• Microsoft Corporation v. Daedalus Blue, LLCAll claims unpatentable
  PTAB · Oct 21, 2022 · IPR2021-00831 · APJ Sally C Medley · IPR · Final written decision

  Claims 15–25 were shown unpatentable: claims 15–21 and 23–25 as obvious over Gelb and Tivoli, and claim 22 as obvious over Gelb, Tivoli, and Callaghan.

  RulingsFinal written decision

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

    “We begin with the language of the independent challenged claims. Claim 15 recites “[a] method for handling files within a policy-based data management system, the method comprising.” Ex. 1001, 16:21–22. Claim 23 recites “[a] storage device storing computer code executable by a processor to carry out a method comprising.” Id. at 16:61–62. The remaining limitations of the independent claims are the same and directed to (1) providing a policy set with at least one service class rule; (2) receiving one or more attributes of a file from one of a plurality of clients, the clients comprising at least two different computing platforms; (3) applying the service class rule to the file to assign a service class to the file; and (4) conducting operations on the file in a manner according to the service class. Id. at 16:23–31, 16:63–17:4. The involved claims do not recite a “distributed storage system,” a “storage area network system,” or a “networked, distributed system [environment].” Thus, even if Patent Owner were correct that an invention that involves a networked, distributed system environment dictates that the plurality of clients also be in the networked environment, the claims themselves don’t require a networked, distributed system environment. Indeed, the preamble of claim 23 recites “a storage device,” and the preamble of claim 15 recites a “data management system,” terms that are much broader than those the Patent Owner uses to describe “the invention.” PO Resp. 8–10. Although Patent Owner never explains what “clients in a networked environment” means, Dr. White testifies that “a person of ordinary skill in the art would have understood the ‘plurality of clients’ to refer to clients in a networked distributed systems environment, such that each challenged claim requires a networked environment where clients communicate through a network.” Ex. 2024 ¶ 50. But, again, there is nothing in the claims that recites a “networked distributed systems environment,” a “networked environment,” or “clients communicating through a network.” The method claims are directed to performing certain steps to a file from one of a plurality of clients. No networking or clients communicating through a network is claimed or even shown to be relevant to what is claimed. Indeed, in urging us to narrowly construe the term “plurality of clients,” Patent Owner does not discuss the claim language at all. PO Resp. 8–10. But, the name of the game is the claim. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Here, Patent Owner fails to direct us to anything in the claim language itself that would support Patent Owner’s construction of “plurality of clients,” and we find nothing that supports the argument.” slip op. at 11

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

    “two different computing platforms.” Patent Owner contends that the limitation “computing platforms” should be construed to mean “operating systems.” PO Resp. 10–12. Petitioner disagrees and argues that “computing platforms” should be construed to mean “the combination of computer hardware and an operating system.” Pet. Reply 4–6. We understand that resolution of this issue is relevant only to Petitioner’s challenge based on Devarakonda. PO Resp. 2–3, 38–39 (arguing that Gelb alone fails to teach a plurality of clients but not addressing Gelb in combination with Tivoli), 55– 59 (arguing that Devarakonda fails to disclose clients that comprise at least two different operating systems); Pet. Reply 15–16; Tr. 5:16–22, 7:24–8:3, 25:22–26:23. For reasons explained below, we need not decide Petitioner’s challenge based on Devarakonda. Accordingly, for purposes of our Decision, we need not construe “computing platforms.” Other Terms We need not otherwise construe any other terms in the claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). D. Asserted Obviousness of Claims 15–21 and 23–25 over Gelb and Tivoli” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner, relying on the declaration testimony of Dr. Christopher Jules White, argues that a POSITA would have had “at least a bachelor’s degree in computer science, electrical engineering, computer engineering, or a similar discipline, along with two years of experience in the design, operation, or control of networked data management systems, and/or distributed systems.” PO Resp. 6 (citing Ex. 2024 ¶ 47). Patent Owner further argues that “Dr. White’s opinions and the arguments in this paper apply under either proposed level of ordinary skill in the art.” Id. at 7 (citing Ex. 2024 ¶ 49). We adopt Petitioner’s definition of the level of skill except that we delete the phrase “at least” to avoid ambiguity in the definition of the level of skill. Patent Owner’s proposed level overlaps substantially with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level of qualifications, the outcome would remain the same.” slip op. at 9

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “construction for “plurality of clients” to mean “clients in a networked environment.” Thus, we disagree with Patent Owner that the claims reflect that the ’132 patent’s field of endeavor is distributed storage systems. During oral argument, Patent Owner represented that its “analogous art argument depends on the construction of clients in a networked environment . . . for the first prong.” Tr. 39:20–40:11; see also Sur-Reply 7–8 (“[t]he lack of clients in a networked environment takes Gelb’s single-machine mainframe out of the ’132 Patent’s field of endeavor of distributed storage systems, which involves networked computers”). Accordingly, we determine that Patent Owner has failed to show that Gelb is not relevant to the obviousness analysis and agree with Petitioner that “Gelb’s teachings align closely to the subject matter of the ’132 Patent and therefore are analogous.” Pet. Reply 6.9” slip op. at 20

  Patent outcomesUS 8,671,132 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,671,132
• Apple Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentable
  PTAB · Jul 26, 2022 · IPR2021-00472 · APJ Sally C Medley · IPR · Final written decision

  Claims 1–5 and 7–13 are unpatentable under §103 as obvious over the listed combinations of Gundlach, Lee, and the additional references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Jeremy Cooperstock, who testifies that a person having ordinary skill in the art “would have had at least a Bachelor’s degree in an academic area emphasizing electronical engineering, mechanical engineering, or a similar discipline, and at least two years of experience in the field working with electronic devices” and that “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Pet. 7 (citing Ex. 1003 ¶ 20). Patent Owner relies on the declaration testimony of Dr. Hamid Toliyat, who applies a similar definition and testifies that a person having ordinary skill in the art “would have been someone having either a bachelor’s degree in electrical engineering, computer science, or mechanical engineering with some level of post-baccalaureate electronic device or system design experience, or someone with an equivalent level of experience and training through other means.” PO Resp. 5 (citing Ex. 2022 ¶ 31). Dr. Toliyat further testifies that “Dr. Cooperstock’s definition of a POSITA10 is somewhat different than mine; however, my opinions in this declaration would be the same regardless of whether or not my description or Dr. Cooperstock’s description of a POSITA is used.” Ex. 2022 ¶ 33. We adopt Petitioner’s definition of the level of skill for purposes of this Decision, except that we delete the phrase “at least” to avoid ambiguity in the definition of the level of skill. Patent Owner’s proposed level overlaps substantially with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level of qualifications, the outcome would remain the same.” slip op. at 10

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

    “For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). D. Asserted Obviousness of Claims 1, 2, 8, 9, and 11 over Gundlach and Lee” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
  • Obviousness (§103) › Analogous artAnalogous artNon analogous artDecided for petitioner

    “the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “Prior art is analogous if it is from the same field of endeavor or if it is reasonably pertinent to the particular problem the inventor is trying to solve.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fec. Cir. 2015). A reference is analogous art if either of these two tests is met. Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014). The Federal Circuit has indicated that the scope of analogous art is to be construed broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme Court’s decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 . . . (2007), directs us to construe the scope of analogous art broadly . . . .”). In determining the field of endeavor, we look to the ’077 patent’s written description and claims, including the structure and function of the invention. Bigio, 381 F.3d at 1326. And, we agree with Petitioner that in defining the field of invention, and in determining the relevance of Brown to the obviousness inquiry, here a broad approach should be taken. Pet. Reply 15. Indeed, the Supreme Court provided guidance in determining the applicability of a reference’s teachings in an obviousness inquiry. In KSR International Co. v. Teleflex Inc., the Court explained that if a feature has been used to improve one device, and a person of ordinary skill in the art would have recognized that it would improve a similar device in that field or another, implementing that feature on the similar device is likely obvious. 550 U.S. at 417. Here, we agree with Petitioner that the appropriate scope of the field of endeavor of the claimed invention is directed to switching devices and electronic devices. Pet. Reply 15 (citing Ex. 1001, 4:8–16, 17:63–65, 21:39–40); PO Resp. 59–60 (“[t]he field of endeavor of the ’077 patent is, broadly, speaking, magnetic switching devices that activate deactivate or hibernate an electronic device”). We further agree with Petitioner that “Brown’s headset falls into the general descriptive category of ‘electronic device.’” Pet. Reply 15. Patent Owner fails to show sufficiently that Brown is not within the same field of endeavor as the ’077 patent. PO Resp. 59. Although Brown may describe optical user interfaces for headsets, its teachings are relevant to the broad field of endeavor which includes electronic devices such as headsets. Because we find that Brown is from the same field of endeavor as the claimed invention and provides relevant teachings to a person of ordinary skill in the art at the time of the invention, we need not consider Patent Owner’s arguments regarding whether Brown is reasonably pertinent to the particular problem with which the inventors are involved.” slip op. at 54

  Patent outcomesUS 10,562,077 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,562,077
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentable
  PTAB · Jun 29, 2022 · IPR2021-00335 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 1–19 are unpatentable: claims 1–9, 11–15, and 19 as obvious over Kim; claim 10 over Kim and Koh; claims 16–17 over Kim and Lee; and claim 18 over Kim and Jiang.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Sayfe Kiaei, who testifies that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer science, or a similar field and one year of experience in consumer electronics product design” and that “[m]ore education can supplement practical experience and vice versa.” Pet. 16–17 (citing Ex. 1002 ¶¶ 21–22). Patent Owner relies on the declaration testimony of Dr. Mark Horenstein, who applies a similar definition and testifies that a person having ordinary skill in the art “would be someone with either a bachelor’s degree in electrical engineering, computer science, or mechanical engineering with some level of post-baccalaureate electronic device or system design experience, or someone with an equivalent level of experience and training through other means.” PO Resp. 6 n.2 (citing Ex. 2004 ¶ 25). Dr. Horenstein further testifies that “Dr. Kiaei’s definition of a POSITA7 is somewhat different than mine, nevertheless my opinions in This Declaration would be the same regardless” slip op. at 9

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

    “using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such [claims] as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” See 37 C.F.R. § 42.100(b) (2019); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “coupling member 510 on ‘at least one side’ of the second body with Petitioner’s unsupported suggestion of coupling the sub-device to either side of the second body.” PO Reply 5. We disagree that Petitioner’s position represents a conflation of the disclosure. Kim’s description that the coupling member for fixing the sub-device “is provided on at least one side of the second body” means precisely what Petitioner contends—that the sub-device may be coupled to either side of the second body. Patent Owner and Dr. Horenstein read Kim too narrowly or imprecisely.8 Indeed, Dr. Horenstein concludes that from the disputed Kim passage, the sub-device can only be coupled to the top of the second body in a closed position. Ex. 2004 ¶¶ 42–44. Dr. Horenstein, however, fails to explain sufficiently why that is so and we find his testimony lacking and inconsistent with what Kim describes. Thus, we do not give his testimony substantial weight. Dr. Kiaei’s testimony on the matter, however, is deserving of 8 During the hearing, counsel for Patent Owner confirmed that it is Patent Owner’s position that Kim does not even contemplate coupling the sub-device to the first body, even though Kim explicitly describes as much. Tr. 42:23–43:14; Ex. 1010 ¶ 260. substantial weight, because his testimony is consistent with what Kim describes. Ex. 1002 ¶¶ 81–85.” slip op. at 22

  • Strike new argumentNew argument consideredDecided for petitioner

    “immediately above are new and too late. PO Reply 8–9. We disagree. Petitioners are not prohibited from relying on new evidence and arguments in a reply, if the evidence and arguments are responsive to arguments made in a patent owner response. See 37 C.F.R. 42.23(b); Consolidated Trial Practice Guide (“Consolidated Practice Guide”)10 at 73. Here, we determine that Petitioner’s arguments and accompanying evidence (e.g., Ex. 1031) in connection with the Petitioner Reply are responsive to Patent Owner’s arguments. In particular, Petitioner could not have anticipated that Patent Owner would argue for such a narrow view of Petitioner’s Figure A representation. As explained above, the Petition does not limit the hinge in the Figure A representation in any way. Pet. 23–26. Rather, the Figure A representation is based on what is described in Kim, which also does not limit the hinge in any way. Id.; Ex. 1010 ¶ 256 (broadly describing that “[t]he second body may be configured to be connected by a hinge 100d to one side of the first body to be open or closed”), ¶ 260 (describing coupling a third body to one of the first and second bodies in a state that the first and second bodies are coupled). Thus, we determine that Petitioner’s argument that “[t]here is nothing in Kim that would suggest to a POSITA, much less require, that the folding watch-type embodiment of Figure A must have a hinge exactly as depicted in Figure 15A” and that “a POSITA would have been able to use routine design skills to select the appropriate hinge, as Dr. Horenstein admits” is permissively responsive to Patent Owner’s arguments, which are based on a myopic view of the Petition and Kim. Patent Owner did not 10 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. request to submit new testimony in support of its Sur-reply to rebut Dr. Horenstein’s testimony. For all of the above reasons, we determine that Patent Owner has not been prejudiced or denied due process, and that we may consider the reply arguments and Dr. Horenstein’s testimony in support of the arguments, which we find persuasive.” slip op. at 27

  Patent outcomesUS 10,259,020 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,259,020
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentable
  PTAB · Jun 22, 2022 · IPR2021-00338 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–13 are unpatentable as obvious: claims 1–8 over Kim, claim 11 over Kim and Koh, and claims 9, 10, 12, and 13 over Kim and Lee.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In the Institution Decision, we considered the subject matter of the ’320 patent, the background technical field, and the prior art, and we agreed with Petitioner’s proposed qualifications. Dec. 8–9. Accordingly, we determined that one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer science, or a similar field and one year of experience in consumer electronics product design, and could have obtained similar knowledge and experience through other means. In view of the relevant technology and claims of the ’320 patent, as well as the technology of the asserted prior art, we adopt the same qualifications as those identified in the Institution Decision. We note that even if we adopted Patent Owner’s proposed level, the outcome would remain the same.” slip op. at 10

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

    “Petitioner asserts that no express claim construction is required in order to assess the grounds presented and the ordinary and customary meanings of the terms should be used. Pet. 17; see generally Pet. Reply. Patent Owner similarly states that no express construction is required, and the ordinary meaning of the terms may be used. PO Resp. 4; see generally PO Sur-Reply. In the Institution Decision, we determined that it was not necessary to provide express interpretations of any claim terms. Dec. 9–10. On the full record, we likewise determine that it is not necessary to provide an express interpretation of any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Additionally, Patent Owner asserts that Petitioner “conflates Kim’s disclosure of coupling member 510 on ‘at least one side’ of the second body with Petitioner’s unsupported suggestion of coupling the sub-device to either side of the second body.” PO Sur-Reply 5. We do not agree with this assertion. Kim’s description that the coupling member for fixing the sub-device “is provided on at least one side of the second body” discloses what Petitioner contends it does, that is, that the sub-device may be coupled to either side of the second body. Although Dr. Horenstein testifies that the sub-device can only be coupled to the top of the second body in a closed position, his explanation is not sufficient as to why that is so, particularly in view of Kim’s disclosures. See Ex. 2004 ¶¶ 42–44. For instance, Dr. Horenstein testifies that certain portions of Kim, such as those describing Figure 15B, show the coupling of sub-device on top of the second body, but this testimony is overly limited and inconsistent with other of Kim’s disclosures because it fails to account for other disclosures, as discussed above. Id. ¶ 44. Thus, we do not afford his testimony substantial weight. Instead, we credit Dr. Kiaei’s testimony on the issue because his testimony is consistent with what Kim describes. Ex. 1002 ¶¶ 83–87.” slip op. at 23

  • Strike new argumentNew argument consideredDecided for petitioner

    “A petitioner may rely on new evidence and arguments in a reply, if the evidence and arguments are responsive to arguments made in a patent owner response. See 37 C.F.R. 42.23(b); Consolidated Trial Practice Guide 73. Here, we determine that Petitioner’s arguments and accompanying evidence (e.g., Ex. 1031) in connection with this issue in the Petitioner Reply are responsive to Patent Owner’s arguments. In particular, Petitioner could not have anticipated that Patent Owner would argue for such a narrow view of Petitioner’s Figure A representation. As explained above, the Petition does not limit the hinge in the Figure A representation in any way. Pet. 23–25. Rather, the Figure A representation is based on what is described in Kim, which also does not limit the hinge in any way. Id.; Ex. 1010 ¶ 256 (broadly describing that “[t]he second body may be configured to be connected by a hinge 100d to one side of the first body to be open or closed”), ¶ 260 (describing coupling a third body to one of the first and second bodies in a state that the first and second bodies are coupled). Thus, we determine that Petitioner’s argument that “[t]here is nothing in Kim that would suggest to a POSITA, much less require, that the folding watch-type embodiment of Figure A must have a hinge exactly as depicted in Figure 15A” and that “a POSITA would have been able to use routine design skills to select the appropriate hinge, as Dr. Horenstein admits” is responsive to Patent Owner’s arguments, which are based on an overly limited view of the Petition and Kim.9 For the above reasons, we 9 We note that Patent Owner did not request to submit new testimony in support of its Sur-Reply to rebut Dr. Horenstein’s testimony. determine that we may consider the reply arguments and Dr. Horenstein’s testimony in support of the arguments, which we find persuasive.” slip op. at 28

  Patent outcomesUS 10,589,320 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,589,320
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentable
  PTAB · Jun 22, 2022 · IPR2021-00337 · APJ Sally C Medley · IPR · Final written decision

  Claims 1–13 are unpatentable: claims 1–8 as obvious over Kim, claim 11 over Kim and Koh, and claims 9, 10, 12, and 13 over Kim and Lee.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Sayfe Kiaei, who testifies that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer science, 7 Patent Owner does not present any objective evidence of nonobviousness as to the challenged claims. or a similar field and one year of experience in consumer electronics product design” and that “[m]ore education can supplement practical experience and vice versa.” Pet. 17 (citing Ex. 1002 ¶¶ 21–22). Patent Owner relies on the declaration testimony of Dr. Mark Horenstein, who applies a similar definition and testifies that a person having ordinary skill in the art “would have been someone having either a bachelor’s degree in electrical engineering, computer science, or mechanical engineering with some level of post-baccalaureate electronic device or system design experience, or someone with an equivalent level of experience and training through other means.” PO Resp. 5 n.2 (citing Ex. 2004 ¶ 25). Dr. Horenstein further testifies that “Dr. Kiaei’s definition of a POSITA8 is somewhat different than mine, nevertheless my opinions in This Declaration would be the same regardless of whether or not my description or Dr. Kiaei’s description of a POSITA is used.” Ex. 2004 ¶ 25. We adopt Petitioner’s definition of the level of skill for purposes of this Decision, except that we delete the phrase “at least” to avoid ambiguity in the definition of the level of skill. Patent Owner’s proposed level overlaps substantially with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level, the outcome would remain the same.” slip op. at 9

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

    “For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “coupling member 510 on ‘at least one side’ of the second body with Petitioner’s unsupported suggestion of coupling the sub-device to either side of the second body.” Sur-reply 5. We disagree that Petitioner’s position represents a conflation of the disclosure. Kim’s description that the coupling member for fixing the sub-device “is provided on at least one side of the second body” means precisely what Petitioner contends—that the sub-device may be coupled to either side of the second body. Patent Owner and Dr. Horenstein read Kim too narrowly or imprecisely.9 Indeed, Dr. Horenstein concludes that from the disputed Kim passage, the sub-device can only be coupled to the top of the second body in a closed position. Ex. 2004 ¶¶ 42– 44. Dr. Horenstein, however, fails to explain sufficiently why that is so and we find his testimony lacking and inconsistent with what Kim describes. Thus, we do not give his testimony substantial weight. Dr. Kiaei’s testimony on the matter, however, is deserving of substantial weight, 9 During the hearing, counsel for Patent Owner confirmed that it is Patent Owner’s position that Kim does not even contemplate coupling the sub-device to the first body, even though Kim explicitly describes as much. Tr. 42:23–43:14; Ex. 1010 ¶ 260. because his testimony is consistent with what Kim describes. Ex. 1002 ¶¶ 81–85.” slip op. at 22

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “advocating a Figure A solution that did not allow the cover of the watch-type device to properly close due to sandwiching sub-device 300.” PO Resp. 8 (citing Ex. 2004 ¶ 48). Patent Owner also argues that such a configuration as shown in Figure A would be unattractive, large, and ill-suited for its purpose. Id. at 8–9. Patent Owner’s arguments are premised on an overly limited view of the Figure A embodiment as it would be interpreted in the view of one of ordinary skill in the art. Kim broadly states that its embodiments “may be used singly and/or by being combined together.” Ex. 1010 ¶ 179. Consideration of the combination depicted in representative Figure A would reasonably have to “account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016). For the reasons discussed above, Kim discloses not only general combination of embodiments, but, more specifically, describes that first and second bodies are coupled and that the sub-device may be on either side of the second body, which supports the depiction of representative Figure A. Representative Figure A Would Have Been Obvious In addition to Kim’s description of representative Figure A, Petitioner also provides a showing, which we agree with, that the representative Figure A embodiment would have been obvious. Pet. 23–26. Specifically, Petitioner contends that, to the extent that Patent Owner argues that Kim does not disclose Figure A, such an embodiment would have been obvious to a POSITA in view of Kim’s folder-type embodiments (Figure 11B) which are similar and closely related to the watch-type embodiment (Figure 15A). Id. at 23–24 (citing Ex. 1010, Figs. 11B, 15A; Ex. 1002 ¶¶ 87–95). Petitioner explains how in both embodiments (folder-type and watch-type) the main device comprises a first body and a second body connected to each other by a hinge so that the two bodies can open or close in a folding manner, and that with respect to both embodiments, Kim also describes using coupling members 510 (such as magnets) to detachably couple the sub-device to the main device. Id. at 23–25 (citing Ex. 1002 ¶¶ 88–90; Ex. 1010 ¶¶ 212, 218, 220, 261). Petitioner contends that a “POSITA would have recognized that because of the similarities between Kim’s folder-type and watch-type embodiments, Kim’s disclosure with respect to Figure 11B could have been adapted and applied to detachably couple sub-device 300 to the second body 100b of the watch-type embodiment in the manner shown in Figure A.” Id. at 25 (citing Ex. 1002 ¶ 90). Petitioner further contends that doing so is suggested by Kim itself, because Kim states that the embodiments “may be used singly and/or by being combined together.” Id. (citing Ex. 1010 ¶ 179). Petitioner argues that a POSITA having reviewed Kim’s Figure 11B embodiment would have recognized the feasibility and desirability of modifying the embodiment of Kim’s Figure 15 to detachably couple sub-device 300 to the second body 100b using coupling members 510. Id. (citing Ex. 1002 ¶¶ 90–95). Petitioner further provides reasons for making the modification. Id. at 25–26 (citing Ex. 1002 ¶¶ 93–95). Patent Owner makes several arguments why Petitioner’s Figure A “is not obvious.” PO Resp. 9–35. For the reasons that follow, we determine that such arguments do not undermine Petitioner’s persuasive showing.” slip op. at 23

  Patent outcomesUS 10,562,077 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,562,077
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentable
  PTAB · Jun 22, 2022 · IPR2021-00336 · APJ Sally C Medley · IPR · Final written decision

  Claims 1–19 are unpatentable: claims 1–9, 11–15, and 19 as obvious over Kim; claim 10 over Kim and Koh; claims 16–17 over Kim and Lee; and claim 18 over Kim and Jiang.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Sayfe Kiaei, who testifies that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer science, 8 Patent Owner does not present any objective evidence of nonobviousness as to the challenged claims. or a similar field and one year of experience in consumer electronics product design” and that “[m]ore education can supplement practical experience and vice versa.” Pet. 17 (citing Ex. 1002 ¶¶ 21–22). Patent Owner relies on the declaration testimony of Dr. Mark Horenstein, who applies a similar definition and testifies that a person having ordinary skill in the art “would have been someone having either a bachelor’s degree in electrical engineering, computer science, or mechanical engineering with some level of post-baccalaureate electronic device or system design experience, or someone with an equivalent level of experience and training through other means.” PO Resp. 6 n.2 (citing Ex. 2004 ¶ 25). Dr. Horenstein further testifies that “Dr. Kiaei’s definition of a POSITA9 is somewhat different than mine, nevertheless my opinions in This Declaration would be the same regardless of whether or not my description or Dr. Kiaei’s description of a POSITA is used.” Ex. 2004 ¶ 25. We adopt Petitioner’s definition of the level of skill for purposes of this Decision, except that we delete the phrase “at least” to avoid ambiguity in the definition of the level of skill. Patent Owner’s proposed level overlaps substantially with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level, the outcome would remain the same.” slip op. at 9

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

    “For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “coupling member 510 on ‘at least one side’ of the second body with Petitioner’s unsupported suggestion of coupling the sub-device to either side of the second body.” Sur-reply 5. We disagree that Petitioner’s position represents a conflation of the disclosure. Kim’s description that the coupling member for fixing the sub-device “is provided on at least one side of the second body” means precisely what Petitioner contends—that the sub-device may be coupled to either side of the second body. Patent Owner and Dr. Horenstein read Kim too narrowly or imprecisely.10 Indeed, Dr. Horenstein concludes that from the disputed Kim passage, the sub-device can only be coupled to the top of the second body in a closed position. Ex. 2004 ¶¶ 42– 44. Dr. Horenstein, however, fails to explain sufficiently why that may be so and we find his testimony lacking factual support and inconsistent with what Kim describes. See 37 C.F.R. § 42.65 (expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight). Thus, we do not give his testimony substantial 10 During the hearing, counsel for Patent Owner confirmed that it is Patent Owner’s position that Kim does not even contemplate coupling the sub-device to the first body, even though Kim explicitly describes as much. Tr. 42:23–43:14; Ex. 1010 ¶ 260. weight. Dr. Kiaei’s testimony on the matter, however, is deserving of substantial weight, because his testimony is consistent with what Kim describes. Ex. 1002 ¶¶ 83–87.” slip op. at 22

  • Strike new argumentNew argument consideredDecided for petitioner

    “immediately above are new and too late. Sur-reply 8–9. We disagree. A petitioner is not prohibited from relying on new evidence and arguments in a reply, if the evidence and arguments are responsive to arguments made in a patent owner response. See 37 C.F.R. 42.23(b); Consolidated Trial Practice Guide (“Consolidated Practice Guide”)12 at 73. Here, we determine that Petitioner’s arguments and accompanying evidence (e.g., Ex. 1031) in connection with the Petitioner Reply are responsive to Patent Owner’s arguments. In particular, Petitioner could not have anticipated that Patent Owner would argue for such a narrow view of Petitioner’s Figure A representation. As explained above, the Petition does not limit the hinge in the Figure A representation in any way. Pet. 23–25. Rather, the Figure A representation is based on what is described in Kim, which also does not limit the hinge in any way. Id.; Ex. 1010 ¶ 256 (broadly describing that “[t]he second body may be configured to be connected by a hinge 100d to one side of the first body to be open or closed”), ¶ 260 (describing coupling a third body to one of the first and second bodies in a state that the first and second bodies are coupled). Thus, we determine that Petitioner’s argument that “[t]here is nothing in Kim that would suggest to a POSITA, much less require, that the folding watch-type embodiment of Figure A must have a hinge exactly as depicted in Figure 15A” and that “a POSITA would have been able to use routine design skills to select the appropriate hinge, as Dr. Horenstein 12 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. admits” is permissively responsive to Patent Owner’s arguments, which are based on a myopic view of the Petition and Kim. Patent Owner did not request to submit new testimony in support of its Sur-reply to rebut Dr. Horenstein’s testimony. For all of the above reasons, we determine that Patent Owner has not been prejudiced or denied due process, and that we may consider the reply arguments and Dr. Horenstein’s testimony in support of the arguments, which we find persuasive.” slip op. at 27

  Patent outcomesUS 10,259,021 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,259,021
• Lenovo Holding Company, Inc. / Lenovo (United States) Inc. et al. v. Interdigital Technology CorporationAll claims unpatentable
  PTAB · Jan 26, 2022 · IPR2020-01413 · APJ Sally C Medley · IPR · Final written decision

  Claims 1–10 and 14–18 are unpatentable as obvious over Tiedemann and Gesbert; the Board did not reach the other asserted obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “We adopt Petitioner’s definition of the level of skill for purposes of this Decision, except that we delete the phrase “at least” to avoid including 7 Patent Owner does not present any objective evidence of nonobviousness as to the challenged claims. ambiguity in the definition of the level of skill. We further note that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding the Board may omit specific findings as to the level of ordinary skill in the art “where the prior art itself reflects an appropriate level and a need for testimony is not shown”).” slip op. at 6

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

    “We agree with Petitioner that “associated with” is an adjective phrase where the word “associated” is itself an adjective, not a verb as Patent Owner argues. Pet. Reply 5–6 (citing Ex. 1021). Tellingly, Patent Owner’s arguments and supporting evidence are premised on the mischaracterization of the disputed limitation to require “that the subsequent downlink transmission be ‘associated with at least one [MCS] in response to the transmitted first [CQI] and . . . difference indications.” PO Resp. 15. The claim, however, does not recite that the subsequent downlink transmission be associated with at least one modulation and coding set. Insertion of the word “be” or “to be” changes the meaning of the disputed limitation. Accordingly, we decline to rewrite the claim as Patent Owner suggests. As such, we find that “in response to” modifies “receive,” not “associated with.” Thus, the plain meaning of the claim language includes a modulation and coding set associated with the subsequent downlink transmission. The plain language of the claim does not require that the modulation and coding set be selected based on the first channel quality indication and plurality of difference indications as Patent Owner asserts.” slip op. at 8

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “and Gesbert are directed to the transmission of downlink quality reports on the uplink to overcome the problem of non-optimal allocation of downlink resources. Ex. 1003 ¶ 366 (citing Ex. 1001, 1:12–23; Ex. 1005, 1:7–11, 2:54–57, 3:5–19; Ex. 1012 code (570), 1:21–50, 3:46–51). It also is not disputed, and we find, that Gesbert teaches deriving a mean SINR (“channel quality indication”) indicating a channel quality of a plurality of training tones/pilot signals (“downlink resources”). Id. ¶ 363 (citing Ex. 1012, 2:56– 3:3, 8:13–41; Ex. 1017 ¶ 32). We give substantial weight to Dr. Acampora’s testimony that implementing a mean value in place of Tiedemann’s three bit field to report link quality information was within the level of ordinary skill in the art at the time of the claimed invention and would have been predictable. Id. ¶¶ 367–368. In particular, we give substantial weight to Dr. Acampora’s testimony that using the mean channel quality value in place of the best channel value would have resulted in the mean channel quality value being used in the same way as the best value in a predictable way to report link quality information. See Ex. 1003 ¶ 367.” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “We determine that Petitioner’s reasons for combining Tiedemann and Gesbert are sufficiently specific and persuasive, given the relatively high level of ordinary skill in the art. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”); see also id. at 416 (“[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”). It is not disputed, and we find, that like the ’726 patent, Tiedemann and Gesbert are directed to the transmission of downlink quality reports on the uplink to overcome the problem of non-optimal allocation of downlink resources. Ex. 1003 ¶ 366 (citing Ex. 1001, 1:12–23; Ex. 1005, 1:7–11, 2:54–57, 3:5–19; Ex. 1012 code (570), 1:21–50, 3:46–51). It also is not disputed, and we find, that Gesbert teaches deriving a mean SINR (“channel quality indication”) indicating a channel quality of a plurality of training tones/pilot signals (“downlink resources”). Id. ¶ 363 (citing Ex. 1012, 2:56– 3:3, 8:13–41; Ex. 1017 ¶ 32). We give substantial weight to Dr. Acampora’s testimony that implementing a mean value in place of Tiedemann’s three bit field to report link quality information was within the level of ordinary skill in the art at the time of the claimed invention and would have been predictable. Id. ¶¶ 367–368. In particular, we give substantial weight to Dr. Acampora’s testimony that using the mean channel quality value in place of the best channel value would have resulted in the mean channel quality value being used in the same way as the best value in a predictable way to report link quality information. See Ex. 1003 ¶ 367.” slip op. at 31

  Patent outcomesUS 8,199,726 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,199,726
• Intel Corporation v. Pact XPP Schweiz AGAll claims unpatentable
  PTAB · Sep 7, 2021 · IPR2020-00542 · APJ Sally C Medley · IPR · Final written decision

  Claims 1–5, 8, 9, and 12–18 are unpatentable as obvious over the applied Song-based grounds; the Board did not reach the remaining grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Paul Franzon, who testifies that a person having ordinary skill in the art “would have been a person having at least a Master’s degree in Electrical Engineering, Computer Engineering or Computer Science with three years of industry experience in coupled processors, multi-level caches, and caches.” Pet. 14 (citing Ex. 1001 ¶ 39). Patent Owner’s declarant adopts Petitioner’s definition of a person having ordinary skill in the art. Ex. 2051 ¶¶ 16–17.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “Claim 1 recites “an algorithm list buffer.” Ex. 1003, 169:9. Both parties agree that the plain meaning of an “algorithm list buffer” is a buffer that stores a list of algorithms. PO Resp. 14; Pet. Reply 4. We disagree with Patent Owner that an “algorithm list buffer” must be in the form of an interlinked list that points to tables that include instructions and data for the algorithm. PO Resp. 11–13 (citing Ex. 1003, code (57), 10:36–40, 19:22– 56, 19:32–59, Fig. 2). Claim 1 does not recite a list that points to tables that include instructions and data for the algorithm, and we decline the invitation to limit claim 1 to unclaimed features. See Ventana Med. Sys., Inc. v. BioGenex Labs., Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006) (“[E]ach claim does not necessarily cover every feature disclosed in the specification [and] it is improper to limit the claim to other, unclaimed features.”). Moreover, and importantly, claim 1 additionally recites that an algorithm “comprises a set of instructions for joint execution.” Ex. 1003, 169:2–4 (emphasis added). Patent Owner overlooks this lexicographic 13 Petitioner alternatively argues that to the extent the claimed “algorithm list buffer” requires “stor[ing] algorithm pointers” as Patent Owner alleges, Song’s fetch unit contains control flow instructions like “Jump to Subroutine” that a POSITA would have understood to point to a new subroutine to be executed. Id. at 5–6. For purposes of this Decision, we need not and do not consider this argument, because we determine that “algorithm list buffer” does not require “storing algorithm pointers.” definition of “algorithm” in presenting its arguments. Taking into account the additional claim limitation that an algorithm “comprises a set of instructions for joint execution,” and the parties’ agreement that an “algorithm list buffer” is a buffer that stores a list of algorithms, claim 1’s “algorithm list buffer” is a buffer that stores a list comprising sets of instructions for joint execution. Claim 1 does not, however, impose any particular organization on how sets of instructions may appear, or be organized, within such a list, or require that the sets have any particular structure at all, apart from appearing in the list and being “for joint execution.”” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “(citing Ex. 1013, 1:62–66; Ex. 1001 ¶¶ 99–100), 46–47 (citing Ex. 1013, 4:32–66, 5:42–6:20, Fig. 2; Ex. 1001 ¶ 103). Petitioner directs attention to Arimilli’s description that a multi-level cache allows the lower level cache (L2) to act as “an intermediary between memory 16 and the on-board caches, and can store a much larger amount of information (instructions and data) than the on-board caches can, but at a longer access penalty.” Id. at 45 (quoting Ex. 1013, 1:63–66). Petitioner further contends that the multi-level cache allows the L1 cache to be rapidly accessed for a small amount of data, and the L2 cache to be accessed for a larger amount of data but at a slower pace. Id. (citing Ex. 1001 ¶ 100). Petitioner argues, and we agree, that to the extent Song does not teach a “multi-level cache,” “[a]dding a second level of cache to Song’s system, like that disclosed in Arimilli, will allow it to ‘store a much larger amount of information’ (Ex. 1013, 1:62–66) than Song’s cache subsystem, and improve efficiency of data transfer by avoiding long memory access.” Pet. 45 (citing Ex. 1001 ¶ 100). Petitioner further argues that a POSITA would have been motivated to “include Arimilli’s cache slices within Song’s caches.” Id. at 46–47. Petitioner argues, and we agree, that read-write operations are improved when the cache is divided into a plurality of slices by allowing “more efficient read and write operations if parallelized into slices rather than serially with the entire cache.” Id. at 47 (citing Ex. 1013, 4:43–66; Ex. 1001 ¶ 103). Petitioner further argues, and we agree, that Arimilli’s sliced cache presents itself as a single cache, confirming that a POSITA would easily integrate Arimilli’s cache slices into Song with a reasonable expectation of success. Id. (citing Ex. 1013, 5:42–6:20, Fig. 2; Ex. 1001 ¶ 103).” slip op. at 45

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Franzon’s testimony that the prior art discloses an “algorithm list buffer,” because “his declaration simply parrots the Petition and he was purposefully evasive and nonresponsive throughout his deposition.” PO Resp. 23–27; Sur-reply 12. We have reviewed the arguments provided by Patent Owner and determine such arguments are insufficient for us to give little weight to Dr. Franzon’s declaration. Rather, it is within our discretion to assign the appropriate weight to be accorded evidence. See 37 C.F.R. § 42.65(a); see also, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); and Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”). Based on the record before us, we are not persuaded that we should give Dr. Franzon’s testimony little weight. For example, Patent Owner faults Dr. Franzon for merely “track[ing]” the Petition and failing to provide any independent analysis of the term “algorithm list buffer.” PO Resp. 23. First, we do not find that Dr. Franzon merely copied the Petition, rather, it is most likely that Petitioner incorporated his testimony into the Petition. Pet. Reply 9. Moreover, Patent Owner first raised the meaning of “algorithm list buffer” in connection with its Patent Owner Response, which came after Dr. Franzon’s initial declaration. PO Resp. 14–17. Accordingly, it is not unusual that Dr. Franzon did not analyze the term “algorithm list buffer” in his original declaration, as he all along applied the plain meaning of the term. Ex. 2053, 37:13–24. Lastly, we do not find that the few parts of Dr. Franzon’s cross-examination testimony that Patent Owner points to justifies us concluding that Dr. Franzon was so evasive in answering questions that we should not consider his testimony altogether.” slip op. at 28

  Patent outcomesUS 9,170,812 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,170,812
• Intel Corporation v. Pact XPP Schweiz AGAll claims unpatentable
  PTAB · Aug 31, 2021 · IPR2020-00541 · APJ Sally C Medley · IPR · Final written decision

  Claims 1–6 are unpatentable as obvious over Nicol and Kling; the Board did not decide the withdrawn grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Carl Sechen, who testifies that a person having ordinary skill in the art “would have been a person with at least a Master’s degree in Electrical or Computer Engineering (or equivalent), and three years of experience with processor design.” Pet. 10 (citing Ex. 1001 ¶¶ 83–85). Patent Owner adopts Petitioner’s definition of a person having ordinary skill in the art. PO Resp. 19. We accept the assessment offered by Petitioner and adopted by Patent Owner as it is consistent with the ’605 patent and the asserted prior art. We further note that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding the Board may omit specific” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Subsequent to the Decision to Institute, the District Court determined that the phrase “each of the plurality of data processing units . . . adapted for sequentially processing data” means “[s]equential data processors that pass results to one or more additional data processing units to perform additional computations.” Ex. 2026, 17, 19. The parties appear to agree with that construction. PO Resp. 8–9; Pet. Reply 8, 27. Petitioner’s showing in the Petition is consistent with the District Court’s construction, because the construction is similar to Patent Owner’s proffered construction and neither party indicates that there is a substantive difference between Patent Owner’s proffered construction and the District Court’s construction for purposes of deciding the issues in this proceeding. Pet. 30–32; PO Resp. 8–9; Pet. Reply 8, 27. Accordingly, for purposes of this Decision, we adopt the District Court’s claim construction for “each of the plurality of data processing units . . . adapted for sequentially processing data.”” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Patent Owner’s arguments focus too narrowly on the individual embodiments shown and described in Nicol Figures 2 and 4, and do not adequately address Petitioner’s showings, which rely on Nicol as a whole. Pet. 25–29, 35–38, 40. For example, the Petition relies on an annotated Figure 4 to show and label different PEs (PE1 and PE2) for purposes of showing the claimed “a first processor” and “a second processor.” Pet. 36, 40. Notably, Petitioner does not rely on the passages related to Figure 4 that Patent Owner points to in arguing that Petitioner improperly mixes and matches embodiments, e.g., Exhibit 1009, 5:60–61, 5:67–6:2. Pet. 35–41. Furthermore, the Petition makes clear that Figure 3, which Petitioner primarily relies on to show setting of the clock frequency for the annotated Figure 4 system illustrates how the claim limitations are met. Id. Patent Owner’s incompatibility arguments are based on glossing over the teachings of Figure 3 altogether, while rigidly focusing only on certain descriptions of Figures 2 and 4. PO Resp. 17–19, 28–30. Indeed, Dr. Mangione-Smith’s testimony regarding the incompatibility of Nicol’s Figure 2 and Figure 4 embodiments does not mention Nicol Figure 3 at all. Ex. 2024 ¶¶ 37, 48–51. With this in mind, we address Patent Owner’s incompatibility arguments.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “motivated and found it obvious to combine the teachings of Nicol and Kling. Pet. 23–25, 42–45. For example, Petitioner contends, and we agree, that a POSITA would have been motivated to combine Kling’s over-temperature protection to Nicol’s multiprocessor system because it was known that overtemperature protection was critical for high-performance multiprocessor systems. Id. at 24, 42 (citing Ex. 1001 ¶ 127; Ex. 1009, 2:18–22, 3:9–20; Ex. 1010, 1:38–46; Ex. 1001 ¶¶ 127, 129, 182). Petitioner further contends, and we agree, that a POSITA would have been motivated to use temperature measurements to improve voltage scaling (taught in Nicol) and for over-temperature protection (taught in Kling). Id. at 42–43 (citing Ex. 1001 ¶ 186). Patent Owner first argues that “[m]ere benefit without any showing of actual motivation is plainly insufficient to suggest a POSITA would combine these reference[s].” PO Resp. 54–55 (citing Ex. 2024 ¶ 82). We are not persuaded by this conclusory argument, because “[i]f a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, § 103 likely bars its patentability.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). In any event, Petitioner explains that a POSITA would have been motivated to combine Kling’s over-temperature protection to Nicol’s multiprocessor system because it was known that over-temperature protection was critical for high-performance multiprocessor systems. Pet. 24, 42 (citing Ex. 1001 ¶ 127; Ex. 1009, 2:18– 22, 3:9–20; Ex. 1010, 1:38–46; Ex. 1001 ¶¶ 127, 129, 182). We find, and it is not disputed, that over-temperature protection was critical for high-performance multiprocessor systems. Ex. 1010, 1:42–47 (explaining that if thermal monitoring is not included “the processor may destroy itself by its own heat”). Nicol describes that temperature tracking would be desirable in its power management system (see, e.g., Ex. 1009, 4:11–13 (explaining that “the operating system can reduce the supply voltage even further by tracking temperature and process variations”). Nicol, however, does not specifically provide details, and we give substantial weight to Dr. Sechen’s testimony that a POSITA would have been motivated to consult Kling and implement Kling’s over-temperature protection, which was known to be “critical for high-performance systems.” Ex. 1001 ¶ 127.” slip op. at 41

  Patent outcomesUS 9,075,605 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,075,605
• Samsung Display Co., Ltd. v. Solas Oled Ltd.All claims unpatentable
  PTAB · Mar 31, 2021 · IPR2020-00140 · APJ Julia Heaney · IPR · Final written decision

  Claims 1–9, 11–13, and 15–18 are unpatentable under § 103 over Utsugi alone, Utsugi and Manabe, or Utsugi and Eida.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “No. 6,072,450 (Ex. 1001, “the ’450 patent”). Paper 1 (“Petition” or “Pet.”). Solas OLED Ltd. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Taking into account the arguments presented in Patent Owner’s Preliminary Response, we determined the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–9, 11–13, and 15–18 of the ’450 patent, and we instituted this inter partes review as to all challenged claims. Paper 9 (“Dec. on Inst.”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we adopted Petitioner’s formulation of the level of ordinary skill in the art and determined that a person of ordinary skill in the art at the time of the invention “would have had a relevant technical degree in Electrical Engineering, Computer Engineering, Materials Science, Physics, or the like, and experience in active matrix display design and electroluminescence.” Dec. on Inst. 9 (quoting Pet. 13) (adopting Petitioner’s formulation, which is supported by Dr. Fontecchio’s testimony, because it is consistent with the ’450 patent and the asserted prior art). In its Patent Owner Response, Patent Owner argues that a person of ordinary skill would need approximately two years of experience working in design and development related to active matrix organic light emitting diodes (“OLED”) displays, in addition to a Bachelor’s degree in Electrical Engineering, Physics, and/or Materials Science and Engineering or equivalent training. PO Resp. 7–8 (citing Ex. 2001 ¶¶ 30–31). Patent Owner also states, however, that its arguments in opposition to the Petition apply under Petitioner’s definition of the level of ordinary skill as well. Id. at 8. Accordingly, having considered the parties’ arguments and evidence, we maintain our determination from the Institution Decision adopting Petitioner’s proposed level of ordinary skill in the art, as it is consistent with the problems and solutions in the ’450 patent and prior art of record. We also determine our decision would be the same under either side’s formulation of the level of ordinary skill.” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “transistors QS and QI, and satisfies this limitation. We find persuasive Petitioner’s rationale that a person of ordinary skill would have understood that insulation above transistor QS would have been necessary to prevent a short circuit across QS; indeed, both parties’ experts agree on this point. See Ex. 1007 ¶ 168; Ex. 1017, 155:8–16. We also find it persuasive, as Petitioner argues, that using the SiO2 layer to provide insulation above transistor QS would have been straightforward and efficient, because it would have avoided additional patterning and the SiO2 layer was already used to provide insulation above other structures. See Ex. 1007 ¶ 169. Patent Owner’s argument that a different insulating material could be deposited does not undermine Petitioner’s showing because Mr. Flasck did not articulate any reason why a person of ordinary skill would undertake such an additional step. See Ex. 1017, 156:6–21. And Patent Owner fails to adequately explain how Petitioner’s proposed modification does not avoid the asserted additional patterning steps; Mr. Flasck’s testimony does not specifically address this. See Ex. 2001 ¶ 54; see generally Ex. 1017. We have also considered Patent Owner’s argument that modifying Utsugi by oxidizing transistor QS’s electrode in order to insulate it would have been an alternative modification that would not involve additional patterning steps. See Tr. 48 (quoting Ex. 2005, 98:25–99:20). Although Dr. Fontecchio’s testimony concerning oxidation of an aluminum surface during vacuum chamber deposition supports Patent Owner’s argument that there would have been alternative techniques to leaving the SiO2 layer in place in order to insulate the electrodes of QS, it neither persuades us that a person of ordinary skill would not have been motivated to use the already-present SiO2 layer to insulate QS, nor outweighs Petitioner’s evidence on that issue. In other words, one obvious modification to a reference does not exclude the possibility of other obvious modifications.” slip op. at 22

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “transistors QS and QI, and satisfies this limitation. We find persuasive Petitioner’s rationale that a person of ordinary skill would have understood that insulation above transistor QS would have been necessary to prevent a short circuit across QS; indeed, both parties’ experts agree on this point. See Ex. 1007 ¶ 168; Ex. 1017, 155:8–16. We also find it persuasive, as Petitioner argues, that using the SiO2 layer to provide insulation above transistor QS would have been straightforward and efficient, because it would have avoided additional patterning and the SiO2 layer was already used to provide insulation above other structures. See Ex. 1007 ¶ 169. Patent Owner’s argument that a different insulating material could be deposited does not undermine Petitioner’s showing because Mr. Flasck did not articulate any reason why a person of ordinary skill would undertake such an additional step. See Ex. 1017, 156:6–21. And Patent Owner fails to adequately explain how Petitioner’s proposed modification does not avoid the asserted additional patterning steps; Mr. Flasck’s testimony does not specifically address this. See Ex. 2001 ¶ 54; see generally Ex. 1017. We have also considered Patent Owner’s argument that modifying Utsugi by oxidizing transistor QS’s electrode in order to insulate it would have been an alternative modification that would not involve additional patterning steps. See Tr. 48 (quoting Ex. 2005, 98:25–99:20). Although Dr. Fontecchio’s testimony concerning oxidation of an aluminum surface during vacuum chamber deposition supports Patent Owner’s argument that there would have been alternative techniques to leaving the SiO2 layer in place in order to insulate the electrodes of QS, it neither persuades us that a person of ordinary skill would not have been motivated to use the already-present SiO2 layer to insulate QS, nor outweighs Petitioner’s evidence on that issue. In other words, one obvious modification to a reference does not exclude the possibility of other obvious modifications.” slip op. at 22

  Patent outcomesUS 6,072,450 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,072,450

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.