• Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting v. Cao Lighting, Inc.Some claims unpatentable
  PTAB · Sep 28, 2023 · IPR2022-00848 · APJ Brian D Range · IPR · Final written decision

  Claims 21, 22, 25, 26, 28–30, 32–36, 40, 42–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 are unpatentable under § 103; claim 41 is not shown …

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 18 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52, EPRC 1:32. One requirement of this apparatus is that it comprise “a semiconductor chip” (id. at 9:66) where “said semiconductor chip is a light emitting diode (LED) chip EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction (Resp. 14) of “said semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as referring to “a semiconductor LED chip capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor LED chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 53 (quoting Ex. 1008, 10). Notably, claim 18 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 9

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’770 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 16. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’770 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 15

  • Prior constructionPrior construction adoptedTerm construed patent owner constructionDecided for patent owner

    “Delaware held, with respect to related U.S. Patent 6,465,961, construed “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” Resp. 14 (citing Ex. 1024, 15–18). Petitioner responds that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1. We note that the language of claim 18 does not precisely match the language the District Court considered, it is substantively the same. The record supports a construction very similar to the construction the District Court adopts, and we reference the District Court’s reasoning. Ex. 1024, 15– 18. We, thus, construe claim 18’s recitation that “said semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as referring to “a semiconductor LED chip that is capable of emitting light greater than about 40 milliwatts.” It is unnecessary to construe any other claim terms in this Decision because none of the parties’ disputes turn on the meaning of other terms. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 17

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner

    “The facts above are evidence of the Krames reference’s publication as of June 29, 2000, because the facts tend to make the Krames reference’s publication as of June 29, 2000, more probable than it would be without the evidence. See Fed. R. Evid. 401(a) (defining evidence as relevant “if it has any tendency to make a fact more or less probable than it would be without the evidence”). The evidence is sufficient to support publication. Meanwhile, no evidence of record suggests that Krames was not a printed publication as of June 29, 2000. Thus, a preponderance of the evidence supports Krames’s prior art status. Patent Owner argues that Ms. Watters “never establishes a firm date when Krames was purportedly available to the relevant public.” Resp. 21. Patent Owner bases this argument by taking a tortured reading of Ms. Watters’s statement that “[m]embers of the interested public could locate a copy of [the Proceedings] on or after June 29, 2000, the date it was catalogued.” Id. (quoting Ex. 1020, 3); see also Sur-Reply 12–13. The best understanding of Ms. Watters’s statement, in view of the context of Ms. Watters explaining the library’s cataloguing process, is that a member of the interested public had two options: the person could choose to locate the Proceedings on June 29, 2000, or the person could choose to locate the Proceedings after June 29, 2000. Thus, the statement supports public availability as of June 29, 2000.” slip op. at 21

  Patent outcomesUS 6,634,770 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,634,770
• Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentable
  PTAB · Sep 28, 2023 · IPR2023-00129 · APJ Brian D Range · IPR · Final written decision

  Claims 21–40, 42–44, 47–49, 52–53, 56–59, 62–63, 65–68, 71–73, 77–78, 81–82, 85–86, and 88–91 are unpatentable over Begemann, Krames, and Allen; claim 41 is not shown unpatentable.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “In the Reply, Petitioner uses the Krames declaration (Ex. 1028) to argue, for example, that a person of ordinary skill in the art would have used a lower amperage than the 1.5 A dc that Patent Owner’s Response focuses on. Reply 8 (citing Ex. 1028 ¶ 22). This use of the Krames declaration is timely because it responds to an argument Patent Owner makes in the Patent Owner Response. 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in . . . patent owner response.”). As to relevancy and whether the Krames declaration is applicable to the facts of this case, the issues at hand are (1) whether or not a person having ordinary skill would have had reason to use the Krames LED with Begemann with a reasonable expectation of success and (2) whether or not the Krames LED is capable of outputting light at greater than about 40 milliwatts. Again, we emphasize that claim 21 does not recite a method where the LED within the recited semiconductor light source actually outputs greater than about 40 milliwatts. The Krames declaration is relevant to the facts of this case because the declaration has bearing on whether or not a person of ordinary skill in the art would have combined the Krames reference’s LED with Begemann’s lightbulb design. See, e.g., Ex. 1028 ¶ 22. Patent Owner argues that evidence must be relevant to motivation to combine “an LED chip from the Krames article (operating at 1.5 amps to produce 170 milliwatts of output)” but claim 21 has no “operating at 1.5 amps to produce 170 milliwatts of output” requirement. What is relevant is that Krames discloses a single chip that has the capability of outputting more or less light depending on operating conditions. Pet. Opp. 3; see also Ex. 1008, 8 (providing that Figure 12 of the Krames reference is described as illustrating “[l]ight output vs. current characteristic of a blue … 1x1 mm2 AlGaInN LED in a power package, compared to a conventional AlGaInN LED in a 5 mm lamp a package”). Because claim 21 does not require actually running the recited LED at any particular wattage or amperage, it is appropriate for the Krames declaration to rebut Patent Owner’s argument that a person of ordinary skill would not have considered using the Krames LED with Begemann at high amperage by explaining that a person of ordinary skill in the art would have considered using the exact same Krames LED with Begemann at a low amperage instead and that at this lower amperage the Krames LED would generate an amount of heat that would be easily dissipated by Begemann’s lamp while still providing an optical output of “greater than about 40 milliwatts” as recited by claim 21. Ex. 1028 ¶¶ 23–24 (citing Ex. 1008, 8). The fact that the Krames LED is configured to run at the high amperage if desired for a different application does not negate the rationale for combining the Krames LED to run at a lower amperage.” slip op. at 14

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Patent Owner’s claim construction is well-supported by the record including the reasoning provided by the California and Delaware district courts. Ex. 2002, 19–21 (California district court explaining why the “reflective layers” must be distinct layers based on how claim 8 is structured and also explaining why the amount of reflection must be non-negligible); Ex. 2003, 2, 13 (Delaware district court explaining why reflection has to be more than negligible but need not reflect more light than the light absorbed or transmitted). We, thus, agree that “first and a second reflective layers . . . 10 Patent Owner’s proposed claim construction combines various statements made by the district courts into one statement. Resp. 15 (citing Ex. 2002, 19–21; Ex. 2003, 2, 13). serving to reflect light emitted by said active layer” means that the “first and second reflective layers are distinct from each other and reflect more than negligible light.” We further note that the preponderance of the evidence supports that as little as one percent light reflectance is “non-negligible” in this context. Reply 4; also Ex. 1032, 188:7–14 (Patent Owner’s witness, Dr. Shealy, testifying that reflection “on the order of one percent” would be more than negligible); see also Tr. 53 (counsel for Patent Owner agreeing that Dr. Shealy opined that “three percent reflection is enough to be non-negligible”).” slip op. at 21

  Patent outcomesUS 6,465,961 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,465,961
• Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentable
  PTAB · Sep 28, 2023 · IPR2023-00123 · APJ Brian D Range · IPR · Final written decision

  Claims 21–40, 42–44, 47–49, 52–53, 56–59, 62–63, 65–68, 71–73, 77–78, 81–82, and 85–91 are unpatentable over Begemann, Krames, and Allen; claim 41 was not shown unpatentable.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 21 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52. One requirement of this apparatus is that it comprise “at least one semiconductor chip” (id. at 10:1) where the “at least one semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts.” Id. at EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction of “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as meaning “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 54 (quoting Ex. 1008, 10). Notably, claim 21 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 12

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “The facts above are evidence of the Krames reference’s publication as of June 29, 2000, because the facts tend to make the Krames reference’s publication as of June 29, 2000, more probable than it would be without the facts. See Fed. R. Evid. 401(a) (defining evidence as relevant “if it has any tendency to make a fact more or less probable than it would be without the 13 We note that Dr. Lebby does not directly state when the Proceedings were widely available. See Sur-Reply 14. evidence”). The evidence is sufficient to support publication. Meanwhile, no evidence of record suggests that Krames was not a printed publication as of June 29, 2000. Thus, a preponderance of the evidence supports Krames’s prior art status. Patent Owner argues that Ms. Watters “never establishes a firm date when Krames was purportedly available to the relevant public.” Resp. 25. Patent Owner bases this argument by taking a tortured reading of Ms. Watters’s statement that “[m]embers of the interested public could locate a copy of [the Proceedings] on or after June 29, 2000, the date it was catalogued.” Id. (quoting Ex. 1020, 3); see also Sur-Reply 13–14. The best understanding of Ms. Watters’s statement, in view of the context of Ms. Watters explaining the library’s cataloguing process, is that a member of the interested public had two options: the person could choose to locate the Proceedings on June 29, 2000, or the person could choose to locate the Proceedings after June 29, 2000. Thus, the statement supports public availability as of June 29, 2000.” slip op. at 25

  Patent outcomesUS 6,465,961 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,465,961
• Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentable
  PTAB · Sep 28, 2023 · IPR2022-00847 · APJ Brian D Range · IPR · Final written decision

  Claims 21, 22, 25, 26, 28–30, 32–36, 40, 42–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 are unpatentable over Begemann, Krames, and Allen; claim 41 is …

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s argument is unpersuasive because the Krames declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 21 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52. One requirement of this apparatus is that it comprise “at least one semiconductor chip” (id. at 10:1) where the “at least one semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts.” Id. at EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction of “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as meaning “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 54 (quoting Ex. 1008, 10). Notably, claim 21 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 12

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20

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

    “It is unnecessary to construe any other claim terms in this Decision because none of the parties’ disputes turn on the meaning of other claim terms. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 22

  Patent outcomesUS 6,465,961 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,465,961
• Parrot S.A. / Parrot, Inc. v. Drone Technologies, Inc.Some claims unpatentable
  PTAB · Oct 20, 2015 · IPR2014-00730 · APJ Howard B Blankenship · IPR · Final written decision

  Claims 1–3, 5–14 are unpatentable: claims 1–3, 5, 10–14 anticipated by Smith; claims 6–7 and 8–9 obvious over Smith with Barr and Fouche, respectively. Claims 4 and 15 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenMixed

    “construe “difference of motion” in claim 4 as relative motion. Pet. Reply 5– 6. Petitioner in its Reply does not, however, provide a persuasive explanation with respect to how the signal sent by the remote controller in Smith, or its “target motion signal” in the terms of claim 4, may contribute to getting the relative motion between the remote controller and the remotecontrolled device.2 Petitioner submits that “[i]t bears noting, moreover, that the ‘target motion signal’ (STAR3) of Fig. 5 of the ’071 Patent, also is a combination of the remote-controller’s measured orientation and the angle of the joystick, just as in Smith. Ex. 1001, 6:39-51. In that embodiment, it is ‘STAR3’ that is used to calculate the ‘difference of motion.’” Pet. Reply. 7. Petitioner refers to no evidence of record, however, to establish that this “third operation mode” described by the ’071 patent necessarily sends, as in Smith, a target motion signal that is the summation of the terrestrial magnetism signal and the orientation of the joystick relative to the remote 2 Although we did not institute trial on the alternative ground that claim 4 would have been obvious over Smith and Fouche (or the knowledge of a person of ordinary skill in the art) (Pet. 29), the alternative ground for obviousness would suffer from the same deficiency as the anticipation ground. controller. Although attorney arguments are helpful when directing us to evidence in the record, the arguments themselves do not constitute evidence. Arguments of counsel cannot take the place of evidence in the record. See, e.g., Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). In consideration of the foregoing, we conclude that Petitioner has not demonstrated, by a preponderance of the evidence, that claim 4 is unpatentable as anticipated by Smith.” slip op. at 17

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “The ’071 patent, thus, makes clear that, in the preferred embodiment of the invention, “detecting” the remote controller’s motion is detecting the change in terrestrial magnetism relative to the horizontal ground surface as the controller is moved or rotated, with the resulting terrestrial magnetism sensing signal SG changing accordingly. The “terrestrial magnetism” of the Earth “directs to a fixed direction parallel to the horizontal ground surface.” Id. at col. 3, ll. 63–65. Detecting the orientation of a remote controller with respect to magnetic North is, at the least, within the scope of “detect[ing] the remote controller’s motion” as claimed. “A claim construction that excludes the preferred embodiment ‘is rarely, if ever, correct and would require highly persuasive evidentiary support.’” Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583–84 (Fed. Cir. 1996)).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “in orientation.” Pet. 17. As Petitioner indicates (id.), the ’071 patent does not provide a definition of the relevant terms different from the ordinary meaning of the words. At the preliminary proceeding stage, we interpreted “difference of motion” simply to mean, under the required broadest reasonable interpretation, relative motion. Dec. on Inst. 10. That interpretation is consistent with the language of claim 4. Claim 4 recites that the “calculated result” — the calculated current motion of the remote-controlled device — is compared with the target motion signal to get the “difference of motion” (relative motion) between the remote-controlled device and the remote controller. In relation to Petitioner’s proffered interpretation, because a change in orientation is a type of motion, relative orientation would be a type (or species) of “difference of motion.”” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Thus, “detecting” the remote controller’s motion is detecting the change in terrestrial magnetism relative to the horizontal ground surface as the controller is moved or rotated, with the resulting terrestrial magnetism sensing signal SG changing accordingly. Patent Owner has not pointed to any disclosure in the ’071 patent of the remote controller storing a previous orientation for comparison with a present orientation to effect “detect[ing] the remote controller’s motion” as claimed. We, therefore, remain convinced that detecting the orientation of a remote controller with respect to magnetic North — which Patent Owner admits Smith to disclose — is, at the least, within the scope of “detect[ing] the remote controller’s motion” as claimed.” slip op. at 13

  Patent outcomesUS 7,584,071 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 7,584,071
• LG Chem, Ltd. v. Celgard, LLCSome claims unpatentable
  PTAB · Oct 5, 2015 · IPR2014-00692 · APJ Donna M Praiss · IPR · Final written decision

  Claims 1–11 are unpatentable as obvious: claims 7–10 over Tojo and claims 1–6 and 11 over Tobishima and Tojo; the other instituted grounds were not proven.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner

    “Our reviewing court, however, has “cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Patent Owner does not direct us to any specific disclosure in the Specification of the ’586 patent clearly limiting or defining dendrite blocking as impeding dendrite growth for the entire intended life of a rechargeable battery. Accordingly, because the ’586 patent does not clearly disclaim the scope of dendrite blocking in the manner Patent Owner advances, we are not persuaded that we should limit the claims to the asserted primary goal, or preferred result, of the ’586 patent. We, therefore, decline to adopt Patent Owner’s proffered claim construction.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “and Dr. Abraham, as well as the Handbook’s disclosure that separator pores as small as 0.1 µm are effectively barn doors, which cannot prevent electronic shorts caused by dendrite growth, Patent Owner persuades us that Tojo’s porous ceramic composite layer is not capable of hindering, interrupting, or delaying the passage, progress, or course of dendrite growth, with any degree of effectiveness that prevents electronic shorting. That is, Patent Owner persuades us that Tojo’s separators do not include a ceramic composite layer that is adapted to at least block dendrite growth and to prevent electronic shorting, as recited in claim 1 of the ’586 patent.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “As discussed above, Petitioner does not persuade us that it has established that Tojo’s separator includes that feature, because of the pores in Tojo’s ceramic composite layer. Because Petitioner relies on this limitation being inherently present in Tojo as argued with respect to claim 1 (Pet. 19, 23), Petitioner does not provide any evidence to support the obviousness of this limitation. In the context of an obviousness analysis, inherency “‘may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’” In re Oelrich, 666 F.3d 578, 581 (C.C.P.A. 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)). An inherent disclosure is one that is “sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function.” Id.; Par Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (“[T]he concept of inherency must be limited when applied to obviousness, and is present only when the limitation at issue is the ‘natural result’ of the combination of prior art elements.”) (quoting In re Oelrich, 666 F.2d at 581). As discussed above, the preponderance of the evidence leads us to conclude that Tojo’s disclosure would not necessarily produce pores with a tortuosity sufficient to block dendrite growth. Thus, even if an ordinary artisan were to find it obvious to try one of the specific matrix materials recited in dependent claim 4 (id. at 19), the resulting ceramic composite layer required by both claim 4 and claim 12 would, nonetheless, have the pores that Tojo teaches should be present in that layer. Therefore, a preponderance of the evidence does not support a finding that it would have been obvious that the separator disclosed by Tojo would result in a separator having the dendrite-blocking feature required by claims 4 and 12. Accordingly, because Petitioner has not shown that Tojo teaches or suggests all of the features required by claims 4 and 12, we conclude that Petitioner has not established by a preponderance of the evidence that claims 4 and 12 are unpatentable under 35 U.S.C. § 103 as obvious over Tojo.” slip op. at 21

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Even disregarding the procedural infirmities in Patent Owner’s Response, however, Petitioner persuades us that the evidence of secondary considerations is not entitled to substantial weight, because Patent Owner has not established a sufficient nexus between the merits of the claimed subject matter and that evidence. Petitioner persuades us also that the evidence of secondary considerations is not reasonably commensurate in scope with the claimed subject matter.” slip op. at 33

  Patent outcomesUS 6,432,586 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,432,586
• Facebook, Inc. / Linkedin Corp. et al. v. Software Rights Archive, LLCSome claims unpatentable
  PTAB · Jan 30, 2015 · IPR2013-00480 · APJ Barbara A Parvis · IPR · Final written decision

  Claim 14 was held unpatentable as anticipated by Fox Thesis; claims 1, 5, 15, and 16 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “determine whether “cluster links” means relationships between two nodes, which are represented in data stored in a computer. Claim 1 recites a method of analyzing data in a database with indirect relationships using links and nodes. Claim 14 similarly recites a method for representing the relationship between nodes, using stored direct links, paths, and candidate cluster links. As explained in the ’494 Patent specification, data in the database may be represented as a node. Ex. 1001, 12:29–33. Exemplary nodes include an object or a portion of an object, a document or section of a document, and a World Wide Web page. Id. at 12:35–38. The ’494 Patent specification states that a link is a “relationship between two nodes.” Id. at 12:65–66. The ’494 Patent specification continues, “[a] link [] can be represented by a vector or an entry on a table and contain information for example, a from-node identification [] (ID), a to-node ID [], a link type [], and a weight.” Id. at 13:3–6. As described in the ’494 Patent specification, a link is represented in data stored in a computer. We, therefore, determine that “cluster links” means relationships, which are represented in data stored in a computer and are used for grouping interrelated nodes.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “As described in Fox SMART, the concentration tests that are cited by Petitioner are performed as part of forming the cluster tree. Id. Petitioner does not identify disclosure in Fox SMART of deleting clusters other than those that simply overlap, or duplicate, other clusters. Overlapping clusters are deleted following a routine that identifies plausible clustering with “no limit on overlap.” Id. Additionally, Fox SMART includes code that collects orphans. Id. at 52. Petitioner, however, has not shown that Fox SMART describes a subset which does not include these orphans. Dr. Fox’s supplemental testimony that “Fox SMART teaches that potential (i.e., candidate) clusters are rejected (‘deleted’) if they fail any one of these tests” (Ex. 1028 ¶ 281 (citing Ex. 1005, 51)) suggests that the terms “rejected” and “deleted” are the same. We do not agree. In view of Dr. Fox’s testimony in both of his Declarations and the testimony of Dr. Jacobs, we find that one of ordinary skill in the art reasonably would have understood Fox SMART as describing deleting overlap that had been generated by the immediately preceding software routine. Additionally, we find that one of ordinary skill in the art reasonably would have understood Fox SMART as describing that the tests referred to by Dr. Fox are processed during formation of the tree. We, therefore, determine that Dr. Fox’s testimony does not address persuasively the requirement in claim 1 of deriving a subset of the already generated candidate cluster links.” slip op. at 15

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “FURTHER ORDERED that Patent Owner’s Motion to Amend to cancel claims 8, 10, 11, 35, and 40 of the ’494 Patent is GRANTED;” slip op. at 24

  • ExcludeMotion to exclude, deniedDenied

    “arguments for the first time. Paper 44, 1. A reply may respond to arguments raised in the corresponding patent owner response. 37 C.F.R. § 42.23(a). Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the unpatentability of a claim. Office Patent Trial Practice Guide, 77 Fed.Reg. 48,756, 48,767 (Aug. 14, 2012). We determine that the evidence presented in the Reply Fox Declaration that is discussed in this Decision properly responds to arguments raised in the Patent Owner Response. Additionally, we do not rely on evidence in the Reply Fox Declaration in our determination that Petitioner established by a preponderance of the evidence that claim 14 is unpatentable. For the reasons given, we deny Patent Owner’s Motion to Exclude.” slip op. at 22

  Patent outcomesUS 5,832,494 mixed
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 5,832,494
• Facebook, Inc. / Linkedin Corp. et al. v. Software Rights Archive, LLCSome claims unpatentable
  PTAB · Jan 29, 2015 · IPR2013-00481 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 12 and 22 are unpatentable over Fox Thesis, Fox SMART, and Envision under § 103; claim 21 was not shown unpatentable because the art did not teach deriving actual cluster links from generated candidate …

  RulingsFinal written decision

  • BurdenMixed

    “The claim chart persuasively reads all elements of each of claims 12 and 22 onto the teachings of Fox Thesis, Fox SMART, and Envision, taken together. Despite the counter-arguments in Patent Owner’s Response, and the evidence cited therein, which we have also considered, Petitioner has shown by a preponderance of the evidence that claims 12 and 22 of the ’571 Patent are unpatentable, under 35 U.S.C. § 103, as they would have been obvious over the combination of Fox Thesis, Fox SMART, and Envision. Petitioner, however, has not shown by a preponderance of the evidence that claim 21 of the ’571 Patent is unpatentable, under 35 U.S.C. § 103, as obvious over the combination of Fox Thesis, Fox SMART, and Envision. 1.” slip op. at 15

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “As taught in Fox SMART, the concentration tests that are cited by Petitioner are performed as part of forming the cluster tree. Id. Petitioner does not identify a teaching in Fox SMART of deleting clusters other than those that simply overlap, or duplicate, other clusters. Overlapping clusters are deleted following a routine that identifies plausible clustering with “no limit on overlap.” Id. Additionally, Fox SMART includes code that collects orphans. Id. at 52. Petitioner, however, has not shown that Fox SMART teaches a subset, which does not include these orphans. Dr. Fox’s supplemental testimony that “Fox SMART teaches that potential (i.e., candidate) clusters are rejected (‘deleted’) if they fail any one of these tests” (Ex. 1032 ¶ 281 (citing Ex. 1005, 51)) suggests that the terms “rejected” and “deleted” are the same. We do not agree. In view of Dr. Fox’s testimony in both of his Declarations and the testimony of Dr. Jacobs, we find that one of ordinary skill in the art reasonably would have understood Fox SMART as teaching deleting overlap that had been generated by the immediately preceding software routine. Additionally, we find that one of ordinary skill in the art reasonably would have understood Fox SMART as teaching that the tests referred to by Dr. Fox are processed during formation of the tree. We, therefore, determine that Dr. Fox’s testimony does not address persuasively the requirement in claim 21 of deriving a subset of the already generated candidate cluster links. In light of the Declaration by Patent Owner’s Declarant, Dr. Jacobs, we determine that Petitioner has not shown by a preponderance of the evidence that the combination of Fox Thesis, Fox SMART, and Envision teaches deriving actual cluster links. For the foregoing reasons, Petitioner has not established that claim 21 of the ’571 Patent is unpatentable, under 35 U.S.C. § 103, as obvious over the combination of Fox Thesis, Fox SMART, and Envision.” slip op. at 27

  • ExcludeMotion to exclude, deniedDenied

    “Owner contends that the Reply Fox Declaration should be excluded in accordance with Federal Rule of Evidence (“FRE”) 702. Paper 44, 1. In particular, Patent Owner contends that the Reply Fox Declaration should be excluded because FRE 702 precludes admission of expert testimony unless “the testimony is based on sufficient facts or data, the testimony is the product of reliable principles and methods, and the expert has reliably applied the principles and methods to the facts of the case.” Id. With regard to this objection, we note that under 37 C.F.R. § 42.65(a), “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” Consequently, this objection properly goes to the weight to be given to Dr. Fox’s testimony, and not to its admissibility. It is within our discretion to assign the appropriate weight to the testimony offered by Dr. Fox. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). When weighing evidence, we are capable of determining whether the prior art references render obvious the challenged claims without being confused, misled or prejudiced by Dr. Fox’s testimony.” slip op. at 32

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “Claim 21 recites a method of displaying information about a network, which includes a determination regarding hyperjump data. As explained in the ’571 Patent specification, exemplary hyperjump data includes hyperjump links, which connect web pages, web sites, and documents on the web. Ex. 1001, 48:37–39. The specification of the ’571 Patent states that a link is a “relationship between two nodes.” Id. at 13:5–6. The ’571 Patent specification continues, “[a] link [] can be represented by a vector or an entry on a table and contain information for example, a from-node identification [] (ID), a to-node ID [], a link type [], and a weight.” Id. at 13:9–12. As described in the ’571 Patent specification, a link is represented in data stored in a computer. We, therefore, construe “cluster links” in light of the specification of the ’571 Patent to mean relationships, which are represented in data stored in a computer and are used for grouping interrelated nodes. 4. “indirect relationships” and “indirect reference” The term “indirect relationships” is recited in claim 12 and the term “indirect reference” is recited in claim 22. As discussed above, the terms “link” and “relationship” are used interchangeably in the ’571 Patent specification. For the reasons discussed above, therefore, we construe “indirect relationships” to mean indirect relationships that are represented in data stored in a computer. For these same reasons, we construct “indirect reference” to mean an indirect reference that is represented in data stored in a computer.” slip op. at 9

  Patent outcomesUS 6,233,571 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,233,571

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.