091,940 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,091,940

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.