• Nintendo Co., Ltd. / Nintendo Of America Inc. v. American GNC CorporationAll claims unpatentable
  PTAB · Aug 20, 2025 · IPR2024-00668 · APJ Lisa L Tsang · IPR · Final written decision

  Claims 1 and 4 are unpatentable as obvious over Smith, Chan, and Bernstein (claim 1), Smith, Chan, Bernstein, Irwin, and Merhav (claim 4), and Tingleff, Chan, and Bernstein (claims 1 and 4).

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b) (emphasis added). Accordingly, a petition for inter partes review may be considered only if, among other things, it “identifies all real parties in interest,” and no real party in interest was served with a complaint alleging infringement of the challenged patent more than one year before the petition was filed. 35 U.S.C. § 312(a)(2). “[T]he IPR petitioner bears the burden of persuasion to demonstrate that its petitions are not time-barred under § 315(b) based on a complaint served on a real party in interest more than a year earlier.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). However, “an IPR petitioner’s initial identification of the real parties in interest should be accepted unless and until disputed by a patent owner,” who, in turn, “must produce some evidence that tends to show that a particular third party should be named a real party in interest.” Id. at 1242, 1244 (footnote omitted).” slip op. at 8

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

    “Based on the arguments and evidence of record, we determine that Patent Owner has not produced sufficient evidence to support a finding that STMicro should be named a real party in interest to this proceeding. At best, Patent Owner’s evidence and arguments establish only that Patent Owner previously filed a complaint against STMicro, asserting that STMicro infringed patents related to the ’648 patent (see generally Ex. 2012); and that Patent Owner served a subpoena to compel STMicro to testify and produce documents in Patent Owner’s infringement suit against Petitioner (see generally Ex. 2014). The record before us does not demonstrate a relationship between Petitioner and STMicro sufficient to show that STMicro is a real party in interest. See Worlds, 903 F.3d at 1242, 1244 (“[A]n IPR petitioner’s initial identification of the real parties in interest should be accepted unless and until disputed by a patent owner,” who, in turn, “must produce some evidence that tends to show that a particular third party should be named a real party in interest.” (footnote omitted)).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 5 (citing Ex. 1002 ¶¶ 12–14). Patent Owner counters that the skilled artisan would have had “at least a ‘Master’s Degree in Electrical or Electronics Engineering, and approximately five years of relevant experience in the development of control systems for inertial navigation, MEMS semiconductor processing, and analog circuit design.’” PO Resp. 18 (citing Ex. 2019 ¶ 57). We adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with our review and understanding of the technology and descriptions in the ’648 patent and prior art of record, and we apply it in our obviousness evaluations below. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that we would reach the same conclusions applying either Petitioner’s or Patent Owner’s definition of the level of skill in the art.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “We find unavailing Petitioner’s reliance on Catalina to support its claim construction position. See Reply 2. In particular, although Petitioner contends the body of the claims “define[s] a structurally complete invention,” Petitioner does not explain how the claims additionally “use[] the preamble only to state a purpose or intended use for the invention,” as Catalina further requires. See Catalina, 289 F.3d at 808 (“a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention” (emphasis added)). In this regard, we discern no reason to interpret “[a] micro inertial measurement unit” as reciting only a purpose or intended use because the term, on its face, uses “micro inertial measurement” as an adjective that conveys further structural details of the unit. Accordingly, on the complete record, and for the reasons set forth in our Institution Decision, we maintain our construction that “[a] micro inertial measurement unit” recited in the preamble is limiting and requires a micro-sized inertial measurement unit, and that the structures recited in the limitations of the claims are limited to structures implemented as MEMS devices. Dec. 21–24.” slip op. at 14

  Patent outcomesUS 6,671,648 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,671,648
• Nintendo Co., Ltd. / Nintendo Of America Inc. v. American GNC CorporationAll claims unpatentable
  PTAB · Aug 20, 2025 · IPR2024-00667 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1 and 3 are unpatentable under § 103 over Fujiyoshi, Kumar, Cox, and Townsend, and independently over Mitamura and Townsend.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerNot time barredDecided for petitioner

    “other things, it “identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). “[T]he IPR petitioner bears the burden of persuasion to demonstrate that its petitions are not time-barred under § 315(b) based on a complaint served on a real party in interest more than a year earlier.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). However, “an IPR petitioner’s initial identification of the real parties in interest should be accepted unless and until disputed by a patent owner,” who, in turn, “must produce some evidence that tends to show that a particular third party should be named a real party in interest.” Id. at 1242, 1244 (footnote omitted). Whether a non-party is a real party in interest is a “highly fact-” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have possessed a bachelor’s degree in electrical engineering or similar degree, with two to three years of practical experience designing and/or implementing systems that include sensors for measuring movement, such as acceleration and rotational position. . . . A skilled artisan could also have had more formal education and less practical experience, or vice versa. Pet. 5 (citing Ex. 1002 ¶¶ 12–14). Patent Owner states that “[a] person of ordinary skill in the art with respect to the ’122 Patent would have at least a five years of relevant experience in the development of control systems for inertial navigation, MEMS semiconductor processing, and analog circuit design.” PO Resp. 18 (citing Ex. 2019 ¶ 57). We adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with our review and understanding of the technology and descriptions in the ’122 patent and prior art of record, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that we would reach the same conclusions applying either Petitioner’s or Patent Owner’s definition of the level of skill in the art.” slip op. at 13

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

    “that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). In this context, claim terms “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (citations omitted) (en banc). “The Board is required to construe ‘only those terms ... that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party argues that any claim term requires construction. Pet. 6; PO Resp. 18. Accordingly, we do not explicitly construe any term.” slip op. at 14

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

    “Record evidence supports Petitioner’s contentions that a skilled artisan would have had reason to look to Kumar for further implementation details of a circuit that performs functions like those performed by Fujiyoshi. See Pet 24–26. For example, Dr. Young testifies that a person of ordinary skill in the art would have recognized that Kumar discloses the details, at a granular level, of Fujiyoshi’s capacitive sensing systems and would have looked to Kumar for understanding of how to implement Fujiyoshi’s system. Ex. 1002 ¶ 145. Patent Owner does not point to persuasive evidence to rebut this opinion. Moreover, Petitioner cites to Kumar, not only for an explicit disclosure of capacitive pickoff signals, but also for its disclosure of both DC bias and AC carrier signals and recognizing the applicability of an AC carrier pickoffs that operates without DC bias. Pet. 24–26 (citing Ex. 1005 3:65–4:2, 6:29–36). We credit Dr. Young’s testimony on this issue and agree with Petitioner that a person of ordinary skill in the art, looking at Fujiyoshi’s description of capacitive sensing systems, would be motivated to look to Kumar for its more detailed teachings of the implementation details of such systems and would combine these details to arrive at limitation 1(a). We determine that Petitioner has shown, by a preponderance of the evidence, that one of ordinary skill in the art would have been motivated to combine Fujiyoshi and Kumar in the manner argued by Petitioner.” slip op. at 37

  Patent outcomesUS 6,508,122 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,508,122
• Intel Corporation / Opensky Industries, LLC v. VLSI Technology LLCAll claims unpatentable
  PTAB · May 12, 2023 · IPR2022-00366 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1, 14, 17, 18, 21, 22, and 24 are unpatentable as obvious over the Shaffer-based and Chen-based grounds; Patent Owner’s motion to exclude is denied.

  RulingsFinal written decision

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

    “We do not read the specification’s disclosure of alternative embodiments as establishing that the claimed “request” mandates deciding whether to act on the request. Nothing in the specification describes a request that itself requires independent assessment. Stated otherwise, although any given “request” could be evaluated to determine what, if any, action to take in response, any such evaluation does not depend on the nature of the request. The claims do not include language restricting how a request is processed, but instead read on systems or methods in which a certain 7 As noted, Patent Owner hinges its arguments on construing “request.” See Tr. 50:16–18. Independent claim 14’s programmable clock controller includes instructions to perform a method that, like claim 1’s method, receives the request provided by the first master device and provides the claimed outputs without reciting any intervening assessment of the request. Independent claim 18 similarly recites that a clock controller coupled to an arbiter is configured to adjust a variable clock frequency of the bus in response to receiving the request from the first master device, without reciting any intervening assessment of the request. specification is consistent with a system that makes no independent assessment of a request. The example states that “[t]he clock controller can output a variable clock frequency that varies in response to one or more inputs from the at least one master device.” Id. at 2:38–40. This exemplary embodiment supports Petitioner’s contention that we should not construe “request” as requiring independent assessment before acting on the request.” slip op. at 8

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

    “While Chen does not expressly disclose power savings, the record supports a finding that skilled artisans would have understood power savings as an important consideration. See Ex. 1056, 386:2–4 (Patent Owner’s expert, Dr. Conte, testifying in the litigation that “power savings in designing a processor” is “extremely important”). Indeed, Terrell discloses the minimum frequency that allows the processing elements to function correctly while using the least amount of power.” Ex. 1005 ¶ 5. We conclude therefore that the prospect of achieving power savings would have motivated skilled artisans to operate Chen’s system at a reduced clock frequency when not required by performance demands. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (“‘[U]niversal’ motivations known in a particular field to improve technology provide ‘a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’” (quoting Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 797–99 (Fed. Cir. 2021))). Patent Owner contends that Chen and Terrell have opposite goals because Chen focuses on increasing frequency for performance while Terrell focuses on reducing frequency for power savings. PO Resp. 32–37. Petitioner, however, explains how the teachings would work together to “select a clock frequency that increases the devices’ frequency only when needed, to reduce power consumption, even if the devices can use higher speeds.” Pet. 45. Such a combination is consistent with Chen’s teachings of increasing frequency for certain operations, and also consistent with Terrell’s teachings of reducing frequency when possible. In this way, we credit Dr. Jacob’s testimony that the combination would have balanced “the inherent trade-off between highest performance at the highest cost, and lower (but perhaps still acceptable) performance at a lower cost.” Ex. 1055 ¶ 112. Thus, the combined system Petitioner asserts would have been able to operate at reduced frequency (conserving power) in low-activity times and increased frequency when the system required higher performance. Id. ¶ 117. performance demand, we do not agree with Patent Owner that the combination defeats Chen’s intended purpose. See PO Resp. 37–42. Patent Owner’s interpretation, that Chen requires maximum speed at all times, is implausible in light of Terrell’s recognition that systems may spend time in an idle state (Ex. 1004 ¶ 54), and Chen’s disclosure of operating devices below their maximum speed (Ex. 1003, 3:42–43 (“I/O devices which normally operate at 66 M[H]z can be operated at 50 M[H]z.”)). We conclude that Chen’s “principle of operation and stated goal” are preserved by the asserted combination, in which bus speed is reduced when performance needs allow and then increased to the limit of a device’s capabilities when required.” slip op. at 32

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “The IEEE article cited by Patent Owner is not sufficient evidence to demonstrate the requisite nexus. Intel’s employee testified that it takes years and thousands of engineers to build a new generation of processors because such devices include thousands of features and enhancements. Ex. 1058, 811:2–12. Petitioner notes that Patent Owner accused only the Speed Shift feature of infringing the ’759 patent and that Patent Owner’s damages expert, Dr. Sullivan, “conceded that many of the thousands of other features ‘have nothing to do with what [Patent Owner] accuses.’” Pet. Reply 23 (quoting Ex. 1057, 690:19–691:24). Petitioner additionally points out that, in a subsequent trial, Patent Owner’s expert agreed that Intel would have sold the accused products regardless of the alleged infringement. Id. (citing Ex. 1061, 771:13–22 (testifying that Intel would have made the same sales, even if the jury found the products not to infringe)). The record before us does not show that Intel’s product or products underlying the infringement verdict are coextensive with “the invention disclosed and claimed.” See Fox Factory, 944 F.3d at 1373, 1377; see Facebook, Inc. v. Express Mobile Inc., IPR2021-01457 Paper 38 at 76–80 (PTAB March 14, 2023) (concluding an infringement verdict was insufficient to establish nexus). Rather, the record shows that the accused products contained many features beyond those relevant to the ’749 patent. Ex. 1057, 690:19–691:24; Ex. 1058, 815:16–816:21. information that would allow us to weigh the extent of Intel’s commercial success based on the alleged sales of products infringing the claimed invention. In particular, the record does not reflect whether the infringing device represented an increase in market share over a prior, noninfringing device or any other aspect that would allow us to place the verdict’s amount in context. See, e.g., In re Applied Materials, Inc., 692 F.3d 1289, 1300 (Fed. Cir. 2012) (“An important component of the commercial success inquiry in the present case is determining whether Applied had a significant market share.”). On this record we do not find evidence of commercial success sufficient for purposes of establishing non-obviousness.” slip op. at 25

  • ExcludeMotion to exclude, deniedDenied

    “We agree with Petitioner and deny Patent Owner’s motion because Dr. Jacob’s cross-examination and his confirmation of the declarations in this proceeding address Patent Owner’s hearsay concern.11 IPR testimony is 10 Petitioner does not dispute that Dr. Jacob’s Original Declarations are offered “to prove the truth of the matter asserted.” PO Mtn. Exclude 3; Fed. R. Evid. 801(c)(2). 11 Patent Owner’s argument that OpenSky did not contact Dr. Jacob before filing its Petition with Dr. Jacob’s Declarations is not persuasive in light of his willingness to testify in this proceeding. PO Mtn. Exclude 6–10. not allow an expert to “testify” in person at an IPR hearing. See 37 C.F.R. § 42.53 (a)–(b)(1); 35 U.S.C. § 316(a)(5); 35 U.S.C. § 23. Testimony is instead submitted as evidence in the form of affidavits and deposition transcripts. See 37 C.F.R. §§ 42.53, 42.63. Our rules, therefore, contemplate that declarants in IPRs do not “testify” in the traditional sense of giving live testimony in a courtroom. As other Board decisions have noted, “[w]ithout exception, the Board accepts the filing of sworn witness declarations in lieu of live testimony in administrative patent trials.” Grünenthal Gmbh v. Antecip Bioventures II LLC, PGR2018-00062, Paper 32 at 15 (PTAB Oct. 29, 2019). Our procedures adopt that practice for its efficiency and ensure fairness by allowing cross-examination. See id.; 37 C.F.R. § 42.51(b)(ii). Dr. Jacob has made himself available for cross-examination and confirmed that the declarations express his opinions here, in this proceeding. Thus, in these respects, the Original Declarations are no different than the other testimony relied on by the parties, and are not hearsay subject to exclusion.” slip op. at 41

  Patent outcomesUS 7,725,759 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 7,725,759
• Intel Corporation / Opensky Industries, LLC v. VLSI Technology LLCAll claims unpatentable
  PTAB · May 12, 2023 · IPR2021-01064 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1, 14, 17, 18, 21, 22, and 24 are unpatentable as obvious over the asserted Shaffer- and Chen-based grounds; Patent Owner’s motion to exclude is denied.

  RulingsFinal written decision

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

    “We do not read the specification’s disclosure of alternative embodiments as establishing that the claimed “request” mandates deciding whether to act on the request. Nothing in the specification describes a request that itself requires independent assessment. Stated otherwise, although any given “request” could be evaluated to determine what, if any, action to take in response, any such evaluation does not depend on the nature of the request. The claims do not include language restricting how a request is processed, but instead read on systems or methods in which a certain” slip op. at 8

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

    “While Chen does not expressly disclose power savings, the record supports a finding that skilled artisans would have understood power savings as an important consideration. See Ex. 1056, 386:2–4 (Patent Owner’s expert, Dr. Conte, testifying in the litigation that “power savings in designing a processor” is “extremely important”). Indeed, Terrell discloses the minimum frequency that allows the processing elements to function correctly while using the least amount of power.” Ex. 1005 ¶ 5. We conclude therefore that the prospect of achieving power savings would have motivated skilled artisans to operate Chen’s system at a reduced clock frequency when not required by performance demands. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (“‘[U]niversal’ motivations known in a particular field to improve technology provide ‘a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’” (quoting Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 797–99 (Fed. Cir. 2021))). Patent Owner contends that Chen and Terrell have opposite goals because Chen focuses on increasing frequency for performance while Terrell focuses on reducing frequency for power savings. PO Resp. 32–37. Petitioner, however, explains how the teachings would work together to “select a clock frequency that increases the devices’ frequency only when needed, to reduce power consumption, even if the devices can use higher speeds.” Pet. 45. Such a combination is consistent with Chen’s teachings of increasing frequency for certain operations, and also consistent with Terrell’s teachings of reducing frequency when possible. In this way, we credit Dr. Jacob’s testimony that the combination would have balanced “the inherent trade-off between highest performance at the highest cost, and lower (but perhaps still acceptable) performance at a lower cost.” Ex. 1055 ¶ 112. Thus, the combined system Petitioner asserts would have been able to operate at reduced frequency (conserving power) in low-activity times and increased frequency when the system required higher performance. Id. ¶ 117. performance demand, we do not agree with Patent Owner that the combination defeats Chen’s intended purpose. See PO Resp. 37–42. Patent Owner’s interpretation, that Chen requires maximum speed at all times, is implausible in light of Terrell’s recognition that systems may spend time in an idle state (Ex. 1004 ¶ 54), and Chen’s disclosure of operating devices below their maximum speed (Ex. 1003, 3:42–43 (“I/O devices which normally operate at 66 M[H]z can be operated at 50 M[H]z.”)). We conclude that Chen’s “principle of operation and stated goal” are preserved by the asserted combination, in which bus speed is reduced when performance needs allow and then increased to the limit of a device’s capabilities when required. Patent Owner argues additionally that the asserted combination would have required modifying devices to support reduced speed, and that the required modifications would increase cost and complexity such that skilled artisans would not have made the combination. PO Resp. 42–47. Petitioner responds, on the other hand, that devices with thousands of transistors were commonplace at the time of the ’759 patent’s invention. Pet. Reply 18 (citing Ex. 1055 ¶¶ 118–119). We agree with Petitioner that the added complexity required by the asserted combination would not have risen to a level that skilled artisans would have been dissuaded from making the combination. In particular, we agree that, by 2005, when the application resulting in the ’759 patent was filed, Terrell’s approach did not present a significant technological obstacle to a skilled artisan seeking to modify Chen’s system. See Pet. Reply 18. We credit Dr. Jacob’s testimony that technology had advanced considerably following Chen’s mid-1990s disclosure such that the modification would have imposed a modest likewise would minimize any challenge skilled artisans would have had with modifying Chen’s master devices. See PO Resp. 42–43. Those devices would have required only modest changes to work with the modified system, and skilled artisans implementing Chen’s system in 2005 would have done so with integrated devices, thus eliminating Patent Owner’s asserted need to modify a host of disparate devices. See Ex. 1055 ¶¶ 119, 132–137. Patent Owner further challenges Petitioner’s reliance on Terrell’s statement that its teachings apply to “[a]n on-chip bus that hosts two or more bus masters, all of which share a common bus clock.” Ex. 1004 ¶¶ 6, 8; PO Resp. 47–48 (citing Pet. 46). Patent Owner points out that Chen’s bus 40 is a peripheral, off-chip bus and implicates different design constraints. Id. Petitioner contends that, regardless of whether Chen’s bus is itself an on-chip bus, technological progression after Chen resulted in master devices moving on-chip and using an on-chip bus. Pet. Reply 19 (citing Ex. 1055 ¶¶ 132–137). Notwithstanding Dr. Jacob’s testimony that Chen’s system would be implemented differently by the time of the ’759 patent, the dispute does not change our determination because, as discussed above, Petitioner has shown that skilled artisans would have made the asserted combination, aside from Terrell’s statement about on-chip buses. Terrell’s statement of particular applicability to on-chip buses does not undermine its separate statement regarding the desirability of reducing power consumption by reducing clock frequency when possible. Ex. 1004 ¶ 5. That express teaching shows that skilled artisans understood the possibility of reducing power by reducing frequency. We conclude that skilled artisans had reason to arrive at the asserted combination.” slip op. at 32

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner

    “When the evidence shows that a product includes “the invention disclosed and claimed in the patent,” we presume that any commercial success of the product is due to the patented invention. PPC Broadband v. Corning Optical Commc’ns, 815 F. 3d 734, 746–747 (Fed. Cir. 2016). Such claims, but also that it is coextensive with them. See Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (“[P]resuming nexus is appropriate ‘when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.” (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018))).” slip op. at 23

  • ExcludeMotion to exclude, deniedDenied

    “We agree with Petitioner and deny Patent Owner’s motion because Dr. Jacob’s cross-examination and his confirmation of the declarations in this proceeding address Patent Owner’s hearsay concern.11 IPR testimony is 10 Petitioner does not dispute that Dr. Jacob’s Original Declarations are offered “to prove the truth of the matter asserted.” PO Mtn. Exclude 3; Fed. R. Evid. 801(c)(2). 11 Patent Owner’s argument that OpenSky did not contact Dr. Jacob before filing its Petition with Dr. Jacob’s Declarations is not persuasive in light of his willingness to testify in this proceeding. PO Mtn. Exclude 6–10. not allow an expert to “testify” in person at an IPR hearing. See 37 C.F.R. § 42.53 (a)–(b)(1); 35 U.S.C. § 316(a)(5); 35 U.S.C. § 23. Testimony is instead submitted as evidence in the form of affidavits and deposition transcripts. See 37 C.F.R. §§ 42.53, 42.63. Our rules, therefore, contemplate that declarants in IPRs do not “testify” in the traditional sense of giving live testimony in a courtroom. As other Board decisions have noted, “[w]ithout exception, the Board accepts the filing of sworn witness declarations in lieu of live testimony in administrative patent trials.” Grünenthal Gmbh v. Antecip Bioventures II LLC, PGR2018-00062, Paper 32 at 15 (PTAB Oct. 29, 2019). Our procedures adopt that practice for its efficiency and ensure fairness by allowing cross-examination. See id.; 37 C.F.R. § 42.51(b)(ii). Dr. Jacob has made himself available for cross-examination and confirmed that the declarations express his opinions here, in this proceeding. Thus, in these respects, the Original Declarations are no different than the other testimony relied on by the parties, and are not hearsay subject to exclusion. Indeed, during his cross-examination, Dr. Jacob confirmed that the Original Declarations set forth his opinions regarding the ’759 patent. Ex. 2066, 69:12–17 (identifying Ex. 1002), 72:11–21 (identifying Ex. 1046), 73:4–10 (confirming the declarations set forth his opinions). In Intel’s proceeding asserting the same grounds and seeking joinder, Dr. Jacob filed a declaration reaffirming his Original Declarations and confirming that he would appear for cross-examination. IPR2022-00366, Ex. 1049. We noted that Dr. Jacob’s reaffirming declaration and availability for cross-examination allayed concerns about hearsay. Paper 43 (joinder decision), 15. While the reaffirming declaration is not of record in this proceeding, opinions serve the same role. Patent Owner has suffered no prejudice from Dr. Jacob’s Original Declarations. We have considered Patent Owner’s other arguments (Paper 95) and find them just as unavailing. The fact that the Jacob declarations were prepared for another proceeding is immaterial in this case because Dr, Jacob has expressly adopted them for this proceeding. Id. at 1–3. Nor is a hearsay exception necessary, as the reaffirmance of the prior testimony by Dr. Jacob and his cross-examination in this proceeding overcomes any plausible hearsay argument or the necessity for a hearsay exception. Id. at 3–5. Finally, there is no merit to Patent Owner’s suggestion (id. at 5) that reliance on Dr. Jacob’s reply declaration is somehow contrary to our procedures, which specifically provide for replies by the petitioner (including new declarations). See USPTO Consolidated Trial Practice Guide 73 (Nov. 2019).12 For the reasons given, we deny Patent Owner’s Motion to Exclude.” slip op. at 41

  Patent outcomesUS 7,725,759 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 7,725,759
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01601 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over both listed combinations; the contingent motion to amend is granted, replacing them with substitute claims 3 and 4.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with a qualification. We stated we would also expect a person of ordinary skill to also have at least some experience in wireless cellular network protocols, as suggested by Patent Owner. Institution Dec. 19. We reasoned that our review of the ’199 patent and the cited prior art did not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’199 patent on more general principles of cellular communications and signaling. Id. at 19– 20. However, we observed that the arguments presented by the parties did not depend on the definition of the person or ordinary skill, and therefore, we concluded that our decision would be the same under either formulation. Id. at 20.” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “device associated with a driver at all.” PO Resp. 39 (citing Valenti III Decl. ¶ 94). Patent Owner continues, “Petitioner’s expert acknowledges that Lalancette does not disclose the use of a mobile communication device associated with the driver.” Id. (citing Williams Dep. 128:14–129:25, 132:1–8). This is a misrepresentation of Mr. Williams’s testimony. He was not asked whether Lalancette “discloses” a mobile communication device; he was asked to agree whether Lalancette “identi[fies] the mobile computer as a mobile communication device.” Williams Dep 129:10–13. He explained his response later in his testimony: “In the passage where [Lalancette] references mobile computer, it doesn’t have a specific form factor discussion such as referencing Smartphones.” Id. at 132:5–8. We do not agree with Patent Owner’s argument that this limitation is not met by Lalancette and we do not find the testimony of its expert, Dr. Valenti, credible or helpful. See Valenti III Decl. ¶¶ 94 (“Lalancette does not disclose a mobile device associated with a driver at all.”). As Petitioner points out, the argument supported by Dr. Valenti is an “attempt to improperly narrow the definition of a mobile device to only mean a smartphone of the driver.” Pet. Reply 24. We find that this argument and the supporting expert testimony are contradicted by the ’199 patent specification. See id, at 24–25 (quoting Ex. 1001, 3:10–11, defining mobile communication device broadly). We, therefore, find that the mobile computer disclosed in Lalancette meets the requirement of this claim limitation for a “mobile communication device associated with the driver.” We find for the reasons given that Petitioner demonstrates that Lalancette and Kemler meet limitation 1E.” slip op. at 45

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

    “We declined to adopt this implicit construction (and the related construction “actively generate”). Institution Dec. 23. The claims themselves do not require the controller to “actively formulate” a new indicator for the same rider requesting a subsequent trip for that second trip, or that “a new signal be actively formulated each time a ride is dispatched,” as Patent Owner’s analysis asserts. See infra. Nor is it clear how this construction is supported by the ’199 patent specification. The ’199 patent describes the controller as “communicatively coupled to the transceiver.” Ex. 1001, 2:10–11. Further, “[t]he controller is adapted to generate a first signal to be transmitted by the transceiver to a mobile communication device.” Id. at 2:12–14. Elsewhere in the patent, “controller” is defined as “any type of computing device, computational circuit, or any type of processor or processing circuit capable of executing a series of instructions that are stored in a memory associated with a with the controller.” Id. at 3:6–10. The operation of the controller is also described as follows: “The controller 110 may generate a first signal (also referred to herein as a ‘notification signal’) that is transmitted via the transceiver 120 to the mobile communication device 150 associated with the driver D.” Id. at 5:14–17. Still further, “[t]he controller 110 generates four different notification signals, NOTIFICATION-A, NOTIFICATION-B, NOTIFICATION-C, and NOTIFICATION-D, to be transmitted by the transceiver 120 to a first DRIVER'S MOBILE DEVICE 150A, a second DRIVER'S MOBILE DEVICE 150B, a third DRIVER'S MOBILE DEVICE 150C, and a fourth DRIVER'S MOBILE DEVICE 150D, respectively.” Id. at 6:39–46. And further, “[i]n other embodiments, wherein the vehicle identification system 11 is utilized, an indicatory signal to the rider's mobile communication device may be generated by the controller 110.” Id. at 7:4–7. In none of these descriptions of the controller’s operation is there” slip op. at 15

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

    “We find that the Petition and supporting expert testimony sufficiently demonstrate that a person of ordinary skill would have combined the teachings of Kemler and Kalanick with a reasonable expectation of success. Pet. 21–25. In addition to the reasons given supra, Petitioner explains that Kalanick’s “on-demand service system can also use location information from the driver’s device and/or transport information . . . to automatically determine the driver’s state or state of the transport service.” Id. at 22 (citing Ex. 1006 ¶¶ 29, 35). Petitioner explains that in Kalanick, “[w]hen a service application on the driver’s device determines that the transport service is to change state, such as to ‘arriving now,’ based on a determination that the driver is within a predetermined distance, the service application can trigger the indication device to output the user’s specific color.” Id. at 23 (citing Ex. 1006 ¶ 37). Thus, Kalanick’s system can “control the indication device to output the user’s color or other unique distinctive indicator based on the transport state.” Id. (citing Ex. 1006, ¶ 38). Petitioner explains that Kemler describes a central dispatching system in which one or more server computing devices of the centralized dispatching system may select a vehicle to be dispatched based upon the location of the client computing device. Id, (citing Ex. 1008, 10:3–33). Thus, Petitioner explains that Kemler, like Kalanick, “discloses ride-matching based on proximity and distance to match requesting riders with drivers based at least in part on the proximity of their respective locations.” Id. Petitioner demonstrates that “a [person of ordinary skill] would find it obvious to modify Kalanick’s vehicle identification system in view of Kemler, at least because both systems disclose substantially similar ride-matching techniques based on proximity and distance to match requesting riders with drivers based at least in part on the proximity of their respective locations.” Id. at 23–24. Petitioner also explains that a person of ordinary skill would “anticipate success of such a modification.” Id. at 24. Petitioner explains that “the controller in Kalanick is already in communication with the car and could easily send a signal to activate the display with the unique code.” Id. (citing Williams I Decl. ¶ 121). Petitioner recognizes that although both Kalanick and Kemler “focus” slip op. at 28

  Patent outcomesUS 10,559,199 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,559,199
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01598 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–9 and 11–20 are unpatentable as obvious over either asserted combination; the motion to amend is granted for substitute claims 29, 31, and 32.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with a qualification. We stated “[w]e would also expect a person of ordinary skill to also have at least some experience in wireless cellular network protocols, as suggested by Patent Owner.” Institution Dec. 16. We reasoned that our review of the ’637 patent and the cited prior art does not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’637 patent on more general principles of cellular communications and signaling. Id. However, we observed that the arguments presented by the parties did not depend on the definition of the person or ordinary skill, and, therefore, our decision would be the same under either formulation. Id. at 16–17.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Resp. 12–14. The fact that Kalanick may not “disclose any problem” arising from the possibility of two passengers in the same area having the same signal does not prove a problem did not exist or that a person of ordinary skill would not be motivated to improve upon the solution for it. See Pet. Reply 5–6. Similarly, we are not persuaded by Patent Owner’s argument that there would be no reasonable expectation of success based on Kemler’s disclosure of a server farm. PO Resp. 24 (“The immense expense and complexity of operating a server ‘farm’ would be a reason to avoid Kemler’s teachings.”). Testimony from Mr. Williams establishes the advantages of such systems. Pet. Reply 7 (citing Williams I Decl. ¶¶ 124); Williams Dep. 82:1–88:25, 92:13–93:1; Williams III Decl. ¶¶ 34–35.5” slip op. at 33

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

    “We find that the Petition and supporting expert testimony sufficiently demonstrate that a person of ordinary skill would have combined the teachings of Kemler and Kalanick with a reasonable expectation of success. Pet. 21–27; Williams I Decl. ¶¶ 113–125; Williams III Decl. ¶¶ 5–17. In addition to the reasons given supra, Petitioner explains that Kalanick’s “on-” slip op. at 30

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

    “The ’637 patent describes an indicator as “a ‘code’ (e.g., a text string or an alphanumeric string), an icon, or other identifier, on the display 130 and on a mobile communication device 140 associated with the user P to enable the user P to identify the vehicle that he/she has requested for a ride service.” Ex. 1001, 4:6–10. Consistent with this description in the specification, we construed the term “indicator” as a code (e.g., a text string or an alphanumeric string), an icon, or other identifier, for display to enable a match between a user/rider and a driver. Institution Dec. 20. We did not see a basis in the claims or specification for Patent Owner’s contention that a “new unique indicator” must be “actively formulate[d] . . . for each rider-driver trip while the driver is in transit.” Id. at 20 (citing Prelim. Resp. 29). Patent Owner does not address the construction of “indicator” in its Response. For the reasons given, therefore, we maintain our construction of this term. We discuss Patent Owner’s contention that a new indicator must be “actively formulated” further in connection with our consideration of the claim term “generate,” infra.” slip op. at 15

  Patent outcomesUS 9,892,637 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,892,637
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01599 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1, 2, 4, and 6–8 are unpatentable as obvious over Kalanick and Kemler, anticipated by Lalancette, or obvious over Lalancette and Kemler.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with one qualification. Inst. Dec. 19. We stated we would also expect a person of ordinary skill to have at least some experience in wireless cellular network protocols, as suggested by Patent Owner. Id. at 19–20. We reasoned that our review of the ’987 patent and the cited prior art did not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’987 patent on more general principles of cellular communications and signaling. Id. at 20. However, we observed that our decision would be the same under either formulation. Id. at 20.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We also find unavailing Patent Owner’s argument that Mr. Williams, Petitioner’s expert, “acknowledges that Lalancette does not disclose the use of a mobile communication device associated with the driver.” Id. (citing Ex. 2022, 128:14–129:25, 132:1–8). Patent Owner misrepresents Mr. Williams’s testimony. Mr. Williams was not asked whether Lalancette “discloses” a mobile communication device, but rather was asked “You’ll agree that La[l]ancette doesn’t identify the mobile computer as a mobile communication device associated with the driver?” Ex. 2022, 129:10–13. specifically referenced, that description is not in that passage.” Id. at 129:14–16. Notably, Mr. Williams also testified that (i) “[t]he nature of La[l]ancette requires some sort of computing device in the taxi that has the ability to receive and communicate in order to get information, for example, icon information from the central computer”; (ii) “mobile computer . . . has a variety of form factors inclusive of something like a [s]martphone”; and (iii) “[i]n the passage where [Lalancette] references mobile computer, it doesn’t have a specific form factor discussion such as referencing [s]martphones.” Id. at 125:17–22, 129:20–25, 132:5–8.” slip op. at 38

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

    “1. “indicator” In our Institution Decision, we construed the term “indicator” as a “code (e.g., a text string or an alphanumeric string), an icon, or other identifier, for display to enable a match between a user/rider and a driver.” Inst. Dec. 22. We determined this construction was consistent with the description of an indicator in the specification of the ’987 patent. Id. at 21–22 (citing Ex. 1001, 4:9–13). Neither party challenges this construction, which we maintain for this Final Written Decision. See PO Resp. 6; Pet. Reply 2; PO Sur-reply 2.” slip op. at 12

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

    “Because the specification and prosecution history do not explicitly provide a definition for the term “generate,” we looked to extrinsic sources to determine its plain meaning. Inst. Dec. 24. The Federal Circuit has approved the use of dictionaries for guidance in claim construction, “so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. general dictionary definitions as an aid to claim construction.”) (citation omitted). One dictionary definition of “generate” is “to bring into existence: such as: . . . to originate by a vital, chemical, or physical process: PRODUCE.” See https://www.merriam-webster.com/dictionary/generate. We therefore construed the term “generate” as it relates to the controller in reference to a signal in accordance with its plain and ordinary meaning, which is “to originate or produce the signal.” Inst. Dec. 24–25.” slip op. at 13

  Patent outcomesUS 10,169,987 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,169,987
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01602 · APJ John D Hamann · IPR · Final written decision

  Claims 1–5 are unpatentable as obvious over Lalancette; the Board did not reach the anticipation or Kalanick–Kemler obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On the full record, we determine that Petitioner’s definition, with the above qualification, is consistent with the ’417 patent and the asserted prior art, and thus, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis herein, however, does not turn on which of the parties’ definitions we adopt. The parties’ statements made during the oral hearing are consistent with this point. See Tr. 75:17–18 (Patent Owner stating that “[i]t’s not clear to us that the level of ordinary skill arguments actually matter”), 106:12–17 (Petitioner stating that its arguments do not depend on which definition we adopt). In sum, we maintain Petitioner’s definition, as qualified, for the level of one of ordinary skill in the art, and employ it in our analysis of the parties’ unpatentability arguments.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther

    “In addition, because the Specification and file history do not explicitly provide a definition for the term “generate,” we look to a dictionary definition to illustrate its plain meaning for the parties. The Federal Circuit has approved the use of dictionaries for guidance in claim construction, “so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. Cir. 2008) (“[O]ur decisions, including Phillips, do not preclude the use of general dictionary definitions as an aid to claim construction.”) (citation omitted). A dictionary definition of “generate” is “to bring into existence: such as: . . . to originate by a vital, chemical, or physical process: [produce].” Merriam-webster.com (accessed April 8, 2022), https://www.merriam-webster.com/dictionary/generate (Ex. 3001). We therefore construe the term “generate” as it relates to the controller in reference to a signal in accordance with its plain and ordinary meaning, which is to originate or produce the signal.” slip op. at 12

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

    “Simply put, these arguments incorrectly conflate “signal” and “indicator” (e.g., icon). Claim 1 recites that a controller generates a signal, rather than reciting that the controller generates an indicator. Ex. 1001, 8:1–6. And the Specification of the ’417 patent is replete with examples of the controller generating signals, including those that represent an indicator, for transmission by a transceiver, which is different than generating the indicator itself. See, e.g., Ex. 1001, 2:1–5, 5:4–7, 6:30–37, 6:62–65. And we find unavailing Patent Owner’s arguments that claim 1 requires a new indicator (e.g., icon) for each trip, and that the indicator cannot be pre-selected. PO Resp. 32. The language of claim 1 sets forth no such requirements. Ex. 1001, 7:31–8:14. Notably, Patent Owner does not cite to the Specification or claim language to support these arguments. PO Resp. 30–32. Rather, Patent Owner cites to the testimony of Dr. Valenti. Id. (citing Ex. 2023 ¶¶ 78–82). We find that this testimony lacks factual 7 The’417 patent describes “an indicator” as “a ‘code’ (e.g., a text string or an alphanumeric string), an icon, or other identifier.” Ex. 1001, 4:8–10 (emphasis added). support and is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (finding that when “an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term[,] . . . it is improper to rely on extrinsic evidence”). In addition, because the Specification and file history do not explicitly provide a definition for the term “generate,” we look to a dictionary definition to illustrate its plain meaning for the parties. The Federal Circuit has approved the use of dictionaries for guidance in claim construction, “so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. Cir. 2008) (“[O]ur decisions, including Phillips, do not preclude the use of general dictionary definitions as an aid to claim construction.”) (citation omitted). A dictionary definition of “generate” is “to bring into existence: such as: . . . to originate by a vital, chemical, or physical process: [produce].” Merriam-webster.com (accessed April 8, 2022), https://www.merriam-webster.com/dictionary/generate (Ex. 3001). We therefore construe the term “generate” as it relates to the controller in reference to a signal in accordance with its plain and ordinary meaning, which is to originate or produce the signal.” slip op. at 11

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “indicator” (e.g., icon). Claim 1 recites that a controller generates a signal, rather than reciting that the controller generates an indicator. Ex. 1001, 8:1–6. And the Specification of the ’417 patent is replete with examples of the controller generating signals, including those that represent an indicator, for transmission by a transceiver, which is different than generating the indicator itself. See, e.g., Ex. 1001, 2:1–5, 5:4–7, 6:30–37, 6:62–65. And we find unavailing Patent Owner’s arguments that claim 1 requires a new indicator (e.g., icon) for each trip, and that the indicator cannot be pre-selected. PO Resp. 32. The language of claim 1 sets forth no such requirements. Ex. 1001, 7:31–8:14. Notably, Patent Owner does not cite to the Specification or claim language to support these arguments. PO Resp. 30–32. Rather, Patent Owner cites to the testimony of Dr. Valenti. Id. (citing Ex. 2023 ¶¶ 78–82). We find that this testimony lacks factual 7 The’417 patent describes “an indicator” as “a ‘code’ (e.g., a text string or an alphanumeric string), an icon, or other identifier.” Ex. 1001, 4:8–10 (emphasis added). support and is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (finding that when “an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term[,] . . . it is improper to rely on extrinsic evidence”). slip op. at 11

  Patent outcomesUS 10,748,417 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,748,417
• Satco Products, Inc. v. The Regents Of The University Of CaliforniaAll claims unpatentable
  PTAB · Nov 4, 2022 · IPR2021-00662 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over Yamazaki, Schubert, and Tadatomo; the Board did not reach the other asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art “would have been knowledgeable regarding conventional designs and fabrication techniques pertaining to LEDs, including LED package designs, and would have had at least 2 years of experience in LED design and fabrication as well as at least a master’s degree in a relevant field (e.g., chemical engineering, materials engineering, or electrical engineering), or alternatively would have an equivalent combination of advanced education and practical experience.” Pet. 10–11 (citing Ex. 1035 ¶¶ 27–29). Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp. We have reviewed Petitioner’s proposal and find it reasonable and consistent with the prior art, and apply it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 14

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

    “Third, and most significantly, Petitioner points to Shimizu, a patent filed in 1999, as repeatedly referring to phosphor as a garnet-based fluorescent material. Reply 3 (citing Pet. 27; Ex. 1013, 10:16–13:50). We agree that Shimizu appears to use the two terms interchangeably. For example, Shimizu states that “[t]he phosphor is specifically garnet fluorescent material” and “the fluorescent material is preferably yttrium- aluminum-garnet fluorescent material (YAG phosphor) activated with cerium.” Ex. 1013, 10:17–30. Patent Owner does not dispute this reading of Shimizu, but argues instead that it is “impermissible to rely on an entirely different reference” in a Reply. See Sur-Reply 4–5 (citing Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015)). For the same reasons discussed above, we do not agree that Petitioner’s use of Shimizu is improper, but is instead a proper response to Patent Owner’s argument that a person of ordinary skill in the art would not have understood Yamazaki to disclose phosphor. Ariosa, relied upon by Patent Owner, confirms that the Board should consider an exhibit “for what it show[s] about the background knowledge that a skilled artisan would have possessed.” Ariosa, 805 F.3d at 1365 (“The Board’s language on its face supports Ariosa’s interpretation of what the Board meant—that the Board was declining to consider Exhibit 1010, even as evidence of the background understanding of skilled artisans as of January 2010, simply because the brochure had not been identified at the petition stage as one of the pieces of prior art defining a combination for obviousness. If that is what the Board meant, the Board erred. Art can legitimately serve to document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness.”). The Petition relies on Shimizu to show such background understanding. Pet. 27. Specifically, the Petition states that conventional LEDs “were made using the III-nitride material system, with semiconductor layers formed on sapphire substrates and combined with YAG phosphors to efficiently generate white light output.” Id. (citing Ex. 1013, 10:30–11:35). Thus, Shimizu is properly objective evidence supporting a finding that at least as early as 1999, a person of ordinary skill in the art would have used the terms “phosphor” and “fluorescent material” interchangeably. Moreover, Dr. Schubert’s textbook published in 2018 explicitly references Shimizu. Ex. 1039, 3-4. In this context, we find that Dr. Schubert’s textbook and testimony indicate that a person of ordinary skill in the art, at the relevant time, would have understood the terms to be interchangeable.” slip op. at 20

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

    “Based on the complete record, Petitioner establishes by a preponderance of the evidence that an ordinarily skilled artisan would have found the sapphire growth substrate obvious in light of Yamazaki’s disclosure. Petitioner cites Schubert to show an ordinarily skilled artisan’s knowledge about conventional blue LEDs as disclosed in Yamazaki, i.e., that “conventional blue LEDs were III-nitride-based LEDs that commonly included sapphire growth substrates.” See Pet. 71–72, 76–77; Ex. 1007 ¶ 27 (stating the disclosed light-emitting chip “is of a publicly known structure”); Ex. 1008, 166 (discussing “commonly used sapphire and SiC substrates”). We credit Dr. Dupuis’ testimony that is consistent with the prior art of record. Ex. 1035 ¶¶ 238, 248–251 (citing Ex. 1008, 166); Ex. 1007 ¶ 27; Ex. 1009, 1:10–17, 4:61–67; Ex. 1012, 243; Ex. 2013, 10:30–11:35. We are not persuaded otherwise by the deposition testimony of Dr. Dupuis pointed to by Patent Owner. PO Resp. 44 (citing Ex. 2016, 53:7– 12). This testimony confirms that Schubert does not explicitly discuss whether the sapphire growth substrate is included in an LED package. Id. (citing Ex. 2016, 53:7–12). However, Patent Owner does not dispute that sapphire growth substrates were commonly used (as confirmed by Schubert) or that a person of ordinary skill in the art would have reasonably expected a blue LED to include a sapphire growth substrate. See PO Resp. 42–43 (stating only that sapphire is one among several materials that could be used as a growth substrate); Sur-Reply 9–10 (same). Petitioner is not required to show that the proposed combination would have been preferred over other alternatives. Infineum USA L.P. v. Chevron Oronite Co. LLC, No. 2020-1333, 2022 WL 3147683, at *6 (Fed. Cir. Aug. 8, 2022) (“We have rejected the notion that a patent challenger seeking to demonstrate obviousness must prove that a person of ordinary skill would have been motivated to select one prior art disclosure over another.”); In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[O]ur case law does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.”). Instead, the question is whether a person of ordinary skill in the art would have understood the disclosure of Yamazaki, in light of the disclosure in Schubert, to teach or suggest the sapphire growth substrate limitation. As discussed above, persuasive evidence in the record establishes that this is true.” slip op. at 38

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “offered to show that the ’213 patent solved a long-felt, but unresolved need in the field and the merits of the challenged claims. See PO Resp. 67–68. First, Patent Owner has not shown a presumption of nexus because none of the cited evidence involves any particular product. Second, Patent Owner 22 Exhibit 2111 is a redacted version of Exhibit 2105. has not established that the any long-felt need resulted directly from the unique characteristics of the claimed subject matter. Other than a general statement that the technology addressed by the ’213 patent is a continuation of Dr. Nakamura’s prize-winning work (see Ex. 2112 ¶ 231), we see no evidence in the record that the subject matter recited by claims 1 and 2 of the ’213 patent, itself, solved the need for a more efficient LED without a heat sink or mirrors. See PO Resp. 65–66; Sur-Reply 23–24.” slip op. at 46

  Patent outcomesUS 10,644,213 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,644,213
• Western Digital Corporation / Western Digital Technologies, Inc. et al. v. Martin KusterAll claims unpatentable
  PTAB · Feb 10, 2022 · IPR2020-01410 · APJ Nabeel U Khan · IPR · Final written decision

  Claims 1–18 are unpatentable: claims 1–4, 9–13, and 18 as anticipated by Hsiao, and claims 1–18 as obvious over Hsiao and Sun.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposed level of ordinary skill does not materially differ from that articulated by Mr. Welch. Both require a bachelor’s in many of the same fields and roughly one to two years of experience with USB protocols or USB product development. Neither Petitioner nor Patent Owner indicates that the outcome of any arguments made in this case would change depending on the level of ordinary skill in the art. We adopt Petitioner’s description, which we determine to be consistent with the level of skill reflected in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that we would reach the same conclusions under either proposed level of ordinary skill.” slip op. at 8

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

    “The term “mounted on” appears in several limitations of claim 1, including limitations 1.c, 1.d, and 1.e. The dispute between the parties, however, centers only on how the term should be construed in limitation 1.e, which recites “a contact bar mounted on the connection surface of the substrate” (Ex. 1001, 9:63–64) and only with respect to the Grounds involving Chen. Patent Owner does not dispute Petitioner’s contentions that Hsiao teaches a contact bar “mounted on” the connection surface of the substrate. See PO Resp. 42–55. For the reasons stated below, we determine Petitioner has not shown that Chen teaches certain other limitations of the independent claims regardless of whether it teaches “a contact bar mounted on the connection surface of the substrate.” See infra § II.D.2. Thus, it is not necessary to construe the term “mounted on” to resolve the dispute between the parties.” slip op. at 10

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

    “2. Embedded to be Exposed Upon the Cover of the Contact Bar The only word in the phrase “embedded to be exposed upon the cover of the contact bar,” recited in claims 1, 12, and 18, that Petitioner offers a construction for is the word “embedded,” which Petitioner argues has no special meaning in the art and should be afforded its ordinary dictionary definition of “set firmly into a mass or material.” Pet. 26 (citing Ex. 1005 ¶ 111). Patent Owner does not dispute Petitioner’s construction. PO Resp. 34–35. We adopt Petitioner’s construction, which we find is supported by the evidence of record. Ex. 1005 ¶ 111.” slip op. at 10

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner

    “It is well established that when a party seeks to prove conception through an inventor’s testimony, the party must proffer independent evidence corroborating the inventor’s testimony. Cooper, 154 F.3d at 1330. To be “independent,” the corroborating evidence must be evidence other than the inventor’s testimony. In re NTP, Inc., 654 F.3d 1279, 1291 (Fed. Cir. 2011). The sufficiency of the proffered corroboration is determined by a “rule of reason” analysis in which all pertinent evidence is examined. See NTP, 654 F.3d at 1291. Even under the “rule of reason” analysis, however, the “evidence of corroboration must not depend solely on the inventor himself.” Cooper, 154 F.3d at 1321; see also Hahn v. Wong, 892 F.2d 1028, 1033 (Fed. Cir. 1989) (corroborating evidence must be “independent of information received from the inventor”).” slip op. at 16

  Patent outcomesUS 8,705,243 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,705,243

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