- Shenzhen Xinzexing E-Commerce Co., Ltd. v. Shenzhen Carku Technology Co., Ltd.All claims unpatentablePTAB · Jul 24, 2025 · IPR2024-00222 · APJ Garth D Baer · IPR · Final written decision
Claims 1–3, 6–23, and 25–33 are unpatentable, including as anticipated by Chen and as obvious over the Chen and Inskeep combinations.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“have at least a Bachelor’s Degree in Electrical Engineering and at least two years of experience in the field of electrical engineering and specifically power supply management such as battery charging system design.” PO Resp. 31. Petitioner presents a similar formulation. Pet. 10. Although we do not discern any meaningful distinction between the parties’ formulations, we adopt Patent Owner’s description of a person of ordinary skill as it is consistent with the prior art and challenged patent’s specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“a first current through one or more output ports of the at least one output port in a first operating mode,” and “is configured to output a second current capable of starting a vehicle engine through the pair of output terminals in a second operating mode.” Ex. 1001, 8:25–34. Claim 21 has similar first and second operating-mode limitations. Id. at 9:40–46. Patent Owner proposes that “[t]he proper construction for ‘first operating mode’ is ‘an operating mode of the portable backup charger wherein the battery pack is configured to output a first current through one or more output ports of the at least one output port, and outputting a second current capable of starting a vehicle engine through the pair of output terminals is inhibited.’” PO Resp. 25. Similarly, Patent Owner argues “[t]he proper construction for ‘second operating mode’ is ‘an operating mode of the portable backup charger wherein the battery pack is configured to output a second current capable of starting a vehicle engine through the pair of output terminals, and outputting a first current through one or more output ports of the at least one output port is inhibited.’” Id. at 27. Patent Owner asserts that claim differentiation supports its construction because dependent claim 3 recites “a third operating mode for outputting the first current and the second current simultaneously,” and “if the battery pack could output the first current and the second current simultaneously in the first operating mode, then there would be no difference between the claimed first operating mode and the claimed third operating mode.” Id. at 26. We disagree with Patent Owner’s constructions because, as Petitioner explains, they wrongly import current-inhibiting limitations beyond the plain language in the claim. Pet. Reply 1. Nothing in the at-issue language addresses inhibiting current. In addition, the claimed first and third operating modes are still distinct without importing additional limitations because outputting just the first current is sufficient for the first operating mode, but not for the third. In other words, whereas the third operating mode requires simultaneity, the first and second merely permit it. Thus, claim differentiation does not support Patent Owner’s construction. Last, although Patent Owner asserts that its construction “is consistent with the specification,” nothing in the cited passages describes inhibiting current. Prelim. Resp. 26 (citing Ex. 1001, 4:30–33, 5:30–33, 5:58–62). Instead, the specification characterizes the modes solely by what the portable charger “can output,” not what is inhibited. Ex. 1001, 4:30–33, 5:30–33, 5:58–62. Thus, we decline to read the first and second operating modes to require the current-inhibiting features that Patent Owner asserts.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner argues the two current paths are not different because Chen’s Figure 1 shows they overlap between the lithium battery and the output control circuit and “only diverge when making the connection to the output control circuit.” PO Resp. 32. We disagree. First, Patent Owner’s argument is based on a claim construction for “different” current paths that we do not adopt for the reasons above. In addition, we agree with Petitioner that Chen shows the claimed different current paths even under Patent Owner’s construction. Pet. Reply 8–12. Specifically, as Petitioner explains, a skilled artisan would recognize that Chen’s physical circuits are depicted in Figures 4–7, rather than in Chen’s Figure 1, which is merely a “block diagram of the principle of present invention.” Id. at 9; Ex. 1006 ¶ 15. Unlike Figure 1, Chen’s Figures 5, 6, and 7 show current paths between the battery and USB outputs, and between the battery and DC multi-gear output, that do not overlap with the high current path shown in Chen’s Figure 4. Pet. 9–12. Based on Petitioner’s analysis and for the reasons above, we agree with Petitioner that Chen teaches the claimed “pair of output terminals coupled to the battery pack and having a current path to the battery pack different from that of the at least one output port to the battery pack.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Patent Owner asserts one skilled in the art would not have added White’s fuse to Chen because doing so was “unnecessary” given Chen’s built-in relay K1 that already provides protection. PO Resp. 42–43. We disagree because, as Petitioner notes, “the Petition cited ample evidence that both layers of over current prevention provide improved safety and protection to the battery.” Pet. Reply 17 (citing Pet. 31–33); see also, e.g., Pet. 31 (describing “advantageously reduc[ing] the likelihood of damage”), id. at 32 (describing “the additional benefit of a safety fuse along a jumper cable to promptly cut off current in the event of a short circuit” and “more simplified maintenance and repair”). Given Petitioner’s unrebutted rationale, Petitioner has articulated sufficient reasoning with rational underpinning to support the legal conclusion that adding White’s fuse and polarity-protection connector to Chen’s power-supply system would have been obvious to one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Other than the arguments addressed above, Patent Owner does not additionally challenge Petitioner’s obviousness showing based on Chen and White. We have reviewed Petitioner’s arguments and evidence and, based on that analysis, we find Petitioner has shown by a preponderance of the evidence that claims 1, 2, 6–9, 11–14, 16–22, 25–28, and 30–33 would have been obvious over Chen and White.” slip op. at 15
Patent outcomesUS 9,643,506 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,643,506 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Molecular Rebar Design, LLCInstitutedPTAB · Jul 17, 2025 · IPR2025-00359 · APJ Avelyn M Ross · IPR · Institution
The Board instituted review of claims 1–4 and 7–17 on all petition grounds and granted Samsung’s unopposed motion for joinder in IPR2024-01013.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We instituted review of claims 1–4 and 7–18 of the ’483 patent in IPR2024- 01013 after a review of all arguments and evidence presented by the parties, including Patent Owner’s arguments in its preliminary response. For the reasons discussed in the Institution Decision in IPR2024-01013, we determine that Petitioner demonstrates a reasonable likelihood of showing at least one claim of the ’483 patent is unpatentable. Thus, we find that the Petition warrants institution of inter partes review on all claims and grounds set forth in the Petition.” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Upon consideration of Petitioner’s arguments, we are persuaded that it is appropriate under these circumstances to join Petitioner to the proceeding in IPR2024-01013. Petitioner’s agreement to accept an “understudy” role and to not actively participate in IPR2024-01013 unless the current petitioner ceases to participate will limit any potential impact on the trial schedule and will avoid increasing the costs or complexity of the proceeding. Therefore, joinder of Petitioner to IPR2025-00359 will further the goals of a just, speedy, and inexpensive resolution of Petitioner’s challenge. 37 C.F.R. § 42.1(b).” slip op. at 10
Nonecites Phillips · KSR · GrahamPatents in suitUS 10,153,483 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Molecular Rebar Design, LLCInstitutedPTAB · Jul 17, 2025 · IPR2025-00358 · APJ Julia Heaney · IPR · Institution
The Board instituted review of claims 1–16 on all petition grounds and granted Samsung’s motion to join IPR2024-01012 as an understudy petitioner.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A. Whether the Petition Warrants Institution As we note above, the Petition challenges the same claims on the same grounds of unpatentability, and relies on the same evidence, including the same declarant testimony, as presented in the 1012 IPR. Pet. 1; Mot. 6– 7. In other words, the Petition is virtually identical to the petition filed in the 1012 IPR. We incorporate our analysis from the 1012 IPR regarding the asserted grounds of unpatentability and determine that Petitioner has demonstrated sufficiently under 35 U.S.C. § 315(c) that institution of an inter partes review is warranted under 35 U.S.C. § 314(a).” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Based on the facts and circumstances discussed above, we determine Petitioner has established good cause for joining the 1012 IPR. Specifically, we find that joining Petitioner to the 1012 IPR is unlikely to require any delay or modification to the scheduling order already in place for the 1012 IPR. We also determine that Patent Owner will not be prejudiced unduly by the joinder of this proceeding. Thus, we determine that granting the Motion for Joinder under these circumstances would help “secure the just, speedy, and inexpensive resolution” of these proceedings. See 37 C.F.R. § 42.1(b). For the above reasons, we grant Petitioner’s Motion for Joinder and join Petitioner as a party to the 1012 IPR.” slip op. at 6
NonePatents in suitUS 10,608,282 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Molecular Rebar Design, LLCInstitutedPTAB · Jul 17, 2025 · IPR2025-00355 · APJ Julia Heaney · IPR · Institution
The Board instituted inter partes review of claims 1–23 on the petition’s grounds and granted Samsung’s motion to join the LGES IPR in an understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A. Whether the Petition Warrants Institution As we note above, the Petition challenges the same claims on the same grounds of unpatentability, and relies on the same evidence, including the same declarant testimony, as presented in the 1005 IPR. Pet. 1; Mot. 5. In other words, the Petition is virtually identical to the petition filed in the 1005 IPR. We incorporate our analysis from the 1005 IPR regarding the asserted grounds of unpatentability and determine that Petitioner has demonstrated sufficiently under 35 U.S.C. § 315(c) that institution of an inter partes review is warranted under 35 U.S.C. § 314(a).” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Based on the facts and circumstances discussed above, we determine Petitioner has established good cause for joining the 1005 IPR. Specifically, we find that joining Petitioner to the 1005 IPR is unlikely to require any delay or modification to the scheduling order already in place for the 1005 IPR. We also determine that Patent Owner will not be prejudiced unduly by the joinder of this proceeding. Thus, we determine that granting the Motion for Joinder under these circumstances would help “secure the just, speedy, and inexpensive resolution” of these proceedings. See 37 C.F.R. § 42.1(b). For the above reasons, we grant Petitioner’s Motion for Joinder and join Petitioner as a party to the 1005 IPR.” slip op. at 6
NonePatents in suitUS 9,636,649 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Molecular Rebar Design, LLCInstitutedPTAB · Jul 17, 2025 · IPR2025-00356 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted review of claims 1–8 on all petition grounds and granted Samsung’s unopposed motion to join IPR2024-01006.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We agree with the parties that the Samsung Petition “involves the same patent, challenges the same claims, relies on the same expert declaration, and is based on the same grounds and combinations of prior art.” Id. (Patent Owner’s admission); see Mot. 3 (Petitioner, averring that the Samsung Petition and the Petition filed in IPR1006 are “substantively identical”). Under these circumstances, our reasons for instituting review based on LG Energy Solution’s Petition apply with equal force to the “substantively identical” Samsung Petition. Id. Accordingly, for the same reasons set forth in the Institution Decision filed in IPR1006, we institute review on all claims and all grounds asserted in the Samsung Petition. See generally IPR1006, Paper 8 (Institution Decision in IPR1006).” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“(1) the Motion for Joinder is timely, having been “filed within one month of the institution decision” in IPR1006; (2) the Samsung Petition “is substantially identical to the” Petition filed in IPR1006; (3) “joinder will have minimal, if any, impact on the trial schedule, as all issues are substantively identical”; (4) Petitioner agrees to “accept an ‘understudy role’” in the joined proceeding, unless LG Energy Solution, Ltd. “is terminated from” IPR1006; and (4) joinder will simplify “briefing and discovery” as all issues will be resolved “in a single proceeding.” Mot. 3–4. Patent Owner contests none of those facts. To the contrary, Patent Owner does “not oppose” the Motion for Joinder and “fully expects this proceeding to be joined with” IPR1006. Waiver 1. Having considered Petitioner’s Motion for Joinder, as well as Patent Owner’s Waiver, we determine that joinder of the instant proceeding with IPR1006 is appropriate. Accordingly, we grant Petitioner’s unopposed Motion for Joinder, subject to the requirements set forth in the Order below.” slip op. at 4
NonePatents in suitUS 8,808,909 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Molecular Rebar Design, LLCInstitutedPTAB · Jul 17, 2025 · IPR2025-00357 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted review of claims 1–5 on all grounds in the Petition and granted Samsung’s unopposed motion to join IPR2024-01011.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We agree with the parties that the Samsung Petition “involves the same patent, challenges the same claims, relies on the same expert declaration, and is based on the same grounds and combinations of prior art.” Id. (Patent Owner’s admission); see Mot. 3 (Petitioner, averring that the Samsung Petition and the Petition filed in IPR1011 are “substantively identical”). Under these circumstances, our reasons for instituting review based on LG Energy Solution’s Petition apply with equal force to the “substantively identical” Samsung Petition. Id. Accordingly, for the same reasons set forth in the Institution Decision filed in IPR1011, we institute review on all claims and all grounds asserted in the Samsung Petition. See generally IPR1011, Paper 9 (Institution Decision in IPR1011).” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Having considered Petitioner’s Motion for Joinder, as well as Patent Owner’s Waiver, we determine that joinder of the instant proceeding with IPR1011 is appropriate. Accordingly, we grant Petitioner’s unopposed Motion for Joinder, subject to the requirements set forth in the Order below.” slip op. at 4
NonePatents in suitUS 8,968,924 - PTAB · Oct 22, 2024 · IPR2024-00758 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted IPR on claims 1–24 on all petitioned grounds and granted Qorvo’s motion to join IPR2024-00609, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv. See USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Fintiv Memo”).9 The Fintiv Memo instructs that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)); see id. at 7, 9. The Fintiv Memo also explains that such a stipulation (a Sotera stipulation) “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7. Petitioner presents a Sotera stipulation in the present Petition. See Pet. 70. Specifically, Petitioner stipulates that it will not pursue invalidity of the Challenged Claims (i.e., all claims of the ’360 patent) in the Akoustis- Qorvo litigation on the grounds raised, or that reasonably could have been raised, in this IPR Petition. Id.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the same reasons stated in our Decision on Institution in the IQE IPR, we determine that institution is warranted here. See IPR2024- 00609, Paper 9 at 41–44. With respect to Patent Owner’s additional argument that Petitioner failed to provide a reason to combine Guo and Ashby to arrive at the claimed invention of claim 10 for the same reasons set forth with respect claims 5 and 17 (Prelim. Resp. 61), we note that, as stated in our Decision on Institution, Petitioner provides argument and declaratory testimony that a person of ordinary skill in the art would have had reason to 11 In Ground 6, Petitioner asserts that dependent claims 5, 10, and 17 would have been obvious over the combination of Guo and Ashby. Pet. 60–66. sufficient to show a reason to combine the references is best resolved on a full record. IPR2024-00609, Paper 9 at 43. For the above reasons, we determine Petitioner has set forth a reasonable likelihood that it would prevail with respect to at least one challenged claim, and we, therefore, institute an inter partes review on all grounds raised in the Petition.” slip op. at 12
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). In deciding whether to grant joinder, we consider: (1) the reasons why joinder is appropriate, (2) whether the petition raises any new grounds of unpatentability, (3) any impact that joinder would have on the cost and trial schedule for the existing review, and (4) whether joinder will add to the complexity of briefing or discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15, 4 (PTAB Apr. 24, 2013); Trial Practice Guide at 76. Petitioner contends that joinder with the IQE IPR is appropriate because Qorvo’s Petition (Paper 1) is substantially the same as the IQE Petition. Mot. 2, 4–5. Petitioner states that its Petition challenges the same claims on the same grounds, relies on the same art, and is supported by substantially the same expert declaration by the same expert as the IQE Petition. Id. at 2, 4. Petitioner states that no additional burden would be created and that joinder would lead to an efficient resolution of the asserted invalidity of the ’360 patent. Id. at 2, 5–6. Petitioner further stipulates that if joinder is granted, that it will act as an “understudy” unless IQE ceases to participate in the proceeding and that joinder will not unduly complicate the IQE IPR or delay its schedule. Id. at 2, 5–8.” slip op. at 14
Discretionary denialPatents in suitUS 7,250,360 - PTAB · Oct 11, 2024 · IPR2024-00774 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on all challenged claims and petition grounds, and granted Texas Instruments’ motion to join the Cirrus IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IPR. Compare id., with IPR2024-00019, Paper 46 at 1–4, 6–22 (Patent Owner’s response in the Cirrus IPR) (public version). We decline to resolve the material issue of fact surrounding this limitation on this preliminary record, because the trial in the Cirrus IPR is the better proceeding in which to do so. Specifically, as compared to the preliminary phase of this case, the instituted trial in the Cirrus IPR affords the parties a better opportunity to fully and fairly brief, argue, and develop evidence in support of their positions, and, in particular, to address Cirrus Logic’s alleged admission that the existence of a gradient alone is insufficient to disclose the “aid carrier movement” limitations of independent claims 1 and 21. We observe only that, on this record, the disputed issue of material fact is not sufficient to undermine the sufficiency of Petitioner’s evidence supporting institution of review.” slip op. at 16
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 15– 35. The one-year time bar under § 315(b), however, “shall not apply to a request for joinder under subsection (c).” 35 U.S.C. § 315(b); see 37 C.F.R. § 42.122(b). And, because the Petition is accompanied by a timely request for joinder (Paper 1) to the instituted proceeding (IPR2024-00019), which we grant as further discussed below, Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, irrespective of whether Petitioner is in privity with time-barred entities.” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Based on the facts and circumstances discussed above, we determine Petitioner has established good cause for joining the Cirrus IPR. Specifically, we find that joining Petitioner to the Cirrus IPR is unlikely to require any delay or modification to the scheduling order already in place for that proceeding. We also determine that Patent Owner will not be prejudiced unduly by the joinder of this proceeding. Thus, we determine that granting the Motion for Joinder would help “secure the just, speedy, and inexpensive resolution” of these proceedings. See 37 C.F.R. § 42.1(b). Accordingly, we grant Petitioner’s Motion for Joinder and join Petitioner as a party to the Cirrus IPR.” slip op. at 19
NonePatents in suitUS 11,316,014 - PTAB · Sep 27, 2024 · IPR2024-00672 · APJ Julia Heaney · IPR · Institution
The Board instituted review of claims 1–18 on all asserted grounds and granted Texas Instruments’ motion to join IPR2023-01243 in an understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage of the proceeding, we determine that the arguments and evidence of record favor Petitioner. Both parties agree that a downward-sloping gradient, as disclosed in Kawagoe, will create an electrical field with a force in a direction toward the substrate. See generally Prelim. Resp.; Ex. 1007, 16:7–9. Patent Owner does not meaningfully dispute that Kawagoe has a graded dopant concentration in an active region. See generally Prelim. Resp. Further, Patent Owner contradictorily stated during prosecution of the ’195 patent that a graded dopant concentration itself creates “a built-in electrical field that forces the movement of carriers in a particular direction” (Ex. 1016, 289–290) and is “the additional parameter for ensuring that all minority carriers are being moved in one direction” (id. at 290). In light of this evidentiary record, which at most presents a material issue of fact for resolution at trial, we determine Petitioner establishes a reasonable likelihood of prevailing in its challenge of claim 1. We decline to further discuss the parties’ arguments or resolve any disputed issues as to challenges based on Kawagoe on this preliminary record, because the trial in the 1243 IPR is the better proceeding in which to do so. Specifically, as compared to the preliminary phase of this case, the instituted trial in the 1243 IPR affords the parties better opportunity to brief, argue, and develop evidence in support of their positions. Thus, for the same reasons stated in our Decision on Institution in the 1243 IPR, we determine the Petition here warrants institution.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“deficient because Kawagoe’s disclosure of graded dopant concentration teaches impeding carrier movement rather than aiding it, as required by claim element 1.5. Prelim. Resp. 13–14. Patent Owner relies on Kawagoe’s disclosure that the concentration gradient prevents electrons from entering the p-well. Id. at 14 (citing Ex. 1007, 16:7–11). Patent Owner further argues Kawagoe’s carriers are not in the active regions, as required by claim element 1.5. Id. at 14–16 (citing Ex. 1003 ¶ 91, n.5). At this stage of the proceeding, we determine that the arguments and evidence of record favor Petitioner. Both parties agree that a downward-sloping gradient, as disclosed in Kawagoe, will create an electrical field with a force in a direction toward the substrate. See generally Prelim. Resp.; Ex. 1007, 16:7–9. Patent Owner does not meaningfully dispute that Kawagoe has a graded dopant concentration in an active region. See generally Prelim. Resp. Further, Patent Owner contradictorily stated during prosecution of the ’195 patent that a graded dopant concentration itself creates “a built-in electrical field that forces the movement of carriers in a particular direction” (Ex. 1016, 289–290) and is “the additional parameter for ensuring that all minority carriers are being moved in one direction” (id. at 290). In light of this evidentiary record, which at most presents a material issue of fact for resolution at trial, we determine Petitioner establishes a reasonable likelihood of prevailing in its challenge of claim 1.” slip op. at 15
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“II. TIMELINESS OF PETITION UNDER 35 U.S.C. § 315(B) Pursuant to 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), included revisions to 35 U.S.C. §§ 102 and 103 that became effective in 2013, after the effective filing date of the challenged claims. See Ex. 1001, codes (22), (60). Therefore, we apply the pre-AIA versions of 35 U.S.C. §§ 102 and 103(a). 2 US 6,043,114, issued March 28, 2000 (Ex. 1007, “Kawagoe”). Petitioner asserts that Kawagoe is prior art under 35 U.S.C. § 102(b). Pet. 4. 3 US 6,163,877, issued December 19, 2000 (Ex. 1014, “Gupta”). Petitioner asserts that Gupta is prior art under 35 U.S.C. § 102(b). Pet. 5. 4 US 2003/0183856 A1, published October 2, 2003 (Ex. 1006, “Wieczorek”). Petitioner asserts that Wieczorek is prior art under 35 U.S.C. §§ 102(a),(e). Pet. 4. 5 Stanley Wolf and Richard N. Tauber, Silicon Processing for the VLSI Era, Vols. 1–4, Lattice Press (2000) (Ex. 1008, “Wolf”). Petitioner asserts that Wolf was published and publicly available no later than 2002, and is prior art under 35 U.S.C. § 102(b). Pet. 5 (citing Exs. 1012, 1013, 1036). Exhibit 1008 was submitted in four parts (A–D) and includes selected portions of Wolf. We cite to Wolf using its original page numbers and omit the exhibit part designations. Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 18– 39. However, 35 U.S.C. § 315(b) also provides that the one-year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Because the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2023-01243), which we grant as further discussed below, Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, irrespective of whether Petitioner is in privity with time-barred entities.” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Patent Owner’s first argument is not persuasive because it is based on speculation that Petitioner “is trying to block settlement with any of these defendants unless [Patent Owner] also settles with” Petitioner. Opp. Mot. Join. 5. As discussed below, we determine that Patent Owner will not be prejudiced unduly by the joinder. Moreover, we note that even in a situation where the petitioner and patent owner in the proceeding to be joined had settled (Code200 v. Bright Data Ltd., IPR2022-00861, Paper 17 at 5 (PTAB July 25, 2022) (vacated)), the Director nevertheless vacated a decision to deny a motion for joinder. Code200 v. Bright Data Ltd., IPR2022-00861, Paper 18 at 7 (Office of the Director of the USPTO Aug. 23, 2022) (precedential); see also eBay, Inc. v. Lexos Media IP, LLC, IPR2024-00336, Paper 11 at 13–15 (PTAB Feb. 23, 2024). Patent Owner’s second argument is moot because Patent Owner’s Request for Director Review has been denied. 1243 IPR, Paper 43 (PTAB Apr. 24, 2024). Based on the facts and circumstances discussed above, we determine Petitioner has established good cause for joining the 1243 IPR. Specifically, we find that joining Petitioner to the 1243 IPR is unlikely to require any delay or modification to the scheduling order already in place for the 1243 IPR. We also determine that Patent Owner will not be prejudiced unduly by the joinder of this proceeding. Thus, we determine that granting the Motion for Joinder would help “secure the just, speedy, and inexpensive resolution” of these proceedings. See 37 C.F.R. § 42.1(b). For the above reasons, we grant Petitioner’s Motion for Joinder and join Petitioner as a party to the 1243 IPR.” slip op. at 19
§ 103 obviousnessPatents in suitUS 10,510,842 - Eden Park Illumination, Inc. / Larson Electronics LLC et al. v. S. Edward NeisterAll claims unpatentablePTAB · Sep 17, 2024 · IPR2023-00695 · APJ Julia Heaney · IPR · Final written decision
Claims 1–5 and 7–18 are unpatentable as obvious over Eckhardt and Sosnin.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in an engineering discipline such as biological, chemical, environmental, electrical, mechanical, and/or systems engineering, or an equivalent degree such as one in physics or similar subject matter.” Pet. 16 (citing Ex. 1003 ¶ 21). Petitioner further argues that “[s]uch a person would also have two to three years of work or research experience with UV disinfection technology and/or systems and would be familiar with the fundamentals of UV excimer lamps” but, “less education could be compensated by more experience and vice versa.” Id. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’951 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’951 patent and the” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“art references advanced in this Petition” but “[b]eyond these arguments, the challenged claims require no express construction to evaluate their patentability.” Pet. 16–17. After considering the arguments and information Petitioner presents, we determine that we do not need to expressly construe any terms for purposes of this Decision. 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner demonstrates by a preponderance of the evidence that a person of ordinary skill in the art would have had reasons to combine Eckhardt’s teaching of narrow spectrum UV light in the range of 220 to 310 nm to disinfect skin (Ex. 1004 ¶¶ 31, 69–70), with Sosnin’s teaching of a KrCl excimer lamp having a narrow band UV emission at 222 nm to kill bacteria (Ex. 1005, 320). In particular, Petitioner shows that a person of ordinary skill in the art would have wanted to obtain the benefits of Eckhardt’s teaching of disinfecting skin using any light source capable of sterilization or disinfection and would therefore have considered Eckhardt’s suggestion of using narrow spectrum UV light in combination with Sosnin’s disclosure of using germicidal excimer lamps within the range of wavelengths taught by Eckhardt. See KSR, 550 U.S. at 417 (stating that the “mere application of a known technique to a piece of prior art ready for the improvement” suggests obviousness). The teachings of both Eckhardt and Sosnin support Petitioner’s combination. In particular, both references teach using UV lamps with narrow bands or monochromatic emissions to sterilize surfaces. Eckhardt teaches “light source 7 may be any light source that emits light capable of sterilization or disinfection” and may be a UV light source such as a lamp that “may emit narrow spectrum light (e.g., a line spectrum) or broad spectrum light” including UVA, UVB, and UVC light. Ex. 1004 ¶ 31. Eckhardt also teaches flash light source 7a generates a flash sufficient for sterilization or disinfection and may be a xenon flash lamp having a wavelength in the range of 220 to 310 nm. Id. ¶¶ 43, 70. Additionally, Eckhardt teaches “[t]he sterilization/disinfection units previously described are designed to have a beneficial effect when used on bare skin.” Id. ¶ 69. Sosnin teaches using excimer lamps for sterilization and specifically discloses a KrCl lamp which generates photons having wavelengths of 222 nm. Ex. 1005, 320. We find that Eckhardt would have led a person of ordinary skill to consider using a 222 nm excimer lamp because that wavelength falls within the range of UV light (220–310 nm) suggested by Eckhardt, and the range known to provide disinfection. Ex. 1004 ¶ 70; Ex. 1005, 320 (describing “the high rate of bactericidal effect of excilamps”). We find that Eckhardt also supports Petitioner’s contention that it was within the knowledge of a person of ordinary skill in the art to use UV light in the range of 254 nm for disinfection, even though that wavelength presented safety concerns. Ex. 1004 ¶¶ 54, 56; see Pet. 25.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Based on the evidence before us, we determine that Petitioner has shown by a preponderance of evidence that the combination of Eckhardt and Sosnin discloses claim limitation [1A]. We find that Eckhardt’s disclosure of a lamp emitting sterilizing light in the range of 220 to 310 nm (Ex. 1004 ¶¶ 31, 43, 70), combined with Sosnin’s disclosure of irradiation of E. coli with a KrCl excimer lamp generating a 222 nm wavelength (Ex. 1005, 320, Fig. 3), which correspond to peak absorption wavelengths of DNA or RNA (Ex. 1003 ¶¶ 116–118), discloses limitation [1A]. [1B] Petitioner contends that the Eckhardt-Sosnin combination teaches “directing the photons to a substance or surface to be disinfected, whereby the photons are generated to destroy a plurality of chemical bonds within the proteins, DNA, or RNA of the microorganism,” as recited in limitation [1B]. Pet. 30. According to Petitioner, Eckhardt discloses directing light towards wound 1 and surrounding skin 3. Id. (citing Ex. 1003 ¶ 120; Ex. 1004 ¶¶ 31–32). Petitioner contends Sosnin teaches the photons destroy a plurality of chemical bonds within the DNA or RNA of the microorganism because it discloses using 222 nm radiation, “which intrinsically destroys proteins and the chemical bonds in the proteins associated with the DNA or RNA of the microorganism.” Id. (citing Ex. 1003 ¶ 121; Ex. 1005, 319– 321). Based on the evidence before us, we determine that Petitioner has shown by a preponderance of evidence that the combination of Eckhardt and Sosnin discloses claim limitation [1B]. We find that Eckhardt’s disclosure of directing sterilizing light in the range of 220 to 310 nm toward a surface to be disinfected (Ex. 1004 ¶¶ 31–33, 43, 70), combined with Sosnin’s disclosure of bacterial survival curves resulting from irradiation of E. coli with KrCl excimer lamps (Ex. 1005, 320, Fig. 3), discloses claim limitation [1B]. [1C] Petitioner contends that the combination of Eckhardt and Sosnin” slip op. at 16
Patent outcomesUS 11,246,951 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,246,951
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