• Champion Laboratories, Inc. / First Brands Group, LLC v. Hengst SENo claims unpatentable
  PTAB · Sep 8, 2025 · IPR2024-00603 · APJ Sheldon M Mcgee · IPR · Final written decision

  Claims 1, 3, 5, 8–11, 15–17, 19, 23–25, and 28–30 were not shown unpatentable over Yokoyama, Yokoyama and Cline, or Honermann and Cline.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). Because the level of ordinary skill in the art is not in dispute, and because the parties’ definition is consistent with the disclosures in the ʼ203 patent, the prior art, and the declaration testimony of Mr. Nranian and Dr. Basirat, we view the prior art and arguments through this lens when determining whether the claims are unpatentable as obvious over the prior art.5 See Graham, 383 U.S. at 17 (identifying “the level of ordinary skill in the pertinent art” as an underlying factual inquiry to be resolved in deciding obviousness, which is a question of law).” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Although the parties spend significant portions of their briefing discussing the term “eccentric” and how it applies to certain figures from the ʼ203 patent and the relied-upon prior art, we determine that it is not necessary to expressly construe the term “eccentric” beyond the parties’ agreed-upon definition. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Rather, we adopt Patent Owner’s proffered definition because it is consistent with the intrinsic record and because it is not in dispute. Specifically, Patent Owner asserts that the plain meaning of the term “eccentric” is defined as “located elsewhere than at the geometric center; also: having the axis or support so located.” PO Resp. 18–19 (citing the Merriam-Webster online dictionary definition of the term “eccentric” for support). Petitioner agrees with this definition. Pet. 35 (asserting that certain prior art elements are eccentric “because they are not located at the center of the filter insert or housing”); Pet. Reply 9 (arguing that certain elements are eccentric because they “do not have an axis located at the geometric center”); id. at 10 (arguing the eccentricity of an element that does “not have an axis in the center” which has “an off-center axis”); see also Ex. 2017 ¶ 33 (Dr. Basirat testifying that “[a] POSITA would understand that ‘eccentric’ in the context of [the] ʼ203 patent, means that central axis is located elsewhere than at the geometric center [and] not placed centrally or not having its axis or other part placed centrally”). The parties’ definition of “eccentric” is also consistent with the usage of the term in the ʼ203 patent. Ex. 1001, 10:23–31; Fig. 17.” slip op. at 14

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

    “Rather, we adopt Patent Owner’s proffered definition because it is consistent with the intrinsic record and because it is not in dispute. Specifically, Patent Owner asserts that the plain meaning of the term “eccentric” is defined as “located elsewhere than at the geometric center; also: having the axis or support so located.” PO Resp. 18–19 (citing the Merriam-Webster online dictionary definition of the term “eccentric” for support). Petitioner agrees with this definition. Pet. 35 (asserting that certain prior art elements are eccentric “because they are not located at the center of the filter insert or housing”); Pet. Reply 9 (arguing that certain elements are eccentric because they “do not have an axis located at the geometric center”); id. at 10 (arguing the eccentricity of an element that does “not have an axis in the center” which has “an off-center axis”); see also Ex. 2017 ¶ 33 (Dr. Basirat testifying that “[a] POSITA would understand that ‘eccentric’ in the context of [the] ʼ203 patent, means that central axis is located elsewhere than at the geometric center [and] not placed centrally or not having its axis or other part placed centrally”). The parties’ definition of “eccentric” is also consistent with the usage of the term in the ʼ203 patent. Ex. 1001, 10:23–31; Fig. 17.” slip op. at 14

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “(opining that “Patent Owner’s construction of ‘having an axis no located in a geometric center’ is too narrow”). Mr. Nranian’s Declaration testimony in this respect is not persuasive for several reasons. First, it is internally inconsistent. Compare Ex. 1016 ¶ 3 (criticizing the “axis” language in Patent Owner’s definition), with id. ¶¶ 9, 11 (relying on that very language to support an argument). Also, Mr. Nranian’s proposed definition of “eccentric” to merely mean “not located at the center” begs the question of what, precisely, is “the center”? Mr. Nranian does not persuasively explain how far a person of ordinary skill in the art would understand she could travel from the exact center point of an object and still be in “the center” of that object. See Tr. 10:13–19 (Judge McGee asking whether the center is “a miniscule point in the middle of [the] disc”); see also id. at 10:25–12:26 (Judge Weatherly highlighting the significant ambiguity in referring to something as in “the center”). Also, Mr. Nranian’s opinion is inconsistent with how the ʼ203 patent compares something that is “central,” i.e., “at the center,” and something that is “eccentrically” located. Ex. 1001, 7:13–14 (describing pipe nozzle 15 as “central”); id. at 8:53–56 (describing a “through hole” as “located in the center of the front panel 22” depicted in Figures 7 and 8); id. at 10:23–31 (describing return 12 as “in the center” and outlet 13 as “eccentrically thereto” in Figure 17). Patent Owner’s colorized and annotated Figure 7 is reproduced below: Patent Owner’s colorized and annotated version of Figure 7 of the ʼ203 patent illustrates “central pipe nozzle 15” in yellow passing through the “through hole” located in “the center” of front panel 22. PO Resp. 20. Significantly, pipe nozzle 15 and the through hole in panel 22 are both described as “central” and in “the center” but must have different diameters; otherwise, “central pipe nozzle 15” would not be capable of traveling through “through hole 22.” Ex. 1001, Fig. 7. Thus, the ʼ203 patent intrinsically bases whether an element is “central” or “in the center” on whether its axis is located at the geometric center. This is also illustrated in Figure 17 of the ʼ203 patent, reproduced below: Figure 17 of the ʼ203 patent illustrates filter housing 10 with return 12 “in the center . . . and, eccentrically thereto, the outlet 13 with the seat 14 for the blocking element 24.” Ex. 1001, 10:23–30. Finally, Mr. Nranian’s narrow interpretation of “eccentric”––which excludes the “having the axis or support so located” in the geometric center language––is at odds with the arguments it was proffered to support. Cf. Pet. Reply 9 (arguing that certain elements are eccentric because they “do not have an axis located at the geometric center”); id. at 10 (arguing the eccentricity of an element that does “not have an axis in the center” which has “an off-center axis”).” slip op. at 29

  Patent outcomesUS 9,023,203 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,023,203
• Tennant Company v. Oxygenator Water Technologies, Inc.No claims unpatentable
  PTAB · Feb 28, 2025 · IPR2021-00625 · APJ Kristina M Kalan · IPR · Remand

  Claims 13, 14, and 17–27 were not shown unpatentable because Tennant did not establish that Wikey or Davies inherently disclosed the claimed microbubbles and nanobubbles.

  RulingsRemand decision

  • RemandOther

    “The Federal Circuit vacated and remanded our anticipation determinations as to claims 13, 14, and 17–27. Tennant, 11.1 The Federal Circuit further stated: “Because we vacate and remand to the Board to consider Tennant’s anticipation argument, we do not reach Tennant’s obviousness arguments (which depends on its contention that either Wikey or Davies produce nanobubbles).” Id. at 11. On September 19, 2024, we authorized the parties to file supplemental briefing, stating also that the “parties are not authorized to present new factual assertions, provide additional exhibits, or raise new arguments beyond those directed to the issues raised in the remand.” Ex. 3001. Pursuant to this authorization, Petitioner filed an Opening Brief on Remand (Paper 61; “Pet. Br. Rem.”) in support of its contentions. Patent Owner filed a Lead Brief on Remand (Paper 62; “PO Br. Rem.”) in support of its contentions. Petitioner filed a Reply Brief on Remand (Paper 66; “Pet. Reply Br. Rem.”). Patent Owner filed a Responsive Brief on Remand (Paper 65; “PO Resp. Br. Rem.”).” slip op. at 3

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

    “Accordingly, and in line with our previous determination that “Wikey appears to disclose each limitation of claim 13 except ‘microbubbles and nanobubbles having a bubble diameter of less than 50 microns’” (Final Dec. 20), we determine that Petitioner has not demonstrated that Wikey inherently discloses microbubbles or nanobubbles. Accordingly, Petitioner has not demonstrated that Wikey discloses every limitation of claim 13.” slip op. at 56

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “The Federal Circuit vacated and remanded our anticipation determinations as to claims 13, 14, and 17–27. Tennant, 11.1 The Federal Circuit further stated: “Because we vacate and remand to the Board to consider Tennant’s anticipation argument, we do not reach Tennant’s obviousness arguments (which depends on its contention that either Wikey or Davies produce nanobubbles).” Id. at 11.” slip op. at 3

  Patent outcomesUS RE45,415 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
• Quasar Science LLC v. Colt International Clothing, Inc. D/B/A Colt LedNo claims unpatentable
  PTAB · Oct 7, 2024 · IPR2023-00614 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 1–3, 6–18, 21–24, and 27–29 were not shown unpatentable under either § 103 ground because the evidence did not establish all limitations or a reason to combine the cited teachings.

  RulingsFinal written decision

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

    “Claim Construction In an inter partes review, we construe a claim term “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b) (2020). Under that standard, the words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). The parties agree that, for purposes of this Decision, no claim term needs specific construction beyond its plain and ordinary meaning. Pet. 14; PO Resp. 10. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to expressly construe any claim term.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Here, Petitioner argues that a person of ordinary skill in the art (“POSITA”) would have had “at least a Bachelor of Science degree in electrical engineering, or a closely related field, along with at least two years of experience in the design of entertaining lighting systems, and the design and use of LEDs.” Pet. 14 (citing Ex. 1003 ¶ 32). Patent Owner argues that a POSITA would have had “2 to 4 years’ experience in electrical engineering/design of film and television lighting systems, including the design and use of LED lights, combined with two to three years of work experience as a set lighting technician in television and/or motion picture industry.” PO Resp. 9 (citing Ex. 2047 ¶¶ 16–17; Ex. 2100 ¶¶ 156–161). Patent Owner does not identify any specific instance in which the differences between the parties’ respective descriptions of the level of ordinary skill in the art impacts the analysis or conclusions of either party, or either party’s declarant, in this case. In fact, Patent Owner acknowledges that any differences between the parties’ respective descriptions do not impact the conclusions in this case. Id. (“Regardless of which definition of a POSITA is applied, the conclusion(s) would be the same.”). For purposes of this Decision, and to the extent necessary, we adopt Petitioner’s definition of a POSITA because it is consistent with the prior art’s demonstration of the skill level at the time of the invention.” slip op. at 9

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

    “would have been obvious to combine the cited teachings of Kit and Katzir. Petitioner argues that “Katzir further discloses daylight and tungsten temperature ranges within the claimed temperature ranges.” Pet. 24 (citing Ex. 1006 ¶¶ 53, 54, Figs. 5A, 5B). Petitioner relies on the Holmes Declaration to show that “[a] POSITA would have been motivated to look to Katzir to design an LED array to be retrofit in a fluorescent tube.” Id. at 19 (citing Ex. 1003 ¶ 102). Mr. Holmes testifies that [b]oth Kit and Katzir teach using LEDs of various colors in a fluorescent tube form factor, like a T8 or T12 fluorescent tube. Katzir also discloses various LED array layouts that a POSITA would have a looked to when designing an LED tube lighting like that disclosed in Kit. A POSITA would have had strong motivation to look to Katzir to design an LED array to be retrofit in a fluorescent tube form factor. Ex. 1003 ¶ 102 (internal citations omitted). As discussed above, however, the cited passages of Kit describe a light with LEDs that produces a single, consistent temperature of warm white, commercial white, or cool white. Ex. 1004, 3:28–36, 22:9–25. Neither Petitioner nor Mr. Holmes sufficiently explains why a POSITA would have modified Kit to include Katzir’s particular layout that includes both cool white LEDs and warm white LEDs. See Pet. 19, 24; Ex. 1003 ¶ 102; In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016) (instructing that we must articulate a reason why a POSITA would combine the prior art references). We identified the aforementioned deficiencies for this asserted challenge in the Decision on Institution. DI 21–23. Petitioner did not address those deficiencies in the Reply. See generally Reply; Tr. 6:16–7:10. Thus, based on the entire record developed at trial, and for the foregoing reasons, Petitioner has not shown that claim 1 would have been obvious over Kit, Ianiro, Ducharme, and Katzir.” slip op. at 13

  • Expert testimonyPetitioner expert discountedOther

    “Petitioner asserts that Mr. Holmes cited Hasnain’s heat dissipation techniques. Reply 10 (citing Ex. 1003 ¶ 490; Ex. 1049 ¶¶ 41–49). Paragraph 490 of Exhibit 1003 relates to Ducharme, not Hasnain, and thus, does not support Petitioner’s argument. Although paragraphs 41 to 49 of Exhibit 1049 span more than seven pages, other than the single citation in the Reply, Petitioner does not discuss any of the testimony presented therein. We, thus, do not consider this portion of the Holmes Supplemental Declaration. See 37 C.F.R. §§ 42.6(a)(3). Furthermore, we would not be persuaded by Mr. Holmes’ testimony even if we considered it. For example, Mr. Holmes testifies that Hasnain’s heat-dissipating structure “a variety of heat dissipating techniques are disclosed by Hasnain, any one of which could readily be used in a T12 form factor LED light, as expressly recognized by Hasnain.” Ex. 1049 ¶ 46. We disagree with Mr. Holmes that Hasnain teaches enclosing its heat-dissipating structure in a fluorescent light tube. Hasnain teaches “a replacement LED light source for fluorescent tube 22 [that] plug[s] into the same connectors and operate[s] from the voltage patterns generated by the ballasts.” Ex. 1008, 3:23–26. Hasnain also teaches that “the replacement LED light source has a plurality of LEDs mounted on a heat-dissipating substrate that has a width that is less than or equal to the diameter of the fluorescent tube that the light source is designed to replace.” Id. at 5:52–56. Thus, Hasnain teaches that its LED light fits into, and connects with, an existing structure that previously held a fluorescent light tube. Id. at 2:50–56, 3:23–26, 4:58–64, 5:52–56, Figs. 1A, 4. As discussed above, however, Hasnain’s heat-dissipating structure is not enclosed in a tubular housing in order to dissipate heat to the surrounding air or via thermal contact with the existing structure that a fluorescent light tube is inserted into. Id. at 2:50–56, 4:23–28, 4:51–64, Figs. 1A, 3, 4.” slip op. at 22

  Patent outcomesUS 10,566,895 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,566,895
• Quasar Science LLC v. Colt International Clothing, Inc. D/B/A Colt LedNo claims unpatentable
  PTAB · Oct 7, 2024 · IPR2023-00613 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–3, 6–14, 16–19, 21–24, and 26–31 were not shown unpatentable over either asserted obviousness combination.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “Patent Owner does not identify any specific instance in which the differences between the parties’ respective descriptions of the level of ordinary skill in the art impacts the analysis or conclusions of either party, or either party’s declarant, in this case. See id. In fact, Patent Owner acknowledges that any differences between the parties’ respective descriptions do not impact the conclusions in this case. Id. at 9 (“Regardless of which definition . . . is applied, the conclusion(s) would be the same.”). Therefore, to the extent necessary, we adopt Petitioner’s description, which is supported by the testimony of Petitioner’s declarant, Mr. Fred Holmes, and is consistent with the asserted prior art. Ex. 1003 ¶ 32.” slip op. at 8

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

    “the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 13; PO Resp. 10. We determine that no claim terms require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability. See Sections II.D.1, II.E.1.” slip op. at 8

  • BurdenNot shown unpatentable

    “Thus, Petitioner’s assertion that Hasnain’s LED light emits at least 1000 lumens requires distributing LEDs on a heat-dissipating structure that transfers heat to the surrounding air or via thermal contact with another existing structure. Id. at 4:23–28, 4:51–5:6, Figs. 3, 4; see Ex. 2080 ¶¶ 49, 5 Figure 4 shows heat-dissipating structure 59, not heat-dissipating structure 47. Ex. 1008, Fig. 4. But Hasnain describes those structures similarly. Id. at 4:51–5:6. 66. Petitioner, though, does not explain how Hasnain’s heat-dissipating structure would work when combined with Ducharme’s tubular housing. See Pet. 62–63; Pet. Reply 10; Ex. 1003 ¶ 490; Ex. 1049 ¶¶ 41–49. In particular, Petitioner does not explain how Hasnain’s heat- dissipating structure would dissipate sufficient heat to the surrounding air when enclosed in Ducharme’s tubular housing. See id. Petitioner also does not explain how Hasnain’s heat-dissipating structure would dissipate sufficient heat via thermal contact with another existing structure when enclosed in Ducharme’s tubular housing. See id. Furthermore, Petitioner does not propose combining Ducharme and Hasnain so that Hasnain’s heatdissipating structure is in thermal contact with Ducharme’s tubular housing. See id. Thus, Petitioner does not show sufficiently how the proposed combination of Ducharme and Hasnain was supposed to work. See Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017) (“[T]he Board nowhere clearly explained, or cited evidence showing, how the combination of the two references was supposed to work.”).” slip op. at 20

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

    “person of ordinary skill in the art would have had reason to achieve high lumen output, we determine that Petitioner does not show sufficiently that a person of ordinary skill in the art would have had reason to combine the specific cited teachings of Ducharme and Hasnain.” slip op. at 17

  Patent outcomesUS 10,411,582 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,411,582
• Commscope, Inc. v. TQ Delta, LLCNo claims unpatentable
  PTAB · Nov 13, 2023 · IPR2022-01012 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1–28 were not shown unpatentable under either § 103 ground because the petitioner did not adequately explain why a skilled artisan would combine the cited references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we preliminarily adopted Petitioner’s unopposed7 proposed level of ordinary skill in the art. Inst. Dec. 12. In the Response, Patent Owner does not challenge Petitioner’s characterization of the level of ordinary skill in the art. Nothing in the full record persuades us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Accordingly, we maintain our adoption of Petitioner’s proposed 7 Patent Owner did not challenge the proposed level of ordinary skill in the art in the Preliminary Response. level of ordinary skill in the art, as consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

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

    “ordinary meaning” and “[t]o the extent certain terms are subject to multiple interpretations, those questions do not affect the grounds advanced here.” Pet. 12 (citing Ex. 1003 ¶ 116). Patent Owner “does not believe that the Board[] needs to expressly construe any claim limitation to find that the claims have not been proven unpatentable.” Resp. 13–14. There are no claim terms in dispute, so we need not expressly construe any term for purposes of this Decision. 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))).” slip op. at 10

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

    “header with a sequence number. See Pet. 31; Resp. 20–21. Petitioner asserts that a person of ordinary skill in the art would have been motivated to combine G993.2 with Fukushima “[to] provid[e] improvements” (Pet. 22), but does not further explain what improvement to G993.2’s would result from the combination. Rather, Petitioner describes these improvements as “use of . . . packets with message counts and/or sequence IDs,” (id.), which provides nothing more than a statement of what claim 1 recites and what Fukushima discloses without any explanation as to what improvement is provided to G993.2 or why the use of packets with sequence IDs would improve G993.2. Petitioner’s asserted rationale for combining the references includes additional generic statements, e.g., by referring to “predictable benefits,” “predictable results described above,” and “these predictable, beneficial results” which are never specifically explained. See Pet. 22–23 (emphasis added). For example, Petitioner does not articulate why Fukushima’s sequence numbers would be an improvement or beneficial to G993.2’s “packets.” We recognize that Petitioner does not need to show “improvement” in a “categorical sense,” and need only show that Fukushima’s sequence numbers were a “suitable option,” see Intel Corp. v. process depicted in Figure 9[-]1, that data that flows from that process is in fact the packet.” Tr. 12:9–14. PACT KPP Schwiez AG, 61 F. 4th 1373, 1381 (Fed. Cir. 2023), but in generically relying on “improvement” and “predictable, beneficial results” without further explanation, Petitioner has not established that Fukushima’s sequence numbers were a “suitable option” for G993.2’s “packets.” None of Petitioner’s assertions provide a sufficient reason that would have prompted a person of ordinary skill in the art to combine G993.2 with Fukushima as proposed. See KSR, 550 U.S. at 418 (in an obviousness analysis, one must “determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue”); In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017) (stating that “a conclusory assertion with no explanation is inadequate to support a finding that there would have been a motivation to combine”). We, therefore, disagree with Petitioner that “Petitioner set forth numerous reasons a [person of ordinary skill in the art] would be motivated to combine” VDSL2, Mitlin, and Fukushima. Reply 20 (citing Ex. 1003 ¶¶ 140–148, 306–310); see also Reply 22–23.” slip op. at 25

  • Strike new argumentNew argument disregardedDecided for patent owner

    “At the hearing, Petitioner also relied on deposition testimony of Mr. McNair that G993.2 inherently discloses a sequence ID (Tr. 16:15–16), but this appears inconsistent with Petitioner’s position in the Reply, where “Petitioner describes the manner in which the ‘Sequence Identifier (SID)’ claim element is disclosed by Fukushima.” Reply 10. However, the testimony from Mr. McNair was cited in the Reply, stating that “VDSL2 ‘implicitly’ uses ‘some numbering of packets,’ such that there ‘has to be some kind of an indicator and the sequence number is one.’” Id. at 13 (citing Ex. 2020, 91:10–22); see also id. at 13–14 (citing Ex. 2020, 91:23–25 (Mr. McNair testifying that “there’s got to be some kind of marker, whether you call it a sequence number or you call it some other kind of marker….”)). This theory of inherency is not argued in the Petition, and is therefore a new theory raised for the first time in Petitioner’s Reply, so we will not consider it. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution.”); Consolidated Trial Practice Guide 73-74 (Nov. 2019)12 (explaining that “‘[r]espond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing,”). However, even assuming this is not an improper new argument, Petitioner has not established that G993.2’s “packet” inherently teaches a header field comprises a sequence identifier (SID), or addressed how this might affect the combination with Fukushima. PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186, 1195–1196 (Fed. Cir. 2014) (“A party must . . . meet a high standard in order to rely on inherency . . . —the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.”). That is, we do not find that Mr. McNair’s testimony that “there has to be some kind of an indicator and the sequence number is one” supports that a sequence number is necessarily present in G993.2. Moreover, Petitioner’s inherency theory seems to be in tension with Petitioner’s contentions that the combination with Fukushima provides an improvement or benefit to G993.2.” slip op. at 28

  Patent outcomesUS 10,833,809 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,833,809
• Commscope, Inc. v. TQ Delta, LLCNo claims unpatentable
  PTAB · Nov 13, 2023 · IPR2022-00809 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1–4, 6, 7, 9–12, 14, 15, 17–20, 22–24, 26, and 28 were not shown unpatentable under either § 103 ground because Petitioner did not establish motivation to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts a person of ordinary skill in the art would have possessed a Bachelor’s degree in electrical or computer engineering, or the equivalent, and at least 5–6 years of experience; a Master’s degree in electrical or computer engineering, or the equivalent, and at least 2–3 years of experience; or a Doctor of Philosophy (Ph.D.) in electrical or computer engineering, or the equivalent, with at least 1–2 years of experience. Pet. 10 (citing Ex. 1003 ¶¶ 31–33). In our Institution Decision, we preliminarily adopted Petitioner’s unopposed7 proposed level of ordinary skill in the art. Inst. Dec. 13. In the Response, Patent Owner does not challenge Petitioner’s characterization of the level of ordinary skill in the art. Nothing in the full record persuades us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Accordingly, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

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

    “Petitioner asserts that “claim terms should be given their plain and ordinary meaning” and “[t]o the extent certain terms are subject to multiple interpretations, those questions do not affect the grounds advanced here.” Pet. 11 (citing Ex. 1003 ¶¶ 18–24, 116–118). Patent Owner “does not believe that the Board[] needs to expressly construe any claim limitation to find that the claims have not been proven unpatentable.” Resp. 13–14. There are no claim terms in dispute, so we need not expressly construe any term for purposes of this Decision. 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))).” slip op. at 10

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

    “Fukushima in the manner proposed.10 See Resp. 26; Sur-reply 17; see In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)) (“It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.”). Specifically, we determine that Petitioner has not provided sufficient rationale establishing why a person of ordinary skill in the art would have modified G993.2’s “packet”11 with Fukushima’s packet with a header including a sequence number. See KSR, 550 U.S. at 418 (establishing that an invention would have been obvious requires “a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”) (emphasis added).” slip op. at 23

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “detail why a [person of ordinary skill in the art] would have recognized the value of modifying VDSL2 by the disclosures of Fukushima.” Reply 19 (Ex. 1003 ¶¶ 140–148, 301–305, 314); see also Reply 28. Mr. McNair’s testimony is not only largely repetitive of the Petition, but similarly does not (1) provide any explanation as to what “improvements,” “predictable benefits,” or “value,” arises from the combination, or (2) even directly address the combination of G993.2’s “packet” with Fukushima’s sequence number. Ex. 1003 ¶¶ 144, 145, 146; see ActiveVideo Networks, Inc. v. Verizon Comms., Inc., 694 F.3d 1312, 1328 (2012) (describing expert testimony that “motivation to combine would be because you wanted to build something better . . . a system that was more efficient, cheaper, or you wanted a system that had more features” as “generic and bears no relation to any specific combination of the prior art elements”).” slip op. at 25

  Patent outcomesUS 9,094,348 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,094,348
• Markforged Inc. v. Continuous Composites, Inc.No claims unpatentable
  PTAB · Sep 26, 2023 · IPR2022-00679 · APJ Sheldon M Mcgee · IPR · Final written decision

  Claims 1–12, 20, and 21 were not proven unpatentable; the asserted obviousness grounds failed for insufficient motivation to combine, teaching away, or missing claim limitations.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “Patent Owner statutorily disclaimed claims 13–19 on July 25, 2023, rendering Petitioner’s Grounds 4, 9, and 10 moot. Ex. 2008. Thus, our Final Written Decision does not address Petitioner’s Grounds 4, 9, and 10. The Board heard oral arguments in an in-person hearing conducted on July 27, 2023. See Paper 23.” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) would have had a master’s or bachelor’s degree in mechanical engineering, materials science, or a related degree, and either at least 3–5 years of experience (with a master’s degree), or at least 5–6 years of experience (with a bachelor’s degree), in composite materials or additive manufacturing. Pet. 13–14 (citing Ex. 1002 ¶ 36). Patent Owner states that it “does not agree that Petitioner’s proposed level of skill in the art accurately reflects the level of ordinary skill in the art as of the priority date . . . [, but r]egardless [of] the level of skill, . . . the Petition does not show the challenged claims are unpatentable.” Resp. 14–15. Patent Owner does not propose a different level of skill in the art. See id. at 15 (“Patent Owner reserves the right to propose a level of ordinary skill in the art later in this proceeding, or in other proceedings.”). On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Although a more specific definition is not necessary, we adopt Petitioner’s proposed definition because, on this record, it is consistent with the disclosures of the asserted prior art references. Neither party, however, advances information explaining how or why the result in this case would change based on the level of ordinary skill determined by the Board.” slip op. at 7

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

    “Petitioner advances no specific construction of any claim term, but rather proposes that “claim terms should be given their plain and ordinary meaning.” Pet. 14. Patent Owner asserts that the term “anchor” should be construed according to its plain and ordinary meaning, which, according to Patent Owner, is “contact to which the path of composite material is adhered to enable pulling of the path.” Resp. 15 (citing Ex. 2006, 2, 53). Petitioner responds that “[i]n the parallel litigation, the Court has construed ‘anchor point’ and ‘anchor’ as ‘a contact point to which the path is affixed and that serves as an origin point for the formation of the path.’” Reply 3. On the complete record, we determine that no claim term needs an express construction to resolve the controversy. C. GROUND 1 – ALLEGED OBVIOUSNESS OF CLAIMS 20 AND 21 OVER LIPSKER” slip op. at 9

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

    “combining multiple embodiments from a single prior art reference (Resp. 31), i.e., “there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan, 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). On this record, Petitioner fails to provide any such motivation to combine the embodiment in Lipsker’s Figure 2 with those of Figures 4A, 4B, 4C, and 5 to arrive at the subject matter of claim 20. Pet. 23–31. Rather, Petitioner merely points to the disparate embodiments of Figures 2, 4A, 4B, 4C, and 5 and portions of Lipsker’s disclosure pertaining to those embodiments, and asserts that Lipsker “discloses” the individual limitations recited in claim 20. See, e.g., id. at 25 (Petitioner, relying on Figure 2, asserting that “Lipsker discloses the preamble of Claim 20”), 27 (Petitioner, relying on Figure 5, asserting that “Lipsker discloses Element 20[a]”), 28 (quoting Lipsker’s descriptions of wire and adhesive dispensed separately as depicted in Figure 2, and asserting “Lipsker discloses Element 20 [c]”), 29 (pointing to Figures 4A, 4B, and 4C and asserting “Lipsker discloses Element 20[d]”). Pointing to disparate embodiments without providing a sufficient motivation to combine them is not enough to establish the obviousness of claim 20 as a whole. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (holding that a claim “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art”).” slip op. at 14

  Patent outcomesUS 10,744,708 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,744,708
• Bank Of America, N.A. v. Nant Holdings IP, LLCNo claims unpatentable
  PTAB · Feb 2, 2023 · IPR2021-01333 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 18, 26, 27, 29, and 31 were not shown unpatentable because Ogasawara did not disclose claim 18’s determining limitation, and the obviousness grounds did not cure that deficiency.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had a “Bachelor of Science in Electrical Engineering, Computer Science, Computer Engineering, or equivalent, and one to two years of experience 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103. Because the ’252 patent was filed before the effective date of the relevant amendment, the pre-AIA versions of §§ 102, 103 apply. working with image processing, image recognition, or a related field.” Pet. 17 (citing Ex. 1003 ¶ 43). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jeffrey Rodriguez. Ex. 1003 ¶ 43. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. PO Resp. 15. We adopt Petitioner’s description, which is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 5

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

    “C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in federal district court in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b) (2020). Patent Owner proposes construing the term “the image” in all challenged claims to refer to “the same, single image.” PO Resp. 20. Based on this proposed construction, Patent Owner argues that the combination of Ogasawara and Bolle does not teach the limitations of claim 31. Id. at 59–60. As discussed below, for reasons unrelated to the term “the image,” Petitioner does not meet its burden to show that the challenged claims are unpatentable. See Sections II.D–II.F. Therefore, we determine that the term “the image” does not require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability.” slip op. at 6

  • BurdenNot shown unpatentable

    “Petitioner does not show persuasively that Ogasawara expressly or implicitly discloses the determining limitation of claim 18. The portions of Ogasawara cited by Petitioner indicate that Ogasawara’s computing platform invokes its recognition software to analyze image data without first determining if the image contains a recognizable symbol. See Pet. 23–25 (citing Ex. 1005, 18:11–58, 20:41–67, 21:15–20). Ogasawara discloses that the user of its device verifies that an image contains an entire symbol when capturing the image and before transmitting the image data to the computing platform. Ex. 1005, 20:47–51 (“While the consumer is scanning a particular bar code with the digital camera, . . . the consumer can visually verify that the entire image has been captured.”); see also id. at 20:41–47, 22:10–13, 22:59–63 (disclosing that a user captures an image of an item’s bar code by placing it within the image field of the digital camera). As a result, when Ogasawara’s computing platform receives the image data, it simply invokes recognition software to analyze the image data.2 Id. at 18:32–37, 21:17–20. For example, Ogasawara discloses that “[o]nce the bar code image has been captured, the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software.” Id. at 21:17–20; see also id. at 18:32–37 (“Once this information is received . . . , a character 2 In fact, Petitioner appears to acknowledge that Ogasawara’s device operates in this manner. Pet. 24–25 (“[o]nce the bar code image has been captured, the program decodes the bar code image data . . . with pattern recognition software.”). recognition and/or pattern recognition application routine can be invoked . . . to . . . decode the bar code.”). Thus, Ogasawara supports Patent Owner’s position that Ogasawara’s computing platform does not determine if an image contains a recognizable symbol before analyzing the image. Petitioner argues that the term “recognize” in Ogasawara discloses determining if an image contains a recognizable symbol, whereas the term “decode” discloses analyzing the symbol to extract information. Pet. Reply 6 (“capture, recognize and decode captured images.”). We disagree. Ogasawara uses both terms—recognize and decode—to describe analyzing image data to extract information. Ex. 1005, 18:32–37, 21:17–20. For example, Ogasawara discloses that its computing platform invokes recognition software “to either decode the bar code videographic data or to perform pattern recognition functions on a[n] icon-like patter[n].” Id. at 18:32–37 (emphases added); see also id. at 21:17–20 (“the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software”) (emphases added). Thus, Petitioner’s reliance on the term “recognize” does not show that Ogasawara discloses the determining limitation of claim 18. For the reasons discussed above, Petitioner does not show sufficiently” slip op. at 11

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

    “Petitioner does not show persuasively that Ogasawara expressly or implicitly discloses the determining limitation of claim 18. The portions of Ogasawara cited by Petitioner indicate that Ogasawara’s computing platform invokes its recognition software to analyze image data without first determining if the image contains a recognizable symbol. See Pet. 23–25 (citing Ex. 1005, 18:11–58, 20:41–67, 21:15–20). Ogasawara discloses that the user of its device verifies that an image contains an entire symbol when capturing the image and before transmitting the image data to the computing platform. Ex. 1005, 20:47–51 (“While the consumer is scanning a particular bar code with the digital camera, . . . the consumer can visually verify that the entire image has been captured.”); see also id. at 20:41–47, 22:10–13, 22:59–63 (disclosing that a user captures an image of an item’s bar code by placing it within the image field of the digital camera). As a result, when Ogasawara’s computing platform receives the image data, it simply invokes recognition software to analyze the image data.2 Id. at 18:32–37, 21:17–20. For example, Ogasawara discloses that “[o]nce the bar code image has been captured, the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software.” Id. at 21:17–20; see also id. at 18:32–37 (“Once this information is received . . . , a character 2 In fact, Petitioner appears to acknowledge that Ogasawara’s device operates in this manner. Pet. 24–25 (“[o]nce the bar code image has been captured, the program decodes the bar code image data . . . with pattern recognition software.”). recognition and/or pattern recognition application routine can be invoked . . . to . . . decode the bar code.”). Thus, Ogasawara supports Patent Owner’s position that Ogasawara’s computing platform does not determine if an image contains a recognizable symbol before analyzing the image. Petitioner argues that the term “recognize” in Ogasawara discloses determining if an image contains a recognizable symbol, whereas the term “decode” discloses analyzing the symbol to extract information. Pet. Reply 6 (“capture, recognize and decode captured images.”). We disagree. Ogasawara uses both terms—recognize and decode—to describe analyzing image data to extract information. Ex. 1005, 18:32–37, 21:17–20. For example, Ogasawara discloses that its computing platform invokes recognition software “to either decode the bar code videographic data or to perform pattern recognition functions on a[n] icon-like patter[n].” Id. at 18:32–37 (emphases added); see also id. at 21:17–20 (“the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software”) (emphases added). Thus, Petitioner’s reliance on the term “recognize” does not show that Ogasawara discloses the determining limitation of claim 18. For the reasons discussed above, Petitioner does not show sufficiently” slip op. at 11

  Patent outcomesUS 7,899,252 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,899,252
• Quectel Wireless Solutions Co. Ltd. v. Koninklijke Philips N.V.No claims unpatentable
  PTAB · Sep 8, 2022 · IPR2021-00560 · APJ Russell E Cass · IPR · Final written decision

  Claims 11–17 were not shown unpatentable under either obviousness ground because the evidence did not establish the claimed initial transmission of control information on the specified channels.

  RulingsFinal written decision

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

    “itself. Claim 11 states that, after the secondary station receives the acknowledgement, “control information is initially transmitted on an uplink control channel and a downlink control channel” between the primary station and secondary station. The use of the word “initially” here signifies something that occurs first, or at the beginning.3 Thus, saying that control information is “initially transmitted on an uplink control channel and a downlink control channel” signifies that control information is transmitted for the first time on those particular uplink and downlink control channels. Thus, the plain meaning of the claim language indicates that, after the secondary station receives the acknowledgement, control information is transmitted for the first time on the claimed “uplink control channel” and “downlink control channel” “between the primary station and said secondary station.”” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Based on the full trial record, we find that Petitioner has not proven by a preponderance of the evidence that Lomp discloses that “subsequent to a reception of the acknowledgment by said secondary station, control information is initially transmitted on an uplink control channel and a downlink control channel between the primary station and said secondary station,” as required by claim 11(c) and comparable language in claim 15. As noted in Section II.A above, we have construed this claim language to require that, subsequent to a reception of the acknowledgement by said secondary station, control information is transmitted for the first time on the particular claimed uplink and downlink control channels between the primary station and the secondary station. We first turn to Petitioner’s reliance on Lomp’s disclosure in column 59, lines 44–48 that the primary station (RCS) “instructs the SU through the assigned logical control channel and causes a second 64 kb/s duplex link to be established between the RCS modem and the SU.” Petitioner has not pointed to any disclosure in Lomp of when this “assigned logical control channel” is established or whether any information is transmitted on this control channel before the instruction from the RCS to cause a second 64 kb/s link to be established. Indeed, during the hearing, counsel for Petitioner acknowledged that “Lomp doesn’t specify when the assigned logical control channel is established,” and that it is not certain what might have occurred on those channels before the instruction that Petitioner points to as the “initial” transmission of control information. Tr. 10:4–5, 57:4–9; see id. at 19:24–20:2, 57:9–14. Additionally, when asked which of Lomp’s channels would be used to establish the 64 kb/s link, Dr. Ding testified at his deposition that his understanding “is that Lomp did not specify which channel will be providing the instruction” to establish that link. Ex. 2012, 64:8–14. In light of this testimony, we find insufficient evidence that Lomp teaches that the instruction on the “assigned logical control channels” to establish the 64 kb/s link, which Petitioner points to as the “initial” transmission of control information, would have been the first time that control information was transmitted on those “assigned logical control channels,” as the claims require.” slip op. at 24

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Based on the full trial record, we find that Petitioner has not proven by a preponderance of the evidence that Lomp discloses that “subsequent to a reception of the acknowledgment by said secondary station, control information is initially transmitted on an uplink control channel and a downlink control channel between the primary station and said secondary station,” as required by claim 11(c) and comparable language in claim 15. As noted in Section II.A above, we have construed this claim language to require that, subsequent to a reception of the acknowledgement by said secondary station, control information is transmitted for the first time on the particular claimed uplink and downlink control channels between the primary station and the secondary station. We first turn to Petitioner’s reliance on Lomp’s disclosure in column 59, lines 44–48 that the primary station (RCS) “instructs the SU through the assigned logical control channel and causes a second 64 kb/s duplex link to be established between the RCS modem and the SU.” Petitioner has not pointed to any disclosure in Lomp of when this “assigned logical control channel” is established or whether any information is transmitted on this control channel before the instruction from the RCS to cause a second 64 kb/s link to be established. Indeed, during the hearing, counsel for Petitioner acknowledged that “Lomp doesn’t specify when the assigned logical control channel is established,” and that it is not certain what might have occurred on those channels before the instruction that Petitioner points to as the “initial” transmission of control information. Tr. 10:4–5, 57:4–9; see id. at 19:24–20:2, 57:9–14. Additionally, when asked which of Lomp’s channels would be used to establish the 64 kb/s link, Dr. Ding testified at his deposition that his understanding “is that Lomp did not specify which channel will be providing the instruction” to establish that link. Ex. 2012, 64:8–14. In light of this testimony, we find insufficient evidence that Lomp teaches that the instruction on the “assigned logical control channels” to establish the 64 kb/s link, which Petitioner points to as the “initial” transmission of control information, would have been the first time that control information was transmitted on those “assigned logical control channels,” as the claims require.” slip op. at 24

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Based on the full trial record, we find that Petitioner has not proven by a preponderance of the evidence that Lomp and Chen teach limitation 11(c) and the comparable limitation in claim 15. Petitioner’s arguments concerning Lomp are discussed above with respect to Ground 1. As to Chen, Petitioner identifies Chen’s feedback channels of the forward and reverse link as the claimed uplink and downlink control channels, but does not establish when control information is “initially transmitted” on those channels. Pet. 62 (citing Ex. 1003 ¶ 133). On the other hand, Dr. Lanning testifies that “[t]he control information that is exchanged in steps 330 and 350 of Chen is not the initial transmission of control information,” because “[s]uch initial control information would have been exchanged in Chen before the operation of Chen at the idle rate in step 310” in order to adjust the transmission power to an appropriate level for the idle rate. Ex. 2004 ¶ 276. We find Dr. Lanning’s testimony to be credible because it is consistent with Chen’s statement that “each base station must rapidly and accurately adjust the transmission power for the signals which it transmits to the mobile station,” and Chen’s description of a closed loop power control system for adjusting the transmission power by comparing measured power level against a threshold value, such that “if the power level is lower than desired, the base station increases the transmission power of its transmitted signals, otherwise the transmission power is decreased.” Ex. 1006, 1:56–59, 1:66–2:11; Ex. 2004 ¶¶ 191–193.” slip op. at 33

  Patent outcomesUS 7,089,028 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,089,028
• Apple, Inc. v. Corephotonics Ltd.No claims unpatentable
  PTAB · Nov 8, 2021 · IPR2020-00906 · APJ John F Horvath · IPR · Final written decision

  Claims 19–22 were not shown unpatentable because Petitioner did not establish that Ogata’s lens could be scaled for Parulski’s camera with a reasonable expectation of success.

  RulingsFinal written decision

  • Expert testimonyDecided for patent owner

    “first embodiment lens and the data entered into the “Lens Editor Data” spreadsheet are noticeable. First, the Abbe number for the third lens element is 42.72 in Ogata’s first embodiment lens and 26.5 (i.e., 38% smaller) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:46, with Ex. 1021, 36. Second, the data for the fourth and tenth aspherical surfaces are noticeably different. For example, the fourth order term (A4) for the fourth aspherical surface is 0.66 x 10-4 in Ogata’s first embodiment lens and 151.69 x 10-4 (i.e., 0.015) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:55, with Ex. 1021, 36. Neither Petitioner nor Dr. Sasián explain these discrepancies.” slip op. at 15

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner. The Petition contends that a person of ordinary skill in the art would have known that Ogata’s lens (using glass lens elements) could have been scaled to focus an image onto a 1/2.5” image sensor for use in Parulski’s camera. See Pet. 24–30; Ex. 1021, 36. Petitioner’s reply evidence and argument is not introduced to support that contention but a different contention—that a person of ordinary skill in the art would have known that Ogata’s lens could have been redesigned using aspheric plastic lens elements to focus an image onto a 1/3” image sensor. See n.11, supra. This is a new contention that does not support Petitioner’s 11 We note that Dr. Sasián’s analysis discloses how Kawamura’s lens can be modified by replacing the spherical glass lens elements with aspherical plastic lens elements, moving the aperture stop to the first lens element, changing the F number to 2.8, and reducing the effective focal length to focus an image onto a 1/3” image sensor rather than a 1/2.5” image sensor. See Ex. 1039 ¶¶ 25–30; App’x, 17–18. Dr. Sasián also opines that although this analysis illustrates how Kawamura’s lens could have been modified, a person skilled in the art “would have recognized that Ogata could have been similarly adjusted to yield a miniaturized form-factor.” Id. ¶ 25. because it is a new and untimely contention, we do not consider it further. See Consolidated Trial Practice Guide (Nov. 2019)12 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.”); see also Ariosa Diagnostics v. Verinata Heath, Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015) (“The Board must make judgments about . . . when a Reply contention crosses the line from the responsive to the new.”); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d at 1359, 1369–70 (Fed. Cir. 2016) (affirming the Board’s rejection of a reply argument presenting an “entirely new rationale to explain why one of skill in the art would have been motivated to combine” prior art references); Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019) (affirming the Board’s rejection of a reply argument presenting an “entirely new rationale” for why a claim would have been obvious).” slip op. at 18

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

    “first embodiment lens and the data entered into the “Lens Editor Data” spreadsheet are noticeable. First, the Abbe number for the third lens element is 42.72 in Ogata’s first embodiment lens and 26.5 (i.e., 38% smaller) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:46, with Ex. 1021, 36. Second, the data for the fourth and tenth aspherical surfaces are noticeably different. For example, the fourth order term (A4) for the fourth aspherical surface is 0.66 x 10-4 in Ogata’s first embodiment lens and 151.69 x 10-4 (i.e., 0.015) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:55, with Ex. 1021, 36. Neither Petitioner nor Dr. Sasián explain these discrepancies.” slip op. at 15

  Patent outcomesUS 10,225,479 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 10,225,479

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.