• Microchip Technology Inc. v. HD Silicon Solutions LLCInstitution denied
  PTAB · Dec 15, 2021 · IPR2021-00872 · APJ Robert L Kinder · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–32 would be unpatentable over Lempel and Itou, with or without Haswell.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In summary, Petitioner does not explain with sufficient specificity how or why a person of ordinary skill in the art would have combined Lempel with Itou. Because each ground upon which the Petition relies is based on the combination of Lempel and Itou, including each independent claim challenged, Petitioner has not proven by a reasonable likelihood that it would prevail in showing that any claim of the ’619 patent is unpatentable. VII. CONCLUSION For the foregoing reasons, we conclude that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing that any of claims 1–32 of the ’619 patent is unpatentable. VIII. ORDER Upon consideration of the record before us, it is: ORDERED that the Petition is denied, and we do not institute inter partes review of any claim of the ’619 patent based on the grounds asserted in this Petition.” slip op. at 19

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “V. DISCRETION UNDER 35 U.S.C. § 314(A) Patent Owner contends we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. Prelim. Resp. 40–46 (citing, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). Because we determine that Petitioner fails to demonstrate that there is a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the petition, we need not address Patent Owner’s contentions concerning discretionary denial.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “III. LEVEL OF ORDINARY SKILL IN THE ART In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’619 patent would have had the following education and experience: at least (1) a master’s degree in electrical engineering, computer science, or a related degree, and at least 3-5 years of experience in computer architecture and cache memory design; or (2) a bachelor’s degree in electrical engineering, computer science, or a related degree, and at least 5-6 years of experience in computer architecture and cache memory design. Pet. 5. Patent Owner does not dispute this level of skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal, which is supported by Dr. Sechen’s testimony. See Ex. 1002 ¶¶ 26–28.” slip op. at 7

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

    “For instance, Petitioner does not identify persuasively the differences between either Lempel or Itou and the limitations they supposedly teach in combination, nor does Petitioner provide persuasive explanation as to how either reference would be modified to accommodate the distinct architecture of the other reference (Lempel’s parity checking and Itou’s ECC circuitry) in a combination. Petitioner does not explain adequately how this proposed combination would operate. Because the teachings of Lempel and Itou are somewhat contradictory, Petitioner should have provided at least some explanation as to how the resulting system operates and why a person of ordinary skill in the art would have combined the references to operate in that manner. See Prelim. Resp. 24. Petitioner next argues that a POSITA could use the error detection and recovery method of Itou (e.g., an ECC (Error Check Code)-based method) when a correctable error is detected, and the error detection and recovery method of Lempel (e.g., targeted invalidation of the data errors in the cache and selectively replacing the invalidated data with error-free data from the main memory) when a non-correctable error is detected to reduce the latency associated with accessing the content of the main memory. Pet. 67. This rationale, however, fails to address Lempel’s consistent disparagement of ECC approaches, as adopted in Itou. Based on Lempel’s teachings, adding ECC functionality to an integrated circuit already configured with parity checking functionality would increase “space on the silicon” as well as increase cost. See Ex. 1006, 1:31–44, 1:58–61. Yet, Petitioner does not acknowledge these drawbacks of ECC circuitry, much less explain why they would have been acceptable to a POSITA. Thus, we are not persuaded a POSITA would have been willing to combine the two references as proposed by Petitioner.” slip op. at 17

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,302,619
• Veeam Software Corp. v. Hybir Inc.Some claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01038 · APJ John R Kenny · IPR · Final written decision

  Claims 30, 32, 33, 35, and 37–40 are unpatentable as obvious; claims 31, 34, and 36 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “E. Level of Skill in the Art To determine the level of an ordinarily skilled artisan, various factors” slip op. at 10

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

    “claim terms for construction at that stage of the proceeding, and we did not construe any claim terms expressly as none of the terms were in dispute. Inst. Dec. 22. In the briefing following institution, Patent Owner proposed a construction for the term “inventory,” see, e.g., PO Resp. 21–28, and it became clear that the parties dispute the meaning of the term. Accordingly, we address the parties’ proposed constructions for “inventory” and the arguments they present for those constructions.” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “As set forth above, we resolved those disputed issues in favor of Petitioner. For the portions of the preamble and limitations of claim 35 that are not recited in claim 30, we have reviewed Petitioner’s arguments and evidence for claim 35 and are persuaded that Field teaches or suggests the preamble and claim limitations. Pet. 25–28 (and the exhibits cited therein). Thus, we find that Field teaches or suggests all limitations of claim 35. Accordingly, we determine Petitioner has proven that claim 35 would have been obvious over Field.” slip op. at 55

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

    “metadata into its signature generating algorithm to create a more robust signature. Ex. 1005 ¶ 46. An ordinarily skilled artisan would have been motivated to use such an augmented signature generating algorithm in Field’s environment. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Thus, an ordinarily skilled artisan would have modified Field’s cryptographic signature generating algorithm so it would compute a file’s signature using a file’s metadata. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Accordingly, Field and Anderson disclose that “the cryptographic signature is also computed with the metadata.” Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40.” slip op. at 76

  Patent outcomesUS 8,051,043 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,051,043
• Veeam Software Corp. v. Hybir Inc.Some claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01037 · APJ John R Kenny · IPR · Final written decision

  Claims 1, 2, 5, 6, 8–15, 18, 19, 21–29, and 34 are unpatentable as obvious over Field and Anderson; claims 3, 4, 7, 16, 17, and 20 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “regarding the level of ordinary skill in the art, and Petitioner does not address our preliminary finding in its Reply. Accordingly, we see no reason to disturb that finding, and, therefore, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, Software Engineering, or an equivalent field, as well as at least three to five years of academic or industry experience in the fields of data storage, data backup, data restoration, data replication and deduplication, and/or data synchronization.” slip op. at 16

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

    “Accordingly, we find that the record does not support construing” slip op. at 32

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

    “away and (2) whether one of ordinary skill in the art would have been motivated to not transmit an inventory with multiple signatures due to a concern with backup efficiency. With respect to whether Field teaches away, Patent Owner’s argument is premised, in part, on a requirement derived from its proposed construction of “inventory”—that the claimed “inventory” must include additional data, such as filenames and directories. As discussed above, we do not agree with Patent Owner’s construction. Similar to Patent Owner’s earlier argument of a teaching away, Patent Owner fails to identify anything in Field that criticizes, discredits, or otherwise discourages one of ordinary skill in the art from creating an inventory, as properly construed. Accordingly, we do not find that Field teaches away from using or creating an inventory.” slip op. at 81

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “144, 202; Pet. Reply 20–21; Ex. 1024 ¶¶ 59–62. Accordingly, we determine that Petitioner has not proven that claims 3 and 16 would have been obvious over Field and Anderson. Ex. 2008 ¶¶ 129–130.” slip op. at 101

  Patent outcomesUS 8,051,043 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,051,043
• Veeam Software Corporation v. Hybir, Inc.All claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01040 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–7 are unpatentable as obvious over Field; the Board did not reach the alternative Strong and Field ground.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “As we noted in the Institution Decision, Patent Owner’s Preliminary Response proposed a level of ordinary skill in the art that was very similar to Petitioner’s proposal. Inst. Dec. 15 (citing Prelim. Resp. 28). On the preliminary record at that time, we found both parties’ proposals consistent with the level of ordinary skill in the art reflected by the prior art of record. Id. (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978)). And, on that record, we found that one of ordinary skill in the art at the time of the invention would have “a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, Software Engineering, or an equivalent field, as well as at least three to five years of academic or industry experience in the fields of data storage, data backup, data restoration, data replication and deduplication, and/or data synchronization.” Id. at 16.” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingNo construction neededDecided for petitioner

    “which states: “A method of synchronizing electronic data stored on a first client device with at least a second client device.” Ex. 1001, 19:8–9. Petitioner contends the preamble of claim 1 is not limiting because it states a purpose or intended use for the method recited and neither the term synchronizing nor the full preamble is referenced again in other claim elements. Pet. 10 (citing Arctic Cat Inc. v. GEP Power Prods, Inc., 919 F.3d 1320, 1328 (Fed. Cir. 2019)). In our Institution Decision, we preliminarily determined that the preamble of claim 1 does not limit the scope of the claim. See Inst. Dec. 18–19. Patent Owner does not contest that preliminary determination in its Response and confirmed at the oral hearing that it does not contend the preamble is limiting. See generally PO Resp.; Tr. 107:15– 16 (confirming that Patent Owner does not assert the preamble is limiting). Accordingly, for the reasons explained in our Institution Decision and because the parties agree, we maintain our preliminary determination and reaffirm that the preamble of claim 1 is not limiting, and, therefore, we need not expressly construe it.” slip op. at 18

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “unclear. Nonetheless, we find that Field teaches receiving a first “inventory” for the reasons explained by Petitioner and based on our construction of “inventory” at least because Field receives an itemized list of electronic data in the form of one or more signatures. Thus, since Field teaches an “inventory,” we do not agree with Patent Owner that Field teaches away from an “inventory.” Additionally, “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference . . . would be led in a direction divergent from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)); see In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that, to teach away, the prior art must “criticize, discredit, or otherwise discourage the solution claimed”). Patent Owner, however, fails to identify, and we do not discern, any indication in Field that criticizes, discredits, or otherwise discourages one of ordinary skill in the art from following Field’s teachings or modifying Field as proposed by Petitioner. Further, to this latter point, we do not discern any specific argument by Patent Owner that one of ordinary skill in the art would not have been motivated to modify Field as Petitioner proposes, aside from Patent Owner’s assertions of teaching away.22 Considering the complete record before us, for the reasons explained above we find that Petitioner has established that Field teaches or suggests limitation 1A.1 and that one of ordinary skill in the art would have had a reason with rational underpinning to modify Field as proposed by Petitioner with a reasonable expectation of success.” slip op. at 54

  Patent outcomesUS 9,679,146 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,679,146
• Veeam Software Corporation v. Hybir, Inc.All claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01039 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Field and Anderson; claim 5 over Field, Anderson, and Ackerman; and claim 11 over Field, Anderson, and Coombs.

  RulingsFinal written decision

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

    “Accordingly, we find that the complete record does not support” slip op. at 33

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

    “away and (2) whether one of ordinary skill in the art would have been motivated to modify Field in light of potential inefficiencies. With respect to whether Field teaches away, Patent Owner’s argument is premised, in part, on a requirement derived from its proposed construction of “inventory”—that the claimed “inventory” must include additional data, such as filenames and directories. As discussed above, we do not agree with Patent Owner’s construction. Similar to Patent Owner’s earlier argument of a teaching away, Patent Owner fails to identify anything in Field that criticizes, discredits, or otherwise discourages one of ordinary skill in the art from creating an inventory, as properly construed. Accordingly, we do not find that Field teaches away from using or creating an inventory.” slip op. at 69

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Weighing the Graham Factors On balance, considering the complete record before us, Petitioner has established by a preponderance of the evidence that the combination of Field, Anderson, and Coombs would have rendered the subject matter of claim 11 of the ’545 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 99

  Patent outcomesUS 9,037,545 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,037,545
• SAP SE v. Teradata US, Inc.Institution denied
  PTAB · Dec 1, 2021 · IPR2021-01017 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable, failing to show the claimed file management context in non-persistent memory.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’419 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “that a person of ordinary skill in the art at the time of the invention “would have possessed at least a Bachelor’s degree in computer science with at least two years of experience with database system development.” Pet. 14 (citing Ex. 1006 ¶¶ 21–22). Petitioner further contends that a person of ordinary skill in the art could have had “some combination of (1) more formal education and less technical experience, or (2) less formal education and more technical or professional experience.” Id. (citing Ex. 1006 ¶¶ 21–22). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding, with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound, we adopt Petitioner’s assessment of the level of ordinary skill in the art because it is consistent with the ’419 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

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

    “Petitioner contends that no claim terms require explicit construction at this stage of the proceeding. Pet. 16. Patent Owner contends that in related district court litigation, Petitioner has proposed construing several terms in accordance with pre-AIA 35 U.S.C. § 112 ¶ 6, and Patent Owner faults Petitioner for not applying those constructions in the Petition. Prelim. Resp. 7–8. Based on the record before us, we need not construe any claim terms expressly to decide the issues presented at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, 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

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

    “does not show sufficiently that the combination of System R and Lorie teaches a “file management context” stored in “non-persistent memory.” See Prelim. Resp. 16–22. As an initial matter, Petitioner asserts that the “Current Page Table and associated data structures such as free-space bit maps” comprise the claimed “file management context” in “non-persistent memory,” but Petitioner does not cite any passage in System R disclosing that the current page table (or any associated data structure) resides “in memory” rather than “on disk,” as shown in Petitioner’s annotated version of System R’s Figure 7. See Pet. 28–35. Nor does Petitioner point to any disclosure in Lorie in support of its contention that the current page table in the System R database system is stored in non-persistent memory. See id.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,904,419
• Glux Visual Effects Tech (Shenzhen) Co. / Leyard Optoelectronic Co. et al. v. Ultravision Technologies, LLCAll claims unpatentable
  PTAB · Nov 30, 2021 · IPR2020-01050 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1, 2, 9, 13, and 20 are unpatentable as anticipated by Guoshi; claims 7, 18, 22–24, 26–28, and 30 are unpatentable as obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not set forth an ordinary artisan’s skill level. See generally PO Resp. Rather, Mr. Credelle, Patent Owner’s expert, states that he “do[es] not disagree with Mr. Flasck’s proposed level of ordinary skill in the art.” Ex. 2002 ¶ 29. In our Institution Decision, we preliminarily adopted Petitioner’s explanation and assessment of the ordinary skill level, determining the position was consistent with the ’294 patent and the asserted prior art. Inst. Dec. 12–13. As neither party challenges our preliminary finding regarding Accordingly, we reaffirm that one of ordinary skill in the art at the time of the invention would have: (i) a bachelor’s degree in mechanical engineering, electrical engineering, or physics, or undergraduate training in an equivalent field, and (ii) at least two years of experience in the design and/or implementation of LED panels. Additional graduate education could substitute for professional experience, and significant work experience could substitute for formal education. See id. at 12 (setting forth and adopting Petitioner’s unopposed position as to the level of ordinary skill in the art) (citing Ex. 1005 ¶¶ 43–49).” slip op. at 11

  • Prior constructionPrior construction adoptedDecided for patent owner

    “be construed so as to not include a cabinet. PO Resp. 18. Patent Owner points out that “[t]he District Court construed the term ‘modular display panel’ to mean ‘interchangeable display panel for a multi-panel modular display configured for use without a cabinet.’” Id. (citing Ex. 1019, 18). And, that “[t]he District Court further construed ‘cabinet’ to mean ‘enclosure separate from the LED panel(s) to protect the LED panel(s) from the environment, including water.’” Id. at 18 (citing Ex. 1021). Patent Owner further contends that Petitioner has agreed to this construction in the District Court proceeding. Id. at 18 n.1 (citing Exs. 2007, 2008). Petitioner does not dispute this construction. During oral hearing Petitioner’s Counsel stated “I think that the parties agree that the display module of the challenged claims do not employ a cabinet.” Tr. 13:33–23. Based on the parties’ apparent agreement, and considering the record before us and the District Court’s Claim Construction Memorandum (Ex. 1019), we see no reason not to apply the District Court’s claim construction. See 37 CFR § 42.100(b) (Providing that any claim construction determination in a related civil action must be considered by the Board.). Accordingly, “modular display panel” means “interchangeable display panel for a multi-panel modular display configured for use without a cabinet.” Ex. 1019, 18.” slip op. at 13

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

    “relevant to the claim construction analysis” and “is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (citation omitted). The ’294 patent Specification reveals that the electronic display panels are intended to be used in interior and also exterior weather dependent environments, and without a cabinet. See Ex. 1001, 5:36–43, 58– 60 (The detailed description explaining that “[t]hese displays are designed to protect against weather, without a heavy cabinet,” and that, “weather is the number one culprit for damage to LED displays.”). The ’294 patent further describes LED panels where “the display is IP 67 rated and therefore waterproof and corrosion resistant, . . . in other embodiments, equipment can be designed with an IP 68 rating to operate completely underwater.” Id at 5:48–55. The ’294 patent describes further that, “where weatherproofing is not as significant, the panels can have an IP 65 or IP 66 rating.” Id. at 5:56– 57. 7 Exhibit 2010 replaces Exhibit 2004 which was a “rough draft transcript” that was uncertified. Ex. 2004, 1:9. During the hearing, the panel requested a certified transcript of the deposition record. See Tr. 5:22–6:16. We refer to the certified transcript, Ex. 2010, in this opinion. See Ex. 2010, 161. waterproofing where the higher the IP rating the more waterproof the device becomes. Id. at 5:48–57. Thus, the term “waterproof,” on its face, can cover a range of environmental conditions and IP ratings including “normal weather,” such as snow, rain, and fog as Mr. Flask confirmed during his deposition. Ex. 2010, 31:24–25, 33:10–13. In his Declaration, Mr. Flask also testifies that there are a range of waterproof enclosures, “IP 65 indicates a dust tight enclosure that is waterproof against jets of water[,] and IP 68 indicates a dust tight enclosure that is waterproof against continuous immersion in water.” Ex. 1005 ¶ 58 (citing Ex. 1016, 3). Considered as a whole, Mr. Flask’s testimony is consistent with the ’294 patent Specification—namely that a “waterproof” display can include protection from normal weather conditions as well as when “operat[ing] completely underwater.” Ex. 1001, 5:55.” slip op. at 15

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

    “Guoshi fairly explains that the LEDs are attached on one side, and the power and control modules are attached on the other, i.e. first and second, sides of the printed circuit board. Ex. 1008 ¶ 27. Guoshi states that “[t]he LED light emitting units (21) and the power module (22) are separately situated on the two opposite surfaces of the circuit board (20).” Id. Guoshi describes further that “[t]he LED light emitting units (21) are situated on the first surface (28), and the power module (22) and control module are both situated above this second surface (29) and fit with the main body (12).” Reading this description as a whole, we find Guoshi’s description straightforward. Given a plain and ordinary reading of this description we understand that Guoshi’s LEDs are “attached to a first side of the printed circuit board,” and on the opposite side that the power and control module are also “attached to the printed circuit board,” and within “a recess” of the casing as recited in claim 1. Also, there is no dispute that Guoshi teaches the” slip op. at 38

  Patent outcomesUS 9,978,294 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,978,294
• Glux Visual Effects Tech (Shenzhen) Co / Leyard Optoelectronic Co et al. v. Ultravision Technologies, LLCAll claims unpatentable
  PTAB · Nov 30, 2021 · IPR2020-01049 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1, 3, 5, 10, 11, 13, 14, 16, 19, 21, and 23 are unpatentable as obvious over the stated combinations of prior art.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “See generally PO Resp. Rather, Mr. Credelle, Patent Owner’s expert, states that he “do[es] not disagree with Mr. Flasck’s proposed level of ordinary skill in the art.” Ex. 2002 ¶ 29. In our Institution Decision, we preliminarily adopted Petitioner’s explanation and assessment of the ordinary skill level, determining the position was consistent with the ’869 patent and the asserted prior art. Inst. Dec. 11–12. As neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb this finding. Accordingly, we reaffirm that one of ordinary skill in the art at the time of the invention would have: (i) a bachelor’s degree in mechanical engineering, electrical engineering, or physics, or undergraduate training in an equivalent field, and (ii) at least two years of experience in the design and/or implementation of LED panels. Additional graduate education could substitute for professional experience, and significant work experience could substitute for formal education. See id. at 12 (setting forth and adopting Petitioner’s unopposed position as to the level of ordinary skill in the art) (citing Ex. 1005 ¶¶ 39–49).” slip op. at 11

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

    “be construed so as to not include a cabinet. PO Resp. 17. Patent Owner points out that “[t]he District Court construed the term ‘modular display panel’ to mean ‘interchangeable display panel for a multi-panel modular display configured for use without a cabinet.’” Id. (citing Ex. 1019, 18). Patent Owner also notes that “[t]he District Court further construed ‘cabinet’ to mean ‘enclosure separate from the LED panel(s) to protect the LED panel(s) from the environment, including water.’” Id. at 17–18 (citing Ex. 1021). Patent Owner further contends that Petitioner has agreed to this construction in the District Court proceeding. Id. at 18 n.1 (citing Exs. 2007–2008). Petitioner does not dispute this construction. During oral hearing, Petitioner’s Counsel stated “I think that the parties agree that the display module of the challenged claims do not employ a cabinet.” Tr. 13:23–23. Based on the parties’ apparent agreement, and considering the record before us including the District Court’s Claim Construction Memorandum (Ex. 1019), we see no reason not to apply the District Court’s claim construction. See 37 CFR § 42.100(b) (providing that any claim construction Accordingly, “modular display panel” means “interchangeable display panel for a multi-panel modular display configured for use without a cabinet.” Ex. 1019, 18.” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “persuasive. First, Guoshi expressly states that “An LED display module generally includes a plastic base, a circuit board, and LED lights set up on the circuit board.” Ex. 1008 ¶ 5. From this evidence it is reasonable to understand that a person of ordinary skill in the art would have known that plastic bases would have been used to support a circuit board and LED lights as a display module. Mr. Flasck also provides unrebutted testimony that “[p]rior to 2013, the use of plastic bases in assembly of LED display panels was well-known.” Ex. 1005 ¶ 100; see also Ex. 2010, 56:9–58:16 (Mr. Flasck testifying during his deposition that, based on his experience, the use of a plastic base was well-known in the art.). Second, Guoshi clearly describes an embodiment having base 10 including sidewalls 14 and main body 12 (rear surface), defining a cavity 13 (front surface), for housing the circuit board. Ex. 1008 ¶ 27. Acknowledging that base 10 is not described explicitly in the Specific Implementation section of Guoshi as, “plastic,” it is not, however, a challenging leap for a person of ordinary skill in the art to understand or recognize that Guoshi’s base 10 was made of, or could have been made of, plastic. Notably, Guoshi’s written description does not reveal any other material for a base, and thus, plastic is essentially the only material that Guoshi reveals. Id. ¶ 5. Indeed, as Petitioner points out, Kim similarly describes a plastic base or frame 121 for supporting circuit board 123. See Ex. 1010, 3 (Kim describing that “the conventional LED module 120 is constituted of a plastic frame 121, and a circuit board 123 attached to the front surface of the frame 121”). Thirdly, we do not find compelling Patent Owner’s expert testimony from Mr. Credelle disputing that Guoshi’s “plastic base” disclosure does not 10. Ex. 2002 ¶ 74. Mr. Credelle testifies that “Guoshi does not make clear that the ‘plastic base’ of the prior art display module is even the same component as the base 10 of the disclosed invention.” Id. And, for example, Mr. Credelle also testifies that “I saw no evidence that the background ‘plastic base’ is a casing that includes sidewalls, or sidewalls made of plastic.” Id. ¶ 75. These statements by Mr. Credelle, as written, may be nominally true. This testimony, however, fails to recognize that a person of ordinary skill in the art is not constrained by the specific words of a reference, and a person or ordinary skill is certainly capable of using their experience and knowledge when evaluating the teachings of a reference. See KSR, 550 U.S. at 418 (2007) (“the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). Based on the evidence now before us, we give more weight to Mr. Flasck’s testimony—namely that a person of ordinary skill in the art would have understood Guoshi to disclose “[t]he plastic base (10) having the cavity (13) for housing the circuit board and side wall (14) is a casing comprising plastic sidewalls.” Ex. 1005 ¶ 325. In light of our determinations that Guoshi teaches a plastic base and, as discussed previously, does not disclose a cabinet, we also find persuasive Mr. Flasck’s testimony that “each of Guoshi’s LED display modules includes a plastic base (casing) having side walls, where the rear surface of the base forms the rear outer surface of the LED display module and the rear outer surface is exposed to the environment.” Id. ¶ 323. We reproduce Guoshi’s Figure 5 below, as annotated by Mr. Flasck.” slip op. at 35

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

    “We disagree, on the facts in this case, that Kim’s discussion of a prior art “plastic frame 121” teaches away from the combination of Guoshi and Kim. It is true that criticizing or discouraging investigation into mounting a power supply on a plastic structure could entail a teaching away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits, or otherwise discourages the solution claimed). But when considering a teaching away argument, “the nature of the teaching is highly relevant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). On the facts before us in this proceeding, Kim describes and illustrates in Figures 1–3c a conventional LED display board comprised of multiple display modules 120. Ex. 1010, 3 ¶¶ 2–5. Kim further describes a large single multi-panel power supply 113 providing power to all 12 of the LED display modules 120 shown in Figure 2b–c. See id. at 3 ¶ 4 (Kim describing “a power supply 113 mounted inside the case [frame] 112 for supplying below. Figures 2a–b from Guoshi, above, illustrate a prior art LED display board including multiple display modules 120 powered by single power supply 113. Kim’s solution includes installing smaller capacity power supplies on the back of each display module, rather than one larger capacity power supply 113. Kim explains that “since a small-capacity power supply 520 is equipped at the rear of each LED module 500, the width of the internal space of the case 601 can be reduced, and the thickness of the LED electronic display board can be reduced.” Id. at 5 ¶ 1. Thus, although Kim may teach away from using a larger capacity single power supply in conjunction with a” slip op. at 45

  Patent outcomesUS 9,990,869 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,990,869
• Sotera Wireless, Inc. v. Masimo CorporationAll claims unpatentable
  PTAB · Nov 24, 2021 · IPR2020-01054 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–20 are unpatentable under § 103, principally based on grounds involving Goldberg; the Board did not reach the alternative Money-based grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have been a person with at least a B.S. degree in electrical or biomedical engineering or a related field with at least two years’ experience designing patient monitoring systems.” Pet. 16 (citing Ex. 1003 ¶¶ 27–32). Patent Owner does not dispute Petitioner’s contention on the final record, or propose its own assessment of the level of ordinary skill in the art. See PO Resp. 15. Based on the current record and for the purposes of this Decision, we adopt Petitioner’s proposed description of the person of ordinary skill in the art. We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12

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

    “Because, as discussed below, we determine that Kiani in combination with Goldberg teaches the claimed sensor ports under any reasonable definition, including those offered by Patent Owner, we need not further elaborate on the scope of a “sensor port” or “sensor ports.” See, e.g., Tr. 34:23–35:23, 36:14–24, 40:20–41:16, 53:18–19. That is to say that even if agree with Patent Owner that the term “sensor port” involves a removable connection and does not include hardwired connections (PO Resp. 19), such a determination is not dispositive because Kiani clearly teaches a removable connection that is a sensor port as further explained below.17 Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy (e.g., whether the claim reads on a prior art reference). See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We do not see the need to expressly construe any additional claim term.” slip op. at 14

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

    “proposed combination, Petitioner has shown persuasively that the downsides are not outweighed by the distinct advantages of having a port, which enables removal of a faulty sensor without replacing the entire unit. As explained by Dr. Bergeron, “[s]ensors can fail. Ease of replacing a failed port is the primary advantage of using a removable port over a hardwired, nonremovable connection.” Ex. 1040 ¶ 78; see also Ex. 1003 ¶ 63 (“ports generally provide removable wired connections, so a medical worker would replace a sensor with a different sensor if a new physiological parameter is to be measured”). The proposed combination would also achieve the significant advantages of interchangeability and adaptability. See Ex. 1003 ¶ 77 (“including a port on Goldberg’s housing . . . would predictably enable wired communication with the pulse oximeter sensor 104a while allowing easy removal and replacement of the sensor 104a and providing a secure, wired connection between the pulse oximetry sensor 104a and the housing 112.”). We further agree with Dr. Bergeron that “[p]orts had clear advantages over hardwired connections, such as the ability to replace a faulty sensor without replacement of the entire system,” and “ports would allow for connections to ‘one, all or any combination of’ any known physiological sensor.” Ex. 1040 ¶ 70 (quoting Ex. 1005, 4:50–56, 5:3–8). We find that Petitioner has provided persuasive rationales that a skilled artisan would have appreciated that Goldberg’s explicit teachings of the advantages of using all, or any combination, of the disclosed sensor types would have been combined with Kiani’s teaching of the benefits of having removable ported connections. See, e.g., Pet. 28–29; see also Ex. 1003 ¶ 77 (“modifying Goldberg with Kiani would have been a combination of known concepts (wired electrical communication and wired electrical communication using ports) to yield predictable results (transmission of signals through wires and ports to the controller 102) (citing Ex. 1005, 4:19–29; Ex. 1006, 3:21–27, 8:31–92); Ex. 1040 ¶ 72 (“[a] POSITA having knowledge of Kiani would know how to create a ported connection for each respective wired connection to a sensor that was taught by Goldberg” (citing Ex.1005, 4:50–56; Ex 1006, 3:21–22)). We have considered Patent Owner’s arguments, and Mr. Oslan’s testimony, related to potential disadvantages associated with sensor ports as a part of the proposed combination but determine that, in the aggregate, Petitioner presents stronger evidence as to advantages of such ports that a person of ordinary skill in the art would have considered in 2002. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). In light of the final record before us, and for the reasons discussed” slip op. at 35

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “d) Conclusion—Goldberg and Kiani We have considered the respective positions of the parties, including all of the arguments that have been advanced by Patent Owner in connection with the ground based on Goldberg and Kiani. See, e.g., PO Resp. 23–44; PO Sur-reply 6–14. Based on the final record before us, we conclude that Petitioner has shown persuasively that all the features of claims 1, 2, 4, 5, 12, and 14–17 are accounted for by the combined teachings of Goldberg and Kiani. See Pet. 18–41. Petitioner also articulated several reasoned rationales for combining the teachings of the references, with a reasonable expectation of success in making the combination. See id.; Ex. 1003 ¶¶ 57–146. Accordingly, for the reasons discussed above, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence that claims 1, 2, 4, 5, 12, and 14–17 of the ’623 patent would have been obvious in view of Goldberg and Kiani. F. Asserted Obviousness in View of (i) Goldberg, Kiani, and Fujisaki; and” slip op. at 42

  Patent outcomesUS 9,872,623 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,872,623
• Sotera Wireless, Inc. v. Masimo CorporationAll claims unpatentable
  PTAB · Nov 24, 2021 · IPR2020-01015 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Goldberg, Kiani, and Money; the Board did not reach the alternative grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have been a person with at least a B.S. degree in electrical or biomedical engineering or a related field with at least two years’ experience designing patient monitoring systems.” Pet. 14–15 (citing Ex. 1003 ¶¶ 27–32). Patent Owner does not dispute Petitioner’s contention on the final record, or propose its own assessment of the level of ordinary skill in the art. See PO Resp. 11. 18 The parties have not directed our attention to any objective evidence of non-obviousness. Based on the record before us, we adopt Petitioner’s proposed description of the person of ordinary skill in the art. We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18

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

    “Because we determine that Kiani in combination with Goldberg teaches the claimed sensor ports under any reasonable definition, including those offered by Patent Owner, we need not further elaborate on the scope of a “sensor port” or “sensor ports.” See, e.g., Tr. 34:23–35:23, 36:14–24, 40:20–41:16, 53:18–19. That is to say that even if we agree with Patent Owner that the term “sensor port” involves a removable connection, and does not include hardwired connections (PO Resp. 19), such a determination is not dispositive because Kiani clearly teaches a removable connection that is a sensor port as further explained below.20 Only those terms that are in 20 Indeed, we also note that Patent Owner itself describes Kiani as disclosing a sensor port, albeit in connection with other arguments discounting Kiani as disclosing multiple sensor ports. See PO Resp. 25 (“[B]oth experts now agree that Kiani teaches a single sensor port, not multiple ports.”). Furthermore, at the oral hearing, counsel for Patent Owner acknowledged controversy need be construed, and only to the extent necessary to resolve the controversy (e.g., whether the claim reads on a prior art reference). See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We do not see the need to expressly construe any additional claim term.” slip op. at 21

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

    “Examining the potential advantages versus disadvantages of the proposed combination, Petitioner has shown persuasively that the downsides are not outweighed by the distinct advantages of having a port, which enables removal of a faulty sensor without replacing the entire unit. As explained by Dr. Bergeron, “[s]ensors can fail. Ease of replacing a failed port is the primary advantage of using a removable port over a hardwired, nonremovable connection.” Ex. 1040 ¶ 76; see also Ex. 1003 ¶ 63 (“ports generally provide removable wired connections, so a medical worker would replace a sensor with a different sensor if a new physiological parameter is to be measured”). A person of ordinary skill in the art would have perceived that the proposed combination would also achieve the significant advantages of interchangeability and adaptability. Ex. 1003 ¶ 63 (“[I]ncluding a port on Goldberg’s housing . . . would predictably enable wired communication with any sensor (e.g., the pulse oximeter 104a) while allowing easy removal and replacement of the sensor and providing a secure, wired connection between the pulse oximetry sensor 104a and the housing 112.”). We further agree with Dr. Bergeron that “[p]orts had clear advantages over hardwired connections, such as the ability to replace a faulty sensor without replacement of the entire system,” and “ports would allow for connections to ‘one, all or any combination of’ any known physiological sensor.” Ex. 1040 ¶ 69 (quoting Ex. 1005, 4:50–56, 5:3–8). We find that Petitioner has provided persuasive rationales that a skilled artisan would have appreciated that Goldberg’s explicit teachings of the advantages of using all, or any combination, of the disclosed sensor types would combine with Kiani’s teaching of the benefits of having removable ported connections. See Pet. 20–23; see also Ex. 1003 ¶ 63 (“modifying Goldberg with Kiani would have been a combination of known concepts (wired electrical communication and wired electrical communication using ports) to yield predictable results (transmission of signals through wires and ports to the controller 102)” (citing Ex. 1005, 4:19–29; Ex. 1006, 3:21–27, 8:31– 92)); Ex. 1040 ¶ 71 (“[a] POSITA having knowledge of Kiani would know how to create a ported connection for each respective wired connection to a sensor that was taught by Goldberg” (citing Ex.1005, 4:50–56; Ex 1006, 3:21–22)). We have considered Patent Owner’s arguments, and Mr. Oslan’s testimony, related to potential disadvantages associated with the proposed combination but determine that, in the aggregate, Petitioner presents stronger evidence as to advantages that a person of ordinary skill in the art would have considered in 2002. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of” slip op. at 45

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “hardwired sensor of Goldberg cannot be readily replaced with another sensor” (PO Resp. 22; Ex. 2010 ¶¶ 69–70) suggests that a skilled artisan would look beyond hardwired sensors in considering Goldberg’s teachings of implementing multiple sensors as a part of its device. See Ex. 1005, 4:26–29. In view of Goldberg’s disclosure, it simply does not follow that a person of ordinary skill in the art would regard Goldberg as being limited to a single type of sensor connection that is only hardwired. Dr. Yanulis and Dr. Bergeron also explain the desirability of having sensors with port connections as opposed to basic hard wiring. See, e.g., Ex. 1003 ¶¶ 62, 63; Ex. 1040 ¶ 67 (“no POSITA [person of ordinary skill in the art] would ever design Goldberg’s device to be hardwired” and “[a] hardwired system provides no adaptability whatsoever.”). We credit the testimony of Dr. Yanulis and Dr. Bergeron as consistent with the clear disclosure of Goldberg when it comes to sensor connections. Furthermore Goldberg also is explicit that its device “may contain one, all, or any combination” of sensors, which “may be comprised of any type of physiological sensor 104 suitable [f]or use with a portable monitoring device.” Ex. 1005, 5:3–8 (emphasis added). We disagree with Patent Owner that these are mere “aspirational statements” that do not disclose or imply using multiple sensors in the same device. See PO Resp. 32; PO Sur-reply 13. In light of Goldberg’s above-noted disclosures, and the credible testimony of Dr. Yanulis and Dr. Bergeron, we conclude that Goldberg unambiguously contemplates the use of multiple and varied sensors and sensor connections as a part of its medical monitoring device. slip op. at 41

  Patent outcomesUS 9,795,300 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,795,300

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.