- Everstar Merchandise Co., Ltd. v. Willis Electric Co., Ltd.Some claims unpatentablePTAB · Dec 18, 2025 · PGR2019-00056 · APJ Stacey G White · PGR · Remand
Claims 2–7, 9–19, 21–25, 27, 30, 31, and 33 are unpatentable as obvious; Petitioner did not prove claims 8, 20, 26, 28, 29, and 32 unpatentable.
RulingsRemand decision- RemandMixed
“The Federal Circuit found that “[t]he factual record and Willis’s concession on appeal conclusively establish that the cost of copper was a known problem in the art, Debladis ’120 (and Kumada) helped address that issue, and Willis has not disputed that combining the teachings of Kumada and Debladis ’120 was within the skill of an ordinary artisan,” concluding “[n]othing more is required to establish a motivation to combine.” Everstar II, 2025 WL 1501940, 4. The Federal Circuit observed that “Willis has conceded that the combination of Kumada and Debladis ’120 disclose all the limitations in claim 1,” and accordingly, “reverse[d] the Board’s patentability determination as to that claim and vacate[d] the Board’s judgment as to the remaining claims of the ’037 patent,” remanding to us for further proceedings. Id. at 4–5. With those instructions in mind, we review the Petitioner’s allegations regarding claims 2–33.” slip op. at 6
- Skill levelSkill level board ownDecided for patent owner
“F. Person of Ordinary Skill in the Art In the First Final Written Decision, we determined that a person of ordinary skill in the art “would have (1) at least two years of experience in the design of decorative lighting, or (2) at least a bachelor’s degree in mechanical engineering, electrical engineering, or an equivalent field, and a basic familiarity with circuits used in decorative lighting.” Paper 40, 12. We see no reason to depart from that earlier determination.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties agree that we do not need to construe any claim terms. Pet. 8–9; PO Resp. 16–17. We likewise agree. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner did not dispute that the combined teachings of Kumada and Debladis ’120 disclose each limitation of claim 1. Patent Owner, however, did dispute Petitioner’s proposed reasons for combining Kumada and Debladis ’120, and argues that Debladis ’120 is not analogous art. PO Resp. 36–61. The Federal Circuit stated that substantial evidence only supports the conclusion that a POSA would have been motivated to combine the teachings of Kumada and Debladis ’120. The factual record and Willis’s concession on appeal conclusively establish that the cost of copper was a known problem in the art, Debladis ’120 (and Kumada) helped address that issue, and Willis has not disputed that combining the teachings of Kumada and Debladis ’120 was within the skill of an ordinary artisan. Nothing more is required to establish a motivation to combine. Given that Willis has conceded that the combination of Kumada and Debladis ’120 disclose all the limitations in claim 1, we reverse the Board’s patentability determination as to that claim and vacate the Board’s judgment as to the remaining claims of the ’037 patent. Everstar II, 2025 WL 1501940, 4 (internal citations omitted). The Federal Circuit further noted Patent Owner’s secondary considerations arguments as to claim 1 and stated [t]he cited evidence consists only of a temporal connection between the introduction of Willis’s invention and the UL 588 standards, and deposition testimony of a single witness who seemingly disclaimed any connection between the two. This is not sufficient to rescue a claim as to secondary considerations. Id. at 4, n. 5 (internal citations omitted). Accordingly, the Federal Circuit ruled that claim 1 would have been obvious over Kumada and Debladis ’120. 6. Analysis of Independent Claim 33” slip op. at 17
Patent outcomesUS 10,222,037 mixedClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,222,037 - Google LLC v. Security First Innovations, LLCAll claims unpatentablePTAB · May 16, 2025 · IPR2024-00215 · APJ Jason M Repko · IPR · Final written decision
Claims 1–10 are unpatentable as obvious over Foster and Hayhurst; the Board did not reach the anticipation and obviousness grounds based on Orsini.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use.” Pet. 6 (citing Ex. 1003 ¶¶ 37–38). Petitioner also asserts that a “higher level of education may substitute for less experience.” Id. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. Patent Owner submitted the Declaration of Dr. Rubin in support of its Response, and in that Declaration, Dr. Rubin accepted Petitioner’s definition. Ex. 2033 ¶¶ 20–21. For the reasons given, we apply the same level of ordinary skill in the art that we did in the Institution Decision. Inst. Dec. 4.” slip op. at 6
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“See Section II.C.3.a.ii supra. Although Dr. Rubin calls Hayhurst’s security benefits “ancillary” (Ex. 2033 ¶¶ 108–109, quoted in PO Resp. 40), this does not align with Hayhurst (see Ex. 1007 ¶¶ 2, 7, 8, 21). For example, Hayhurst describes the security measures in the Technical Field section (id. ¶ 2) and the Summary of the Invention section (id. ¶¶ 7, 8). Hayhurst also discusses piracy deterrence in both the Summary of the Invention section (id. ¶ 8) and the invention’s detailed description (id. ¶ 21). Because Dr. Rubin does not give sufficient weight to Hayhurst’s discussion of piracy deterrence and security, we do not credit Dr. Rubin’s testimony on this issue. See Ex. 2033 ¶¶ 108–109. Thus, we agree with Petitioner that Hayhurst is reasonably pertinent to the network-security problem that the inventors were trying to solve. See Reply 5–6.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Neither party explicitly proposed constructions during trial, and we do not see the need for construing any terms in this Decision.” slip op. at 8
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“3. Claim 1 a. Analogous Art “To be considered within the prior art for purposes of the obviousness analysis, a reference must be analogous.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015) (citing Wang Lab. v. Toshiba Corp., 993 F.2d 858, 864 (Fed. Cir. 1993)). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the pertinent to the particular problem with which the inventor is involved.” Sanofi-Aventis Deutschland Gmbh v. Mylan Pharms. Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations omitted)).” slip op. at 9
Patent outcomesUS 10,452,854 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,452,854 - PTAB · Oct 23, 2023 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted review of claims 7–11, 13, and 19–21 on all asserted grounds, finding a reasonable likelihood of prevailing for claims 11 and 13.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “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 established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, institute inter partes review as to all of the challenged claims of the ’202 patent and all of the asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems Petitioner’s proposal is a better reflection of the level of skill in the prior art, and we therefore adopt it for this decision. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- BurdenMixed
“Figure 6 of Rauhala has been annotated by Patent Owner to show that the parallel connection (outlined in red) including resistors R1, R2. R3 and switches ka, kb is outside the signal path (highlighted in yellow) through differential amplifier 61. Prelim. Resp. 38. Petitioner identifies R1, R2, R3 and switches ka and kb as the claimed variable impedance. See, e.g., Pet. 39–41. The Petition (and the supporting Baker Declaration) do not explain adequately how, under this interpretation by Petitioner and its expert, Rauhala meets the adjusting an impedance “in the signal path” limitation. See Prelim. Resp. 39–41. For the reasons given, therefore, even if we were to disagree with Patent Owner’s construction of “impedance,” we agree with Patent Owner that Petitioner fails to demonstrate sufficiently that Rauhala meets the limitation in claims 7 and 19 requiring “dynamically adjusting one or more of an impedance . . . in the [receiver] signal path.” For the reasons given, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claims 11 and 13 as anticipated by Rauhala. We further determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge to claims 7 and 19 as anticipated by Rauhala.” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We disagree. Noting in the language of the claims requires that these method steps be performed by separate components, or that these method steps “provide two different channel indications at once” (Prelim. Resp. 38), only that they be performed as stated in the claim. In that respect, this case is distinguished from In re Robertson, where the Federal Circuit determined that the “third fastening means” required by the claims was not inherently disclosed by the prior art. Robertson, 169 F.3d at 745 (“The [prior art] patent does not expressly include a third fastening means for disposal of the diaper, as claim 76 requires.”). In further contrast to this case, Robertson addressed mechanical elements of a product (fasteners for disposable diaper), not steps in a process. More pertinent to our facts is the Federal Circuit’s decision in Microsoft Corporation v. Uniloc, 2017 LLC, No. 2021- 2039, 2022 WL 11531235 (Fed. Cir. Oct. 20, 2022), that addresses steps in a method claim. Reversing the Board’s determination that a petitioner had 6 See Ex. 1001, 14:5–6 (claim 7), 14:41–42 (claim 11), 15:18–19 (claim 13), and 17:28–29 (claim 19). Circuit concluded that the Board had misconstrued the claims to require separate acts: We agree with [petitioner] that the Board misconstrued the claims to require that the comparing and determining step are performed by two separate acts in a certain order. Nothing in the intrinsic record requires such a narrow construction, and neither party presented this construction to the Board. Without any such evidence, we decline to impose such a narrow claim construction. Microsoft Corp., 2022 WL 11531235, at *3 (citation and footnote omitted). We find that at this stage, Petitioner has made a sufficient showing that this limitation is met by Rauhala. Pet. 31–33; Baker Decl. ¶¶ 111–114.” slip op. at 22
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,524,202 - Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,892,637 - Western Digital Corporation / Western Digital Technologies, Inc. et al. v. Martin KusterSome claims unpatentablePTAB · Feb 10, 2022 · IPR2020-01391 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 11, 12, and 14–19 are unpatentable: claims 11 and 12 are anticipated by Hsiao, and claims 11 and 14–19 are obvious over He and Cheng or He, Cheng, and Hiller.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposed level of ordinary skill does not differ materially from that presented by Mr. Welch. Both require a bachelor’s degree in many of the same fields and roughly one to two years of experience with USB protocols or USB product development. The arguments presented by Petitioner and Patent Owner do not indicate that the outcome of this case would change depending on the level of ordinary skill in the art. We, therefore, 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
- BurdenDecided for patent owner
“Proof of conception must be by “corroborating evidence which shows that the inventor disclosed to others his ‘completed thought expressed in such clear terms as to enable those skilled in the art’ to make the invention.” Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985) (citing Field v. Knowles, 183 F.2d 593, 601 (CCPA 1950)); see also Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996) (corroboration requirement “arose out of a concern that inventors testifying in patent infringement cases would be tempted to remember facts favorable to their case by the lure of protecting their patent or defeating another’s patent”). Similarly, an inventor’s testimony alone is insufficient to establish an earlier reduction to practice. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169–71 (Fed. Cir. 2006). Instead, a party seeking to prove an actual reduction to practice must proffer evidence corroborating that testimony. Id. at 1170. The sufficiency of corroboration is determined according to a “rule of reason.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993). This, however, does not dispense with the requirement that some independent evidence provide corroboration. Coleman, 754 F.2d at 360. The requirement of “independent” corroboration requires evidence other than the inventor’s testimony. In re NTP, Inc., 654 F.3d 1279, 1291–92 (Fed. Cir. 2011). 3. Discussion We find that Patent Owner has not met its burden of establishing that Mr. Kuster conceived and reduced to practice his invention prior to the filing dates of Hsiao or He. By itself, Mr. Kuster’s testimony is insufficient to establish that he reduced his invention to practice prior to the November 23, 2010, filing date or Hsiao or the June 2, 2010, filing date of He. “Throughout the history of the determination of patent rights, oral testimony by an alleged inventor asserting priority over a patentee’s rights is regarded with skepticism, and as a result, such inventor testimony must be supported by some type of corroborating evidence.” Woodland Tr. v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998) (quoting Price, 988 F.2d at 1194). Patent Owner has failed to provide sufficient independent evidence corroborating Mr. Kuster’s testimony.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We do not agree with this argument. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Moreover, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” so the fact that it would take some creativity to carry out the combination does not defeat a finding of obviousness. KSR, 550 U.S. at 421; see also ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016) (“The rationale of KSR does not support [the] theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B.”). We find there is support for making this combination of He and Cheng in the testimony of Dr. Baker that addition of a controller is “conventional” in USB flash drives. Baker Decl. ¶ 167. We find that for the reasons given by Dr. Baker, a person of ordinary skill would have added a controller to He. We determine that the combination of He and Cheng teaches each limitation of claim 11. We address Patent Owner’s argument that there are objective indicia of obviousness, infra. We conclude that Petitioner has demonstrated that claim 11 would have been obvious over He and Cheng.” slip op. at 37
- Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for patent owner
“attorney argument, not evidence.” Pet. Reply 26. We agree. Patent Owner does not back up its argument with testimony or other credible evidence. To demonstrate long-felt need, a patentee must point to an “articulated identified problem and evidence of efforts to solve that problem” which were, before the invention, unsuccessful. Tex. Instruments v. Int’l Trade Comm’n, 988 F.2d 1165, 1178 (Fed. Cir. 1993). All Patent Owner proves, if anything, is that after the USB 3.0 specification issued, a number of companies rushed in to provide contacts that met the new standard. Patent Owner does not demonstrate that they failed where Mr. Kuster succeeded. In fact, there is no evidence that Mr. Kuster ever commercialized his invention.8 8 Victorinox never paid for the work Mr. Kuster did on the USB 3.0 memory device, and to Mr. Kuster’s knowledge, never marketed the product. Kuster Dep. 22:21–24:13. Patent Owner contends “Mr. Kuster’s invention filled the existing need for a durable yet slim USB flash drive compatible with USB 3.0 that was easy to manufacture.” PO Resp. 77. But instead of presenting independent evidence of failure of the others to solve known technical or manufacturing problems, Patent Owner relies on generalized statements concerning the need for USB 3.0 connectors and solutions by others that Patent Owner contends have not been successful. PO Resp. 74–77. We are not persuaded by Patent Owner’s argument that Mr. Kuster’s alleged invention filled a long-felt need where others failed.” slip op. at 29
Patent outcomesUS 8,693,206 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,693,206 - Samsung Electronics Co., Ltd v. Uusi, LLC D/B/A NartronSome claims unpatentablePTAB · Sep 17, 2020 · IPR2016-00908 · APJ Kamran Jivani · IPR · Remand
Claims 40, 41, 43, 45, 47, 48, 61–67, 69, 83–86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 are unpatentable as obvious; claims 37–39 were not shown unpatentable.
RulingsRemand decision- RemandOther
“Appeals for the Federal Circuit, which vacated our Decision and remanded the matter to us. Samsung Elecs. Co. v. UUSI, LLC, 775 F. App’x 692 (Fed. Cir. 2019). As to the earlier instituted claims, the Court instructed that we should consider “whether Samsung has shown that there would have been a reasonable expectation of success in combining the teaching of Gerpheide with the teachings of Ingraham [I]/Caldwell to arrive at the claimed invention.” Id. at 697. The Court further instructed us to “consider the patentability of claims 37, 38, and 39” (id.) because, on April 24, 2018, the Supreme Court of the United States held that a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018). Pursuant to the Federal Circuit’s instruction in this case and in light of SAS Inst., Inc., we modified our Decision on Institution to institute review of claims 37–39 of the ’183 patent as obvious over Ingraham I, Caldwell, and Gerpheide. Paper 40. We further held a teleconference on August 15, 2019, with respective counsel for the parties, to hear their proposals on how to proceed with this trial. Paper 41, 2. Having considered the parties’ proposals, we authorized the parties to submit concurrent briefs and subsequent responses addressing the following issues (id. at 6):” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that a person having ordinary skill in the art at the time of the invention would have had a minimum of: (1) a bachelor’s degree in electrical engineering, or equivalent thereof; and (2) “two to three years of experience in the relevant field, which includes touch systems technology.” Pet. 3 (citing Ex. 1002 ¶ 19). Patent Owner’s witness, Dr. Cairns, opines that a person of ordinary skill “in the art of capacitive touch sensors would have had at least a bachelor’s degree in physics or electrical engineering or equivalent industry experience in the field.” Ex. 2002 ¶ 14. In our Final Written Decision, we noted that the levels of ordinary skill proposed by the parties do not differ significantly, but adopted Petitioner’s proposed definition as more representative, indicating that our analysis would be the same under either definition. Paper 35, 9–10. On remand, neither party disputes the definition adopted in the Final Written Decision. Furthermore, no argument presented by the parties on remand would be affected by adopting one of the proposed definitions over the other. We maintain here the definition adopted in the Final Written Decision.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“transition term[s]” should be considered in determining the meaning of a claim term, but asserts without further support that the presence of a semicolon after “supply voltage” and the use of the transition term “wherein” do not compel the preliminary construction. Id. As we addressed in denying Petitioner’s Request for Rehearing, claim 37 employs the open-ended transition term “comprising” followed by a colon to indicate that a list elements follows, and employs semicolons to separate the elements of that list. Paper 17, 5. The first element of the list, element 37a, describes an oscillator and includes the supply voltage limitation preceded by a comma and the transition term “wherein.” Id. Element 37a then ends with a semicolon and the claim proceeds to element 37b, which recites a microcontroller. Id. Petitioner thus nominally acknowledges consideration of punctuation, but advances a construction that asks us to disregard punctuation affirmatively recited in the claim. To do so would be “inconsistent with the punctuation [patentee] chose for this claim.” In re Pelz, 379 F. App’x 975, 978 (Fed. Cir. 2010). Likewise, as to Petitioner’s assertion that we read an additional limitation into the claim (Pet. Br. 10), we observe that, if the claim is limited to a particular exemplary embodiment, such a limitation results from the claim being drafted to cover only that embodiment. While we confirmed in the Decision on Institution that the use of the term supply voltage is consistent with its use in the Specification (Dec. on Inst. 9), the limitation of the claim to the oscillator is based on the language of the claim, not on definition or disavowal. Therefore, even accepting, for the sake of argument, that there is no disavowal or definition in the Specification of “supply voltage,” the term refers in independent claim 37 to supply voltage of the oscillator.” slip op. at 18
- Expert testimonyOther
“We disagree with Patent Owner’s arguments because they are not responsive to the combination of teachings at issue in the references before us. Patent Owner focuses on particular features of Gerpheide that it alleges either “would not work . . . in the proposed Caldwell-Ingraham system” or “can only work” in the presence of a component Patent Owner argues that “neither Ingraham nor Caldwell uses.” PO Br. 1–2, 12–13. These arguments are based on a mistaken premise that one or more components or physical configurations of Gerpheide must be incorporated into the combination of Ingraham I and Caldwell in order to show a reasonable likelihood of success. Under the Federal Circuit’s construction of the “selectively providing” limitation, the combination of Ingraham I, Caldwell, and Gerpheide need not incorporate the specific features of Gerpheide identified by Patent Owner. Petitioner asserts, supported by evidence from Dr. Subramanian, that the Ingraham I-Caldwell combination would have been modified based on Gerpheide “to provide features that adjust[] the oscillator signal frequency provided to the input portions 13 to negate the effect of interference on the input portions 13 and touch sensing circuits.” Pet. 26–27. This modification would not require any of the particular components or configurations of Gerpheide highlighted by Patent Owner. Thus, even if one or more of Patent Owner’s arguments as to the infeasibility of incorporating particular aspects of Gerpheide were correct, Patent Owner’s arguments do not address Gerpheide’s particular teaching of adjusting oscillator signal frequency to negate the effect of interference, and therefore, Patent Owner’s arguments are not responsive to the proposed combination and evidence relied upon by Petitioner. In view of the above, we find that Petitioner has shown that the skilled artisan would have combined Gerpheide with Ingraham/Caldwell as proposed with a reasonable expectation of success in achieving the claimed subject matter.” slip op. at 26
Patent outcomesUS 5,796,183 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 5,796,183 - Tomtom, Inc. v. Blackbird Tech, LLC D/B/A Blackbird Technologies, LLCSome claims unpatentablePTAB · Mar 11, 2019 · IPR2017-02023 · APJ Debra K Stephens · IPR · Final written decision
Claims 1–5 are unpatentable over Jimenez, Levi, and ordinary-skill knowledge; claims 6–8 were not shown unpatentable because Jimenez did not teach the claimed transmitter.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We find the ’212 Patent is directed to data for a particular user (see, e.g., ’212 Patent, Abstract). This conclusion is supported by the Specification. Indeed, all discussion in the ’212 patent is directed to a pedometer for use by and relying on data obtained from an individual user. Thus, the Specification suggests that the term “calibration” should be construed as a process that correlates a user’s stride rate and stride length. The Oral hearing confirms this conclusion. In the Oral Hearing, Petitioner’s counsel, Mr. Doshi, responded to a request to identify the calibration and the plurality of calibrations as follows: JUDGE STEPHENS: So what are you pointing at in the 212 patent as being [a] calibration and the plurality of calibrations? MR. DOSHI: That’s in column 5. So at column 5 it says that after a proper warm up the user completes a sample run or walk on the track at normal pace, et cetera, et cetera. So it's saying that here’s S1 and following completion of the first run, so here it’s saying you’re doing different walks at different speeds . . .where you're having the user walk at different walking speeds and measuring their step size as you do that (Trans. 21:1–10; see also Tr. 19:4–7) JUDGE ZADO: Okay. And then so taking that further then, I understand your argument to be that in the 212 patent the runner for the first sample S1 will run at one pace and that’s, according to Petitioner, that's one calibration and then the runner will run at a second pace for the S2 sample and that’s the second calibration, and then the runner will run at a third pace and then that's the S3 sample and then that's a third calibration? Is that Petitioner's argument? MR. DOSHI: Yes 13 (Tr. 22:4–11). Therefore, based on Petitioner’s statements at the Oral Hearing, the term “calibration” should be construed as the process of taking a sample that correlates step rate and step length for an individual.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute the educational level or experiential aspects of Petitioner’s definition in its Response (see generally PO Resp.), 18 despite Patent Owner’s declarant, Dr. Caloyannides, opining that the level of ordinary skill would not be so limited as proposed by Mr. Blackadar: I note that although the qualifications Mr. Blackadar describes would qualify one as a PHOSITA in this case, I do not believe the definition of a PHOSITA here would be so limited. The technology of the ‘212 Patent implicates other fields, such as Sports Medicine, Exercise Science, and Physiology. I believe that a bachelor’s degree in one of these fields, or a similar field, with at least two years of practical experience working with pedometers and/or health or fitness trackers or sensors, or an advanced degree in one of these areas, could qualify one as a PHOSITA in this case (Ex. 2001 ¶ 26). Petitioner argues that Patent Owner’s definition of a person of ordinary skill in the art would mean a “[person having ordinary skill in the art] under Patent Owner’s definition would be more well-informed than Patent Owner’s own expert” (Pet. Reply. 2); however, we do not read Patent Owner’s assertion or Dr. Caloyannides’ testimony as suggested by Petitioner. Rather, we read Dr. Caloyannides’ testimony as expanding the fields of expertise. We do not observe a meaningful difference between the parties’ assessments of a person of ordinary skill in the art. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima, 261 F.3d at 1355). Our analysis in this Decision is supported by either assessment. Based on our review of the ’212 Patent, the types of problems and solutions described in the ’212 Patent and cited prior art, and the testimony of Mr. Blackadar and Dr. Caloyannides, we adopt and” slip op. at 18
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved (In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). Here, Petitioner has persuaded us that Levi is from the same field of endeavor as the ’212 Patent –– pedometers that count the number of steps taken to calculate distance traveled (see Pet. 20). Specifically, although Levi adds a navigation feature, Levi is directed to a pedometer that, in pertinent part, adjusts step size according to step frequency in order to estimate distance traveled by a user (Levi, 6:6–43). Levi states “[t]he present invention for a ground speed/distance sensor is an improvement over a common hiker’s pedometer” and “[t]he present invention analyzes the frequency of a user’s footsteps to aid in the detection of future footsteps, and further to aid in determining the size of footsteps taken by the user” (Levi, Abstract, 2:57–60, 2:65–67). Similarly, the ’212 Patent is directed to a pedometer and specifically, a pedometer that calculates actual stride lengths of a user based on relative stride rates (’212 Patent, Abstract). Thus, both the ’212 Patent and Levi are from the same field of endeavor –– pedometers or devices that include or rely on pedometers. Furthermore, both Levi and the ’212 Patent are pertinent to the particular problem with which the inventor is involved –– accurate distance identification. 44 Patent Owner additionally argues “[t]he different problems addressed” slip op. at 44
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“A holding of obviousness can be based on a showing that “there was an apparent reason to combine the known elements in the fashion claimed” (KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Such a showing requires some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. . . . [H]owever, the 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. (id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)) (internal quotation marks omitted)). As admitted by Patent Owner, an ordinarily skilled artisan would have known a user’s stride length could vary with stride rate at the time of invention (see PO Resp. 52). As noted by Petitioner, Levi discloses using a dynamic step size algorithm that “improve[s] the accuracy of distance 49 measurements of a human footstep sensor” (Pet. Reply 25 (citing Levi, 6:17–21)). We further credit Mr. Blackadar’s testimony that an ordinarily skilled artisan would have been motivated to improve Jimenez using Levi’s dynamic step size algorithm, to improve the calculated distances (Ex. 1005 ¶¶ 92). Indeed, we find that an ordinarily skilled artisan would have been motivated to combine the teachings of Jimenez and Levi to “monitor [ ] the distance traveled more accurately than prior pedometers that calculated distance based on average stride length” (Pet. 31 (citing Ex. 1005 ¶ 90), 32 (citing Ex. 1005 ¶ 92)). In particular, we find that, given it was known a user’s stride length could vary with stride rate, as admitted by Patent Owner (PO Resp. 52), an ordinarily skilled artisan would have been motivated to implement a data processor that accounted for this relationship, such as that described in Levi (Pet. 32–33 (citing Ex. 1005 ¶¶ 93–94)).” slip op. at 49
Patent outcomesUS 6,434,212 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,434,212 - Flir Systems, Inc. / Flir Maritime US, Inc. (F/K/A Raymarine, Inc.) v. Garmin Switzerland GmbHSome claims unpatentablePTAB · Jul 10, 2018 · IPR2017-00946 · APJ Scott B Howard · IPR · Final written decision
Claims 28, 29, and 45 were held unpatentable; claims 1–7, 12–23, 25–27, and 41–44 were not shown unpatentable. Substitute claims 73 and 74 were allowed.
RulingsFinal written decision- BurdenFwd mixedMixed
“C. Legal Principles 1. Anticipation A patent claim is unpatentable under 35 U.S.C. § 102 if “the four corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (citing Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003)). Moreover, the reference must also “disclose[] within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). However, “the reference need not satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). We analyze the ground based on anticipation in accordance with the above-stated principles.” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“and agree with Patent Owner that the terms “re-routing the course” and “re-route the course” mean “to change at least a portion of the route of the course relative to a previous routing.” That is, there must be a first routing of a course and that routing must be changed by performance of the marine route calculation algorithm to avoid preselected conditions by identifying one or more non-user selected waypoints. The construction is consistent with the words of the claims. The claims do not merely require routing a course, but “re-routing the course.” The ordinary meaning of the prefix “re” is that something is being done again. See Tr. 18 (Petitioner agreeing that “if you put R-E in front of a word, normally that means it’s occurring a second time”). Although the claims do not explicitly recite both an original “routing” of a course that is changed by “re-routing the course,” the original “routing” is implicitly required by the use of the prefix “re.” See Tr. 34 (Patent Owner agreeing that although the claims do not explicitly require an initial routing, the initial routing is implicit in the use of “re-routing”), 44–45 (Petitioner agreeing that “re-routing” ordinarily implies an initial routing).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“proposed construction of “course” as “the path of intended travel of a craft with respect to the earth.” Instead, we need only focus on the words recited in the claim. Claim 1, which is representative, recites that performing the marine route calculation algorithm to “route a course between a first location and the potential waypoint avoiding the preselected conditions,” where such performance includes “identifying one or more non-user selected waypoints.” Ex. 1001, claim 1. The other independent claims recite similar limitations. See Ex. 1001, claims 12, 20, 27. Based on the limitation recited in the claim, the broadest reasonable interpretation of routing a “course” encompasses the identification of one or more non-user selected waypoints between a first location and a potential waypoint. No further construction is necessary for purposes of this Decision.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are persuaded by Petitioner’s argument that the person of ordinary skill in the art need not have first-hand experience with marine navigation devices and systems. Pet. Reply 25–26. The ’703 patent explicitly defines “marine navigation” broadly, noting that “the use of the word ‘marine’ in the embodiments of the present invention (including the claims) could be replaced with the phrase ‘non-street based.’” Ex. 1001, 1:57–67 (emphasis added). Such non-street based navigation is broad enough to encompass avionic navigation. See Pet. Reply 25–26; cf. Ex. 1003, 4–7 (demonstrating Dr. Braasch’s experience in avionic navigation). We find that Petitioner’s definition is supported by the testimony of its expert, Dr. Braasch, and, for the reasons stated above, we are not persuaded that the person of ordinary skill in the art necessarily would have had first-hand experience in marine—as opposed to non-street based— navigation. We, therefore, determine, based on the complete record, that Petitioner’s proposed definition correctly states the level of ordinary skill in the art, and we apply it for purposes of this Decision.7, 8” slip op. at 24
Patent outcomesUS 7,268,703 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 7,268,703 - Apple, Inc. v. Realtime Data LLCAll claims unpatentablePTAB · Mar 13, 2018 · IPR2016-01739 · APJ Georgianna W Braden · IPR · Final written decision
Claims 5, 35–46, 97, 98, and 112 are unpatentable under § 103 over at least one instituted combination; claim 46 was not shown unpatentable over Settsu alone or with Zwiegincew.
RulingsFinal written decision- BurdenFwd mixedUnpatentable
“IV. CONCLUSION For the foregoing reasons, we conclude Petitioner has shown by a preponderance of the evidence that (1) Claims 5, 35–45, and 97 are unpatentable under 35 U.S.C. § 103(a) in view of Settsu; (2) Claims 5, 35– 45, 97, 98, and 112 as unpatentable under 35 U.S.C. § 103(a) in view of Settsu and Zwiegincew; (3) Claims 5, 35–46, and 97 as unpatentable under 35 U.S.C. § 103(a) in view of Settsu and Dye; and (4) Claims 5, 35–46, 97, 98, and 112 as unpatentable under 35 U.S.C. § 103(a) in view of Settsu, Zwiegincew, and Dye. V. ORDER Accordingly, it is ORDERED that, by a preponderance of the evidence, claims 5, 35–46, 97, 98, and 112 of the ’862 patent are unpatentable;” slip op. at 46
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b). Therefore, we consult the patent’s specification to help clarify the meaning of claim terms. Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010) (holding claims “must be read in view of the specification, of which they are a part” (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996))). We must be careful, however, not to import improperly limitations into the claims or to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Given our mandate under 37 C.F.R. § 42.100(b) and the patent’s various descriptions of “boot data list,” we understand that the examples laid out in the specification are exemplary and are not to be read as limitations in the claims. Patent Owner’s proffered claim construction imports selected limitations from specific embodiments in the specification into the claim and provides an overly narrow interpretation of the claim term. Additionally, Patent Owner has not pointed to any definitions or disavowals in the specification or otherwise clearly explained why the specification’s disclosure of “boot data lists” should not guide our claim construction analysis. Thus, we are unpersuaded by Patent Owner’s contentions, which appear to be based on a narrow reading of the claim that is inconsistent with the broadest reasonable interpretation of the claims. Accordingly, we decline to adopt Patent Owner’s claim construction as it would limit unnecessarily the scope of the claims. Instead, we find the broadest reasonable construction of “boot data list” to encompass a “list of boot data.”” slip op. at 8
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner does not dispute Dr. Neuhauser’ testimony. See generally PO Resp. Patent Owner’s Declarant, Dr. Godmar Back (“Dr. Back”), however, provides his own assessment regarding a person of ordinary skill in the art relevant to the ’862 patent and agrees with Dr. Neuhauser’s testimony. Ex. 2008 ¶ 50. We do not observe a meaningful differences between the parties’ assessments of a person of ordinary skill in the art. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our analysis in this Decision is supported by either assessment. Based on our review of the ’862 patent, the types of problems and solutions described in the ’862 patent and cited prior art, and the testimony of Dr. Neuhauser and Dr. Back, we adopt and apply Dr. Back’s definition of a person of ordinary skill in the art at the time of the claimed invention for purposes of this Decision. D. Overview of the Asserted Prior Art” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Settsu fails to teach “updating a boot list.” Rather, we agree with the testimony of Dr. Neuhauser regarding the similarities between Settsu’s OS and the functionality of the Windows 98 OS, and why a person of ordinary skill in the art would have considered updates to have occurred to the boot data lists in Settsu. See Ex. 1003 ¶ 117; Ex. 1003, 5:39–51, 13:55–65, 14:44–52, 16:7–17:62, Figs. 12, 20(ST213). Specifically, we determine that a person of ordinary skill in the art would have understood that OS modules, such as Settsu’s, would have required updates when new, updated code becomes available. See Ex. 1003 ¶ 117 (citing O’Reilly 110–112). We agree with Dr. Neuhauser that to accomplish these updates, a person of ordinary skill in the art would have understood that updates occur to boot data lists in Settsu; namely, updates to lists of boot data included within OS functional module files stored in boot device 3, as well as updates to lists of boot data, such as the function definition file 71 or the OS main body module 8. See id. Given the explicit teaching of Settsu and the credible testimony of Dr. Neuhauser regarding the state of the art and the knowledge of one of skill the art, we are unmoved by Patent Owner’s argument regarding the prosecution history of the ’862 patent or that the Examiner fully understood the implications of Settsu’s Figure 20. Accordingly, based on the entirety of the record and evidence, and crediting the testimony from Dr. Neuhauser (see Ex. 1003 ¶¶ 78, 116–118), we determine that “updating the boot data list” is taught or suggested by Settsu, and the subject matter of the claim as whole would have been obvious to a person of ordinary skill in art in view of Settsu.” slip op. at 22
Patent outcomesUS 8,880,862 unpatentableClaim construction§ 103 obviousnesscites Markman · KSR · GrahamPatents in suitUS 8,880,862 - On Semiconductor Corporation / Semiconductor Components Industries, LLC (D/B/A On Semiconductor) v. Power Integrations, Inc.All claims unpatentablePTAB · Sep 22, 2017 · IPR2016-00809 · APJ Daniel N Fishman · IPR · Final written decision
Claims 31, 32, 34, 38, 39, and 42 are unpatentable as obvious over Oda and Nakamura because the combination teaches the claimed features, including varying pulse frequency and on-time in the second feedback range.
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Panels of the Board have interpreted 315(b) (and our associated rule 37 C.F.R. § 42.101(b)) to mean that “it is only privity relationships up until the time a petition is filed that matter.” Synopsys, Inc. v. Mentor Graphics 5 Patent Owner entered the Merger Agreement into the record as Exhibit 2018. Corp., Case IPR2012-00042, slip op. at 12 (PTAB Feb. 19, 2014) (Paper 60); see also ARRIS Group, Inc. v. TQ Delta LLC, Case IPR2016-00430, slip op. at 6 (PTAB July 1, 2016) (Paper 9). Although not the exclusive factor for establishing privity, control of the requested review procedure is an important factor to establish privity in this context. Our Office Patent Trial Practice Guide explains that “[w]hether a party who is not a named participant in a given proceeding nonetheless constitutes a . . . ‘privy’ to that proceeding is a highly fact-dependent question.” 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012). “There are multiple factors relevant to the question of whether a non-party may be recognized as a . . . ‘privy.’” Id. “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” Id. However, it is recognized that there is no definitive test regarding the degree of participation required to establish such control and, hence, to establish a privity relationship. Id.” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Similarly, Patent Owner’s arguments regarding the Confidentiality Agreement (Ex. 2026) are insufficient to demonstrate that Fairchild exercised, or could have exercised, any control over this proceeding. PO Resp. 65. The mere exchange of unidentified confidential information and recitations of the Confidentiality Agreement that the parties could be joint defendants in the future, without more, do not provide sufficient evidence that Fairchild has exercised, or could have exercised, any control over this proceeding. Thus, the record lacks sufficient evidence to demonstrate even the opportunity to control this review and, thus, to establish privity between Petitioner and Fairchild.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In our Decision on Institution, we agreed with Petitioner that nothing in the claims or the specification of the ’079 patent limits the term “energy transfer element” to only transformers in a flyback architecture converter and, more specifically, nothing in the claims defines a particular direction of current flow through the terminals of the power switch. Dec. 15–16. Thus, we determined that, in accordance with the broadest reasonable interpretation, “energy transfer element” should not be construed so narrowly as to include only a transformer (flyback topology converter) and to exclude an inductor (buck topology converter). Id. at 16. Instead, we determined “energy transfer element” is at least as broad as to encompass either a transformer or an inductor as utilized in flyback and buck architecture power converters, respectively. Id. After considering all evidence and assertions anew, we discern no persuasive reason to alter our preliminary interpretation and conclude, for the reasons given in our Decision on Institution and this Decision, that “energy transfer element” is at least as broad as to encompass either a transformer or an inductor as utilized in flyback and buck architecture power converters, respectively. See id. at 14–16.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Thus, although we discern no need to expressly construe the phrase “corresponds to” as used in the claims, we determine “corresponds to” as used in the claims is at least as broad as to encompass non-overlapping first 9 Patent Owner’s narrow interpretation demands a one-to-one relationship between the feedback values and the pulse on-time values, i.e., a reversible function in mathematical terms. The ’079 patent Specification does not support such a narrow interpretation. and second ranges of feedback values corresponding to first and second ranges of on-time values regardless of overlap of feedback values in the first and second ranges of feedback values.” slip op. at 25
Patent outcomesUS 6,212,079 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,212,079
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.