• Opensky Industries, LLC v. VLSI Technology LLCInstitution denied
  PTAB · Dec 23, 2021 · IPR2021-01056 · APJ Jason W Melvin · IPR · Institution

  The Board denied institution of IPR on claims 1–3, 5, 6, 9–11, and 13 because Petitioner likely could not produce its relied-upon expert for cross-examination.

  RulingsInstitution decision

  • BurdenInstitution denied meritsInstitution denied

    “Given the facts surrounding Dr. Singh’s testimony, we do not consider him likely to be a willing participant in this proceeding. It is Petitioner’s burden to show unpatentability, and in support of its case Petitioner has brought forth the testimony of an expert that Petitioner likely cannot produce for cross-examination and would likely be excluded.9 Under the circumstances, we determine that the Petition does not warrant institution.” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “trial is instituted. Prelim. Reply 9. That suggestion, however, stands at odds with Dr. Singh’s agreement to work exclusively with PQA. See IPR2021-01229, Ex. 1033 (declaration describing PQA’s engagement of Dr. Singh), Ex. 1034 (engagement agreement between PQA and Dr. Singh). Petitioner submits that because Dr. Singh submitted his declaration in the Intel IPR and in the PQA IPR, “[i]t is unfathomable that a witness who submits two declarations would refuse to testify.” Prelim. Reply 10. But that argument ignores that Dr. Singh has agreed to work exclusively with PQA, which has not given any indication that it would release Dr. Singh from his agreement. Moreover, we have no evidence from Dr. Singh that he would be willing to testify here. Without some factual support to demonstrate that it reasonably expects Dr. Singh to cooperate, in light of the exclusive agreement with PQA, Petitioner’s assertion is speculation and does not demonstrate sufficiently that Dr. Singh would likely participate in this proceeding. Petitioner challenges PQA’s assertion of its exclusive agreement with Dr. Singh as “vague and ethically questionable” (id. at 9–10). This is more speculation. As noted above, PQA has produced its agreement with Dr. Singh (IPR2021-01229, Ex. 1034) and we have no basis to question the agreement’s legitimacy. Petitioner allowed this unusual situation by relying on a prior declaration by Intel’s expert, rather than retaining its own expert for a new declaration. Whether the agreement with Dr. Singh complies with ethical rules and whether it permits Dr. Singh to testify here are matters not before us. Moreover, they may present issues of contract law for the courts to decide, which may cause delay and prevent us from meeting our statutory deadlines, were we to institute a trial with the issues unresolved.” slip op. at 7

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

    “Given the facts surrounding Dr. Singh’s testimony, we do not consider him likely to be a willing participant in this proceeding. It is Petitioner’s burden to show unpatentability, and in support of its case Petitioner has brought forth the testimony of an expert that Petitioner likely cannot produce for cross-examination and would likely be excluded.9 Under the circumstances, we determine that the Petition does not warrant institution.” slip op. at 9

  Discretionary denial
  Patents in suitUS 7,523,373
• Opensky Industries, LLC v. VLSI Technology LLCInstituted
  PTAB · Dec 23, 2021 · IPR2021-01064 · APJ Jason W Melvin · IPR · Institution

  Instituted inter partes review of claims 1, 14, 17, 18, 21, 22, and 24 on all four asserted § 103 grounds because Petitioner showed a reasonable likelihood of prevailing.

  RulingsInstitution decision

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

    “An inter partes review may not be instituted unless “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). For the reasons set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim, and we institute inter partes review.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “In our view, Petitioner correctly emphasizes Fintiv’s language noting that the Board generally disfavors discretionary denial when litigation did not involve the petitioner, unless “the issues are the same as, or substantially similar to those already or about to be litigated, or other circumstances weigh against redoing the work of another tribunal.” Fintiv, IPR2020-00019, Paper 11, 13–14. Indeed, in multiple decisions Patent Owner cites for support, the Board determined that instituting review would require resolving issues that would also have been resolved by a district court. E.g., Fitbit, Inc. v. Philips N. Am. LLC, IPR2020-00828, Paper 13, 15–16 (considering the patent owner’s litigation with a non-petitioning party that would overlap with the inter partes review at issue); Mylan Labs. Ltd. v. Janssen Pharmaceutica N.V., IPR2020-00440, Paper 17, 19–23 (same, and additionally considering litigation involving the petitioner). Here, because the Intel litigation did not resolve issues presented by this proceeding, there is no chance of an inconsistent outcome. Indeed, “redoing the work of another tribunal” would only arise when that tribunal has resolved a dispute at issue before the Board. Patent Owner has not argued that resolving a dispute in this proceeding would conflict with an aspect of the Intel litigation. Thus, we do not agree with Patent Owner that, because “the [litigation] parties and the District Court invested enormous amounts of time and money litigating validity and infringement issues relating to the ’759 patent,” instituting review here would mean redoing the work of another tribunal. Prelim. Resp. 17.” slip op. at 8

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied

    “any relationship between those petitioners when weighing the General Plastic factors.” Valve Corp. v. Elec. Scripting Prods. Inc., IPR2019-00062, Paper 11, 9 (Apr. 2, 2019). In Valve, however, the petitioner and the prior petitioner were co-defendants accused of infringement based on the same product. Id. at 9–10. Patent Owner argues that the Board has found a relationship between petitioners when one uses substantive challenges from an earlier petition. Prelim. Resp. 21 (citing Ericsson Inc. v. Uniloc 2017 LLC, IPR2019-01550, Paper 8, 12). Ericsson imposed a relationship in light of the derivative nature of the petition at issue. Ericsson, IPR2019-01550, Paper 8, 12. That decision, however, has not been designated as precedential or informative by the Board, and other decisions have determined that factor 1 weights against discretionary denial for an independent petitioner. E.g., United Fire Protection Corp. v. Engineered Corrosion Solutions, LLC, IPR2018-00991, Paper 10 (determining that petitioner independence weighed against discretionary denial, but that substantive similarity with an unrelated prior petition meant the factor only moderately weighed against discretionary denial). We determine that factor 1 weighs somewhat against discretionary denial because Petitioner has not filed a prior petition, but did copy its substantive grounds from a prior petition. That the Board has not substantively addressed the merits of the prior petitions, in our view, weighs against discretionary denial, because that approach best balances the desires to improve patent quality and patent-system efficiency against the potential for abuse of the review process by repeated attacks on patents. See General Plastic, IPR2016-01357, Paper 19, 16–17. We view substantive consideration as an important factor in that balance, because to determine otherwise would asymmetrically insulate patent owners from potential abuse without addressing the desire to improve patent quality. Patent Owner suffers no abuse from having this tribunal consider the merits of these grounds for the first time.” slip op. at 10

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “The Federal Circuit held that “the Patent Office, when applying § 325(d), cannot deny institution of IPR based on abusive filing practices then grant a nearly identical reexamination request that is even more abusive.” Vivint, 14 F.4th at 1354. It found important that, when the Board denied Alarm.com’s IPR petition, the Board considered Alarm.com’s earlier petitions and reasoned that “allowing similar, serial challenges to the same patent, by the same petitioner, risks harassment of patent owners and frustration of Congress's intent in enacting the [AIA].” Id. at 1353 (quoting IPR2016-01091, Paper 11, 12) (alteration in original) (emphasis omitted). The facts here are not remotely similar. The Intel IPRs were not denied for abusive filing practices, but rather were denied to avoid overlap with a parallel district-court litigation. See IPR2020-00106, Paper 17, 4–13; IPR2020-00498, Paper 16, 4–10. This proceeding involves a different petitioner, which has not before petitioned for review of the ’759 patent. Those facts show that this Decision does not involve potentially abusive filing practices by the same challenger, as was at issue in Vivint. Patent Owner has not identified how instituting review would be inconsistent with a prior decision on this patent. As explained above, because the invalidity issues presented at trial were different from those considered in the prior application of Fintiv, we reach a different conclusion under that doctrine based on different facts here. Thus, Vivint is not germane to our decision.” slip op. at 14

  § 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 7,725,759
• 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
• Niantic, Inc. v. Nant Holdings IP, LLCInstitution denied
  PTAB · Dec 9, 2021 · IPR2021-01119 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim, chiefly because the cited art did not disclose tessellated tiles.

  RulingsInstitution decision

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

    “partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any challenged claim. We therefore do not institute inter partes review as to any of the challenged claims of the ’518 patent.” slip op. at 2

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

    “interest, the area tile map represented by a set of tile subareas that includes one or more tessellated tiles from a tessellated tile map” or “identify[ing] a tile subarea . . . wherein one or more tessellated tiles within the identified tile subarea are associated with one or more AR content objects.” As Patent Owner points out, there is no discussion in Altman of tessellated tiles. Prelim. Resp. 16. While it is true that Altman discusses map tiles, there is no disclosure in Altman of how those tiles are arranged, much less whether they are “tiles fitted together to cover an area without gaps.” Id. at 18–19. The portions of Altman relied on by Petitioner do not support its argument that Altman discloses tessellated tiles. Thus, for example, paragraph 37 of Altman, cited by Petitioner, mentions “map tiles” but provides no description of what they are or how they are arranged. Ex. 1003 ¶ 37. Similarly, paragraph 43 of Altman, also cited by Petitioner, describes the map tiles as “image files of maps with varying degrees of granularity,” but does not provide any description of how the tiles are arranged. Id. ¶ 43. Nor does Figure 2A of Altman or its description in the text demonstrate that Altman’s map is made up of tessellated tiles. Prelim. Resp. 17. Petitioner does not support its argument that because Altman’s Figure 2A shows “a large geographic area covering multiple towns with no gaps in map coverage” that “a person of ordinary skill would have understood that each layer or the area map as a whole . . . constitutes a tessellated tile map.” Pet. 24. As Patent Owner points out, individual map tiles can be used to display certain areas of a map without being sets of tessellated tiles. Prelim. Resp. 18. And even if individual tiles were used in Altman’s maps, nothing in Altman discloses or suggests that there are no gaps between the tiles. Id. at 18–19.” slip op. at 22

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

    “Altman with CaveLie.” Pet. 46 (citing Zyda Decl. ¶¶ 305–311). Petitioner explains that “[a person of ordinary skill] would have naturally looked to CaveLie for further implementation details on the tessellated tiles already disclosed in Altman.” Id. at 46–47 (emphasis added). Patent Owner responds that “there is no citation to anything in these references themselves to support this argument, which is apparently based on hindsight.” Prelim. Resp. 36. We agree with Patent Owner that Petitioner has failed to demonstrate a sufficient motivation to combine Altman with CaveLie, other than hindsight. As indicated in the argument from the Petition just quoted, Petitioner’s rationale for combining Altman and CaveLie proceeds on the assumption that Altman discloses tessellated tiles, for which CaveLie allegedly provides “further implementation details.” Pet. 46–47. However, in our analysis of Altman, we conclude that Petitioner has not demonstrated sufficiently that Altman teaches or suggests tessellated tiles. See supra, Section III.B.1.c.” slip op. at 25

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “the “tessellated tiles” limitations. Dr. Zyda’s testimony tracks the arguments in the Petition closely. See Zyda Decl. ¶¶ 160–162. As support for his conclusion (id. ¶ 160) that “Altman discloses that the map tiles can be tessellated tiles,” Dr. Zyda cites the same disclosures from Altman (Ex. 1003 ¶¶ 37, 43, and Fig. 2A) as does the Petition. See Pet. 23 (citing Ex. 1003 ¶¶ 37, 43). As just discussed, those disclosures do not describe how the tiles in Altman are arranged and do not support the contention that they are tessellated tiles. Dr. Zyda’s conclusion that “[a] person of ordinary skill in the art would have understood that these map tiles are tessellated tiles” cites paragraph 43 of Altman for support. See Zyda Decl. ¶ 161. For the reasons given supra, that paragraph in Altman does not support this conclusion. Moreover, Dr. Zyda’s conclusion that “[a] person of ordinary skill in the art would have understood that each layer or [sic] the area tile map [in Altman] as a whole (considering all layers collectively) constitutes a tessellated tile map” (Zyda Decl. ¶ 161) cites no supporting evidence. Our Trial Practice Guide cautions that “[e]xpert testimony . . . cannot take the place of a disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 36 (November 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated. We are not persuaded by Dr. Zyda’s speculations on what persons of ordinary skill would have known (including those discussed supra) because either they are not properly supported by the cited evidence, or they do not cite any evidentiary support at all.” slip op. at 23

  § 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,664,518
• Niantic, Inc. v. Nant Holdings IP, LLCInstitution denied
  PTAB · Dec 6, 2021 · IPR2021-01133 · APJ Stephen E Belisle · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 5–11, 15, 18, 22–29, 34–36, 38, or 43 obvious over any asserted combination.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2020). We may not institute an inter partes review “unless . . . 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). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of challenged claims 1, 5–11, 15, 18, 22–29, 34–36, 38, and 43 of the ’051 patent. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, constrained by the record before us, we deny institution of an inter partes review of the ’051 patent.” slip op. at 2

  • BurdenDenied

    “While the ’051 Patent does not expressly define [“virtual element attribute”], it describes “[e]lement attributes, AR object attributes, or other attributes” as “includ[ing] myriad types of attributes” such as “location information (e.g., relative location to elements 390 of a scene, triangulation, GPS coordinates, etc.)[.]” (’051, 16:4-19.) As explained above, Yu discloses that the AR platform system obtains digital data including ambient-light information in a three-step process at steps 901-903. (Yu, ¶¶0060-0062.) A POSA would have understood that this ambient light information is a “virtual element attribute” as described in the ’051 Patent, because the indoor/outdoor data, position data for the sun, and local weather data all relate to the location of the mobile device on which the virtual element will be placed. (Zyda, ¶¶140-141.) Pet. 29–30. Petitioner’s declarant makes these same statements. See Ex. 1002 ¶¶ 140–141.” slip op. at 13

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

    “proceeding. On the one hand, Petitioner acknowledges “[t]he parties dispute the construction of several claim terms,” and submits that it identifies such disputes in the Petition “so that the Board can be aware of them.” Pet. 10– 11. Petitioner also “respectfully submits that [such disputes] need not be expressly resolved by the Board for purposes of evaluating Petitioner’s proposed Grounds” because “the prior art would satisfy the constructions proposed by either party.” Pet. 11. But, notwithstanding 37 C.F.R. § 42.104(b)(3), Petitioner does not provide and support an express construction in the Petition for any limitation at issue in this proceeding. On the other hand, Patent Owner submits the limitation “alter[ed] presence” should be construed to mean “the degree of at least a relevant AR object’s visual presentation based on a spectrum.” Prelim. Resp. 9. Patent Owner otherwise submits, “[f]or all other terms, the plain and ordinary meaning of those terms is sufficient for the Board to analyze Petitioner’s grounds at this preliminary stage.” Id. at 10. Patent Owner also argues the Petition fails to provide required claim constructions or support therefor in violation of 37 C.F.R. § 42.104(b)(3). Id. at 13–16 (arguing Petitioner “leaves the Board and Patent Owner to guess at how the Petition has construed the claims in and what support allegedly exists for such constructions”). Regardless, as discussed below, we do not find that the express construction of any term is necessary for this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 10

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

    “with particularity, how or why a real-world attribute, namely, Yu’s ambient light information, allegedly teaches a virtual element attribute as recited in claim 1. Prelim. Resp. 21 (“[T]he Petition points only to digital data concerning real-world ‘ambient-light information’ as corresponding to the claimed ‘virtual element attribute.’”; “Yu gives no hint that virtual element attributes would play any role in an image’s rendering.”; “[Petitioner] assumes that real-world ambient light corresponds to the virtual element attribute used to ‘determine whether to alter presence of a relevant AR object.’”). Patent Owner argues “at no point does the Petition construe the term ‘virtual element attribute’ or explain how the real-world attributes of ambient light could be a ‘virtual element attribute,’” despite “the ’051 Patent specification repeatedly distinguish[ing] real-world elements and virtual elements as separate factors.” Id. at 21–22; see id. at 22 (“[The skilled artisan] would conclude that virtual elements are different from real-world elements and that virtual element attributes are the information about the virtual elements, not real-world elements.”). Patent Owner also argues Petitioner bases its premise that real-world “location” of a mobile device may be a “virtual element attribute” on a “misleading[] combin[ation]” of two partial statements in the ’051 patent. Prelim. Resp. 22–23 (referring to Petitioner’s citation to Ex. 1001, 16:4–19). Patent Owner argues, “[i]n context, these two sentences do not define ‘virtual element attribute’ to mean location information as the Petition argues,” and “would [not] lead [the skilled artisan] to conclude that real-world ambient light is a virtual element attribute merely because it ‘relate[s] to the location of the mobile device.’” Id. at 23. As noted by Patent Owner (Prelim Resp. 23), contrary to Petitioner’s above argument, the ’051 patent explicitly discloses that “the location information can pertain to or reflect the physical location of real-world elements.” Ex. 1001, 16:15–16. Patent Owner concludes, and we agree for the reasons discussed above, Petitioner “simply has not shown that it is proper to rely on the real-world quality of ambient light to fulfill the requirement for a ‘virtual element attribute’ in claims 1 and 43 of the ’051 Patent.” Prelim. Resp. 23. Indeed, neither Petitioner nor its declarant expressly construes, with citation to supporting evidence, the limitation “virtual element attribute” to include real-world attributes, or provides evidentiary support and explanation of sufficient particularity for how or why obtaining a real-world attribute like ambient light information teaches obtaining a virtual element attribute. See 35 U.S.C. § 312(a)(3); 37 C.F.R § 42.104(b)(4). For the foregoing reasons, and constrained by the Petition, we are not persuaded that the cited evidence adequately supports Petitioner’s contention that Yu discloses the “virtual element attribute” limitation, as recited in independent claims 1 and 43.” slip op. at 14

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,403,051
• 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
• Forescout Technologies, Inc. v. Fortinet, Inc.Institution denied
  PTAB · Nov 26, 2021 · IPR2021-00915 · APJ Kimberly Mcgraw · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 5–7, 9, 10, and 13–15 were obvious over either asserted ground.

  RulingsInstitution decision

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

    “partes review of claims 1, 2, 5–7, 9, 10, 13–15 of U.S. Patent No. 9,948,662 B2 (Ex. 1001, “the ’662 patent”). Paper 2 (“Pet.”). Patent Owner, Fortinet, Inc., filed a Preliminary Response. Paper 10 (“Prelim. Resp.”). Applying the standard set forth in 35 U.S.C. § 314(a), which authorizes institution of an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition,” we do not institute an inter partes review of any of the challenged claims of the ’662 patent on the grounds asserted in the Petition.” slip op. at 2

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

    “We agree with Patent Owner. Claim 1 explicitly requires that the step of “selectively disabling . . . application of a subset of security features” be performed “by the network security device.” Petitioner, however, fails to sufficiently show that Ramsey’s firewall, the asserted “network security required by claim element 1[c]. Although Petitioner does cite to steps that are performed by Ramsey’s firewall, Petitioner does not sufficiently show that these steps perform the “selectively disabling” required by claim element 1[c]. For example, Petitioner asserts that Ramsey’s step 510 involves comparing characteristics of packet headers for those packets that may be considered trusted by firewall 225, that if the packet is trusted that it can be permitted to immediately pass through firewall 225, and that the packet is transmitted at step 5205. Pet. 19–20. Petitioner, however, does not sufficiently explain how any of these steps disable any security features. Rather, Petitioner asserts that “[s]topping IDS processing disables certain security features by ending the IDS without performing those steps for a particular transmission.” Pet. 20. Significantly, however, the steps that Petitioner identifies as stopping IDS processing all occur in the IDS, not in Ramsey’s firewall, the asserted network security device. Notably, Petitioner asserts that, as shown in the right side of Figure 5, “the IDS evaluates the firewall’s assessment in step 552 and immediately goes to ‘END’ if the packet is trusted (highlighted in blue . . . ).” Id. (emphasis added). Petitioner goes on to state that Ramsey’s “IDS 255 can determine” whether Ramsey’s firewall 225 has deemed a particular packet to be trusted and that if IDS 225 detects any of these firewall verdicts, then “then processing by the IDS stops.” Id. (citing Ex. 1003, 12:30–42; Ex 1002 ¶¶ 90–92). Thus, 5 Petitioner also relies on the same steps as satisfying the “determining . . . whether a network parameter . . . is associated with a set of trusted networks” required by claim element 1[b]. See Pet. 17–20.” slip op. at 12

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

    “We determine that no terms require express construction in order to determine whether Petitioner has met its burden to demonstrate a reasonable likelihood that any of the challenged claims are unpatentable. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our review of the ’662 patent, the types of problems and solutions described in the ’662 patent and cited prior art, we adopt and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention, except that we delete the qualifier “at least” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound, i.e., encompassing a computer scientist with 25 years of experience and beyond, and thus does not meaningfully indicate the level of ordinary skill in the art.” slip op. at 6

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,948,662
• 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.