• Synaffix B.V. v. Hangzhou Dac Biotech Co., Ltd.Some claims unpatentable
  PTAB · Aug 26, 2025 · IPR2022-01531 · APJ Devon Zastrow Newman · IPR · Final written decision

  Claims 1–17, 20, 21, 24, 26, and 29–31 are unpatentable; claims 25 and 32–34 were not shown unpatentable, and the motion to exclude was dismissed as moot.

  RulingsFinal written decision

  • RemandOther

    “review of claims 1–17, 20, 21, 24–26, and 29–34 of the ’682 patent. Paper 2 (“Pet.”), 1, 3. Patent Owner, Hangzhou DAC Biotech Co., Ltd., filed a Preliminary Response (Paper 9, “Prelim. Resp.”). We initially determined that the information presented in the Petition did not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims, and did not institute inter partes review. Paper 17. Petitioner requested Director review of our decision denying institution (Paper 18 (“Request”)). The Director delegated review of the decision to a Delegated Rehearing Panel (“DRP”). Paper 19. Patent Owner was granted the option to file a response to Petitioner’s Request (Paper 22 (“Request Resp.”)). The Delegated Review Panel vacated our decision and remanded the case to this panel with a revised claim construction for claim 1. Paper 23 (“DRP Dec.”). On August 30, 2024, we instituted an inter partes review after remand from the Director. Paper 25 (“Inst. Dec.”). Patent Owner subsequently filed a Patent Owner Response (Paper 31, “Resp.”), Petitioner filed a Reply (Paper 36, “Reply”), Patent Owner filed a Sur-reply (Paper 44, “Sur-reply”), and Petitioner filed a Sur-sur-reply (Paper 48, “Sur-sur-reply”).” slip op. at 2

  • PTAB / AIA Trials › Motions to amend / substitute claimsOther

    “I. Patent Owner’s Motion to Exclude Evidence Patent Owner moves to exclude Exhibits 1089 and 1090. Paper 50. As we did not rely on either of Exhibits 1089 or 1090 in deciding this matter, Patent Owner’s motion is dismissed as moot.” slip op. at 96

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

    “For these reasons, Patent Owner’s arguments and cited evidence also” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “function as R2, and the ethyl group may function as R4, which can be a linear alkyl having 1–6 carbon atoms. We note that claim 3 permits R5 and R6 to be absent. For these reasons, the arguments presented in the Petition demonstrate that claim 3 would have been obvious over Singh’s Compound 3 when modified in view of Harris.” slip op. at 73

  Patent outcomesUS 10,131,682 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,131,682
• Mission Intergrated Technologies, LLC v. Joshua ClementeSome claims unpatentable
  PTAB · Feb 19, 2025 · IPR2023-01285 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–8 and 10–17 are unpatentable as anticipated by each asserted reference; claim 9 was not shown unpatentable because the references do not disclose its claimed ramp.

  RulingsFinal written decision

  • Skill levelSkill level board ownPetitioner expert discountedDecided for petitioner

    “asserts that a person of ordinary skill in the art would have had “at least an undergraduate degree in mechanical engineering, and about two years of experience designing structural systems like tactical staircases or elevated tactical systems that can be vehicle mounted and can be folded and stowed and elevated for use by personnel or equivalent experience.” Pet. 3 (citing Ex. 1021 ¶¶ 12, 13). Mr. Hayduk states his conclusion as to the proposed level of ordinary, but does not disclose the underlying facts or data on which his opinion is based. Ex. 1021 ¶¶ 12, 13. Thus, his opinion testimony is entitled to little or no weight. 37 C.F.R. § 42.65(a). Here, we give it some, but little, weight because it appears to be consistent with the general prior art discussed and cited in the record of the ’677 patent. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill. See generally, PO Resp. For purposes of this Decision, based on the prior art, the sophistication of the technology at issue, and Mr. Hayduk’s Declaration testimony, we adopt, with minor modification, Petitioner’s undisputed definition of the level of ordinary skill. We determine that in this proceeding a person of ordinary skill would have had a bachelor’s degree in mechanical engineering and two years of experience designing structural systems like tactical staircases or elevated tactical systems that can be vehicle mounted and can be folded and stowed and elevated for use by personnel or equivalent experience, or an equivalent balance of education and work experience, such that more education offsets the need for some work experience, and more work experience can offset the need for coursework leading to a four-year college degree. We also have eliminated the open-ended phrase of “at least” and the word “about” in describing the” slip op. at 15

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

    “Petitioner asserts that the claim terms require no express construction. Pet. 5–6. Patent Owner does not challenge Petitioner’s position. See generally Prelim. Resp. Having considered the parties’ positions and evidence of record, we determine that no express construction of any claim term is necessary to determine the patentability issues in this proceeding. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent further discussion of the meaning of any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 16

  • BurdenOther

    “Petitioner has the burden of proving unpatentability of a claim by a preponderance of the evidence. 35 U.S.C. § 316(e).” slip op. at 3

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for petitioner

    “In this inter partes review, the burden is on the petitioner to show a reasonable likelihood that it would prevail on a ground of unpatentability. 35 U.S.C. § 314(a). A petitioner first must raise the issue of entitlement to a claimed priority date by “identifying, specifically, the features, claims, and ancestral application or applications allegedly lacking § 112 support for the claims based on the identified features.” Focal Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116, Paper 8, slip op. at 9–10 (PTAB Apr. 22, 2014). Then, the patent owner must make a sufficient showing of entitlement to earlier filing date(s), in a manner that is commensurate in scope with the specific points and contentions raised by the petitioner. See id. Here, Petitioner asserts that “[t]he ’677 patent includes more content than the ‘022 provisional application.” Pet. 6. We do not consider this single sentence comment on “content” to provide the specificity required of comparing the disclosure of the provisional application to the claims of the ’677 patent to thereby shift the burden to Patent Owner to show entitlement to the earlier filing date. Thus, based on the record before us, for purposes is November 20, 2018, the filing date of the provisional application.” slip op. at 17

  Patent outcomesUS 11,174,677 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 11,174,677
• Mercedes-Benz USA, LLC v. Daedalus Prime LLCSome claims unpatentable
  PTAB · Feb 4, 2025 · IPR2023-01345 · APJ William V Saindon · IPR · Final written decision

  Claims 1–4, 7–11, and 14–20 were shown unpatentable over White or Nussbaum; claims 5, 6, 12, and 13 were not shown unpatentable over White or Nussbaum with Shakkarwar.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We are not inclined to adopt Patent Owner’s proposal to require a specific number of years (or a fully bounded range) in the definition of the level of ordinary skill in the art. First, Patent Owner has not offered any legal authority supporting or explaining its position. Second, using the term “at least [X] years” is common practice and generally understood to be an approximation regarding the minimum level of skill of a hypothetical person—in other words, no precision can truly be expected of the specific number of years in this context. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (“The person of ordinary skill in the art is a hypothetical person.”). The point of the exercise is to provide context for a holistic obviousness analysis. See id. (setting out “various factors” used to analyze the level of ordinary skill); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”); Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1453 (Fed. Cir. 1984) (the hypothetical person is an “an imaginary being possessing ‘ordinary skill in the art’ created by Congress to provide a standard of patentability”). We are not persuaded of a need for strict precision in the number of years of experience of a hypothetical person used in our analysis in this case. Third, Patent Owner asks for no particular relief based upon its argument. That is, even if we agreed to remove “at least,” Patent Owner does not argue that the outcome of the Decision would be any different.1 1 For example, setting the level of skill to exactly two years of experience would not serve to automatically disqualify an expert having ten years. Kyocera Senco Ind’l Tools v. Int’l Trade Com’n, 22 F.4th 1369, 1377 (Fed. Cir. 2022) (requiring that “a witness must at least have ordinary skill in the art” and stating that “it would be improper to require an expert witness to possess ordinary skill in the art and nothing more”). In conclusion, we apply Petitioner’s proposed level of ordinary skill because it is reasonably consistent with the level of skill implied in the disclosure of the ’588 patent and the cited prior art.” slip op. at 8

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

    “The description of “mapping” in the ’588 patent makes clear to us that it is an association of an input value from a set of input values to a corresponding output value from a set of output values. Id. at 2:44–46 (describing “the mapping table that associates non-core domain operating frequencies and corresponding interconnect operating frequencies”) (emphases added). The “association” described here in the ’588 patent is not merely describing the fact that both exist, but that knowing the value of the first causes you to know the value of the second. This is also how it is described in the claims, wherein the “mapping” is “of selectable frequencies of the graphics processing circuitry to selectable frequencies of the interconnect.” Id. at 8:63–65 (emphasis added). Or more generally, the claim recites a mapping of a frequency to a frequency. In sum, although we agree with the parties that “mapping” should be given its plain and ordinary meaning in light of the specification, we note that the parties appear to dispute whether the prior art teaches the claimed “mapping” based on differing understandings of the plain and ordinary meaning. Based on our analysis above, we determine that a person of ordinary skill in the art reviewing the ’588 patent would understand that the “mapping” limitation requires (1) frequencies mapped to frequencies and (2) that a mapping is an association of one value to a corresponding value such that knowing the graphics frequency means that you know the corresponding interconnect frequency. Further, given that the corresponding frequencies are “selectable,” we understand that to mean that there is a set of possible frequencies that are defined from which to select. Ex. 2001, 21:19–22:2. With this understanding, we can turn to the dispute over whether the prior art teaches the limitations set forth in claims 5 and 12, as no other terms require construction at this time. Realtime, 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 12

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Given this disclosure, we agree with the testimony of Patent Owner’s expert that Shakkarwar’s empirical calculation, by looking up the frequencies of various devices and summing them up, is not the claimed mapping of frequencies to frequencies. Ex. 2002 ¶ 44 (citing Ex. 1006, 6:8– 16, 6:49–7:17). That is, rather than teaching the use of the graphics device frequency get a corresponding interconnect frequency, Shakkarwar calculates the interconnect frequency by adding up the frequencies of all of the devices using the interconnect. Ex. 1006, 6:63–7:30; Ex. 2002 ¶ 44 (“Considerations of the hardware are addressed through empirical calculation, by knowing the requested data bandwidth of each device.”). Based on the above, we find that Shakkarwar’s table does not map a set of frequencies to a set of frequencies, and we find that the alleged mapping in Shakkarwar is not what is required by the claim because knowing the non-core device frequency in Shakkarwar is insufficient to know the required interconnect frequency. Thus, we credit the testimony of Patent Owner’s expert that Shakkarwar does not teach the claimed mapping. Ex. 2002 ¶¶ 42–45. On the other hand, the testimony of Petitioner’s expert is conclusory on this point, and fails to grapple with these differences between the claims and prior art. Ex. 1003 ¶ 140. Thus, we credit the testimony of Patent Owner’s expert over Petitioner’s expert as to the teachings of Shakkarwar.” slip op. at 16

  • BurdenMixed

    “that Petitioner has not shown sufficiently that Shakkarwar teaches the claimed mapping limitation, for the following reasons. The lookup table in Shakkarwar has a list of clock speeds (frequencies) for specific devices. Ex. 1006, 7:7–10. These clock speeds represent the bandwidth needs of each individual device. Id. at 7:10–13. By looking up the bandwidth needs of each individual device in use, the system can determine the total bandwidth need. Id. at 7:5–17. For example, if one device requires 20 Megabits of data and the second device requires 10 Megabits of data, then the data rate (bandwidth) required will be 30 Megabits of data. Id. at 7:13–17. If the required bandwidth is different from the current bandwidth, then the current bandwidth must be modified. Id. at 7:18–26. Given this disclosure, we agree with the testimony of Patent Owner’s expert that Shakkarwar’s empirical calculation, by looking up the frequencies of various devices and summing them up, is not the claimed mapping of frequencies to frequencies. Ex. 2002 ¶ 44 (citing Ex. 1006, 6:8– 16, 6:49–7:17). That is, rather than teaching the use of the graphics device frequency get a corresponding interconnect frequency, Shakkarwar calculates the interconnect frequency by adding up the frequencies of all of the devices using the interconnect. Ex. 1006, 6:63–7:30; Ex. 2002 ¶ 44 (“Considerations of the hardware are addressed through empirical calculation, by knowing the requested data bandwidth of each device.”). Based on the above, we find that Shakkarwar’s table does not map a set of frequencies to a set of frequencies, and we find that the alleged mapping in Shakkarwar is not what is required by the claim because knowing the non-core device frequency in Shakkarwar is insufficient to know the required interconnect frequency. Thus, we credit the testimony of Patent Owner’s expert that Shakkarwar does not teach the claimed mapping. Ex. 2002 ¶¶ 42–45. On the other hand, the testimony of Petitioner’s expert is conclusory on this point, and fails to grapple with these differences between the claims and prior art. Ex. 1003 ¶ 140. Thus, we credit the testimony of Patent Owner’s expert over Petitioner’s expert as to the teachings of Shakkarwar.” slip op. at 15

  Patent outcomesUS 10,705,588 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,705,588
• Mercedes-Benz USA, LLC v. Daedalus Prime LLCSome claims unpatentable
  PTAB · Feb 4, 2025 · IPR2023-01335 · APJ William V Saindon · IPR · Final written decision

  Claims 1–5, 7, and 13 are unpatentable over Conroy and Finkelstein or Conroy; claims 14–18 were not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We are not inclined to adopt Patent Owner’s proposal to require a specific number of years (or a fully bounded range) in the definition of the level of ordinary skill in the art. First, Patent Owner has not offered any legal authority supporting or justifying its position. Second, using the term “at least [X] years” is common practice and generally understood to be an approximation regarding the minimum level of skill of a hypothetical person—in other words, no precision can truly be expected of the specific number of years in this context. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (“The person of ordinary skill in the art is a hypothetical person.”). The point of the exercise is to provide context for a holistic obviousness analysis. See id. (setting out “various factors” used to analyze the level of ordinary skill); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”); Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1453 (Fed. Cir. 1984) (the hypothetical person is an “an imaginary being possessing ‘ordinary skill in the art’ created by Congress to provide a standard of patentability”). We are not persuaded of a need for strict precision in the number of years of experience of a hypothetical person used in our analysis in this case. Third, Patent Owner asks for no particular relief based upon its argument. That is, even if we agreed to remove “at least,” Patent Owner does not argue that the outcome of the Decision would be any different.1 In conclusion, we apply Petitioner’s proposed level of ordinary skill because it is reasonably consistent with the level of skill implied in the disclosure of the ’833 patent and the cited prior art.” slip op. at 7

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

    “Pet. 10. Patent Owner provides a construction for the term “independent” of claim 1. PO Resp. 12–18. For context, claim 1 requires first and second domains, wherein “each of the first and second domains [] operate at an independent voltage and frequency.” Patent Owner provides its analysis and concludes that claim 1 requires that the voltage and frequency of the first and second domains to be “controlled separately from one another.” PO Resp. 14, 15. We disagree with Patent Owner’s conclusion. In particular, we note that Patent Owner is attempting to add a “control” limitation to the claim. The claim does not require independent control of the first and second domains, it requires them “to operate at an independent voltage and frequency.” That is, by the plain language of the claims, what is independent is the voltage and frequency of the first domain compared to the voltage and frequency of the second domain. Patent Owner identifies many passages in the ’833 patent specification allegedly supporting its position, but we do not find any of these passages persuades us to agree with Patent Owner’s position. See PO Resp. 12–14 (citing Ex. 1001, 1:13–17, 1:63–66, 7:59–62, 8:27–31, 8:38– 46, 10:4–8). These passages mostly state that the domains are independent, which we understand to mean “separate” in this context. Ex. 1001, 1:63–66, 7:59–62, 8:27–31, 8:38–46, 10:4–8; accord PO Resp. 14 (summarizing these citations and concluding that “the term ‘independent’ is used in its ordinary sense to mean ‘separate.’”); Ex. 2002 ¶ 33 (same). One passage is similar to the claim language, and recites that a core can be “of an independent power domain and can be configured to operate at an independent voltage and/or frequency.” Id. at 8:27–31. We see nothing in these passages that would require independent control as opposed to “operate at an independent voltage and frequency” as claimed. Instead, in the one passage that is similar to the claim language, it is clear that what is “independent” is the “voltage and/or frequency.” Id. at 8:27–31. Patent Owner then cites to another batch of passages from the ’833 patent and concludes that “a person of ordinary skill in the art would recognize that the ’833 patent is describing a situation in which voltages and/or frequencies of the different domains are controlled separately from one another.” PO Resp. 14–15 (citing Ex. 1001, 1:56–60, 1:63–66, 2:22–25, 2:32–36, 5:9–12, 5:21, 5:27–44, 7:20–24, 8:38–42, Fig. 1; Ex. 2002 ¶ 33). Most of these passages describe the domains being allocated portions of a power budget. See Ex. 1001, 1:56–60, 2:22–25, 5:28–40, 7:20–24, 8:38–42. One passage is similar to the prior batch of citations, stating that the domains themselves are independent. Id. at 1:63–66. Other passages describe a power control unit doing the allocation, and refers to this as “control.” Id. at 2:32–36, 5:27–26, 5:21, 5:40–44. Last cited by Patent Owner is Figure 1, which has a box labeled “Control First and Second Domains Frequency and Voltage.” Id., Fig. 1 (item 130). Reviewing the cited passages and the figure, we find that the power control unit allocates or controls power. However, the claim is not directed to the power control unit and it does not use the word “control.” The claim requires the first and second domains to have independent voltages and frequencies, and we fail to see any support in the specification to add an additional requirement for independent control of the first and second domains. In view of the above, we are not persuaded by Patent Owner’s” slip op. at 9

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “claim 13, it is the domain that is allocated the power budget (as opposed to the domain’s individual cores). See Ex. 1001, 12:57–59 (“allocate a variable power budget between the . . . domains”), 1:56–66 (explaining domains— “the term ‘domain’ is used to mean a collection of hardware and/or logic that operates at the same voltage and frequency point”). We agree with Patent Owner and credit its expert that Nussbaum is concerned with the power settings of each individual core, GPU, or other computational unit. Ex. 2003 ¶ 63. Even if, in one passage, Nussbaum talks about power reallocation in “computational units, such as the CPU or [GPU],” in context it is clear that the allocations remain on the individual, e.g., core, level. Ex. 1007 ¶¶ 19– 20, 21 (Table 1), 23 (Table 2), 24. First, in the sentence just cited, Nussbaum disparages treating units homogenously, i.e., adjusting them in groups or domains (as required by claim 13). Id. ¶ 19. Then, Nussbaum praises distributing power “among the active cores or other computational units,” i.e., on an individual or core level. Id. In this phrase, Nussbaum is not using “computational units” as a word meaning “CPU,” because Nussbaum already directly references the “cores” in the phrase. Id. Nussbaum later discusses figuring out how each core reacts to power changes, in order to determine which cores can better exploit additional power. Id. ¶¶ 25–28. For these reasons, we credit the testimony of Patent Owner’s expert that Nussbaum does not disclose allocating power to a plurality of cores as a single domain (Ex. 2002 ¶ 63), which is consistent with the above-noted disclosures of Nussbaum.” slip op. at 15

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

    “not address these passages of the Petition. See generally PO Resp. 57–59, Sur-reply 17–18. Instead, Patent Owner challenges a separate, general rationale that Petitioner made at the beginning of its ground. See Pet. 69. Rationales that are broad and general may be persuasive. Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 797 (Fed. Cir. 2021) (“[R]ationale[s] [are] not inherently suspect merely because [they’re] generic in the sense of having broad applicability or appeal. Quite the opposite.”). We need not evaluate Petitioner’s general rationale here, however, because we find Petitioner’s unrebutted, specific rationale arguments about providing a user interface to edit or revise the power sharing values to be persuasive. See Pet. 77–78 (citing, e.g., Ex. 1029 ¶ 236). In particular, we agree with Petitioner that providing a user interface to allow a user to edit the power tables, as taught in Finkelstein, would have been a routine and obvious modification to Conroy. As Petitioner’s expert points out, even beyond the teachings of Finkelstein, it was known in the art to allow users control over power allocation. Ex. 1029 ¶ 236 (citing Ex. 1026, 11:13–27 (describing a “user preferences database” containing “parameters and procedures for how to apportion power among various devices”); Ex. 1028 ¶ 17 (“The [power allocation] preference might be determined . . . based on a selection by a user of the system (e.g., via a graphical interface).”)). Thus, Petitioner’s proposed combination is an example of using a known feature to provide a known benefit. The known feature is a user interface, and the known benefit is allowing the user to indicate their preferences through the interface. See Ex. 1029 ¶ 236; KSR, 550 U.S. at 417 (“[A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.”). Based on the record before us, we determine that Petitioner has established a reason with rational underpinnings for combining the user level control interface of Finkelstein with the power management system of Conroy.” slip op. at 33

  Patent outcomesUS 8,775,833 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,775,833
• Life Spine, Inc. v. Globus Medical, Inc.Some claims unpatentable
  PTAB · Mar 20, 2024 · IPR2022-01434 · APJ Cynthia M Hardman · IPR · Final written decision

  Claims 1–9 and 15 are unpatentable over Chung and Olmos-based obviousness grounds; claims 10–14 were not shown unpatentable because the asserted references did not teach the claimed complementary relationship.

  RulingsFinal written decision

  • Expert testimonyOther

    “improperly incorporates-by-reference 12 pages of expert testimony via a single sentence.” PO Sur-reply 16 n.2 (citing Pet. Reply 17, which in turn cites Ex. 1026 (Hatch Decl.) ¶¶ 49–66). We find that many of the paragraphs within the cited range (i.e., Hatch Declaration paragraphs 49–66) appear to have a tenuous connection to the proposition for which Petitioner cites these paragraphs. See Pet. Reply 17. That said, we find that paragraphs 53–55 directly relate to Petitioner’s proposition in the Reply, i.e., that “Petitioner’s experts explain why a [person of ordinary skill in the art] would rely on a cross-sectional view over a perspective view for making the determination in question, because only the cross-sections provide the needed side view directly orthogonal to the positions of the yellow expansion portion and the end of the dovetail.” Id. Accordingly, we find that paragraphs 53–55—the only paragraphs we cite from Petitioner’s range in reaching our conclusion—are not improperly incorporated by reference into Petitioner’s Reply.” slip op. at 66

  • Strike new argumentNew argument consideredDenied

    “provide Petitioner an opportunity to respond under the new construction, and decline to strike Petitioner’s relevant argument and evidence. Cf. Axonics, 75 F.4th at 1383 (“[W]hen the Board adopts a new claim construction following institution, an IPR petitioner must have adequate notice and an opportunity to respond under the new construction.”). Like in Axonics, in its new arguments on Reply, Petitioner here relies on the same embodiment from the same prior art reference that it relies on in the Petition to support the same legal argument, i.e., that Olmos’s Figure 16 embodiment discloses the “complementary with one another” limitation of challenged claims 10– 14. See Axonics, 75 F.4th at 1384; see also Apple Inc. v. Andrea Elecs. Corp., 949 F.3d 697, 706 (Fed. Cir. 2020) (permitting petitioner to elaborate in reply on an unpatentability theory presented in the petition). Moreover, we permitted Patent Owner to file (and it indeed did file) a sur-reply brief and expert declaration that addressed Petitioner’s new obviousness theories. Accordingly, both parties had adequate notice of our preliminary construction and an opportunity to respond under that new construction. For these reasons, we deny Patent Owner’s motion to strike.” slip op. at 124

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

    “from the expansion portion. We agree with Patent Owner that the wording of this limitation as a whole requires that the “extension necessarily must protrude beyond a longitudinal end of the expansion portion.” Id. at 11. We also agree with Patent Owner that “[u]nder Petitioner’s tenuous theory, an extension in any direction except 90 or 180 degrees would satisfy the claim language since any such direction has a so-called ‘longitudinal component.’” Id. at 13. For these reasons, we disagree with Petitioner’s argument that the purported “longitudinal component” of Chung’s extension satisfies limitation 1[h].” slip op. at 55

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “would have been motivated to add an extension to the Figure 16 embodiment because “an integrally-formed extension advantageously requires fewer parts, which facilitates both manufacturing and use.” Pet. 118. We agree with Patent Owner that this argument is unavailing. PO Resp. 50. Petitioner’s combination entails adding an extension (from Figure 8) to an embodiment lacking one (Figure 16). We agree with Patent Owner that adding a new component (whether separately or integrally) can in some instances complicate manufacturing/assembly and increase costs. See id. (citing Ex. 2013 (Culbert Decl.) ¶ 115). Petitioner has not sufficiently demonstrated that the proposed combination in this instance would reduce complexity or facilitate the manufacturing process. Accordingly, we do not rely on this argument offered by Petitioner.” slip op. at 106

  Patent outcomesUS 8,845,731 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,845,731
• Ebates Performance Marketing, Inc. Dba Rakuten Rewards / Zillow Group, Inc. et al. v. International Business Machines Corp.Some claims unpatentable
  PTAB · Oct 11, 2023 · IPR2022-00646 · APJ David C Mckone · IPR · Final written decision

  Claims 1–4, 12–16, 18, and 19 are unpatentable; claims 5–11, 17, and 20 are not unpatentable, based on the Sunada grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “certain arguments based on the Kayak FWD. Reply 1–5. Yet, the Federal Circuit vacated the Kayak FWD and remanded to the Board for further consideration. Ex. 1006, 2 (“We vacate the Sunada IPR decision because it rests on an incorrect claim construction of the ‘federated computing environment’ limitation of all claims at issue, and we remand for further consideration under the correct construction.”), 8 (“The Board’s decision in IPR2016-00608 is vacated because it rests on an incorrect claim construction, and the matter is remanded for further proceedings consistent with this opinion.”).” slip op. at 8

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

    “shown that Sunada discloses “protected resources” under our claim construction of the term and, accordingly, Petitioner has not shown, by a preponderance of the evidence, that Sunada anticipates claims 1, 3, 12, 14, 15, and 18.” slip op. at 17

  • Skill levelOther

    “1. Level of Skill in the Art Petitioner, relying on the testimony of Dr. Crovella, contends that a” slip op. at 17

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

    “shown that Sunada discloses “protected resources” under our claim construction of the term and, accordingly, Petitioner has not shown, by a preponderance of the evidence, that Sunada anticipates claims 1, 3, 12, 14, 15, and 18.” slip op. at 17

  Patent outcomesUS 7,631,346 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,631,346
• Ebates Performance Marketing, Inc., D/B/A Rakuten Rewards v. International Business Machines Corp.Some claims unpatentable
  PTAB · May 24, 2023 · IPR2022-00133 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 3–6, 13, and 15–18 are unpatentable as obvious; claims 2, 7–12, and 14 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “consistently’ characterizes a claim term in a particular way, it is proper to construe the claim term in accordance with that characterization.” GPNE, 830 F.3d at 1370. It is also true that “[e]ven when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction.” Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (internal quotation marks and alteration in original); see also Verizon, 503 F.3d at 1302–03 (“The mere fact that the specification’s examples of translation may involve a change in protocol from a higher to a lower level protocol does not establish that such a limitation should be imported into the claims.”). Thus, the mere fact that the examples in what the Specification clearly identifies as “preferred” embodiments (Ex. 1001, Abstract, 5:1–3, 5:55–59, 6:6–8, 6:67–7:4, 7:23–25) cannot, by themselves, limit the scope of the claims. See Phillips, 415 F.3d at 1323 (noting “we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment”).” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have at least a bachelor’s degree in computer science or a related field, plus at least two years of experience in the design and implementation of graphical user interfaces, and would have familiarity with portal design and portlet technology. Additional education in the fields of computer science and/or human factors, such as a masters or doctorate degree, may serve as a substitute for experience in the field.” Pet. 10 (citing Ex. 1003 ¶ 32). Patent Owner applies Petitioner’s level of ordinary skill in the art for purposes of this proceeding. See PO Resp. 15. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the level of skill reflected by the Specification and in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art). slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Figure 3 illustrates a plurality of portlets relative to a first sub-tab and Gridsphere2’s Figure 2 illustrates a single portlet relative to a first sub-tab, and that other sub-tabs are illustrated in Gridsphere1 and Gridsphere2, which would include one or more portlets. Ex. 1003 ¶ 141. As Dr. Bederson explains, these tabs define “two or more stacks of portlets.” Id. Dr. Bederson illustrates this with an annotated version of Figure 2 from Gridsphere2 reproduced below. An annotated version of Figure 2 of Gridsphere2 showing a first stack of portlets currently presented and second stack of portlets not currently presented. Ex. 1003 ¶ 141. Dr. Bederson explains that Figure 2 shows “the Administration main tab includes a first stack of portlets, having at least one portlet in the Portlets, Users, and Groups sub-tabs, respectively (highlighted in red).” Id. Dr. Bederson testifies that It is also obvious to a [person of ordinary skill in the art] that the Welcome main tab (highlighted in green) (or the JSR Portlets tab) would also have a plurality of sub-tabs, each with at least one portlet. This defines a second stack of portlets, which second stack of portlets is not currently displayed. Id. We find Dr. Bederson’s testimony to be rational, well-reasoned, and give it substantial weight. Dr. Bederson further persuasively testifies, “[t]o render the portal in” slip op. at 30

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

    “The motivation-to-combine analysis is a flexible one. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1379 (Fed. Cir. 2023). A motivation to combine may be found “explicitly or implicitly in market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.” ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1371 (Fed. Cir. 2018) (quoting Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)). “[T]he motivation-to-combine analysis ‘need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.’” PACT XPP, 61 F.4th 1380 (citing KSR, 550 U.S. at 418). We find that Petitioner has shown by a preponderance of the evidence that a person of ordinary skill in the art would have been motivated to combine Rose with the GridLab references. See Pet. 64–67; Ex. 1003 ¶¶ 216–223. In particular, we agree with Petitioner and Dr. Bederson that applying Rose’s technique to the GridLab References would have been within the level of skill in the art, and that a person of ordinary skill in the art “would find it beneficial to index the new portlet [being suggested to be added by GridLab], as per Rose, and compare those indexing results to the existing portlets of the user’s portal, and suggest a tab or sub-tab for the new portlet in the user’s portal, or automatically place the portlet in a content-relevant tab or sub-tab in the user’s portal, as per Rose.” Ex. 1003 ¶ 222 (citing Ex. 1004 § 10.1.6 (40); Ex. 1012, 262–64, 267–68). We address Patent Owner’s arguments below.” slip op. at 49

  Patent outcomesUS 7,543,234 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,543,234
• Samsung Electronics Co., Ltd. v. Lynk Labs, Inc.Some claims unpatentable
  PTAB · May 5, 2023 · IPR2022-00098 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1, 3, and 4 are unpatentable as obvious over the stated combinations; claim 2 was not shown unpatentable because the driver was not shown configured to receive the rectifier’s forward voltages.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that a person of ordinary skill in the art would have had experience in LED devices. For this reason, we apply Patent Owner’s proposed level of ordinary skill in the art because it comports with the level of skill reflected in the ’149 patent and the prior art of record. However, if we were to apply Petitioner’s proposed level of skill, our Decision would not be affected.” slip op. at 9

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

    “Upon review of the entire record, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, 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)).” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “Dr. Ducharme’s testimony that “the spacing of the chips in Zhang would not likely be so close as to create overheating issues” (Ex. 2002 ¶ 111) is unsupported by any disclosure of the actual spacing of Zhang’s chips. Consequently, his testimony that there would be no overheating concerns in Zhang due to the spacing of the chips is entitled to little, if any, weight. Dr. Ducharme further testifies that the components of Zhang’s driver “could easily increase the temperature of the LED 19 chips on the circuit board, which can cause LEDs to generate less illumination, burn out and otherwise adversely affect their performance.” Ex. 2002 ¶ 126. Dr. Ducharme further testifies that “[i]t is well-known that excessive operational temperatures can reduce the illumination provided by the LEDs, can decrease the operational lifetime of the LEDs, and if the temperature is sufficiently high, it can cause LED junction failure and a burnt-out LED.” Id. We agree with this testimony, which as discussed below, is consistent with Salam. Dr. Ducharme’s testimony concerning overheating issues caused by the driver components contradicts Patent Owner’s ’s contention that there would not be “an overheating issue with Zhang’s LED exit sign circuit in Figure 2.1.” PO Resp. 30. Regardless of whether Zhang’s LEDs in Figure 2.1 have a heat problem or not, Salam teaches the advantages of using a heat sink. Salam teaches that a heat sink will result in a higher efficiency of the LEDs and improved life. Ex. 1006, 16:38–43. The Federal Circuit, in DyStar Textilfarben GmBH & Co v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006), stated that “the desire to enhance commercial opportunities by improving a product or process is universal–and even common-sensical . . . the proper question is whether the ordinary artisan possesses the knowledge and skills rendering him capable of combining the prior art references.” Id. at 1368. Dr. Ducharme testified that a person of ordinary skill in the art “would have an understanding of the generation of heat and using a heat sink to remove unwanted heat from electronics and LED lighting devices.” Ex. 1102, 23:18–24:3. Dr. Ducharme’s testimony is consistent with Petitioner’s contention that the combination of Zhang and Salam “would have been a straightforward combination of known components and technologies, according to known methods, to produce the predictable result of reducing/ mitigating heat effects in a circuit.” Pet. 17 (citing Ex. 1002 ¶ 106). Patent Owner next contends it would be extremely burdensome and costly to modify Zhang to add a heat sink layer because “each of the multiple chips mounted and epoxied to Zhang’s circuit board in the exit sign would have to be modified.” PO Resp. 30 (citing Ex. 2002 ¶ 112). Dr. Ducharme’s testimony repeats the Patent Owner Response verbatim and is entitled to little, if any, weight. Ex. 2002 ¶ 112. Nonetheless, this contention is unavailing because it is based on Patent Owner’s bodily incorporation of Zhang and Salam. Patent Owner next contends that a person of ordinary skill in the art” slip op. at 27

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

    “Regardless of whether Zhang’s LEDs in Figure 2.1 have a heat problem or not, Salam teaches the advantages of using a heat sink. Salam teaches that a heat sink will result in a higher efficiency of the LEDs and improved life. Ex. 1006, 16:38–43. The Federal Circuit, in DyStar Textilfarben GmBH & Co v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006), stated that “the desire to enhance commercial opportunities by improving a product or process is universal–and even common-sensical . . . the proper question is whether the ordinary artisan possesses the knowledge and skills rendering him capable of combining the prior art references.” Id. at 1368. Dr. Ducharme testified that a person of ordinary skill in the art “would have an understanding of the generation of heat and using a heat sink to remove unwanted heat from electronics and LED lighting devices.” Ex. 1102, 23:18–24:3. Dr. Ducharme’s testimony is consistent with Petitioner’s contention that the combination of Zhang and Salam “would have been a straightforward combination of known components and technologies, according to known methods, to produce the predictable result of reducing/ mitigating heat effects in a circuit.” Pet. 17 (citing Ex. 1002 ¶ 106).” slip op. at 27

  Patent outcomesUS 10,517,149 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,517,149
• Home Depot USA, Inc. v. Lynk Labs, Inc.Some claims unpatentable
  PTAB · May 5, 2023 · IPR2022-00023 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1 and 4 are unpatentable over the stated § 103 combinations; Petitioner did not show claim 2 unpatentable because it did not explain how the LED array’s forward voltage is received by the driver.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “degree in electrical engineering, or similar technical field, with two years of experience in the field of design and/or development of light-emitting diodes (LEDs) and circuits in the context of lighting control systems.” Pet. 11–12 (citing Ex. 1002 ¶ 34). Petitioner further contends that “[a]n increase in experience could compensate for less education.” Id. at 12. Patent Owner proposes the same level of skill in the art. See PO Resp. 6. We apply the parties’ undisputed level of ordinary skill in the art because it comports with the level of skill reflected in the ’149 patent and the prior art of record.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We credit Dr. Lebby’s testimony over Dr. Ducharme for the following reasons. First, in Deese, power cable 28 is inserted into an opening in rubber housing 21. Ex. 1008, Fig. 2A. [R]ubber housing 21 forms a water-tight seal around the power cable 28.” Id. at 4:63–65. Dr. Ducharme does not explain why Hochstein’s protruding heat sink shell could not similarly be inserted through rubber housing 21 with a water-tight seal. Further, Dr. Lebby relies on the similarity between the structures of Deese and Hochstein. Hochstein uses gasket 45 and weather seal 48 to seal housing 10 with electrical lead 49 and heat sink shell 38 extending therethrough. Ex. 1010, 5: 39–40, 5:63:65, Fig. 8.” slip op. at 47

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

    “Our analysis starts with the claim language. Claim 1 recites “a driver, wherein the driver includes at least one transistor and at least one capacitor” and “the driver is configured to receive an AC voltage from a mains power source and provide a voltage and current to the at least one LED circuit.” Ex. 1001, 23:16–17, 26:22–24. Dr. Ducharme testifies that power is determined by multiplying voltage and current. Ex. 2008 ¶ 63. The language of claim 1, thus, supports Patent Owner’s construction which is also consistent with the dictionary definition offered by Petitioner which also defines “driver” as [a] program, circuit or device used to power or control other programs, circuits or devices.” Ex. 1007, 4 (emphasis added). The Specification provides “the driver providing an AC voltage and current to one or more LED circuits.” Ex. 1001, 3:65–67. Thus, the Specification also provides support for Patent Owner’s construction. For the foregoing reasons, we apply Patent Owner’s proposed construction of “driver” because it is consistent with the language of claim 1 and the description of driver in the Specification. We note that the adjective “LED” prior to circuits or devices in Patent Owner’s construction is not necessary because that it essentially repeats limitation 1.e.” slip op. at 12

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

    “We begin with the claim language itself which is “the package is a heat sinking reflective material.” Ex. 1001, 23:18–19 (emphasis added). In its analysis, Patent Owner parses “heat sinking reflective material” out of context by omitting the italicized language “the package is” preceding “heat sinking reflective material.” PO Resp. 29. The deposition testimony of Dr. Lebby and Dr. Ducharme’s declaration testimony cited by Patent Owner are also out of context. The Specification of the ’149 patent defines “package” as an integrated unit that “in certain applications may preferably include a heat sink, a reflective material, a lens for directing light, phosphor nano-crystals or light changing or enhancing substances.” Ex. 1001, 5:30–33. Because heat sink and reflective material are listed separately in the Specification, this disclosure suggests that, at least in certain embodiments, a package with a heat sink separate from a reflective material would fall within the scope of limitation 1.c. This is further confirmed by comparing the packages illustrated in Figures 25 and 26 of the ’149 patent which are reproduced above. Figure 25 is described as illustrating “heat sinking material 198 . . . integrated into the package 30.” Id. at 17:34–35. Figure 26 is described as illustrating reflector 202 “integrated into the package 30 for optimized light dispersion.” Id. at 17:47–49. As can be seen from a visual comparison of Figures 25 and 26, reflector 202 is separate from heat sinking material 198. Given the disclosure in the ’149 patent of a package with a heat sink” slip op. at 15

  Patent outcomesUS 10,517,149 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,517,149
• Microchip Technology Inc. v. HD Silicon Solutions LLCSome claims unpatentable
  PTAB · Jan 6, 2023 · IPR2021-01089 · APJ Nathan A Engels · IPR · Final written decision

  Claims 19–22 are unpatentable as obvious over Ting and Pani; claims 1–18 and 23–25 were not shown unpatentable over Ting.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art at the time of the invention would have been a person with (1) “a master’s degree in electrical engineering, materials science, physics, or related degree, and 3-5 years of experience in semiconductors, specifically Field Programmable Gate Arrays (‘FPGA’)” or (2) “a bachelor’s degree in electrical engineering, 4 The record does not include any evidence of secondary considerations. semiconductor devices, specifically FPGAs.” Pet. 5 (citing Ex. 1002 ¶ 29). Patent Owner does not address the level of skill in the art. We apply the level of ordinary skill advanced by Petitioner, which is consistent with the evidence of record.” slip op. at 8

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

    “Petitioner states that all claim terms should be accorded their plain and ordinary meanings (Pet. 11), but the parties address the meanings of “switch/switch element” and “bi-directional” in subsequent briefing, among other terms. PO Resp. 28–39; Reply 1–4; Sur-Reply 3–5. The parties’ dispute regarding these claim terms does not affect our analysis below, and we, thus, determine that it is unnecessary to expressly interpret any claim terms for the purposes of this Decision. 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 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “As explained below, Petitioner does not present an identifiable, consistent, and cohesive theory of unpatentability and thus failed to satisfy its burden. We also determine the arguments and evidence advanced in Petitioner’s Reply and Reply-Declaration exceed the proper scope of a reply brief under 37 C.F.R. § 42.23(b).” slip op. at 10

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

    “1. Reasons to Combine Ting and Pani Petitioner contends both Ting and Pani are directed to FPGAs, have a common inventor, and have a common assignee. Pet. 128 (citing Ex. 1002 ¶ 228). Further Petitioner contends “Pani even indicates that it is meant to be combined with the disclosures of Ting” because Pani’s specification twice refers to Ting as examples of compatible disclosures. Pet. 128 (citing Ex. 1006, 5:17–20, 8:31–35; Ex. 1002 ¶ 228). According to Petitioner, Ting disclos[ing[ improvements over a conventional bus system because Pani’s programmable connections between multiple cells without permanent wiring increases the versatility of a programmable logic device.” Pet. 129 (citing Ex. 1006, 2:19–33, 5:6–20; Ex. 1006 ¶ 230). Further, Petitioner states that “[i]t would have been obvious to a POSITA to take the configuration disclosed by Ting, and apply the slight variation disclosed by Pani, in order to create an FPGA that could perform different logic functions.” Pet. 129 (citing Ex. 1002 ¶ 231). Based on the evidence of record, including the testimony of Dr. Sechen, we determine Petitioner has articulated adequate reasons for combining the teachings of Ting and Pani. In particular, we agree with Petitioner that the references describe complimentary technology and that Pani provides an express suggestion to combine its teachings with Ting’s teachings.” slip op. at 16

  Patent outcomesUS 7,154,299 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,154,299

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.