- Comcast Cable Communications, LLC v. Entropic Communications, LLCSome claims unpatentablePTAB · Sep 4, 2025 · IPR2024-00430 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–3, 6–10, 14–18, and 22–24 are unpatentable; claims 4–5, 11–13, and 19–21 are not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner
“We agree with Petitioner that the ’690 patent does not limit the term “probe” to channel assessment. Pet. Reply 2–4. Reviewing the intrinsic evidence, the “Technical Field” of the ’690 patent states that “some embodiments relate to channel assessment probes,” implying others do not. Ex. 1001, 1:13–14. The ’690 patent further states that “receiver determined probes may be used in a variety of applications” including to “discover hidden nodes” and “off-site network diagnosis.” Id. at 2:20–27. In addition, the ’690 patent states that probes may be used for “network maintenance procedures,” to “replicate a potential problem, reach or discover a distant or previously undetected node on the network, or assist with network admissions procedures.” Id. at 4:25–38. Turning to the claims of the ’690 patent, the evidence of record does not establish that the independent claims recite anything unique or specific to channel assessment (although their scope covers that purpose). Furthermore, dependent claim 7 of the ’690 patent recites that the “probe” is used to diagnose a network problem, and dependent claim 13 recites that the “probe” is used to identify a hidden node. Restricting the independent claims to probes used solely for channel assessment would be contradictory to these dependent claims. Littlefuse, Inc. v. Mersen USA EP Corp., 29 F.4th 1376, 1380 (Fed. Cir. 2022) (construction of term in independent claims should not render dependent claims superfluous or lacking scope).” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“We agree with Petitioner that a “physical layer probe” is “a probe that relates to the physical layer.” The term does not appear per se in the specification of the ’960 patent, nor in the prosecution history, but only in claims 9, 17, and 19. However, the term “physical layer” is well-known and is the first layer in the Open Systems Interconnection (OSI) network model. See, e.g., Ex. 1021, 35–40, 69; Ex. 1002 ¶¶ 49–50. The physical layer is used to transmit digital bits over a network, and defines the timing, mechanical, and physical network characteristics required for transmitting the data bits. Hence, a “physical layer probe” is a probe that relates to the physical layer. We need not, and do not, construe the term further to resolve the parties’ dispute. See Realtime, Vivid Techs., supra. Having decided proper constructions for the disputed terms, we proceed in our analysis to consider the parties’ arguments concerning the challenge grounds. In the following sections, we apply the plain meaning of the claim terms, and as necessary, specify what the plain meanings are.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner contends as follows: A POSITA8 would have had a bachelor’s degree in electrical engineering, computer engineering, or a similar discipline, and three to four years of experience working in signal processing and/or communication systems/networks. Additional education may substitute for experience, and significant work experience may substitute for formal education. Pet. 6 (citing Ex. 1002 ¶¶ 115–120). Patent Owner does not dispute Petitioner’s proposed level of skill in the art. We adopt and apply Petitioner’s proposed skill level because it is consistent with the problems and solutions identified in the ’690 patent and the prior art references asserted by Petitioner. In addition, we find the adopted skill level consistent with the education and experience that a POSITA would have had. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)) (citing factors to consider when determining level of ordinary skill in the art).” slip op. at 25
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Hence, we determine that Petitioner has shown by preponderant evidence that the Ranging Request (“probe request”) message includes CID and SS MAC address and other parameters (“first plurality of parameters”) which at least specify the CID (“content payload of the probe”) and the SS MAC address (“second node”) of the Ranging Response.12 We thus proceed to consider Petitioner’s contentions for the remaining limitations of claim 1, which are undisputed, and determine that claim 1 is anticipated by IEEE-802.16.” slip op. at 29
Patent outcomesUS 8,284,690 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,284,690 - PTAB · Sep 6, 2024 · IPR2024-00430 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–24 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’690 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSITA6 would have had a bachelor’s degree in electrical engineering, computer engineering, or a similar discipline, and three to four years of experience working in signal processing and/or communication systems/networks. Additional education may substitute for experience, and significant work experience may substitute for formal education. Pet. 6 (citing Ex. 1002 ¶¶ 115–120). Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (stating that the applied prior art may reflect an appropriate level of skill). For this stage of the proceeding, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Since the parties apply what they contend is the plain and ordinary meaning of the claim terms in their briefs, and have stipulated in the Cox case that the plain and ordinary meaning applies, and Patent Owner argues that the district court’s construction in the Charter case is the plain and ordinary meaning, there is no controversy concerning claim terms that we need to resolve in this Decision. Pet. 6; Prelim. Resp. 10; Ex. 1005, 104–105; Ex. 2001, 2. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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)). At this stage of the proceeding, therefore, we apply the plain and ordinary meaning to the claim terms consistent with their ordinary and customary meaning under 37 C.F.R. § 42.100(b). We note, however, that Patent Owner seems to consider the court’s construction in the Charter case to require that the claimed “probe” must be of a type that can be compared with a reference signal. Prelim. Resp. 10. We question whether all of the different types of probes mentioned and claimed in the ’690 patent would require comparison with a reference signal. See, e.g., Ex. 1001, 2:7–19. However, this is a matter best resolved, if necessary, on a full record at trial.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableUnpatentableMixed
“Prelim. Resp. 23 (citing Ex. 1013, 37) (annotated in red by Patent Owner). IEEE-802.16’s Table 5 shows that the CID is a field of a generic MAC header. Petitioner does not show sufficiently that the CID, located in the header, specifies content payload of a MAC message, as required by limitation 1A. Petitioner alternatively relies on IEEE-802.16’s ranging code index that it contends is another example of data that is in a ranging request parameter and is used for the ranging response payload. Pet. 15 (citing Ex. 1013, 49–51, 204–213, 576–579, 665–66; Ex. 1002 ¶ 149). Patent Owner asserts that the portions of IEEE-802.16 that Petitioner cites do not disclose that the ranging code index is sent as part of a ranging request message. Prelim. Resp. 25. Although the parts of IEEE-802.16 that Petitioner cites disclose that the ranging code index is sent from the SS to the BS and is included in a ranging response (Ex. 1013, 49–51, 204–213, 576–579, 665–66), the cited parts do not disclose that the SS sends the ranging code index to the BS in a ranging request. Consequently, Petitioner has not established that IEEE- 802.16 anticipates a ranging code index that is a parameter of a ranging request specifying the content payload of the ranging response corresponding to limitation 1A. For the foregoing reasons, on this record, we determine that Petitioner has not shown a reasonable likelihood to prevail in showing that claim 1 is anticipated by IEEE 802.16.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,284,690 - Apple Inc. / Google LLC v. Spacetime3d, Inc.Some claims unpatentablePTAB · Jun 13, 2024 · IPR2023-00577 · APJ David C Mckone · IPR · Final written decision
Claims 14–18 are unpatentable as obvious over either Robertson, Gralla, and Gettman or Sauve and Tsuda; claims 1–13 were not shown unpatentable.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for patent owner
“1. “3D space” and “two-dimensional (2D) space” As we stated in the Institution Decision, at page 20, the parties agree” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“4. Remaining claim terms Based on the record before us, we do not find it necessary to provide” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“predictably improved Sauve’s quick pick interface, and would have promoted space efficiency and conveyed order more clearly. Id. at 59–60 (citing Ex. 1003 ¶ 159). Petitioner further argues that the combination would have exploited spatial memory and more efficient use of screen space and, thus, would have been a differentiator among competing web browsers. Id. at 60–61 (citing Ex. 1003 ¶¶ 160–162). Petitioner argues that a skilled artisan would have had a reasonable expectation of success in making the combination because GUIs, web browsers, and simulated 3D environments were all well-known technologies that had been demonstrated successfully in the real world. Id. at 61 (citing Ex. 1003 ¶ 163). Dr. Fuchs’ testimony has rational underpinning, is logical and well-reasoned, and, accordingly, we give it substantial weight.” slip op. at 64
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Gurley, 27 F.3d at 553. We have considered the portions of Sauve and Tsuda cited by Patent Owner and Dr. Schaefer, and find nothing that would discourage or lead in a direction divergent from the path taken by the inventor. Other than repeating Patent Owner’s argument that Sauve and Tsuda provide drastically different solutions for moving from one active window to another, Dr. Schaefer does not explain why he concludes that the solutions teach away from one another or point to evidence to support that conclusion. Ex. 2014 ¶¶ 225–227.” slip op. at 65
Patent outcomesUS 8,881,048 mixedClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,881,048 - Abbott Diabetes Care Inc v. Dexcom, Inc.Some claims unpatentablePTAB · Nov 1, 2023 · IPR2022-00909 · APJ Scott A Daniels · IPR · Final written decision
Claims 1–4, 19, and 23 are unpatentable as obvious; claims 5 and 12 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“including a “predictive glucose value,” nowhere do we find the written description or drawings to have delineated such a second function expressly as “the present invention.” See, generally, Ex. 1001; see also Evolusion Concepts, Inc. v. HOC Events, Inc., 22 F.4th 1361, 1367 (Fed. Cir. 2022) (“We have repeatedly held that ‘it is not enough that the only embodiments, or all of the embodiments, contain a particular limitation to limit claims beyond their plain meaning.’”) (citation omitted). And, regardless of the exact wording, the concern we have is that without a persuasive, express, indication in the specification that the “second function” is specifically limited to “predicting glucose values,” it is a disfavored path to read limitations into the claims. Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import limitations into a claim that are not expressly part of may not be read into a claim when the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). The facts and written description here appear to fall more squarely into the category of cases where it is not enough to simply point to embodiments in the specification including the unrecited claim limitation. See Rambus Inc. v. Infineon Techs. Ag, 318 F.3d 1081, 1094 (Fed. Cir. 2003) (Even in cases where a “present invention” statement is provided, the Federal Circuit has explained that ‘[w]hile clear language characterizing ‘the present invention’ may limit the ordinary meaning of claim terms, . . . such language must be read in context of the entire specification and the prosecution history.”) (citation omitted); see also In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.”).” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“is any disagreement about the meaning of “a second function” apart from the argument by Patent Owner that the second function should be understood to include “a predictive glucose value.” We are not apprised of any reason for Petitioner to provide an express construction for “second function” in this case. The plain and ordinary reading of limitation 1b is a method step of “evaluating sensor data using a second function to determine whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Ex. 1001, 48:39–41. As far as “second function” goes, the claim language is clear on its face that the second function “determine[s] whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Id. Patent Owner has not offered any construction, nor apart from criticizing Petitioner, indicated in any manner that the “second function” as recited in claims 1 and 19 requires a construction. Our understanding of “second function” is consistent with the specification of the ’215 patent. A plain reading of the specification reveals that the first criteria relates to the claimed “first function,” and the “second criteria” relates to the claimed “second function.” See, e.g., Ex. 1001 3:44–49 (The ’215 Patent describing “a processor configured to: evaluate sensor data using a first function to determine whether a real time glucose value meets one or more first criteria; evaluate sensor data using a second function to determine whether a predicted glucose value meets one or more second criteria.”). The specification description is therefore mostly consistent with the recitations in claim 1 with respect to the first and second functions and relative first and second criteria. Compare id., with Ex. 1001, 48:36–41.” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“second function.” PO Resp. 19. However, neither did Patent Owner provide an express construction. See generally id. is any disagreement about the meaning of “a second function” apart from the argument by Patent Owner that the second function should be understood to include “a predictive glucose value.” We are not apprised of any reason for Petitioner to provide an express construction for “second function” in this case. The plain and ordinary reading of limitation 1b is a method step of “evaluating sensor data using a second function to determine whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Ex. 1001, 48:39–41. As far as “second function” goes, the claim language is clear on its face that the second function “determine[s] whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Id. Patent Owner has not offered any construction, nor apart from criticizing Petitioner, indicated in any manner that the “second function” as recited in claims 1 and 19 requires a construction. Our understanding of “second function” is consistent with the specification of the ’215 patent. A plain reading of the specification reveals that the first criteria relates to the claimed “first function,” and the “second criteria” relates to the claimed “second function.” See, e.g., Ex. 1001 3:44–49 (The ’215 Patent describing “a processor configured to: evaluate sensor data using a first function to determine whether a real time glucose value meets one or more first criteria; evaluate sensor data using a second function to determine whether a predicted glucose value meets one or more second criteria.”). The specification description is therefore mostly consistent with the recitations in claim 1 with respect to the first and second functions and relative first and second criteria. Compare id., with Ex. 1001, 48:36–41. slip op. at 34
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Institution Decision we determined, in accordance with Petitioner’s proposal, that a person of ordinary skill in the art at the time of the ’215 patent [w]ould have had a Bachelor’s degree in biomedical engineering, mathematics, statistics, or computer science (or a related or equivalent field), and two or more years of experience researching, developing, designing and/or evaluating (or supervising the same) medical devices for measuring analyte levels, e.g., analyte sensors, including at least some experience in researching, developing, designing and/or evaluating (or supervising the same) methods, systems, or algorithms for providing indicators (e.g., alerts, alarms or other indicators) of analyte levels to users, or equivalent experience. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. Inst. Dec. 8; Pet. 9–10 (citing Ex. 1002 ¶¶ 24–26). Patent Owner states that “DexCom does not challenge Petitioner’s POSA definition (Petition, 9-10) because the Petition fails even if it is adopted.” PO Resp. 9 (citing Ex. 2008 ¶¶ 20–23). ordinary skill in the art, and because Petitioner’s assessment is consistent with the ’215 patent and the asserted prior art, we continue to rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 11
Patent outcomesUS 10,702,215 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,702,215 - PTAB · Jan 26, 2022 · IPR2020-00870 · APJ Frederick C Laney · IPR · Rehearing
The Board denied rehearing of its decision denying institution, finding no overlooked or misapprehended facts that changed its Fintiv analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. 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 burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. admitted” in connection with a request for rehearing. Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (“CTPG”) (citing Huawei Device Co. v. Optis Cellular Tech., LLC, IPR2018-00816, Paper 19 at 4 (PTAB Jan. 8, 2019) (precedential)). Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“the District Court held a hearing regarding venue related issues. Ex. 1044, 6:8–15. During the course of that hearing, the District Court set forth procedures that the parties should follow to address some outstanding venue related issues. Id. at 26:1–10. The District Court also stated that, after the parties followed those procedures and reported back, it would “determine whether [the Court] should leave the current schedule in place or whether [the Court] should enter some kind of a temporary stay to facilitate [additional venue-related discovery].” Id. at 26:11–16. Petitioner argues that this comment by the District Court should tip the Fintiv factor 1 in favor of institution. Reh. Req. 8–9. We disagree. Although the December 20th hearing may indicate the District Court’s willingness to consider whether “some kind of a temporary stay” should be entered to resolve the outstanding venue issues, it provides little, if any, actual evidence that the District Court would, in fact, enter a stay. Even if we were to guess that the District Court would enter a stay, we would still have to speculate further about the length of the “temporary” stay because, if it were for only a few days or weeks, it would still not avoid the concerns of inefficiency and duplicative efforts addressed by Fintiv factor 1. Regarding our alleged failure to apprehend or consider fully Petitioner’s proposed stipulation, we again do not agree. In the Decision, we specifically addressed Petitioner’s proposed stipulation and explained its shortcomings. Dec. 15–16. Although Petitioner clearly does not agree with our analysis, mere disagreement with our opinion is not a valid basis for reconsideration.” slip op. at 10
- Additional discoveryAdditional discovery, grantedAdditional discovery, deniedMixed
“Although Petitioner did bring the District Court’s Orders to our attention in a timely manner, we are not persuaded good cause has been shown to exist for us to consider these Orders. First, the Orders are all from cases that are separate and distinct from the parallel litigation involving the parties before us. Ex. 1040, 1; Ex. 1041, 1; Ex. 1042, 1; Ex. 1043, 1. Second, each Order is limited to cases that are “set for in-person jury trials during December of 2020 and January through February of 2021.” Id. That limitation further diminishes the value of the Orders in this proceeding because the jury trial in the parties’ parallel litigation was scheduled to begin on April 5, 2021 (Ex. 2003, 1). In fact, Petitioner acknowledges that the Orders have “not yet been applied in the underlying litigation.” See Reh. matter to be speculative at best. In the Rehearing Request, Petitioner argues that Exhibits 1040–1043 provide evidence that the parallel litigation may be stayed. Reh. Req. 7. However, in addition to the fact that the Orders in those exhibits do not relate to the parties’ or their parallel litigation, none of the Orders actually stays a case, which diminishes the relevance of the Orders to the first Fintiv factor even further. Petitioner argues additionally that these Orders along with other COVID-related facts demonstrate the uncertainty of the trial date in the parties’ parallel litigation. Nevertheless, Petitioner never argued prior to our Decision that the parallel litigation was uncertain because of COVIDrelated facts. See Pet. 70–71; Pet. Reply 1–5. In other words, Petitioner is not offering this new information to support an argument that was made before the Decision was entered. Petitioner instead offers Exhibits 1040– 1043 to support a new argument introduced for the first time in the Rehearing Request, which is improper and immaterial as to any alleged errors in the Decision. Therefore, we do not find Petitioner has carried its burden of showing good cause exists to justify consideration of those exhibits to evaluate whether we erred by “overlooking or misapprehending” anything in the Decision.” slip op. at 5
Discretionary denialPatents in suitUS 9,749,829 - Draftkings Inc., A Delaware Corporation v. Interactive Games LLCAll claims unpatentablePTAB · Jan 4, 2022 · IPR2020-01107 · APJ Ken B Barrett · IPR · Final written decision
Claims 1–5, 7–22, and 24–27 are unpatentable: claim 27 over Wells and Bahl; claims 1–5, 7–22, and 26 over Wells, Bahl, and Harkham; claim 4 also over Spirito; claims 24–25 over Joao.
RulingsFinal written decision- ExcludeDenied
“Based on this education and experience, we conclude Mr. Farley is qualified as an expert to testify in the form of opinions concerning a POSITA’s knowledge and understanding in relation to the ’901 patent, Wells, Harkham, and the other prior art references at issue in this proceeding. This is because he possesses technical and other specialized knowledge that will help us, as the trier of fact, to understand the evidence and determine facts in issue. See Fed. R. Evid. 702(a). There is “no requirement of a perfect match between the expert’s experience and the relevant field.” CTPG 34 (citing SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010)). In particular, Mr. Farley’s extensive experience in testing mobile gaming systems for compliance with regulatory requirements, including player verification and location verification, are directly pertinent to the issues presented here. This is reflected, in part, by our formulation of a POSITA as having “at least some coursework or other experience in the wager based gaming industry.” See supra Section II.B. Petitioner instead focuses on another POSITA qualification, “at least two years of experience in the development of location-based services or software applications.” See id. Petitioner is correct that Mr. Farley has no experience in developing location based applications and services. See, e.g., Ex. 1031, 53:22–54:6, 275:21–25. Nonetheless, his extensive experience testing such systems, in the particular context of mobile gaming devices, provides him with technical and other specialized knowledge that will help us to understand the evidence and determine facts in issue. The minimal gap here between Mr. Farley’s experience and our POSITA formulation does not justify jettisoning the entirety of Mr. Farley’s testimony, as Petitioner urges us to do. The remainder of Petitioner’s attack on Mr. Farley’s qualifications addresses the weight to be given Mr. Farley’s testimony, as opposed to its admissibility. We have considered his testimony, and assigned the appropriate weight to it in view of his background and the information being offered.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Response), 2–4. We disagreed with the former, determined that the result of the dispute as to the latter (regarding the fields of the undergraduate degree) would not materially affect our consideration of the issues in the case, and applied Petitioner’s POSITA formulation. See Inst. Dec. 19–21. Patent Owner opted not to maintain this dispute in the Patent Owner Response. “Once a trial is instituted, the Board may decline to consider arguments set forth in a preliminary response unless they are raised in the patent owner response.” Consolidated Trial Practice Guide (Nov. 2019) (CTPG)6, 52 (citing In re NuVasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016)). Thus, Petitioner’s POSITA formulation stands unrebutted. We also determine that it is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s formulation of the POSITA.” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“Bahl’s teachings. The purported “adequacy” of Wells does not negate the obviousness of improvements from the perspective of the person of ordinary skill in the art at the time of the invention. We find persuasive Petitioner’s argument, supported by Mr. Williams’ testimony, that the proposed combination would have “enabled more comprehensive compliance with Wells’ stated goal of regulatory compliance by improving the accuracy and reliability of Wells’ position verification process.” Pet. 19 (citing Ex. 1005, 1:66–2:2; Ex. 1003 ¶ 77); see Ex. 1003 ¶¶ 77. Bahl explicitly teaches that “the GPS system is severely limited in an indoor environment,” and explains why that is and why use of a WLAN infrastructure for location detection is an improvement over GPS tracking. Ex. 1005, 1:14–2:2. Patent Owner’s expert, Mr. Farley, testifies that Wells explains that it can accurately monitor location and, based on that, concludes that GPS is sufficient. Ex. 2005 ¶ 53. Mr. Farley cites nothing further as support for this opinion and does not opine as to whether Bahl’s location determination system would be viewed by a person of ordinary skill in the art as more accurate or an improvement. See id. We find to be credible Mr. William’s opinion that a person of ordinary skill in the art would have found a motivation in Bahl’s location determination teachings and would have found it obvious to apply those teachings to Wells’ system to improve accuracy and thereby facilitate better compliance with the gaming regulations. See Ex. 1003 ¶¶ 74, 77.8 8 Patent Owner argues that “Mr. Williams has no experience or understanding of the accuracy required for the location determination system to meet regulatory requirements.” PO Resp. 24 (citing Ex. 2004, 145:4–25, 148:5–149:6). We do not find the cited testimony to support Patent Owner’s proposition. See, e.g., Ex. 2004, 145:22–24 (Mr. Williams, responding, during cross-examination, to the question asking “how precise location” slip op. at 39
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes a construction for “calibration device.” Pet. 9–10. Patent Owner does not dispute Petitioner’s proposed construction or propose a construction for any other term. On this record, we determine that no claim term requires express construction.” slip op. at 26
Patent outcomesUS 9,430,901 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,430,901 - Satco Products, Inc. v. The Regents Of The University Of CaliforniaAll claims unpatentablePTAB · Oct 12, 2021 · IPR2020-00780 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1, 5–7, 9, 13, 14, 18–20, 22, and 26 are unpatentable based on anticipation by Okamoto or Miyahara and obviousness over the asserted combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“construction requiring at least one lead to provide structural support to the LED chip. First, Patent Owner contends that the plain meaning of the term “lead frame” requires that the leads must form “the structural frame supporting the LED chip.” Sur-Reply 4. According to Patent Owner, “[o]n its face, the meaning is clear” that “‘lead frame’ is a frame formed by leads.” Id. We do not find this conclusory statement helpful in determining whether the leads in a lead frame are required to provide structural support to the LED chip. Patent Owner does not identify any evidence, intrinsic or extrinsic, that the plain meaning of the term “lead frame” requires that any leads provide direct or indirect support to the LED chip. In fact, Patent Owner refers to several dictionary definitions of the term “lead frame,” none of which makes any reference to support. PO Resp. 5 (citing Ex. 1023, 4 (“Lead Frame. The metallic portion of a component package that is used to interconnect with semiconductor die by wire bonding and to provide output terminal leads.”); Ex. 1024, 4 (“lead frame— . . . 2. The metal part of a solid-state device package that achieves electrical connection between the die and other parts of the system of which the IC is a component. . . .); Ex. 1026, 3 (“lead frame the metallic portion of the device package that makes electrical connections from the die to other circuitry.”).” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“The fundamental error in Petitioner’s argument on this point, however, is that the claims at issue in this proceeding do not require “a lead frame including a transparent plate,” but instead “a lead frame having a transparent plate therein.” Petitioner must do more than show that Okamoto discloses that “the transparent plate is part of the lead frame,” as argued in the Petition. And, as we pointed out in our Institution Decision, Petitioner concedes that “Okamoto’s lead frame sits on its transparent plate, rather than the transparent plate being in the lead frame.” Institution Dec. 17 (citing Pet. 39; Ex. 1008 ¶¶ 34, 36). During the trial, Petitioner did not engage with this issue or provide any reason for us to diverge from our prior conclusion that, because “the plain language of the claims requires that the lead frame have a transparent plate ‘therein’ . . . [b]y Petitioner’s own admission . . . Okamoto does not anticipate.” Id. In other words, because Petitioner concedes that Okamoto’s transparent plate is not in its lead frame, it cannot meet the requirement of claims 1 and 14 that the lead frame have a transparent plate therein. For this reason, we maintain our prior determination that Okamoto does not disclose a lead frame having a transparent plate therein, and as a result, Petitioner has not shown by a preponderance of the evidence that claims 1 and 14 are anticipated.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Patent Owner also asserts that “Petitioner fails to explain how its proposed modification of wrapping the wiring pattern 6 around the ends of the substrate results in a lower-profile.” PO Resp. 17. According to Patent Owner, “Okamoto already provides the alleged lower-profile benefits of Shimizu, as seen by comparing figure 2 of each reference.” Id. at 18. But Dr. Dupuis supports Petitioner’s contention by stating that a person of ordinary skill in the art would know to use a “chip-type” package instead of a “lead-type” package in applications where a lower profile is needed. Ex. 1003 ¶¶ 129–134 (citing Ex. 1017, 8:31–67; Ex. 1016, Fig. 1, 33–35; Ex. 1022, Figs. 1–3, 6–8, 13, ¶¶ 2–14). Also, Okamoto states that Figure 2 is “a planar view of the light source device of” Figure 1. Ex. 1008 ¶ 43. And Figure 1 of Okamoto, reproduced above, clearly shows protruding lead frame 8. Id. at Fig. 1, ¶ 29. Figure 2 of Okamoto, however, does not show lead frame 8. See id. at Fig. 2. Thus, we do not agree with Patent Owner that Figure 2 of Okamoto shows a package with a lower profile. Instead, the record supports Petitioner’s position that the modified device created using the disclosures of Okamoto and Shimizu has a lower profile (i.e., leads wrapped around substrate 2 as opposed to protruding as shown by Okamoto Figures 1 and 8). See Pet. 42–43; Ex. 1003 ¶¶ 138–142. Patent Owner argues that “Petitioner ignores Dr. Schubert’s explanation that Shimizu was directed towards general illumination, while Okamoto is directed towards a signaling light source” so a person of ordinary skill would not combine the two references. Sur-Reply 16 (citing Ex. 1044, 93:15–96:13). Because we do not see this argument in Patent Owner’s Response, nor do we see anything in Dr. Schubert’s declaration to support such an argument, we do not agree that Petitioner improperly failed to respond to an argument. See PO Resp. 12–21; Ex. 2008 ¶¶ 112–120. Moreover, we find that both Shimizu and Okamoto disclose methods of creating white light using an LED and, therefore, the evidence supports a finding that both references are relevant to a consideration of obviousness. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) (“In order to rely on a reference as a basis for rejection of the applicant’s invention, the reference must either be in the field of the applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned.”). In sum, on the complete record, we find that the combination of Okamoto and Shimizu teaches each limitation of claims 1 and 14, and we find that a skilled artisan would have had reasons, with rational underpinning, to combine Okamoto and Shimizu.” slip op. at 29
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Upon further review, and in light of the arguments in Petitioner’s Reply (Reply 21–24), we conclude that our preliminary determination in the Institution Decision was in error, to the extent that we agreed with Patent Owner’s arguments that claims 13 and 26 require “all layers” of the LED to be transparent. The claims recite “a plurality of III-nitride layers, including an active region that emits light, wherein all of the layers except for the active region are transparent.” Ex. 1001, 21:46–52. The second half of this phrase, which contains the transparency requirement, recites “the layers,” meaning that it relies on an earlier recitation in the claim for antecedent basis of “layers.” This basis is found in the recitation of “a plurality of III-nitride layers.” In other words, the proper interpretation of “all of the layers” in claims 13 and 26 is that the term refers back to the III-nitride layers, not all of the layers of the LED as a whole (such as, for example, a mirror). And the parties agree that the mirror of a conventional LED is not a III-nitride layer. Tr. 18:15–18; 45:4–13. As a result, our preliminary determination that the non-transparent mirror of the APA LEDs prevented a finding of obviousness was incorrect. We agree with Petitioner that the ’916 patent admits that LEDs having transparent III-nitride layers were conventional in the art, and that these are “all of the layers except for the active region” as required in claims 13 and 26. Notably, during the trial Patent Owner did not attempt to defend against Petitioner’s ground for the same reason it raised in the Preliminary Response; instead, Patent Owner now argues that because of the mirror on conventional LEDs, these devices would not meet the claim limitation that “light is extracted effectively through all the layers.” PO Resp. 21. But this reflects a misunderstanding of Petitioner’s ground of unpatentability, which does not rely on the APA for this limitation. Petitioner’s ground is based on the argument that, while Okamoto discloses an LED without a mirror, it does not “specifically describe the layers of its blue LEDs, other than to say that it is a GaN-based LED.” Pet. 61. Petitioner turns to the APA for this missing information regarding the layers that were conventionally used in LEDs; but notably, the Petition does not rely on the APA’s mirror. Id. All Petitioner concludes from the APA is that a person of skill in the art “would reasonably expect the GaN-based LEDs of Okamoto to include multiple layers, which layers would at least include an active layer sandwiched between a p-side layer and an n-side layer.” Id. (citing Ex. 1003 ¶¶ 203– 205; Ex. 1001, 10:20–31). Patent Owner’s argument that the application of the APA’s layers to Okamoto would have brought along the mirror of the APA LED’s is therefore misguided and unpersuasive. In sum, we agree that a person of ordinary skill in the art would have looked to conventional LEDs, such as those admitted to be prior art in the ’916 patent, when determining the layers of Okamoto’s LED. And according to the ’916 patent, these conventional III-nitride layers would have been understood to be transparent to an emission wavelength. As a result, we conclude that claims 13 and 26 would have been obvious over the combined disclosures of Okamoto and Shimizu in light of the APA.” slip op. at 35
Patent outcomesUS 10,217,916 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,217,916 - Louisiana-Pacific Corporation v. Huber Engineered Woods LLCInstitution deniedPTAB · Aug 20, 2020 · IPR2020-00605 · APJ Michael L Woods · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–20 were unpatentable under any of its three obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“B. Principles of Law “In an . . . [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Petitioner’s challenges are based on obviousness. Pet. 17. A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedPrinted publication not establishedMixed
“the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (“Hulu”).5 5 The Decision to Institute in IPR2019-00919, in which many of the references cited in the present case also were at issue, was entered before the Board’s precedential decision in Hulu. Compare IPR2019-00919, Paper 9 (dated Oct. 8, 2019), with Hulu, Paper 29 (dated Dec. 20, 2019). Here, we assess the sufficiency of Petitioner’s evidence as to whether APA, StoGuard- 2001, and StoGuard-2003 qualify as printed publications in view of the guidance provided in Hulu. We note that the Petition was filed on February 19, 2020, such that Petitioner also had the benefit of the guidance provided in Hulu when filing its Petition.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner submits that the ordinary and customary meaning applies to the claimed terms and does not propose construction of any particular claim term. See Pet. 24. Patent Owner, on the other hand, proposes that the term “the first/second structural/OSB panel comprises a bulk water resistant and water vapor permeable barrier” requires construction. Prelim. Resp. 14. For purposes of this decision, we discern no need to construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe 4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. 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 11
- Skill levelSkill level board ownDecided for patent owner
“The parties propose to adopt the same definition that we applied in co-pending IPR2019-00919. See Pet. 24; see also Prelim. Resp. 13. Based on our review of the ’140 patent, the types of problems and solutions described in the ’140 patent and applied prior art, for purposes of this decision, we agree with the parties and determine that a person having ordinary skill in the art would have had degree in civil engineering or building, material or wood science, or other degree, if such other degree required coursework or experience in the pertinent technology and two years of industry experience or equivalent therein. See IPR2019-00919, Paper 9, 14.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,702,140 - Louisiana-Pacific Corporation v. Huber Engineered Woods LLCInstitution deniedPTAB · Aug 20, 2020 · IPR2020-00604 · APJ Michael L Woods · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that any of claims 1–20 was unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION After considering the evidence and arguments presented in the Petition and Preliminary Response, we determine that the record does not demonstrate a reasonable likelihood that Petitioner will prevail with respect to any claim challenged in the Petition. We, therefore, do not institute inter partes review of the ’159 patent. IV. ORDER In consideration of the foregoing, it is hereby ORDERED that, no inter partes review is instituted.” slip op. at 38
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“1 Because we deny institution upon consideration of the merits of Petitioner’s challenges (see infra Part II), Patent Owner’s argument that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under the factors set forth in the recent precedential Order in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (see Prelim. Resp. 17–18) is moot and we do not address it in this Decision.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“For purposes of this decision, we discern no need to construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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 11
- Skill levelSkill level board ownDecided for petitioner
“The parties propose to adopt the same definition that we applied in co-pending IPR2019-00919. See Pet. 24–25; see also Prelim. Resp. 13. Based on our review of the ’159 patent, the types of problems and solutions described in the ’159 patent and applied prior art, for purposes of this decision, we agree with the parties and determine that a person having ordinary skill in the art would have had degree in civil engineering or building, material or wood science, or other degree, if such other degree required coursework or experience in the pertinent technology and two years of industry experience or equivalent therein. See IPR2019-00919, Paper 9, 14.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,689,159 - Karl Storz Endoscopy-America, Inc. v. Novadaq Technologies, Inc.All claims unpatentablePTAB · Mar 8, 2017 · IPR2015-01847 · APJ Daniel N Fishman · IPR · Final written decision
Claims 1–17 are unpatentable: all are obvious over Yabe; claims 10, 12, and 14 are also anticipated by Krauter.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“1. Level of Ordinary Skill Mr. Gunday testified, In my opinion, a person having ordinary skill in the relevant art at the time of the alleged invention is a person with a Bachelor of Science degree in Physics, Computer Engineering, Computer Science, or other similar degree, and two ([2]) to three (3) years of work experience relating to medical endoscopic imaging. Such a person would have had an understanding of, or experience in, designing, implementing, and using endoscopic imaging systems, including light sources and endoscopic video and image processing. Ex. 1011 ¶ 76. Mr. Jaggi agrees with Mr. Gunday’s opinion in this regard, adding only that degrees in “Electrical engineering or Engineering Physics” would each qualify as Mr. Gunday’s “other similar degree.” Ex. 2001 ¶¶ 53–54. We agree with and adopt the view of the parties regarding the level of ordinary skill in the art.” slip op. at 22
- Expert testimonyPatent owner expert discountedDecided for patent owner
“Initially, we note bodily incorporation of the features of the embodiments is not the test of obviousness; rather, the test lies in what is taught or suggested to the ordinarily skilled artisan by the proposed combination of embodiments of Yabe. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Furthermore, “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. Yabe discloses multiple embodiments and expressly discloses interchangeability of rotary (“surface-sequential-type”) filters as disclosed in Yabe’s second embodiment (Figure 2) and mosaic (“built-in”) filters as disclosed in Yabe’s first and third embodiments (Figures 1a and 10). Ex. 1007, 18:17–21. Yabe’s express disclosures outweigh the unsupported assertions of Patent Owner’s expert regarding the complexity of constructing the proposed combination of embodiments. “Combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.” Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). Therefore, we are persuaded, by a preponderance of the evidence, that the ordinarily skilled artisan would have had reason to combine the embodiments of Yabe, as proposed by Petitioner, “because it would serve the same purpose as the existing rotary filter/CCD arrangement and lead to predictable results.” See Pet. 20; see also KSR, 550 U.S. at 417.” slip op. at 28
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We are disinclined to adopt Patent Owner’s proposed construction of this phrase, as recited in claim 1, to require mathematical manipulation. Claim 1 recites “calculates” in a self-defining manner, specifically reciting calculating the image signals “by minimizing the contribution from signals produced by the image sensor in response to red illumination light.” Thus, claim 1 is clear on its face that the calculation to be performed is by minimizing the contribution from red light. Therefore, our analysis shifts to determining the meaning of “minimizing” as recited in claim 1. The ’151 patent discloses a variety of embodiments for “minimizing” the contribution of red light.5 For example, in support of the Patent Owner’s 5 Additionally we observe that “minimizing” appears only once in the ’151 patent—in claim 1 (and, thereby, also in its dependent claims 2–9). construction, the ’151 patent does disclose exemplary embodiments that minimize red light contribution utilizing mathematical manipulations including, for example, CMYG filter computations that are “considered to be well known to those of ordinary skill in the art” (Ex. 1001, 4:66–7:59) and averaging blue and green signals to “compute” a cyan signal (id. at 4:21–24). The ’151 patent, however, also specifically recites, Because the passbands of the red mosaic filters do not significantly overlap with the pass bands of the other filters for a short wavelength imaging mode, the contribution of the image signals due to red illumination light can be reduced or largely eliminated by not assigning the image signals produced by image sensor pixels that are sensitive to red light to their corresponding display pixels. Id. at 4:5–12 (emphasis added). The ’151 patent further states “a short wave-length image (or the color components of such an image) can be computed from a subset of image sensor signals (i.e. excluding the signal data from red light).” Id. at 8:29–32 (emphasis added). Thus, the ’151 patent also encompasses the contribution of red light in the image being” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Although the ’151 patent does not address “analog” or “digital” in reference to “memory,” we agree with Patent Owner, based primarily on the cross-examination testimony of Petitioner’s expert, Mr. Gunday, that the ordinarily skilled artisan at the time of the ’151 patent filing would have understood “memory,” in the context of the ’151 patent, to be referring to digital memory rather than analog buffers. The signals stored in Krauter’s analog buffers are transitory, analog signals propagating from circuits that calculate a value, through the analog buffer, to an analog input of a display monitor. We are persuaded that an ordinarily skilled artisan would not have considered such analog buffers to be a memory in the context of the ’151 patent. Thus, we determine “memory,” as recited in claim 1, means any digital memory capable of storing image signals that minimize the contribution of red light.” slip op. at 17
Patent outcomesUS 7,420,151 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,420,151
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.