- Google LLC / Samsung Electronics Co., Ltd. et al. v. Agis Software Development, LLCInstitution deniedPTAB · Nov 25, 2020 · IPR2020-00871 · APJ Frederick C Laney · IPR · Institution
The Board denied institution of IPR on claims 1–68 under § 314(a), finding that the parallel litigation’s timing, investment, and overlapping issues made review inefficient.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petition is particularly problematic in this case because there is significant overlap between the subject matter and alleged grounds of unpatentability found in the Petition and those petitions previously filed. See Apple Inc. v. AGIS Software Dev. LLC, IPR2018-01471, Paper 1 (PTAB July 31, 2018); Google LLC v. AGIS Software Dev. LLC, IPR2018-01086, Paper 2 (PTAB May 15, 2018). In fact, the Petition includes portions that are substantially identical to the petitions previously filed. Compare, e.g., Pet. 1–5, 8–34 with IPR2018-01471, Paper 1 at 1–2, 6–8, 12–39. This similarity shows that Petitioner was fully capable of filing the Petition at or around the time Petitioner was served with a complaint giving them notice that the ’829 patent was being asserted by Patent Owner. Moreover, Petitioner is challenging the patentability of every claim in the ’829 patent, which suggests that there was no need for Petitioner to delay filing until Patent Owner identified which specific claims of the ’829 patent were being asserted. When “the evidence shows that the petitioner[s] did not file the petition expeditiously . . . or even if the petitioner cannot explain the delay in filing its petition,” we weigh this factor toward exercising discretion to deny Petitioner had everything it needed to file the Petition much earlier in the parallel District Court proceeding and because Petitioner offers no explanation for why the filing was delayed, we find the timing of the Petition weighs heavily toward exercising discretion to deny institution.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“relevant circumstances, Petitioner contends that this factor “favors institution because the grounds in the petition provide a strong showing of obviousness.” Pet. 67. Although we do not undertake here a full analysis of the merits, our initial inspection of the record and the parties’ arguments suggest that there is a reasonable likelihood that Petitioner would prevail with respect to at least 1 of the claims challenged in the Petition. The showing, however, is not so strong as to tip the balance in favor of institution. See Fintiv, Paper 11 at 14 (“[I]f the merits of a ground raised in the petition seem particularly strong on the preliminary record, this fact has favored institution”) (emphasis added). In a balanced assessment of the relevant evidence of record, this factor neither weighs in favor nor against exercising our discretion to deny institution. G. Conclusion Based on the particular circumstances of this case, we determine that instituting an inter partes review would be an inefficient use of Board resources. As discussed above, the trial in the underlying litigation is currently scheduled to begin in about four months and may conclude several months before we would reach a final decision in this proceeding. Furthermore, the record shows that Petitioner delayed filing the Petition without any excuse for the delay and, therefore, bears significant expended effort in preparing for the upcoming trial that will address issues that substantially overlap with those raised in the Petition. On balance, after a holistic consideration of the relevant facts, we conclude that efficiency and integrity of the system are best served by denying institution. Thus, we exercise our discretion under § 314(a) to deny institution of inter partes review. IV. ORDER Accordingly, it is ORDERED that the Petition is denied; and FURTHER ORDERED that no inter partes review is instituted.” slip op. at 17
Discretionary denialPatents in suitUS 9,749,829 - Google LLC / Samsung Electronics Co., Ltd. et al. v. Agis Software Development, LLCInstitution deniedPTAB · Nov 25, 2020 · IPR2020-00873 · APJ Trevor M Jefferson · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding that the Fintiv factors favored denial because trial was near, the petition was delayed, and issues substantially overlapped.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“relevant circumstances, Petitioner contends that this factor “favors institution because the grounds in the petition provide a strong showing of obviousness.” Pet. 73. Although we do not undertake here a full analysis of the merits, our initial inspection of the record and the parties’ arguments suggest that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. In a balanced assessment of the relevant evidence of record, and in view of the possible strength of Petitioner’s showing on the present record, this factor is neutral.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“On the record before us at this time, the only persuasive facts that we have regarding the proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision is an Order by the District Court that sets trial for April 5, 2021, which will require “good cause” to be changed, and our projected statutory deadline, which would be toward the end of November 2021. While we appreciate that the trial date is susceptible to change if and when the District Court determines good cause exists to do so, we decline to speculate whether such a contingency will occur. Instead, we must base our evaluation on the existing facts supported by the evidence of record. This factor, therefore, significantly favors the exercise of discretionary denial.” slip op. at 9
Discretionary denialPatents in suitUS 9,820,123 - Google LLC / Samsung Electronics Co., Ltd. et al. v. Agis Software Development, LLCInstitution deniedPTAB · Nov 25, 2020 · IPR2020-00872 · APJ Trevor M Jefferson · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding that the parallel district court trial, unexplained petition delay, and overlapping issues made review inefficient.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherInstitution denied
“A. Fintiv Factor 1: Stay in the Underlying Litigation Petitioner contends the first Fintiv factor “favors institution because Judge Gilstrap commonly grants stays after institution of an IPR” and that it intends to seek a stay now that the Petition has been filed. Pet. 74–75 (citing Uniloc USA, Inc. v. Google, Inc., 2:17-cv-00231-JRG, Order (E.D. Tex. Oct. 3, 2017); Intellectual Ventures II LLC v. BITCO Gen. Ins. Corp., 6:15- cv-59, Memorandum Opinion and Order (E.D. Tex. May 12, 2016); Memsmart Semiconductor Corp. v. AAC Techs., 2:14-CV-1107-JRG, Order (E.D. Tex. July 10, 2015); Image Processing Techs. LLC v. Samsung Elecs. Co., No. 2:16-cv-505-JRG, Order (E.D. Tex. Oct. 25, 2017)). Petitioner notably, however, fails to provide any analysis of these cited cases to demonstrate that the facts presented here are analogous to those leading Judge Gilstrap to determine a stay was appropriate. Patent Owner counters that Petitioner’s “motion for a stay has been denied,” although a renewed motion will be permitted if we grant institution of inter partes review. Prelim. Resp. 15. Patent Owner contends, however, that any renewed motion by Petitioner for a stay of the parallel district court proceedings will likely be denied. Id. at 15–16. This is so, Patent Owner argues, because, by the time the District Court is able to hear such a motion, the case will have developed to the later stages of the proceedings. See id. Furthermore, Patent Owner argues that because “the Petitioners copied this Petition from previous filings, their delay is likely to weigh heavily against them.” Id. at 15 (citing Intellectual Ventures v. FedEx et al., No. 2:16-cv-00980-JRG, Dkt. 141 at 4–5 (E.D. Tex. Oct. 24, 2017)).5 Given the District Court’s apparent willingness to reconsider a motion to stay if we grant institution of inter partes review, but also considering the later stage of the district court proceeding, with trial scheduled to begin in a little over four months, we view the first Fintiv factor, on balance, as neutral in determining whether to exercise discretion to deny institution.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“relevant circumstances, Petitioner contends that this factor “favors institution because the grounds in the petition provide a strong showing of obviousness.” Pet. 77. Although we do not undertake here a full analysis of the merits, our initial inspection of the record and the parties’ arguments suggest that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. In a balanced assessment of the relevant evidence of record, and in view of the possible strength of Petitioner’s showing on the present record, this factor is neutral. G. Fintiv Conclusion Based on the particular circumstances of this case, we determine that instituting an inter partes review would be an inefficient use of Board resources. As discussed above, the trial in the underlying litigation is currently scheduled to begin in about four months and may conclude several months before we would reach a final decision in this proceeding. Furthermore, the record shows that Petitioner delayed filing the Petition without any excuse for the delay and, therefore, bears significant responsibility for the fact that the district court and the parties have expended effort in preparing for the upcoming trial that will address issues that substantially overlap with those raised in the Petition. On balance, after a holistic consideration of the relevant facts, we conclude that efficiency and integrity of the system are best served by denying institution. Thus, we exercise our discretion under § 314(a) to deny institution of inter partes review.” slip op. at 15
Discretionary denialPatents in suitUS 9,820,123 - Amazon.Com, Inc. v. Rensselaer Polytechnic InstituteRehearing deniedPTAB · Oct 30, 2020 · IPR2019-01069 · APJ Trevor M Jefferson · IPR · Rehearing
The Board denied Amazon’s rehearing request, leaving institution denied for claims 9–21 because the Petition did not show a reasonable likelihood of prevailing on its obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019) (emphasis added). When rehearing a decision on petition, the Board will 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: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted).” slip op. at 3
- Prior constructionPrior construction adoptedDecided for patent owner
“system, e.g. how the system interprets words or phrases.” Apple IPR 6. Thus, the Apple IPR Board adopted Patent Owner’s argument that as applied to the prior art, the term “case” in “case information” requires “uses of the system contemplated by the invention, not uses of any other natural language processing system.” Apple IPR 6. The Board rejected that such prior use was found in rules regarding how the system interprets current word or phrase input. Id. We find that the Apple IPR discussed a user’s selection among possible choices, but also addressed that the “case” required use of the system of the ’798 invention. Id. at 5–6. Thus, we do not agree we misapprehended the meaning of the claim language. Req. Reh’g 2.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to establish a reasonable likelihood of prevailing, in showing that claims 9– 21 would have been obvious over Livowsky;1 claims 10–12 and 14–16 would have been obvious over Livowsky and Shwartz;2 claims 9–21 would have been obvious over Shwartz and Livowsky; claims 9–21 would have been obvious over Shwartz and Weber;3 and claims 9–21 would have been obvious over Meng4 and Zhang.5 Dec. 17–18, 21–22, 23–24. For the reasons below, the Request for Rehearing is denied.” slip op. at 2
Claim constructionPatents in suitUS 7,177,798 - Amazon.Com, Inc. v. Rensselaer Polytechnic InstituteRehearing deniedPTAB · Oct 30, 2020 · IPR2019-01068 · APJ Trevor M Jefferson · IPR · Rehearing
The Board denied Amazon’s rehearing request, leaving in place the denial of institution on claims 1–8 because Petitioner did not show the Board misapprehended the construction or prior-art evidence.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019) (emphasis added). When rehearing a decision on petition, the Board will 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: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted).” slip op. at 3
- Prior constructionPrior construction adoptedDecided for patent owner
“interpretation of the claim construction in the Apple IPR. See Req. Reh’g 3. The Apple IPR cites the embodiment from the ’798 patent specification (Ex. 1001, 5:36–38, 16:52–17:5). Apple IPR 5–6. The Board in the Apple IPR expressly clarified that in the case information construction “‘instances of use’ of the system [did not] mean indications cover instances of use of the system, e.g. how the system interprets words or phrases.” Apple IPR 6. Thus, the Apple IPR Board adopted Patent Owner’s argument that as applied to the prior art, the term “case” in “case information” requires “uses of the system contemplated by the invention, not uses of any other natural language processing system.” Apple IPR 6. The Board rejected that such prior use was found in rules regarding how the system interprets current word or phrase input. Id. We find that the Apple IPR discussed a user’s selection among possible choices, but also addressed that the “case” required use of the system of the ’798 invention. Id. at 5–6. Thus, we do not agree we misapprehended the meaning of the claim language. Req. Reh’g 2.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information” to exclude clarifications from users. Id. at 5–6, 7–11. Petitioner argues that our Institution Decision adopts Patent Owner’s narrow construction and finds that “clarifying prompts” in grounds including Weber are not “case information.” Id. at 7–8. Our Institution Decision found that Petitioner did not persuasively and sufficiently assert how the prior art disclosed the “case information.” Dec 19–20. Our determination was based on the sufficiency of Petitioner’s evidence and argument in the regarding whether Weber’s prompting the user for information, which was contested by Patent Owner, teaches or suggests “information about prior instances of use of the natural language processing method.” Dec. 19–20 (emphasis added). Petitioner’s arguments does not identify any evidence we overlooked or misapprehended. Req. Reh’g 7–8. Instead, Petitioner characterizes our Institution Decision as broadly excluding user prompts. Our determination was based on the full claim construction, which is supported by the Apple IPR’s emphasis of “prior instances of use of the natural language processing method.” Apple IPR 5–6; Dec. 19–20.” slip op. at 5
Claim constructionPatents in suitUS 7,177,798 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Dynamics, Inc.Rehearing deniedPTAB · Oct 13, 2020 · IPR2020-00504 · APJ Trevor M Jefferson · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no error or abuse of discretion in its decision to institute inter partes review.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARDS “The burden of showing a decision should be modified lies with the party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019) (emphasis added). When rehearing a decision on petition, the Board will 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: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the fact that there is a stay in the district court proceeding, and ignored the duplications of efforts at the pending ITC proceeding for factor 1.” Req. Reh’g 6. We disagree with Patent Owner’s characterization of our analysis under Apple v. Fintiv factor 1. For factor 1, we merely stated that the district court’s stay weighed against exercising discretion to deny institution, and that the duplicative efforts with the ITC proceeding must be considered further in Apple v. Fintiv factors 2 and 4. Dec. 9–10. Patent Owner argues “[g]iven that trial has already begun, Fintiv factor 1 should have been determined in favor of denial.” Req. Reh’g 7. But the proximity of the trial date to the Board’s projected statutory deadline is exactly what is considered under Apple v. Fintiv factor 2. See Dec. 10. Likewise, Patent Owner argues “[r]elitigating the exact same issues petitioner asserted in its final invalidity contentions at the ITC cannot be considered to be efficient, nor a sign of ‘integrity of the system.’” Req. Reh’g. 6. This, however, is considered under Apple v. Fintiv factor 4. See Dec. 11–12. In sum, Patent Owner argues we should have considered Apple v. Fintiv factors 2 and 4 under factor 1. See Req. Reh’g 6–7. We do not agree with this contention. Patent Owner does not show we misapprehended or overlooked any fact, evidence, or legal issue in rendering our Institution Decision, regardless of the Apple v. Fintiv factor under which it was considered. In any case, we considered all factors, including factors 1, 3, and 4, in concluding that the balance of the Apple v. Fintiv factors weighed against exercising discretion to deny institution. Thus, Patent Owner has not demonstrated we misapprehended or overlooked any fact in our Apple v. Fintiv factor 1 analysis. B.” slip op. at 3
Discretionary denialPatents in suitUS 10,223,631 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Dynamics, Inc.Rehearing deniedPTAB · Oct 13, 2020 · IPR2020-00502 · APJ Trevor M Jefferson · IPR · Rehearing
The Board denied Patent Owner’s request for rehearing, finding no error or abuse of discretion in its decision to institute review of claims 1–20.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019) (emphasis added). When rehearing a decision on petition, the Board will 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: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv factors 2 and 4 under factor 1. See Req. Reh’g 6–7. We do not agree with this contention. Patent Owner does not show we misapprehended or overlooked any fact, evidence, or legal issue in rendering our Institution Decision, regardless of the Apple v. Fintiv factor under which it was considered. In any case, we considered all factors, including factors 1, 3, and 4, in concluding that the balance of the Apple v. Fintiv factors weighed against exercising discretion to deny institution. Thus, Patent Owner has not demonstrated we misapprehended or overlooked any fact in our Apple v. Fintiv factor 1 analysis. B.” slip op. at 4
Discretionary denialPatents in suitUS 10,032,100 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Dynamics Inc.Rehearing deniedPTAB · Oct 5, 2020 · IPR2020-00499 · APJ Georgianna W Braden · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no error or abuse of discretion in its decision to institute review of claims 1 and 5–8 despite the Fintiv arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. Standard for Reconsideration When rehearing a decision on petition, the Board will 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: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the fact that there is a stay in the district court proceeding, and ignored the duplications of efforts at the pending ITC proceeding for factor 1.” Req. Reh’g 6. We disagree with Patent Owner’s characterization of our analysis under Apple v. Fintiv factor 1. For factor 1, we merely stated that the district court’s stay weighed against exercising discretion to deny institution, and that the duplicative efforts with the ITC proceeding must be considered further in Apple v. Fintiv factors 2 and 4. Dec. 11–13.” slip op. at 3
Discretionary denialPatents in suitUS 8,827,153 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Dynamics Inc.Rehearing deniedPTAB · Sep 18, 2020 · IPR2020-00505 · APJ Jon M Jurgovan · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, finding no misapprehended or overlooked facts or abuse of discretion in its decision to institute review.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv factors 2 and 4 under factor 1. We do not agree with this contention. Apple v. Fintiv recognizes there is some overlap among the factors (Paper 11 at 6), so the same facts could apply to multiple factors. Appellant does not show that we misapprehended or overlooked any fact in rendering our Institution Decision, regardless of the Apple v. Fintiv factor under which it was considered. In any case, we considered all factors, including factors 1, 2 and 4, in concluding that the Apple v. Fintiv factors weighed against exercising discretion to deny institution.” slip op. at 4
Discretionary denialPatents in suitUS 10,255,545 - Kemet Electronics, Corp. / Vishay Americas, Inc. v. Mec Resources, LLCAll claims unpatentablePTAB · Aug 11, 2020 · IPR2019-00583 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Franco- and Amada-based combinations with Shafer and, for dependent claims, additional references.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that “a person of ordinary skill in the art (‘POSITA’)” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“1. Enhanced Inductance Patent Owner proposes construing the term “enhanced inductance” to mean “the increase in inductance of the inductor described by the ’390 patent in comparison to the same inductor containing the same number of winding turns, but without the magnetic resin layer embedding the conducting coil.” PO Resp. 5 (citing Ex. 1001, 3:64–6:22; Ex. 2009 ¶ 31). Patent Owner argues that “[t]he specification contains tables that describe the ’390 patent’s ‘Enhancement in Inductance’ in terms of ‘factors of inductance enhancement’ compared with a baseline ‘Inductance per unit winding turn.’” Id. Patent Owner also contends that the term “enhanced inductance” does not include EMI properties because the ’390 patent “specifically distinguishes ‘increased inductance’ from ‘reduced EMI effect and magnetic leaks.’” Id. at 5–6 (citing Ex. 1001, 3:27–31; Ex. 2009 ¶ 32). Petitioner opposes Patent Owner’s proposed construction. Pet. Reply 6–7. Petitioner argues that the ’390 patent does not limit the term “enhanced inductance” to “a single metric.” Id. at 6 (citing Ex. 1001, 1:6–9, 1:50–53, 3:56–62). According to Petitioner, the term “enhanced inductance” refers to “a number of features, including greater inductance per unit volume, reduced EMI interference, and reduced magnetic leakage.” Id. at 6– 7 (citing Ex. 1001, code (57), 1:6–14, 1:50–58, 2:37–50, 3:27–31). The ’390 patent describes an inductor with “improved” inductance and, more specifically, with “increased inductance per unit volume.” Ex. 1001, 1:6–9, 1:50–53. Consistent with that description, the parties appear to agree that the term “enhanced inductance” refers to “increased inductance per unit volume.” See PO Resp. 5 (“the increase in inductance of the inductor . . . in comparison to the same inductor containing the same number of winding turns”); Pet. Reply 6 (“greater inductance per unit volume”). Thus, based on the specification, we also agree that the term “enhanced inductance” means “increased inductance per unit volume.” As discussed above, Patent Owner further asserts that the increased” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“9. Reasons for Combining Franco and Shafer Petitioner presents evidence that a person of ordinary skill in the art would have had reason to combine the cited teachings of Franco and Shafer. Pet. 10–12 (citing Ex. 1003 ¶¶ 35–41). We agree with and adopt Petitioner’s reasoning. Specifically, Franco and Shafer relate to the same field of endeavor as the ’390 patent, namely, inductors. Pet. 8–10; Ex. 1001, 1:6–9; Ex. 1003 ¶ 36; Ex. 1005, 300; Ex. 1007, 1:25–27. It would have been obvious to modify Franco to embed the outer periphery of Franco’s coil in Shafer’s magnetic molding material using compression molding. Pet. 10– 12; Ex. 1003 ¶¶ 35, 40. Doing so would have been obvious because it would provide Franco’s inductor with the following benefits: 1) magnetic shielding; 2) physical protection; 3) increased inductance; 4) decreased size for a given inductance; and 5) reduced manufacturing costs.10 Pet. 10–12; Ex. 1003 ¶¶ 37–40. Further, combining the cited teachings of Franco and Shafer would have been within the level of ordinary skill in the art. Pet. 12; Ex. 1003 ¶ 41. 10 Petitioner also asserts that the Franco and Shafer combination would minimize air spaces in Franco’s inductor. Pet. 11–12. We do not rely on that particular reason to combine Franco and Shafer. Patent Owner responds that Petitioner fails to explain how and why Franco and Shafer would have been combined. PO Resp. 9–12. Patent Owner’s argument is not persuasive. As discussed above, Petitioner explains how Franco and Shafer would have been combined, namely, by embedding the outer periphery of Franco’s coil in Shafer’s magnetic molding material using compression molding. Pet. 10–12; Ex. 1003 ¶¶ 35, 40. Petitioner also explains why it would have been obvious to combine Franco and Shafer, specifically, because it would provide Franco’s inductor with the following benefits: 1) magnetic shielding; 2) physical protection; 3) increased inductance; 4) decreased size for a given inductance; and 5) reduced manufacturing costs.11 Pet. 10–12; Ex. 1003 ¶¶ 37–40. a. Patent Owner’s Arguments Regarding How to Combine Franco and Shafer Patent Owner responds that Petitioner “simply state[s] that the proposed combination of Franco and Shafer ‘would have been within the level of ordinary skill in the art,’” which “should be given no probative value.” PO Resp. 12–13; see PO Sur-reply 5–8. Patent Owner’s argument is not persuasive. Shafer teaches that its compression molding process and magnetic molding material can be used to embed an inductor coil, which supports Petitioner’s argument that it would have been within the level of ordinary skill in the art to use Shafer’s compression molding process and magnetic molding material to embed the outer periphery of Franco’s coil. Pet. 15–17; Ex. 1007, 3:24–26, 4:1–6, 5:8–10, Fig. 6. Further, Petitioner’s declarant, Dr. Erickson, explains that it would have been within the level of 11 Any one of these identified benefits individually provides a sufficient reason to combine Franco and Shafer.” slip op. at 25
- ExcludeMotion to exclude, deniedDenied
“sufficient to support a finding that the item is what the proponent claims it is. Fed. R. Evid. 901. Here, Exhibits 2001 and 2002 indicate that they are excerpts from an Encarta World English Dictionary. Ex. 2001; Ex. 2002. Petitioner does not provide any specific reason for us to believe that Exhibits 2001 and 2002 are not what they purport to be. See Pet. Mot. Excl. 2–3. Absent a persuasive explanation, Petitioner’s Motion to Exclude is denied with respect to Exhibits 2001 and 2002.” slip op. at 84
Patent outcomesUS 6,137,390 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,137,390
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.