• Samsung Display Co., Ltd. / Funai Electric Co., Ltd. et al. v. Gold Charm Ltd.All claims unpatentable
  PTAB · Dec 27, 2016 · IPR2015-01416 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 2, and 4–10 are unpatentable as obvious over Fujii, Fujii and Nakamura, or Fujii and Tsutsui, as applicable.

  RulingsFinal written decision

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

    “In essence, Patent Owner’s construction of the term “light shield area” as requiring an observable effect on the quantity of light leakage in order to improve the quality of the display to the user imports a term of degree into claims that recite this feature. “When a ‘word of degree’ is used [in a claim], . . . the patent [must provide] ‘some standard for measuring that degree.’” Enzo Biochem v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010) (citing Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984)). “The claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014). “When a claim term ‘depend[s] solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention,’ without sufficient guidance in the specification to provide objective direction to one of skill in the art, the term is indefinite.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260 (Fed. Cir. 2014) (quoting Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005)). The phrases “observable” and “quality to the user” are highly subjective and, on their face, provide little guidance to one of skill in the art. These phrases are not recited explicitly in the claims themselves. Patent Owner has not directed us to any disclosure in the written description, nor can we find such a disclosure, relevant to determining a standard for 11 measuring the necessary degree of observability or quality.3 Consequently, we decline to adopt Patent Owner’s construction of the term “light shield area” because it would inject unnecessary ambiguity into the claims that recite this feature. Instead, we maintain our initial determination that “light shield area” should be accorded its plain and ordinary meaning (i.e. area that shields light), which, in our view, is a broad, yet reasonable construction in light of the Specification and claims of the ’275 patent.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “Patent Owner relies on Allergan for the proposition that Fujii’s criticism of blocking light means that it cannot be relied on as prior art in this case. PO Resp. 26 (citing Allergan, Inc. v. Sandoz Inc. 796 F.3d 1293, 1305-06 (Fed. Cir. 2015)). Patent Owner asserts that, “[i]n Allergan, the court found that the prior art criticized the claimed formulation [BAK] because the reference taught one of ordinary skill in the art to minimize the amount of a particular claimed element in order to avoid certain problems. PO Resp. 26 (citing Allergan, 796 F.3d at 1305–06.). However, Patent Owner does not explain that, in Allergan, “the prior art taught that BAK should be minimized in ophthalmic formulations to avoid safety problems.” Allergan, 796 F.3d at 1305. In Allergan, “the prior art [also] taught that BAK would not increase the permeability of bimatoprost, but might instead decrease it.” Id. at 1306. Thus, in Allergan, the prior art taught that the formulation at issue caused safety problems and caused the opposite effect than the one desired by the patent at issue. Here, in contrast, Fujii teaches that the metal auxiliary terminals will cause the exact effect desired (or intended result) in the ’275 patent, even though that same effect, i.e. blocking light, is disfavored by the Fujii inventors. In fact, Fujii suggests that the light blockage above the maximum width would block light and “darken[] the screen.” Ex. 1003, 16:11–32. This disclosure is Fujii is supported by the testimony of Dr. Chiang. Ex. 1008 ¶ 52 (testifying that chromium wiring materials disclosed in Fujii may be used as opaque light shield areas used to darken a screen). 15 Also relevant to Patent Owner’s argument presented here is its’ assertion in its claims construction argument that light shield areas must have an observable effect or “there would be no point in providing the light shield areas.” PO Resp. 20. Were we to accept that logic, then we would also apply the same logic here that there would be no point in reducing darkening in Fujii unless the darkening described was an observable effect. “A finding that two inventions were designed to resolve different problems . . . is insufficient to demonstrate that one invention teaches away from another.” Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004). While Fujii suggests limiting the width of the metal auxiliary electrodes to avoid darkening of the screen and maintaining a consistent gap between the top and bottom substrates, it also teaches one of ordinary skill that widening of the metal auxiliary electrodes shields light to the screen. See, e.g., Ex. 1003, 16:29–33 (disclosing that “[w]hen the width of the metal auxiliary electrode 56 is increased to further reduce the wiring resistance, the display opening factor of the liquid crystal device is reduced darkening the screen”). Finally, in our claim construction section above, we construed “light” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We find that Fujii explicitly states that “the invention [of Fujii] can also be applied to an active matrix liquid crystal display,” and further states that the electrodes could be replaced by “scanning signal . . . or video signal lines.” Ex. 1003, 1:7–12, 12:54–67. As mentioned previously, Fujii states that the auxiliary electrodes may cause a darkening of the panel. Id. at 16:29–33. This is the same effect that the inventors of the ’275 patent were trying to achieve. Ex. 1001, 2:39–43. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. A person of ordinary skill is a person of ordinary creativity, not an automaton. Id. at 421. Thus, because Fujii explicitly contemplates that its teachings may be applied to an active matrix liquid crystal display, and Fujii shares a common objective with the inventors of the ’275 patent— namely, resolving uneven brightness or darkening of a panel—Fujii provides sufficient teachings such that one of ordinary skill in would implement the claimed light shield areas in an active matrix crystal display. Pet. 19; Pet. Reply 9. Patent Owner does not address separately Petitioner’s contentions and supporting evidence with respect to claims 2 and 4, which depend from claim 1. We have reviewed Petitioner’s proposed ground of obviousness by Fujii against claims 1, 2, and 4, and we agree with and adopt Petitioner’s 20 analysis. Based on the record developed during trial, Petitioner has shown by a preponderance of the evidence that claims 1, 2, and 4 would have been obvious over Fujii.” slip op. at 20

  • ExcludeMotion to exclude, deniedDenied

    “III. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner moves to exclude the ’163 patent introduced by Petitioner with its Reply as improper reply evidence and as irrelevant. Mot. to Exclude 1. Petitioner relies on the ’163 patent to support Dr. Watts’s purported admission that “in the embodiment of the ’275 patent where light shield areas are comprised of strips of light shield material (as shown in blue 27 coloration in Figure 6), the strips are on the order of 10–20 microns wide.” Pet. Reply 11 n.2. This issue is moot because this Final Written Decision does not cite to or rely upon the ’163 patent. In addition, we do not rely on any assertion by Petitioner that light shield material in the ’275 patent is on the order of 10–20 microns wide. For that reason, we do not address the matter on the merits and dismiss Patent Owner’s Motion to Exclude as moot.” slip op. at 27

  Patent outcomesUS 5,850,275 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 5,850,275
• Samsung Display Co., Ltd. / Funai Electric Co., Ltd. et al. v. Gold Charm Ltd.All claims unpatentable
  PTAB · Dec 27, 2016 · IPR2015-01417 · APJ Bryan F Moore · IPR · Final written decision

  Claims 2, 3, 5, and 6 are unpatentable: claims 3, 5, and 6 as anticipated by Takizawa; claim 2 as obvious over Takizawa and Hoshino; and claims 2, 3, and 6 as anticipated by Hoshino.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDisclaimer not foundDecided for petitioner

    “The Federal Circuit “counsels the PTO to avoid the temptation to limit broad claim terms solely on the basis of specification passages.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.” Id. Additionally, “‘words or expressions of manifest exclusion’ or ‘explicit’ disclaimers in the specification are necessary to disavow claim scope.” Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005).” slip op. at 10

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

    “Whether the order of the steps recited in a method claim must be performed in a particular order is properly a part of claim construction. See, e.g., Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1371–72 (Fed. Cir. 2003). Generally, steps may be performed in any order so long as “nothing in the intrinsic evidence” compels otherwise. Id. at 1370. “Interactive Gift recites a two-part test for determining if the steps of a method claim that do not otherwise recite an order, must nonetheless be performed in the order in which they are written.” Altiris, 318 F.3d 1369 (citing Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342–43 (Fed. Cir. 2001)). “First, we look to the claim language to determine if, as a matter of logic or grammar, they must be performed in the order written.” Id. “If not, we next look to the rest of the specification to determine whether it directly or implicitly requires such a narrow construction.” Id. at 1370. (citation omitted). If not, the sequence in which such steps are written is not a requirement.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Takizawa does require forming an etch-stop (or channel protection layer, referred to as “the protecting film 18” in Takizawa) prior to (and as a necessary prerequisite to) forming the operative semiconductor of the TFT. Ex. 1003 at 15:1–32. However, Takizawa still performs only five patterning steps. In fact, Patent Owner admits that Takizawa performs only five etching/patterning steps. Tr. 40:23–41:9 (“there are five steps in Takizawa”); Ex. 2025 ¶ 49. Patent Owner suggests that to meet the claims limitations, step (c) must be performed before, in a separate and distinct manner from step (d). PO Resp. 47–48. Petitioner states that, although Takizawa may not perform step (c) of claim 1 before step (d), this claim do not require a specific order of steps. Pet. Reply 16. Patent Owner’s argument is premised on construing claim 1 to require performing step (c) of the claim before step (d). As we explained above in the claim construction section, we did not so limit this claim; thus, we are not persuaded by Patent Owner’s argument. See supra Section II.A.2. Patent Owner does not address separately Petitioner’s contentions and supporting evidence with respect to claims 3, 5, and 6. See generally PO Resp. 47–48. We have reviewed Petitioner’s proposed ground of anticipation by Takizawa against claims 3, 5, and 6, and we agree with and adopt Petitioner’s analysis. Based on the record developed during trial, Petitioner has shown by a preponderance of the evidence that Takizawa anticipates claims 3, 5, and 6.” slip op. at 22

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Petitioner concludes that one of ordinary skill in the art would have recognized that the TFT array operates best when the ACBL receives a consistent voltage, which is provided by driving circuitry through the ACBL terminal. Thus, to create a properly operating device, [a person of ordinary skill in the art] would seek out methods of providing a reference voltage to the capacitive electrodes and would incorporate the ACBL terminal of Hoshino into the Takizawa device in order to do so. Pet. 29; Ex. 1012 ¶ 70. We agree and adopt this stated rationale because it provides specific motivation to make the combination. We credit Petitioner’s declarant who testifies that “the [a person of ordinary skill in the art] would know how to etch the ACBL contact hole and gate bus line 24 contact hole in the same photolithography step because Hoshino provides an example of doing so.” Ex. 1012 ¶ 70. Hoshino itself provides the “how” to achieve the claims limitation.” slip op. at 24

  Patent outcomesUS 5,966,589 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 5,966,589
• Funai Electric Co., Ltd. / Samsung Display Co., Ltd. et al. v. Gold Charm Ltd.All claims unpatentable
  PTAB · Dec 27, 2016 · IPR2015-01468 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–10 are unpatentable as obvious over Yamada because the Board found the claimed connecting structure and limitations obvious in light of Yamada.

  RulingsFinal written decision

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

    “The record supports Petitioner’s position and the claim construction determined in the Institution Decision. The ’053 patent specification broadly describes a protrusion as having any configuration: “The configuration of the protrusion 17a is any provided that it can be connected to the GND line in the connecting substrate and the width and length of the protrusion 17a can be changed on demand.” Ex. 1001, 11:42–45. According to a general dictionary cited in the Institution Decision, the plain meaning of “protrusion” is “something that protrudes,” and “protrude” means “[t]o push or thrust outward” or “[t]o jut out; project.” Ex. 3001; Inst. Dec. 6 (citing Ex. 3001). The ’053 patent specification shows protrusions that correspond to this evidence of plain meaning. For example, Figures 6A–6C show protrusions 17a projecting from an edge of wiring pattern portion 17b of a bonding assist portion. See, e.g., Fig. 6C supra. Our claim construction and the plain meaning (as evidenced by the cited dictionary definition (Ex. 3001)) also comport with the statement in the specification that the protrusion configuration “is any” provided “it can be connected to the GND line” and “the width and length of the protrusion 17a can be changed on demand.” Ex. 1001, 11:42–45 (emphases added).” slip op. at 7

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “C. Real Parties in Interest Patent Owner argued in its Preliminary Response that Petitioner fails to name all real parties in interest (RPIs) in its Petition as required by 35 U.S.C. § 312(a)(2). Patent Owner does not present this argument in its Patent Owner Response and, therefore, has waived it. See Paper 15, 3 (“[P]atent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.). Assuming for the sake of argument that Patent Owner did not waive the RPI issue, we rely on, and incorporate, our findings and determination in the Institution Decision. See Inst. Dec. 20–28.” slip op. at 49

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “that Yamada teaches connecting the bonding assist region to ground in order to eliminate electrical noise through shielding. Pet. 17 (citing Ex. 1002 ¶ 79; Ex. 1009 ¶¶ 5, 7, 22, 30). Considering the teaching in Yamada of a necessary connection to ground for shielding, Petitioner cites Mr. Flasck, who declares that “one of ordinary skill in the art at the time of the ’053 [invention] would have known that some electrical protrusion would be inherently necessary to connect the bonding assist portions to a fixed potential.” Ex. 1002 ¶ 79 (emphasis added); Pet. 17 (citing Ex. 1002 ¶ 79). Petitioner also contends that “locating a protrusion” centrally or “at a different location is nothing more than a design choice,” or skilled artisans 8 Compare Wagner, 63 F.2d at 986–87 (relying on drawings), Seid, 161 F.2d at 231 (relying on accidental drawings), Mraz, 455 F.2d at 1072 (relying on drawings), and Vas-Cath, 935 F.2d at 1566 (relying solely on design patent drawings for written description of relative proportions), with Hockerson- Halberstadt, Inc. v. Avia Group Int’l., Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (stating “it is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”). As discussed above, notwithstanding the reasoning in Hockerson-Halberstadt, Yamada’s specification is not “completely silent” on the issue, as it disclose ranges for wiring widths, implying all widths need not be equal. Also, notwithstanding the dicta regarding drawings, the holding in Hockerson- Halberstadt turned on patent owner’s disavowal of claim scope based on prosecution history that overcame defendant’s argument that relied on alleged drawing dimensions that the patent owner had distinguished during prosecution. See id. at 956–57. “would be guided by design options.” Pet. 36–37 (citing 1002 ¶¶ 121–122). In other words, the thrust of Petitioner’s showing as summarized in the Institution Decision is that it would have been obvious to employ a protrusion somewhere in Yamada’s bonding assist region in order to ensure a ground connection and to prevent noise––a connection that Yamada discloses. See Ex. 1002 ¶¶ 70, 72–73, 79; Ex. 1009 ¶¶ 5, 7, 22, 30; Pet. 11, 35–37; Inst. Dec. 10 (connection to ground), 11 n.4, 14 (obviousness), 18 (obviousness); see also PO Resp. 32 (joining the issue and arguing the opposite: “Yamada does not . . . teach or suggest . . . a protrusion connected to ground” as claimed in the ’053 patent). Petitioner’s contentions are persuasive to show the obviousness of connecting Yamada’s bonding assist region using a simple protrusion or contact extension, for the purpose of ensuring the electrical connection disclosed by Yamada. The claimed “connecting structure . . . comprising: . . . a bonding assist region . . . including” a “protrusion” (an electrical contact), as claims 1 and 4 recite, constitutes “the predictable use of prior art elements according to their established functions.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); see also In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (“We also agree that the particular placement of the contact provides no novel or unexpected result. The manner in which electrical contact is made for Smith’s battery would be an obvious matter of design choice within the skill of the art.”).” slip op. at 32

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “Yamada’s teachings or indicate a clear intent for the layers not to have “substantially the same height,” as called for in claim 2. See Ex. 1009, Fig. 9.11 Petitioner persuasively explains that using the same material and process to create both wiring portions, wherein a PCB nominally begins with a wiring layer as Patent Owner admits, would have been obvious as a matter of efficiency in terms of bonding and would have simplified the process by using the same existing materials. See Pet. 19–20; 1002 ¶¶ 85–86, 88; Prelim. Resp. 37 (“such wirings of a printed circuit board would presumably be comprised of copper, as would be known to those of ordinary skill in the art”); Inst. Dec. 17 (discussing showing of efficiency). Yamada uses predetermined bonding assist patterns 5 to improve bonding reliability between existing wiring layers and overcome defective bonding. See Ex. 1009, Abstract, ¶¶ 6, 8–11, 24, 27, 29, 31. Yamada at least suggests forming the two wiring portions using the same material and processes at the same time: “As illustrated in Fig. 1, the wiring terminals 4 and the conductive layer 5 are formed on the PWB 1 together.” Ex. 1009 ¶ 41 (emphasis added). Notwithstanding Patent Owner’s arguments about alleged “reasons . . . to have different heights” (PO Resp. 46 (citing Ex. 2021 ¶¶ 68, 69)), Patent Owner does not address the “efficiency” reasons advanced by Petitioner for suggesting substantially the same height at the side-by-side metal regions of Yamada. See PO Resp. 45–46. 11 Patent Owner argues that Petitioner inconsistently relies on what Figure 5 portrays and ignores what Figure 9 portrays. See PO Resp. 4–5 n.1, 38. That argument overlooks that drawings must be interpreted in view of what the full disclosure portrays to artisans of ordinary skill. Also, Yamada does not disclose adding other material or different material to wiring portions 4a-h and 5. Responding to Patent Owner’s position, Petitioner relies on Mr. Flasck, who testifies that “to those of ordinary skill in the art,” Yamada teaches making the bonding assist region and terminal region of the same material and thickness. Pet. Reply 13 (citing Ex. 1009 ¶ 41; Ex. 1015 ¶ 45). As noted above, at the cited paragraph of Yamada, Yamada discloses that “the wiring terminals 4 and the conductive layer 5 are formed on the PWB 1 together.” Ex. 1009 ¶ 41. This at least suggests forming them of the same material––i.e., using the material of the printed circuit board. Mr. Flasck testifies that “to the average practitioner at the time, in this context, ‘together’ would have had the natural meaning of ‘formed of the same material at the same time.’” Ex. 1015 ¶ 46.” slip op. at 44

  Patent outcomesUS 6,909,053 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,909,053
• Toshiba Corp. / Samsung Display Co., Ltd. v. Gold Charm LimitedAll claims unpatentable
  PTAB · Dec 23, 2016 · IPR2015-01497 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–4, 8, 9, 13, and 14 are unpatentable as obvious over the ’512 Publication and APA because their combined teachings render the claimed subject matter obvious.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “Based on the record before us, we are persuaded that Petitioner explains sufficiently how the ’512 Publication and the APA together teach each limitation of each of the challenged claims (see Pet. 29–59 and evidence cited therein), as well as the reasons that a person of ordinary skill in the art would have combined those teachings (see id. at 33, 41–42, 48, 51–52, 57 (citing, e.g., Ex. 1002 ¶¶ 90, 101, 111, 118, 129, 130)), so as to meet its burden to demonstrate by a preponderance of the evidence that the subject matter of the claims would have been obvious over the proffered combination. Patent Owner’s arguments to the contrary are not persuasive.” slip op. at 20

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

    “In the Petition, Petitioner proposed two alternate constructions for the claim 1 term “a drive means for driving the display,” depending on whether that term is properly construed as a means-plus-function limitation under 35 U.S.C. § 112, sixth paragraph. Pet. 26–28. Patent Owner responds that neither of Petitioner’s proposed constructions is proper, but that, “for purposes of this proceeding only,” Patent Owner relies upon those constructions. PO Resp. 22–23. According to Patent Owner, “even if one of Petitioners’ proposed constructions were adopted by the Board, the Petition nevertheless fails to a [sic] establish a prima facie case of obviousness.” PO Resp. 23. In our Decision on Institution, we concluded on the record then before us that it was not necessary for our determination of whether to institute an inter partes review to construe expressly any terms of the challenged claims. Dec. on Inst. 8. Because this Final Written Decision does not turn on the construction of “a drive means for driving the display” or of any other specific claim term, we again conclude that it is unnecessary to construe expressly any term of the challenged claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 9

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner’s declarant, Dr. Silzars, testifies that one of ordinary skill in the art as of the July 28, 1994, the earliest claimed priority date of the ’092 patent, “would generally have had at least a Bachelor’s of Science degree in electrical engineering or physics, or equivalent, and several years of relevant experience relating to the design and fabrication of liquid crystal displays,” or, “[a]bsent a formal degree, a person of ordinary skill in the art would have additional years of work experience.” Ex. 1002 ¶¶ 13, 33; see Pet. 24 (citing Ex. 1002 ¶ 13). Patent Owner’s declarant, Dr. den Boer, essentially agrees, opining that one of ordinary skill in the art as of July 28, 1994, would have been “someone with at least a Bachelor’s of Science degree in a relevant field, such as electrical engineering, and with several years of experience in the field of design, development and fabrication of liquid crystal displays,” and stating “[i]n this specific regard, I agree with Dr. Silzars.” Ex. 2024 ¶ 9; see PO Resp. 9 (citing Ex. 2024 ¶ 9). Dr. Silzars and Dr. den Boer also agree that the person of ordinary skill in the art would understand the prior art as discussed herein. Ex. 1002 ¶ 13; Ex. 2024 ¶ 9. We determine that the differences in the declarants’ assertions are negligible and that both assessments are consistent with the ’092 patent and the referenced prior art. For the purposes of the analysis below, we adopt Dr. den Boer’s assessment.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Digest paper “concluded that only the dot mode polarity inversion method addresses and solves both the flicker and cross-talk problems,” “a person of ordinary skill in the art and familiar with the prior art of [the] ’092 [patent] and the SID92 Digest paper would employ dot mode polarity inversion over column inversion and row inversion, because it provides the best image quality.” Ex. 2024 ¶¶ 26–27. Irrespective of whether dot mode reversion would provide a still better image, however, we are persuaded that a person of ordinary skill in the art would have had reason, based on the APA, to add column polarity reversion to the ’512 Publication technique, in order to improve that technique in the same manner that the APA taught dot mode reversion provided an improvement over row polarity reversion. As the Supreme Court explained in KSR, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” 550 U.S. at 417. As cited above, the APA taught that row polarity reversion eliminated crosstalk, but still suffered from flicker, whereas dot mode reversion, which effectively combines row polarity reversion with column polarity reversion, eliminated both crosstalk and flicker. We are persuaded, therefore, that a person of ordinary skill in the art would have had reason to add column polarity reversion of the APA to the double row polarity reversion of the ’512 Publication, to result in the driving method claimed in the ’092 patent. We further agree with Petitioner (see Tr. 7:7–14) that Patent Owner’s arguments that “adopting portions of the APA techniques as suggested would likely have little, if any positive effect on the power consumption by the ’512 Publication display” (PO Resp. 3) and that “power consumption may actually be exacerbated by this combination” (id.) focus on the wrong comparison and do not address our finding in the Decision on Institution that one of ordinary skill in the art would have had reason to pursue a combination of the ’512 Publication’s teachings with the APA in an attempt to solve the problem of excessive power dissipation by the APA’s dot mode polarity reversion (see Dec. on Inst. 17–18). Whereas Patent Owner’s argument focuses on a comparison of power consumption between the ’512 Publication display and a display having column inversion added to the ’512 Publication (Tr. 19:25–20:2), we agree with Petitioner (see Pet. Reply 20) that the relevant comparison is instead between the combination and the dot mode polarity reversion scheme of the APA. Nonetheless, because we are persuaded by Petitioner’s arguments and evidence, for the reasons set forth above, that a person of ordinary skill in the art would have had reason to combine the teachings of the APA with those of the ’512 Publication in the manner proposed by Petitioner rather than adopting dot mode polarity reversion in its entirety, and that such a combination would have rendered the subject matter of each of claims 1–4, 8, 9, 13, and 14 of the ’092 patent obvious, we need not reach Petitioner’s further argument that a desire to reduce power consumption would have provided additional reason to make that combination.” slip op. at 25

  Patent outcomesUS 5,790,092 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 5,790,092
• Elekta, Inc. v. Varian Medical Systems, Inc.All claims unpatentable
  PTAB · Dec 23, 2016 · IPR2015-01401 · APJ Garth D Baer · IPR · Final written decision

  Claims 1, 4–7, 14, 15, 53, 60, and 61 are unpatentable over Jaffray 2001 under §§ 102(b) and 103(a), and over the stated Jaffray combinations under § 103(a).

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question” at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We construe only those claim terms necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). 2. “capable of implementing a treatment plan” Patent Owner takes the position that to be “capable of implementing a treatment plan,” a radiation treatment system cannot still be in development and must pass industry-established quality assurance validations that are prerequisites to commissioning such systems for use on real patients. See PO Resp. 17–18. We decline to read in these additional limitations. Neither the claims nor the Specification has any support for excluding devices that are still early in development, or those that have not yet been validated against established quality standards. The broadest reasonable construction of the term requires no more than a system capable of implementing one or more treatment plans. 3. “communications network” slip op. at 7

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

    “Patent Owner asserts “[a] communications network is a communication system that facilitates communication between many devices and that uses a networking protocol to selectively route messages to their intended devices.” PO Resp. 28. In Reply, Petitioner proposes a broader construction: “a link between two or more components of the radiation treatment system that allows information to be shared between them.” Reply 11. We agree with Petitioner. In the three instances when the ’021 patent Specification recites “communications network,” it describes only a generic connection between components. See Ex. 1001, 2:36–40 (explaining that “[t]he couch 218 may be connected to the therapy simulator rotatable gantry via a communications network”), 4:16–18 (explaining that “the computer 220 connects to the simulator 100 and the command processor 225 via a communications network 240”), 6:16–18 (explaining that “box 451, processor 425, and computer 450 connect to simulator 400 via communications network 440”). Figures 1 and 3 of the ’021 patent depict the communications network (items 240 and 440) simply as arrows connecting various components. Notably absent from the ’021 patent is any reference to networking protocols or a routing mechanism, and nothing in the term’s plain language requires a networking protocol or selectively routing messages as Patent Owner suggests. We agree with Petitioner under the broadest reasonable construction, a communications network is simply a link between two or more components of the radiation treatment system that allows information to be shared between them. 4. “a high energy radiation source” and “a cone-beam radiation source”” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “i. Jaffray 2001 Teaches “a radiation treatment system capable of implementing a treatment plan” All of the challenged claims require a “radiation treatment system capable of implementing a treatment plan.” We agree with Petitioner that because Jaffray 2001 teaches “[t]he adaptation of this system to a medical linear accelerator for on-line image-guided radiation therapy demonstrates the suitability of this technology for intra-therapeutic guidance,” Jaffray 2001 discloses a system capable of implementing a treatment plan. See Pet. 18 (quoting Ex. 1003, 800); Ex. 2024 ¶¶ 25–28 (explaining that “a medical linear accelerator, by its very nature, is capable of implementing a treatment plan”), ¶¶ 29–30 (explaining that Fig. 2(a) from Patent Owner’s Exhibit 2015 confirms that Jaffray 2001’s medical linear accelerator is capable of implementing a treatment plan). In contesting this element, Patent Owner notes that one of the other Jaffray references—Jaffray JRO 1999 (Ex. 1007)—states its design “allows normal operation of the accelerator with the imagers removed and the kV xray tube retracted.” Ex. 1007, 775. Patent Owner interprets Jaffray JRO 1999’s statement to mean in all of Jaffray’s systems, removing the imaging system was “necessary” before the linear accelerator could implement a treatment plan. PO Resp. 8–9; Ex. 2020 ¶ 58. Patent Owner argues further Jaffray 2001’s system was not capable of implementing a treatment plan because it was still in development and had not been tested or validated against established industry standards that must be met before the FDA will commission such devices for medical use. See PO Resp.17–18; Ex. 2020 ¶¶ 49–52. We disagree. As explained above, under our claim construction, the claim limitation at issue requires only a system capable of implementing one or more treatment plans, not one that is ready to certify for actual medical use on real patients. Jaffray JRO 1999’s reference to allowing normal operation with the imagers removed does not undermine that teaching; it simply indicates the disclosed system permits radiation therapy with the imagers removed, a feature beneficial for “limited situations in which the treatment plan may require extreme angulation.” Reply 3; see Ex. 1024 ¶¶ 7–8. We find Jaffray 2001 discloses a radiation treatment system capable of implementing a treatment plan as the challenged claims require.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “challenged claims, the claimed subject matter would have been obvious over Jaffray 2001 at the time of the invention. See Pet. 26–27. As explained above, we find Jaffray 2001 discloses every limitation from the challenged claims. In addition, Petitioner explains—with unrefuted support from Dr. Hamilton and the prior art—by 1981 translatable treatment couches moveable in three planes plus angulation and coupled to the gantry via a communications network were standard on linear accelerators. See Pet. 26– 27 (citing Ex. 1016 ¶ 36; Ex. 1015, 220; Ex. 1010, 1, 2, 12, 39–48). Petitioner also explains—again with unrefuted support from Dr. Hamilton— none of the Jaffray references suggest any changes to these standard features and one skilled in the art would understand the linear accelerator depicted in Jaffray 2001 is the Elekta SL20, which had a translatable treatment couch including the same standard features. Pet. 27 (citing Ex. 1016 ¶ 128). In addition, Petitioner explains that to the extent Jaffray 2001 fails to disclose a computing unit to capture and store image projection data, it would have been obvious to one skilled in the art to include one because “to process the image projection data to generate volumetric images, it is necessary to store the image projection data in the computer which will process the data.” Pet. 27 (citing 1016 ¶ 207). Thus, in addition to demonstrating the necessary disclosures in the prior art (through incorporating its anticipation argument), Petitioner identified sufficient reasons that would have prompted a person of ordinary skill in the relevant field to combine the elements the way the claimed invention does. See KSR, 550 U.S. at 418. In contesting obviousness based on Jaffray 2001, Patent Owner reiterates its argument that Jaffray 2001 does not disclose a system capable of implementing a treatment plan (as required in all of the challenged claims), a computing unit coupled to the rotatable gantry via a communications network (as required in claims 1, 4, and 5), or a translatable treatment couch coupled to the rotatable gantry via a communications network (as required in claims 14, 15, and 60). PO Resp. 45. Patent Owner asserts also we should reject Petitioner’s obviousness challenge as an improper attempt to “bootstrap” obviousness to anticipation, without identifying any differences between the claimed subject matter and the prior art or explaining why those elements would have been obvious to a person of ordinary skill in the art. Id. at 43. We disagree with Patent Owner’s arguments addressing Jaffray 2001’s ability to implement a treatment plan and communications network for the reasons explained in our anticipation analysis above. Moreover, we do not view Petitioner’s obviousness challenge as a mere “bootstrap” to anticipation because Petitioner identified potential differences between Jaffray 2001 and claimed subject matter (i.e., the claimed translatable treatment couch and computing unit to store image projection data) as well as rationale explaining why one skilled in the art would have known to include those elements.” slip op. at 19

  Patent outcomesUS 7,945,021 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,945,021
• Broad Ocean Technologies, LLC v. Nidec Motor CorporationNo claims unpatentable
  PTAB · Dec 21, 2016 · IPR2015-01617 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 7–13 were not shown unpatentable because Beifus did not disclose the claimed torque table with alternate torque settings.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “Beifus states that Figure 6 “is a chart illustrating an induction motor speed-torque curve that is programmed into a memory of an ECM.” Ex. 1007 ¶ 11. Because “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference,” the dispositive issue in this proceeding is well defined: does Figure 6 (and related disclosure) of Beifus teach “selecting a torque table associated with the adjustment factor, the torque table including alternate torque settings,” as recited in independent claim 7? See Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “reasoning of Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir. 2015). Petitioner contends that “[u]pon reading Beifus, a person of ordinary skill would immediately recognize that the ECM control circuit could handle the torque values in two ways – storing a set of torque values in a memory or by calculating the torque values ‘on the fly.’” Reply 18. Kennametal explains that “a reference can anticipate a claim even if it ‘do[es] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal at 1381 (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)). Petitioner did not raise the Kennametal theory of anticipation in its Petition, and the argument based on it in the Reply is, therefore, improper. 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response.”) (emphasis added); CBS Interactive, Inc. v. Helferich Pat. Lic., LLC, Case IPR2013-00033, slip op. at 3 (PTAB Aug. 9, 2013) (Paper 79) (“Should there be improper arguments or evidence presented with a reply, the Board, exercising its discretion, may exclude the reply and related evidence in their entirety, or alternatively, decline to consider the improper arguments and/or related evidence.”). Although Patent Owner addressed this theory in its Response (PO Resp. 21–24), Patent Owner appears to have done so only prophylactically after the theory was raised by Petitioner in redirect examination of Dr. Sidman. See PO Resp. 21 (“During Dr. Sidman’s redirect examination by [Petitioner’s] counsel, he was asked the following leading question . . . .”) (“The Board should disregard any of this new evidence and argument if [Petitioner] intends to rely on it.”). Because this is a new argument, not raised in the Petition, we do not consider it.” slip op. at 18

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “the ambiguity when Figure 6 is actually described in detail in the specification.” Id. at 16. As Patent Owner asserts, “Beifus makes it clear that Figure 6 is a plot of values derived from key characteristics which are motor parameters of the emulated motor.” Id. (citing Ex. 1007 ¶ 36; Ex. 2002 ¶¶ 15–16, 31). This understanding of Beifus is confirmed by testimony of Patent Owner’s expert, Mark N. Horenstein, Ph.D. Ex. 2002 ¶¶ 15–16. Dr. Horenstein explains that a person of ordinary skill in the art would understand that the parameters stored in the ECM are key parameters used with the formula reproduced above to describe the torque-speed curve of the induction motor being emulated, namely the no-load speed, breakdown speed, and shape description number n. Id. ¶ 15. Dr. Horenstein further testifies that, “although square and diamond symbols appear along the curves in Figure 6, nowhere does Beifus describe the storing of these individual points.” Id. ¶ 16. Rather, Dr. Horenstein expresses his opinion that “a person of skill would understand these symbols to be included simply to identify which curve applies to Option 1 and which to Option 2 [i.e., different options for the induction motor breakdown speed], as indicated by the legend to the right of the plots.” Id. Petitioner challenged Dr. Horenstein’s opinion at his deposition, in part by comparing a drawing from one of Dr. Horenstein’s own patents that included a series of curves with data marked by different symbols: Q. So if a person of ordinary skill in the art looking at Figure 6 of the Beifus patent sees diamonds and squares, wouldn’t they come to an understanding that those are data points? A. I don’t think so. And the reason is that a formula is given that explains how the curves are computed. Figure 19 of [Dr. Horenstein’s patent], those are discretely measured points performed by experiment, and there really is no formula that applies to those curves per se, they’re just data points that have some scatter relative to each other and they happen to be connected by lines, but those lines do not represent a formula. Ex. 1013, 54:2–16. We disagree with Petitioner’s characterization of this testimony as explaining that “the reason a person of ordinary skill in the art would understand that the diamonds and squares appearing in Figure 19 of [Dr. Horenstein’s] patent are data points, as opposed to mere curve identifiers, is because the diamonds and squares are connected by lines.” Reply 15. Rather, Dr. Horenstein’s testimony makes clear that his opinion is grounded in Beifus’s disclosure of a formula that allows calculation of the illustrated points and that connection of data points measured by experiment with lines is incidental. Dr. Horenstein’s testimony is more persuasive than the testimony of Petitioner’s expert, Michael D. Sidman, Ph.D., on the identification of “key characteristic points” disclosed by Beifus. For example, Dr. Sidman appeared to suggest at his deposition that the entire speed-torque curve of Beifus’s Figure 6 is itself a “key characteristic point,” but qualified that position when challenged by Patent Owner. See Ex. 2001, 23:22–25:15. Nevertheless, Dr. Sidman agrees that (1) a curve can be generated from a mathematical formula and graphed (Ex. 2001, 30:8–11); (2) Beifus’s two formulas correspond to the formulas for “Option 1” and “Option 2” shown in Figure 6 (id. at 33:12–36:19); (3) operating speed, breakdown speed, no load speed, and shape-description number n are variables used in the formula disclosed by Beifus (id. at 22:23–23:10); (4) the calculation disclosed by Beifus could be performed on the fly in a motor controller (id. at 47:6–14); and (5) Beifus does not explicitly disclose that any precalculations are performed (id. at 43:1–23). These aspects of Dr. Sidman’s testimony are consistent with Patent Owner’s reading of Beifus.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “We see no compelling reason to modify these constructions based on the positions of the parties as developed during the trial, and adopt them for this Decision. With respect to the construction of “torque table,” Patent Owner asserts: If the Board’s construction means that the table need not be in any particular format in the memory, but the table must still store the alternative torque values required by the claim “in a memory connected to the motor,” then Patent Owner accepts this interpretation for the purposes of this proceeding. However, if the Board’s construction including reference to “a torque curve graphically representing a set of torque values” does not require the torque values shown on the curve to be stored in memory, it is erroneous. PO Resp. 9. We agree with Patent Owner’s position, namely that “[t]he broadest reasonable interpretation of ‘table’ still must require the torque values to be stored in the table.” Id. As Patent Owner points out, “[t]he only intrinsic evidence available in this proceeding demonstrates a ‘torque table’ stores alternative torque settings.” Id. In particular, the ’092 patent consistently uses “table” to refer to discrete data that are stored in a memory, such as in the “speed tables” described as alternatives to “torque tables.” See Ex. 1001, col. 11, ll. 5–24, col. 16, ll. 63–66 (“Instead of adjusting the torque as described above, the motor controller 18 could store a plurality of different torque or speed tables and select one of the torque/speed tables based on an input provided by the torque adjustment mechanism.”). This aspect of the construction of “torque table” is reflected in its reference to including a graphical representation of “a set” of torque values in a memory connected to a motor.” slip op. at 7

  Patent outcomesUS 7,990,092 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,990,092
• Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCRehearing denied
  PTAB · Dec 9, 2016 · IPR2014-01530 · APJ Trenton A Ward · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving its final written decision on claim 6 unchanged.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 2

  • BurdenDecided for petitioner

    “Decision that “[t]o prevail in its challenges to the patentability of the claims, a petitioner must establish facts supporting its challenges by a preponderance of the evidence.” Dec. 12 (citing 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d)) (emphasis added).” slip op. at 6

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

    “189:4–9)), require that these data modules must be part of a larger computer program. Even considering the disclosures in the specification cited by Patent Owner, we are not persuaded that the examples cited require that all data modules must be a discrete unit of a larger computer program. For example, disclosure in the specification that a data module containing the “particular cost-of-a-trimmed-pork-belly-unit” might be executed by a linked computer program to deliver personalized advertisements does not require that it must be a discrete unit of a larger computer program in all circumstances. See Req. 6–7. Yet, as we determined in the Final Written Decision, the specification does disclose that each type of module, including program modules, object modules, and data modules, is executed by a computer to perform a specific function. See Dec. 9 (citing Ex. 1003, 186:10–17, 188:35–37, 188:59–61). Accordingly, we modified our initial construction of “module” in the Decision on Institution as “a discrete unit of digital data” (Paper 8, 8) to incorporate “being executed by a computer to perform a specific function” (see Dec. 9–10). Patent Owner fails to establish persuasively how the examples of data modules in the specification are not met by a construction of “module” as “a discrete unit of digital data that is executed and/or processed to perform a specific function.”” slip op. at 5

  Claim construction
  Patents in suitUS 7,864,956
• Atlanta Gas Light Company v. Bennett Regulator Guards, Inc.Rehearing denied
  PTAB · Dec 6, 2016 · IPR2015-00826 · APJ Patrick M Boucher · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 1–8 unpatentable, and granted sanctions for Petitioner’s failure to timely update real-party-in-interest notices.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “IV. REQUEST FOR REHEARING On rehearing, the burden of showing that the Decision should be modified lies with Patent Owner, the party challenging the Decision. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 10

  • PTAB / AIA Trials › Real party in interest / privityDecided for patent owner

    “With respect to Southern Company Gas, Petitioner’s assertion ignores the fact that Southern Company Gas did not result merely from a name change, but rather also from a merger with AMS Corp. that occurred before the name change. See Paper 34, 3. In the related IPR, the Board specifically found that AGLR is a real party in interest, and it follows that the merged entity is also a real party in interest. Atlanta Gas, slip op. at 13 (PTAB Jan. 6, 2015) (Paper 88). The merger with AMS Corp. has meaningful effects that impose an obligation on Petitioner to apprise the Board that Southern Gas Company is a real party in interest. Petitioner’s failure to file timely the updated mandatory notice is especially significant in light of the central nature that the issue of AGLR’s status as a real party in interest played in the related IPR. See Atlanta Gas, Paper 87, 46:6–9 (“The problem that we have, and you will remember, we had to fight like tooth and nail to get these documents. At every turn there was an objection to producing documents related to the real party in interest issue or the privity issue.” (statement by Patent Owner at oral hearing in the related IPR)). With respect to The Southern Company, we do not credit Petitioner’s argument that The Southern Company is not a real party in interest in light of Petitioner’s explicit notification to the contrary. Petitioner cannot have it both ways, identifying The Southern Company as a real party in interest (even “out of an abundance of caution”) to ensure compliance with 35 U.S.C. § 312(b), while simultaneously maintaining that it is not a real party in interest to evade the obligations of 37 C.F.R. § 42.8(a)(3). In light of these various considerations, we conclude that Petitioner has performed conduct that warrants a sanction.” slip op. at 5

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “be to expunge the Decision and the request for rehearing, dismiss the Petition with prejudice, and order [Petitioner] to pay compensatory expenses and attorney fees to [Patent Owner].” Mot. 5. We disagree that this proposed sanction is proportionate to the harm suffered by Patent Owner. In particular, as Petitioner contends, the harm suffered by Patent Owner is limited because “the estoppel provisions apply to the petitioner and ‘the real party in interest or privy of the petitioner.’” Opp. 6 (citing 35 U.S.C. § 325(e)(1)) (emphasis by Petitioner). There is no requirement that a petitioner identify all of its privies in a petition, and Patent Owner’s ability to address whether The Southern Company was a privy that would give rise to estoppel was not impacted by Petitioner’s original failure to file an updated mandatory notice. Furthermore, “[a] sanction imposed under this rule must be limited to what suffices to deter repetition of the conduct or comparable conduct by others similarly situated.” 37 C.F.R. § 42.11(d)(4) (emphasis added). We have considered, but are not persuaded by, Patent Owner’s argument that “[a]ny remedy short of termination with prejudice would encourage future petitioners to try to suppress the identification of real parties-in-interest.” Mot. 6. A more limited sanction will have sufficient deterrent effect. We determine that an appropriate sanction, proportionate to the harm suffered by Patent Owner, is to award costs and fees incurred in association with this proceeding from the time after issuance of the Final Written Decision until the date of this Decision. 37 C.F.R. § 42.12(b)(6).” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached

    “Although we agree with Patent Owner in the abstract that the “ordinary and customary meaning” standard applied to expired patents requires that evidence be viewed through the eyes of one of ordinary skill in the art, Patent Owner stretches that principle too far. See id. at 9–10. “[A] claim construction analysis must begin and remain centered on the claim language itself.” Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 382 F.3d 1111, 1116 (Fed. Cir. 2004). Patent Owner asks us to deviate far from this cardinal principle by incorporating features of the Fisher S254 regulator that are not recited in the claims themselves, under circumstances in which the Fisher S254 regulator is not explicitly identified as such anywhere in the specification of the ’029 patent. “Reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from reading limitations of the specification into a claim, to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim.” In re Prater, 415 F.2d 1393, 1404–05 (CCPA 1969). This is particularly the case when the standard we are obliged to apply does not afford Patent Owner a presumption of validity of the patent’s claims. For these reasons, we are not persuaded that we misapprehended or overlooked any aspect of Patent Owner’s claim-construction arguments. Nor are we persuaded that Patent Owner’s evidence in support of those arguments was inadequately considered.” slip op. at 16

  Claim constructioncites Phillips
  Patents in suitUS 5,810,029
• Bungie, Inc. v. Worlds Inc.All claims unpatentable
  PTAB · Dec 6, 2016 · IPR2015-01319 · APJ Jason J Chung · IPR · Final written decision

  Claims 1–8, 10, 12, and 14–16 are unpatentable: obvious over the Funkhouser combinations; the Durward anticipation and obviousness grounds were not proven.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “art. Petitioner argues, and Dr. Zyda opines, that a person of ordinary skill in the art relevant to the ’501 patent would have had “through education or practical experience, the equivalent of a bachelor’s degree in computer science or a related field and at least an additional two years of work experience developing or implementing networked virtual environments.” Pet. 7; Ex. 1002 ¶ 55. Mr. Pesce similarly testifies that a person of ordinary skill in the art would have had “at least a bachelor’s degree or equivalent in computer science, with two or more years of experience in coding related to both virtual environments and computer networking.” Ex. 2017 ¶ 33. The parties’ proposals for the level of ordinary skill in the art have slight differences in wording, yet we do not find them to have meaningful distinctions (e.g., “at least” two years versus “two or more years,” “networked virtual environments” versus “virtual environments and computer networking”). Neither party asserts that there is any such distinction. Based on the testimony of the parties’ experts as well as our review of the ’501 patent, the types of problems and solutions described therein, and the prior art involved in this proceeding, we adopt the following as the level of ordinary skill in the art: the equivalent, through education or practical experience, of a bachelor’s degree in computer science or a related field, and at least two years of experience developing, coding, or implementing networked virtual environments, or virtual environments and computer networking.” slip op. at 5

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “witness has applied the principles and methods reliably to the facts of the case.” Fed. R. Evid. 702. Under this standard, testimony on the issue of unpatentability proffered by a witness who is not “qualified in the pertinent art” generally is not admissible. Sundance Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008). Rule 702, however, does not “require[] a witness to possess something more than ordinary skill in the art to testify as an expert” and a “witness possessing merely ordinary skill will often be qualified to present expert testimony.” Id. at 1363. Nor does the Rule require a perfect match or complete overlap between the witness’s technical qualifications and the field of the invention. See SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010). In his declaration and curriculum vitae, Mr. Pesce details his relevant work experience from 1984 to the present as well as his teaching experience and numerous technical publications and presentations. See Ex. 2017 ¶¶ 3– 19, 35–42, pp. 67–82; see also Ex. 1046, 19:8–21:16, 39:11–40:20. Having reviewed this experience and Mr. Pesce’s technical testimony, we find his knowledge, skill, and experience in the relevant field of networked virtual environments, as well as computer networking and virtual reality more generally, sufficient to render him qualified to offer expert testimony in this proceeding under Rule 702.” slip op. at 8

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “unnamed real party in interest, who was served with a complaint in the District Court Case more than one year before the Petition was filed. PO Resp. 39–45. Thus, according to Patent Owner, the Petition fails to comply with 35 U.S.C. § 312(a)(2) and 37 C.F.R. § 42.8, and institution of review was barred under 35 U.S.C. § 315(b). PO Resp. 36–42. Patent Owner argues the Board erred in denying its Motion for Routine or Additional Discovery related to this issue (Paper 9) and in instituting review despite Patent Owner’s assertions of Activision’s status as a real party in interest. PO Resp. 36–42.” slip op. at 54

  • ExcludeMotion to exclude, deniedMixed

    “Given that Exhibit 1041 is relevant for this purpose and its admission is not barred by Rules 404, 405, and 608, we turn to Rule 403 to consider whether it should nonetheless be excluded because its “probative value is substantially outweighed by a danger of . . . unfair prejudice.” Fed. R. Evid. 403.15 Here, the probative value of Exhibit 1041 as to Mr. Pesce’s ability to perceive and recall events and details from the art in the early to mid-1990s is limited as, for example, it lacks specific details regarding the extent and regularity of his drug use. Yet, on the other hand, the risk of unfair prejudice is minimal. To begin with, an unfair prejudice analysis is not well suited to a bench trial, such as this. See, e.g., Schultz v. Butcher, 24 F.3d 626, 632 (4th Cir. 1994) (“[I]n the context of a bench trial, evidence should not be excluded under 403 on the ground that it is unfairly prejudicial.”); Gulf States Utilities Co. v. Ecodyne Corp., 635 F.2d 517, 519 (5th Cir. 1981) (holding that “exclusion of evidence under Rule 403’s weighing of probative value against prejudice was improper” and was a “useless procedure” because “[t]his portion of Rule 403 has no logical application to bench trials”). Moreover, the only “unfair prejudice” that Patent Owner alleges is that all of Mr. Pesce’s testimony will be given little to no weight—which is not accurate, as we are considering the admissibility of Exhibit 1041 only for its relevance to his capacity and reliability in perceiving and recalling events and other details from the early to mid- 1990s, on which he offers testimony. See Mot. 8. Although we are cognizant of the sensitive nature of evidence of drug use, there is minimal 15 Rule 403 lists other considerations but Patent Owner does not argue that any of these apply, and we conclude that they do not. See id.; Mot. 7–8. risk of any unfair prejudice from considering Exhibit 1041 for this limited purpose. In sum, the probative value of Exhibit 1041 for this limited purpose is not “substantially outweighed” by any danger of unfair prejudice and, thus, exclusion under Rule 403 is not warranted.” slip op. at 60

  Patent outcomesUS 8,082,501 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,082,501
• Bungie, Inc. v. Worlds Inc.Some claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01268 · APJ Kerry Begley · IPR · Final written decision

  Claims 1–3, 5–7, 10–12, 14, 15, 17, and 19 are unpatentable as anticipated by Funkhouser and Durward; claims 4, 8, 13, and 16 were not shown obvious over Funkhouser and Funkhouser ’93.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “1. Funkhouser’s Status as Prior Art We begin by addressing Funkhouser’s status as prior art to instituted claims 1–8, 10–17, and 19 of the ’690 patent. In this inter partes review, Petitioner has the burden of persuasion to establish unpatentability— including “all issues relating to the status of [Funkhouser] as prior art,” Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1576–78 (Fed. Cir. 1996)—by a “preponderance of the evidence,” see 35 U.S.C. § 316(e); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378–79 (Fed. Cir. 2015). This burden of persuasion remains with and never shifts from Petitioner, while the burden of production—the burden of going forward with evidence, which “may entail producing additional evidence and presenting persuasive argument based on new evidence or evidence already of record”—shifts between the parties. Dynamic Drinkware, 800 F.3d at 1378–80 (internal quotations and citation omitted); see Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327–29 (Fed. Cir. 2008); Mahurkar, 79 F.3d at 1576–77. Here, Petitioner argues that Funkhouser qualifies as prior art to claims 1–8, 10–17, and 19 of the ’690 patent under 35 U.S.C. § 102(a). Pet. 4, 13; Reply 17–21. Patent Owner contests Funkhouser’s status as prior art only with respect to claims 1 and 11. Resp. 55–59; see Ex. 2017 ¶ 50.d.xi. Section 102(a) provides, in relevant part, “[a] person shall be entitled to a patent unless . . . the invention was . . . described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent.” 35 U.S.C. § 102(a). In the Petition, Petitioner argues that Funkhouser constitutes prior art under § 102(a), because Funkhouser was published no later than April 12, 1995—before the earliest possible effective filing date of the ’690 patent, the November 13, 1995 filing date of the ’296 provisional. See Pet. 4, 13; Ex. 1001, Cert. of Corr. In Response, Patent Owner does not dispute Petitioner’s position that Funkhouser constituted a printed publication by April 12, 1995. See generally Resp. Patent Owner, however, instead argues that under Petitioner’s proposed interpretation of the determining steps of the ’690 patent claims—with which we have agreed above—the subject matter of claims 1 and 11 of the ’690 patent was invented before Funkhouser’s publication. See id. at 55–59; Ex. 2017 ¶ 50.d.xi. Specifically, Patent Owner contends, with documentary and testimonial evidence proffered in support of its assertions, that (1) the inventors actually reduced to practice the subject matter recited in claims 1 and 11 of the ’690 patent “no later than April 11, 1995,” or alternatively, (2) the inventors “conceived of [the recited subject matter] no later than April 11, 1995 and th[r]ough reasonable diligence, actually reduced them to practice no later than April 25, 1995.” Resp. 55–59. In Reply, Petitioner contests Patent Owner’s proffered arguments and evidence of prior conception and reduction to practice. See Reply 17–21.” slip op. at 54

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

    “relevant field to combine the elements in the way the claimed new invention does.” Id. An obviousness determination “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see In re Magnum Oil Tools Int’l, 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 93

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “F. REAL PARTY IN INTEREST Patent Owner argues Activision Publishing, Inc. (“Activision”) is an” slip op. at 127

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed

    “specifically Exhibits 1033, 1034, 1037, 1041, and 1042. See generally Mot. We have not relied on four of these exhibits—Exhibits 1033, 1034, 1037, and 1042—in reaching our decision and, therefore, Patent Owner’s arguments as to these exhibits are moot. For Exhibit 1042, in particular, we note that Petitioner does not cite this exhibit in its Petition or its Reply and, thus, has not proffered any argument relying on this exhibit. See id. at 9; Opp. 11; see generally Pet.; Reply. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot as to Exhibits 1033, 1034, 1037, and 1042.” slip op. at 129

  Patent outcomesUS 7,181,690 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,181,690

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.