- Apple Inc. v. Corephotonics Ltd.All claims unpatentablePTAB · Apr 6, 2020 · IPR2019-00030 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1–5 are unpatentable as obvious over Ogino and Beich; claims 1–4 are also unpatentable over Ogino alone, but claim 5 is not shown unpatentable on that ground.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We construe claim terms to the extent necessary. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“supported by the cited evidence. We are persuaded, instead, that “the image plane and the sensor are taught by the ’568 patent to be coincident,” and “[t]hus, there is no ambiguity in the ’568 patent about where the image plane is located or that TTL is measured to the image plane,” as Petitioner argues in its Reply. Reply 13 (Ex. 1026 ¶ 5; Ex. 1003, 33–35). Patent Owner acknowledges as much, noting that “as these terms[, i.e., the image plane and the sensor,] are used in the specification of the ’568 patent, the image plane is the surface of the sensor.” Sur-reply 2. We find that the ’568 patent discloses that the electronic sensor corresponds to or is coincident with the image plane and thus, the TTL could be measured with respect to either the sensor (electronic or film) or the image plane and reach the same result. Based upon the complete trial record, we maintain our construction of TTL from the ’1140IPR and the ’1146IPR3, which encompasses “the length of the optical axis spacing between the object-side surface of the first lens element and one of: an electronic sensor, film, and an image plane corresponding to either the 3 The panel authorized, and the parties filed, supplemental briefing to address this construction before it was adopted in both the related ’1140IPR and ’1146IPR, and that the parties responded to this construction in the hearing in this proceeding (with citations to the transcript). See, e.g., Paper 28 (PO’s demonstratives), 5; ’1140IPR, Paper 31; ’1146IPR, Paper 30; see also Trial Practice Guide Update 13–14 (July 2019), https://www.uspto.gov/sites/default/files/documents/trial-practice-guide-update3.pdf; Hamilton Beach Brands, Inc. v. f’real Foods, LLC, 908 F.3d 1328, 1339 (Fed. Cir. 2018) (finding that the Board did not violate the Administrative Procedure Act when it adopted its own claim construction in the final decision because the parties had notice and an opportunity to be heard). electronic sensor or a film sensor.” See ’1140IPR, Paper 37, 18; ’1146IPR, Paper 37, 14.” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Even assuming, arguendo, we were to credit Patent Owner’s expert testimony as to the disjointed nature of optical lens assembly design experience and manufacturing experience, we are not persuaded that a person of ordinary skill in the art at the time of the invention having only design experience would be so completely unaware of manufacturing considerations so as to preclude taking into account the very general guidance of Beich. See Reply 24–25. Beich teaches that a lens designer should have a basic understanding of the manufacturing process, which would include the limits for fabricating lens elements in an optical lens assembly. Ex. 1020, 7. We are persuaded that the information conveyed in Beich would have been understood, known, and applied by the ordinarily skilled lens designer (see Reply 4–6 (citing Ex. 2014, 4, 9, 11, Fig. 9.2)), irrespective of whether such person had manufacturing experience. Stated differently, although an ordinarily skilled designer of an optical lens assembly may not have had any real-world manufacturing experience, we are persuaded that such person would still have taken into account manufacturing concerns. Although there are differences between the definitions proposed, our conclusions rendered in this decision do not turn on selecting a particular definition for the level of ordinary skill in the art, for the reasons discussed above. We determine, on this record, that the level of ordinary skill proposed by Patent Owner is consistent with the ’568 patent and the asserted prior art. We agree with Patent Owner’s proposal regarding the level of ordinary skill except for Patent Owner’s arguments about manufacturing discussed above. As such, we adopt Patent Owner’s proposal.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“As noted by Petitioner, The Handbook of Optics discloses that “[i]n the case of both negative and positive lens elements, it is good policy to avoid element forms wherein the center-to-edge thickness ratio exceeds three for positive elements.” Ex. 1019 § 34.15. Thus, we are persuaded by Petitioner’s fourth reason that the cited disclosure provides evidence that the ordinarily skilled artisan would have selected a particular diameter for the first lens element disclosed in Ogino in conformance with manufacturing considerations known to the ordinarily skilled artisan. We are further persuaded that, from the selection of that particular diameter, a Z1 value for the object-side surface and a Z2 value for image-side surface at the minimum usable edge of the first lens element can be obtained and, in turn, circumferential edge thickness L1e can be obtained. Pet. 35–36 (citing Ex. 1003, 42; Ex. 1005, 15:1–3). We are further persuaded by Petitioner’s supporting reasoning that “a POSITA would understand the manufacturing benefits of maintaining the lowest possible center-to-edge thickness ratio since ‘the preferred shape of a molded element is one that has fairly uniform thickness.’” Id. at 42 (quoting Ex. 1018, 92) (citing Ex. 1003, 48). Based on our review of the complete record, we find that the record supports Petitioner’s contentions concerning claim 1. Petitioner demonstrates by a preponderance of the evidence that claim 1 is unpatentable as obvious over Ogino.” slip op. at 37
Patent outcomesUS 9,857,568 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,857,568 - Bungie, Inc. v. Acceleration Bay, LLCRehearing deniedPTAB · Jun 29, 2018 · IPR2017-01600 · APJ Marc S Hoff · IPR · Rehearing
The Board denied Bungie’s rehearing request and maintained denial of institution because Francis and Gilbert did not show a reasonable likelihood of obviousness for claims 1–5, 7, 8, and 11–13.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A. Principles of Law When rehearing a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“B. Discussion In our Decision, we concluded that the information presented did not show a reasonable likelihood that Petitioner would prevail in establishing that claims 1–5, 7, 8, and 11–13 are rendered obvious by Francis1 and Gilbert.2 Dec. 13. Specifically, we determined that the combination of Francis and Gilbert, taken together, did not disclose “identifying a pair of participants of the network that are connected wherein [1] a seeking participant contacts a fully connected portal computer, [2] which in turn sends an edge connection request to [3] a number of randomly selected neighboring participants to which the seeking participant is to connect.” Dec. 9–12.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“overlooked any points made in the Petition. In our Decision, we explicitly referred to pages 53–55 of the Petition in discussing Francis’s teaching of “rendezvous hosts,” and Petitioner’s argument that modifying Francis’s rendezvous host with the features of Gilbert’s portal computer would provide some messaging efficiencies. Dec. 11. We concluded that Petitioner “fails to explain sufficiently why it would have been obvious to combine Francis and Gilbert to have a seeking participant contact a fully connected portal computer as claimed.” Id. at 11–12.” slip op. at 6
§ 103 obviousnessPatents in suitUS 6,910,069 - Bungie, Inc. v. Acceleration Bay, LLCInstitution deniedPTAB · Jan 10, 2018 · IPR2017-01600 · APJ Marc S Hoff · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–5, 7, 8, and 11–13 obvious over Francis and Gilbert.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner, however, has not sufficiently explained how or why a person having ordinary skill in the art would have combined Francis and Gilbert to achieve this claim element. Petitioner explains that Francis teaches rendezvous hosts that allow hosts joining a group to find other hosts already in the tree-mesh, and that Francis randomly selects “neighbors” (simply other network members) for every node. See Pet. 53– 55. Petitioner further argues that Gilbert, like Francis, teaches the concept of multifunctional nodes that can execute the steps of adding a new node to the network. According to Petitioner, modifying Francis’s rendezvous host with the features of Gilbert’s portal computer would provide some messaging efficiencies. Pet. 55. In our view, however, Petitioner fails to explain sufficiently why it would have been obvious to combine Francis and Gilbert to have a seeking participant contact a fully connected portal computer as claimed. Still further, the disputed phrase requires that the edge connection request be sent to a “number of randomly selected” neighboring participants to which the seeking participant is to connect. Petitioner asserts that Francis provides for random selection of neighbors for every node. Pet. 55; Ex. 1005, 14. Merely choosing neighboring participants in a random manner to connect to, as Francis does here, is not the same as sending a request to a number of randomly selected neighboring participants. Petitioner has not explained how Francis and Gilbert would be combined to teach a portal computer “send[ing] an edge connection request to a number of randomly selected neighboring participants.”” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner, however, has not sufficiently explained how or why a person having ordinary skill in the art would have combined Francis and Gilbert to achieve this claim element. Petitioner explains that Francis teaches rendezvous hosts that allow hosts joining a group to find other hosts already in the tree-mesh, and that Francis randomly selects “neighbors” (simply other network members) for every node. See Pet. 53– 55. Petitioner further argues that Gilbert, like Francis, teaches the concept of multifunctional nodes that can execute the steps of adding a new node to the network. According to Petitioner, modifying Francis’s rendezvous host with the features of Gilbert’s portal computer would provide some messaging efficiencies. Pet. 55. In our view, however, Petitioner fails to explain sufficiently why it would have been obvious to combine Francis and Gilbert to have a seeking participant contact a fully connected portal computer as claimed.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“Still further, the disputed phrase requires that the edge connection request be sent to a “number of randomly selected” neighboring participants to which the seeking participant is to connect. Petitioner asserts that Francis provides for random selection of neighbors for every node. Pet. 55; Ex. 1005, 14. Merely choosing neighboring participants in a random manner to connect to, as Francis does here, is not the same as sending a request to a number of randomly selected neighboring participants. Petitioner has not explained how Francis and Gilbert would be combined to teach a portal computer “send[ing] an edge connection request to a number of randomly selected neighboring participants.” For all of the above reasons, we are not persuaded that Petitioner has established a reasonable likelihood that Petitioner would prevail in its challenge to independent claim 1, or to dependent claims 2–5, 7, 8, and 11–13.” slip op. at 12
§ 103 obviousnessPatents in suitUS 6,910,069 - Bungie, Inc. v. Acceleration Bay, LLCInstitution deniedPTAB · Jan 9, 2018 · IPR2017-01601 · APJ Lynne E Pettigrew · IPR · Institution
Institution was denied for claims 19–24 because the petition did not show a reasonable likelihood that Gilbert and Francis render them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that Petitioner fails to demonstrate that Gilbert in view of Francis teaches “requesting the located portal computer to provide an indication of neighbor participants to which the participant can be connected,” as required by claim 19. See Prelim. Resp. 41–44. First, contrary to Petitioner’s argument, the various “portal computer” embodiments in Gilbert relied on by Petitioner do not describe a joining node requesting the portal computer to provide an indication of two adjacent nodes (i.e., the claimed “neighbor participants”) to which the joining node can connect. In the first example cited by Petitioner, see Pet. 47, a new node contacts a node it knows to be already on the network, which Petitioner alleges is the claimed “portal computer.” Ex. 1021, 6:33–34. That node then provides information regarding an adjacent node. Id. at 6:40–42. Thus, as Patent Owner correctly points out, the alleged portal computer identifies only a single adjacent node. See Prelim. Resp. 41. Although Gilbert describes a joining node contacting two adjacent nodes in the network and then connecting to those two nodes, the “two adjacent nodes” are the alleged portal computer and one of its adjacent nodes, not two nodes adjacent to the portal computer, as Petitioner suggests. See Ex. 1021, 6:32–49, Fig. 7. Thus, the node seeking to join the network does not request the portal computer to provide an indication of neighbor participants to which it can be connected, as required by claim 19, but instead only requests an indication of one neighbor participant.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner that Petitioner fails to demonstrate that Gilbert in view of Francis teaches “requesting the located portal computer to provide an indication of neighbor participants to which the participant can be connected,” as required by claim 19. See Prelim. Resp. 41–44. First, contrary to Petitioner’s argument, the various “portal computer” embodiments in Gilbert relied on by Petitioner do not describe a joining node requesting the portal computer to provide an indication of two adjacent nodes (i.e., the claimed “neighbor participants”) to which the joining node can connect. In the first example cited by Petitioner, see Pet. 47, a new node contacts a node it knows to be already on the network, which Petitioner alleges is the claimed “portal computer.” Ex. 1021, 6:33–34. That node then provides information regarding an adjacent node. Id. at 6:40–42. Thus, as Patent Owner correctly points out, the alleged portal computer identifies only a single adjacent node. See Prelim. Resp. 41. Although Gilbert describes a joining node contacting two adjacent nodes in the network and then connecting to those two nodes, the “two adjacent nodes” are the alleged portal computer and one of its adjacent nodes, not two nodes adjacent to the portal computer, as Petitioner suggests. See Ex. 1021, 6:32–49, Fig. 7. Thus, the node seeking to join the network does not request the portal computer to provide an indication of neighbor participants to which it can be connected, as required by claim 19, but instead only requests an indication of one neighbor participant.” slip op. at 10
§ 103 obviousnessPatents in suitUS 6,829,634
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.