• Inergy Technology, Inc. v. Force Mos Technology Co., Ltd.No claims unpatentable
  PTAB · May 16, 2025 · IPR2024-00093 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–9 were not proven unpatentable because the asserted references did not establish the claimed epitaxial layer or the required coverage of the trench sidewalls.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner defines a person of ordinary skill in the art as having “a Master’s degree in electrical engineering, and at least two years of relevant work experience in the field of integrated circuit design and manufacturing.” Pet. 13 (citing Ex. 1003 ¶¶ 32–37, 57). Patent Owner does not dispute Petitioner’s definition. PO Resp. 6. We adopt Petitioner’s proposed definition of the level of ordinary skill in the art because it is supported by unopposed declaration testimony and appears to be consistent with the disclosures of the ’634 patent and the asserted prior art references. See Ex. 1001, 1:6–2:33 (describing the invention and related art in terms of integrated circuit design and fabrication); see also Ex. 1006 ¶¶ 1–6 (Hirler); Ex. 1008 ¶¶ 1–37 (Kobayashi); Ex. 1009 ¶¶ 2–29 (Shiraishi). Neither party, moreover, indicates the overall result would change based on a different definition.” slip op. at 7

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

    “Petitioner argues that “the sidewalls of said trenches in said base layer are covered” should be construed to mean that “the entire sidewalls of” those trenches are covered. Pet. 18–19. We refer to this as “the sidewall limitation.” Petitioner shows persuasively that the disclosure and file history of the ’634 patent support its position on the sidewall limitation. Id. Patent Owner, for its part, observes that, after the filing of the Petition. two District Courts adopted the construction proposed by Petitioner.” PO Resp. 21 (citing Ex. 2010, 6–9; Ex. 2011, 23). Patent Owner also agrees to apply Petitioner’s construction for purposes of this proceeding. Id. We agree with Patent Owner that an express construction of the sidewall limitation is necessary to this Decision, id., and adopt Petitioner’s undisputed definition because it is supported by the record. No other claim term requires express construction for purposes of this Decision.” slip op. at 8

  • BurdenNot shown unpatentable

    “On this record, Petitioner fails to demonstrate that any claim is unpatentable under any ground asserted in the Petition. IV. CONCLUSION For the above reasons, we determine that Petitioner fails to establish by a preponderance of the evidence that claims 1–9 of the ’634 patent are unpatentable.” slip op. at 34

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Alternatively, even if we set aside that timing issue, Dr. Liu’s bare opinion, advanced for the first time during cross-examination, that an epitaxial layer is “obvious” from Hirler’s disclosure is inadequate to support the challenges. Id. at 24–25. We accord little weight to Dr. Liu’s opinion because it is conclusory. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). In any event, Petitioner does not meet, on this record, the “high standard” required to establish an inherent disclosure of an epitaxial layer in Hirler. PO Resp. 24.6 Dr. Liu opined for the first time during cross-examination “that it would have been impossible to create Hirler’s more lightly doped n- drift zone layer on top of its more heavily doped n+ substrate layer other than via epitaxy.” Id. at 25 (citing Ex. 2014, 164:16– 165:20). But Patent Owner effectively refutes that proposition with evidence that such a layer “could be created by counter-doping,” even if, as Dr. Liu contends, counter-doping may have been less ideal due to “disadvantageous mobility.” Id. (citing Ex. 2012 ¶ 133; Ex. 2014, 166:15–167:8).” slip op. at 11

  Patent outcomesUS 7,629,634 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,629,634
• Arista Networks, Inc. v. Corrigent CorporationNo claims unpatentable
  PTAB · Dec 3, 2024 · IPR2023-00839 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–26 were not shown unpatentable under either § 103 ground because the evidence did not establish the claimed LAG use between MPLS switches or explain how the references would be combined.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “Consistent with our Institution Decision, we adopt Petitioner’s articulation of the level of ordinary skill in the art, apart from the phrase “at least” modifying the number of years of professional experience. See Dec. 17–18. As we previously explained, inclusion of such qualifiers renders the articulation vague by being open-ended thus encompassing the level of experience of an expert, someone with more than ordinary skill in the art. Id. at 18. Petitioner’s articulation otherwise appears consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 9

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

    “Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases. See 37 C.F.R. § 42.100(b). Under that precedent, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13. Neither party proposes any express claim constructions. Pet. 4; PO Resp. 3. Based on the parties’ arguments, we see no need to expressly construe any terms to resolve the dispute before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

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

    “Pet. Reply 10–11. Despite Petitioner’s arguments, we are not persuaded that a person of ordinary skill would have been motivated by knowledge of Rabie to combine the teachings of RFC 3209 and Raz at the time of the invention of the ’602 patent. First, the ’602 patent claims a priority date of May 6, 2005, which is not challenged by Petitioner (see Pet. 3), whereas Rabie was published more than two months later. Ex. 1021, code (65). Moreover, the question is not whether it may have been known at the time of the invention that a LAG could be used between switches, but rather whether the combined teachings of RFC 3209 and Raz would have motivated a person of ordinary skill in the art to utilize a LAG between switches, as claimed, when neither RFC 3209 nor Raz teaches such usage or suggests the existence of a problem that such usage would solve. We are not persuaded that they would.” slip op. at 36

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

    “Pet. Reply 10–11. Despite Petitioner’s arguments, we are not persuaded that a person of ordinary skill would have been motivated by knowledge of Rabie to combine the teachings of RFC 3209 and Raz at the time of the invention of the ’602 patent. First, the ’602 patent claims a priority date of May 6, 2005, which is not challenged by Petitioner (see Pet. 3), whereas Rabie was published more than two months later. Ex. 1021, code (65). Moreover, the question is not whether it may have been known at the time of the invention that a LAG could be used between switches, but rather whether the combined teachings of RFC 3209 and Raz would have motivated a person of ordinary skill in the art to utilize a LAG between switches, as claimed, when neither RFC 3209 nor Raz teaches such usage or suggests the existence of a problem that such usage would solve. We are not persuaded that they would.” slip op. at 36

  Patent outcomesUS 9,118,602 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,118,602
• Cisco Systems, Inc. v. Corrigent CorporationNo claims unpatentable
  PTAB · Aug 6, 2024 · IPR2023-00447 · APJ Nathan A Engels · IPR · Final written decision

  Claims 1–26 were not shown unpatentable because the Petition did not establish the claimed port assignment and packet labeling under Raz or adequately explain the Raz–Ferguson combination.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “packet-switched networking, MPLS and LAG.” Pet. 6 (citing Ex. 1004 ¶¶ 57–58). Petitioner also states that a lack of work experience can be remedied by additional education, and vice versa. Pet. 6 (citing Ex. 1004 ¶ 57). Patent Owner “uses the same definition.” PO Resp. 4. We apply Petitioner’s level of ordinary skill, which is undisputed and is consistent with the level reflected by the ’602 patent and the asserted prior art.” slip op. at 6

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

    “We construe claims using the principles set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases. See 37 C.F.R. § 42.100(b) (2022). Under that precedent, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13. Neither party proposes any express claim constructions. Pet. 6–7; see PO Resp. 4. To the extent that the parties dispute the meaning of certain claim terms, we address those issues below, but we determine it is unnecessary to expressly construe any terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 6

  • BurdenNot shown unpatentable

    “Patent Owner argues, and we agree, that the cited portions of Raz do not disclose a LAG between two switches. PO Resp. 8–9. Petitioner acknowledges this; as stated in Petitioner’s Reply, “Petitioner has always acknowledged that Raz addresses the use of subports within an LSR, but a [person of ordinary skill in the art] would have found it obvious from Raz to use Ethernet physical data ports of a router or switch in an Ethernet LAG to communicate high-speed packet streams in [an] MPLS network.” Pet. Reply 2 (citing Pet. 15, 19, 22–25; Ex. 1021 ¶ 13; Ex. 1006, 1:16–19, 2:23– 31, 7:7–29, 11:3–12, 13:16–19, 14:42–44, 15:56–58, 17:7–9). Petitioner argues that LAGs were well known and, “[w]hile PO argues that Raz teaches the use of a single high-speed link to communicate between LSRs, that is merely a design choice.” Pet. Reply 3 (citing Ex. 1021 ¶¶ 15–17; PO Resp. 8–9). Further, Petitioner argues “[i]t would have been obvious to a [person of ordinary skill in the art] that high-speed packet streams could be communicated between switches or routers through a physical tunnel port of a LAG.” Pet. Resp. 3 (citing Ex. 1021 ¶¶ 15–17) (emphasis added). Among other problems, though, those arguments were not in the Petition; the Petition does not describe modifications of Raz’s teachings, much less establish those modifications as a “design choice.” See Pet. 25; see also PO Sur-reply 3. Further, we agree with Patent Owner that Raz is fundamentally different with its teachings of multiplexing the outputs of multiple slow- speed subports/processors into a single stream for transmission across a single high-speed link. PO Resp. 7–9, 12–13, 15–16; PO Sur-reply 4–5. As stated in Raz, “[t]he present invention provides a subport forwarding and provisioning mechanism whereby a plurality of subports comprising slower speed processors are used to perform the packet processing for a higher speed packet stream.” Ex. 1006, 6:24–27. Additionally, where Raz describes communication between two LSRs, Petitioner acknowledges that Raz teaches that its cited second LSR assigns the port on which it will receive a data packet. Pet. Reply 4; Ex. 1021 ¶ 20 (“in Raz, the second LSR chooses the subport that will be used to transmit the data packet from the first LSR and receive the data packet at the second LSR”). According to Petitioner, Raz teaches that “a first LSR generates a data packet label in which a port serial number is encoded and sends the label to a preceding LSR. Subsequently, the preceding LSR sends a data packet to the proper subport for processing. The process is then repeated in sending the data packet from the first LSR to a second LSR.” Pet. Reply 4 (citations omitted). “This technique just as easily could have been implemented to identify a single physical tunnel port through which a data packet in a first router or switch would be communicated to a second router or switch via a LAG.” Pet. Reply 4 (emphasis added) (citing Ex. 1006, 2:23–25, 7:7–16, 7:22–26, 11:3–29, Fig. 5; Ex. 1021 ¶ 18). Again, these arguments were not made in the Petition (see Pet. 22–25), and Petitioner’s assertions that Raz’s teachings “just as easily could have been implemented” in the manner claimed is improper hindsight and inconsistent with the fundamental differences between Raz’s multiplexing within an LSR and the claimed link aggregation and port assignment between MPLS/LAG switches.” slip op. at 8

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

    “[c]laims 1–13, 15–24 and 26 set forth above in Ground 1.” Pet. 52. Further, Petitioner states that “[f]or independent [c]laims 1, 15, and 26, Ferguson builds on the previous analysis of Raz by disclosing a system for communicating packets between switches and routers in an MPLS network.” Pet. 52; see Pet. 52–55. Critically, though, Petitioner does not specifically explain how the combined teachings of Raz and Ferguson would satisfy individual claim elements. Among other problems with Petitioner’s proposed combination, Petitioner does not adequately explain how or why a person of ordinary skill would have combined the references to include the claimed port assignment and packet labeling for transmission of a packet from a preceding node and then between a first and second MPLS switch. See Pet. 56–59. Instead, Petitioner generally advocates for the combination of Raz and Ferguson, arguing for example that “both Raz and Ferguson are directed to solving the problem of ensuring enough bandwidth is available to communicate high-speed packet streams through an MPLS network.” Pet. 57 (citing Ex. 1006, 10:60–11:12, 14:33–41, 15:47–55, 17:1–9, Fig. 5; Ex. 1007, 1:28–42, 2:54–57, 4:55–60; Ex. 1004 ¶¶ 247–249). Further, Petitioner contends a person of ordinary skill “would have understood from the disclosures in Ferguson that techniques for utilizing an Ethernet physical data port in a LAG to communication data packets between routers or switches in an MPLS network are also applicable to the use of subports transmitting the data packets within the routers or switches, and vice versa.” Pet. 59 (citing Ex. 1004 ¶ 250; Ex. 1007, 5:61–6:6); see Pet. 56–59; Pet. Reply 20. But Petitioner does not adequately explain how the proposed combination of Raz and Ferguson would cure the deficiencies addressed above in Petitioner’s analysis of Raz for Ground 1. Among other problems, none of Petitioner’s arguments adequately address port assignment and labeling in the proposed combination, much less adequately explain why the proposed combination would satisfy the challenged claims. See Pet. 55–56. As Petitioner does not adequately explain how the teachings of Raz and Ferguson might be combined to cure the deficiencies addressed above, we additionally determine Petitioner’s arguments and evidence advanced for the combination of Raz and Ferguson do not establish obviousness by a preponderance of the evidence for any of claims 1–26.” slip op. at 11

  Patent outcomesUS 9,118,602 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,118,602
• Unified Patents, LLC v. Flexiworld Technologies, Inc.No claims unpatentable
  PTAB · Nov 1, 2023 · IPR2022-00775 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 27 and 28 were not shown unpatentable under either § 103 ground because the petitioner did not establish that Olgaard or Acharya was prior art; the revised contingent motion to amend was dismissed as …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “Relying on Dr. Freedman’s testimony, Unified argues that a person of ordinary skill in the art would have had “(1) an undergraduate degree in electrical and computing engineering or a closely related field; and (2) two or more years of experience in wireless content transmission,” where “[m]ore relevant experience could compensate for less education, and vice versa.” Pet. 7 (citing Ex. 1003 ¶¶ 36–38). Flexiworld does not contest Unified’s description of the level of ordinary skill for this proceeding. See PO Resp. 8 (citing Ex. 2010 ¶ 67). Because Unified’s description is supported by uncontroverted testimonial evidence and appears consistent with the types of problems and solutions in the ’257 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:20–5:35 (“Technical Field” and “Background” sections of the ’257 patent, describing background knowledge relating to wireless content transmission between electronic devices).” slip op. at 9

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

    “Unified argues that “all terms should be given their plain meaning,” and does not propose any explicit constructions. See Pet. 8. In the context of this proceeding, Flexiworld agrees. See PO Resp. 29. We do not find it necessary to explicitly construe any terms to resolve the issues in this proceeding. See 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))).” slip op. at 10

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

    “2. Conclusion as to Obviousness For the reasons above, we determine that evidence independent of inventor testimony corroborates (1) a conception date no later than October 22, 2000 and (2) reasonably continuous diligence in reducing the claimed invention to practice until January 19, 2001. Having considered the evidence as a whole under a rule-of-reason analysis, we determine that Unified has not shown that the conception date for the claimed invention was on or after October 24, 2000, or that the inventors did not exercise reasonably continuous diligence during the critical period between October 24, 2000 and January 19, 2001. Unified relies on a priority date of October 24, 2000 for Olgaard and a priority date of December 22, 2000 for Acharya. See Pet. 1–2 & n.2; see also Ex. 1005, code (63); Ex. 1007, codes (22), (43). However, the corroborated conception date for claims 27 and 28 antedates the above priority dates for both Olgaard and Acharya. See supra Section III.C.1. Thus, Unified has not shown that either Olgaard or Acharya is prior art under 35 U.S.C. § 102(e) (2006). Unified provides no theory of obviousness that does not depend on either Olgaard or Acharya being prior art. See Pet. 2, 8–80.” slip op. at 20

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

    “claimed inventions were conceived no later than October 22, 2000, and Unified has not shown to the contrary by a preponderance of the evidence. First, we find credible Mr. Chang’s testimony that Exhibit 2013 and other related drafts, including their filenames and metadata, have not been altered. Ex. 2031 ¶ 1. We regard the metadata as the most reliable indicator of the latest date each draft was completed. Although the filename dates may differ from the metadata dates, these minor differences do not call into question the reliability of the metadata as the last date on which the drafts were modified. Most significantly, the “last modified” date for Exhibit 2013 is October 22, 2000. That the inventors produced at least three other drafts and then filed a provisional application just ten days later on November 1, 2000 further supports a conception date before October 24, 2000. Ex. 2031 ¶ 6; Ex. 2016; Ex. 2040.” slip op. at 16

  Patent outcomesUS 9,836,257 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,836,257
• Google LLC v. Neonode Smartphone LLCNo claims unpatentable
  PTAB · Jan 11, 2023 · IPR2021-01041 · APJ Christopher L Ogden · IPR · Final written decision

  Google did not show claims 1–7, 9, 12, 13, and 15–17 unpatentable because the asserted combinations did not teach or suggest the claimed multi-step activation involving gliding away.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For Google, Dr. Wobbrock testifies that a person of ordinary skill in the art at the time of the invention, would have had “at least a bachelor’s degree in Computer Science, Human-Computer Interaction, Symbolic Systems, or related engineering disciplines, and at least two years of experience designing and programming graphical user interfaces,” but that “[r]elevant work experience can substitute for formal education and advanced degree studies could substitute for work experience.” Ex. 1003 ¶ 49. Testifying for Neonode, Dr. Rosenberg states that for his declaration, he “will apply the same definition of the level of skill of a [person of ordinary skill in the art]” as Dr. Wobbrock. Ex. 2019 ¶ 27. We find Dr. Wobbrock’s uncontested articulation to be reasonable in light of the subject matter involved in the ’879 patent and the asserted prior art. See, e.g., Ex. 1001, 1:49–61 (stating that the ’879 patent addresses technical problems including “to provide a user-friendly interface . . . on a small handheld computer unit”). Thus, we adopt it for our decision.” slip op. at 9

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

    “Google does not propose any explicit claim constructions in its Petition. See Pet. 4. Neonode does not propose any explicit constructions either, but in its Response, Neonode raises a number of claim construction arguments regarding the term gliding . . . away as it appears in limitation 1c, to which Google responds in its Reply. See PO Resp. 31–50, 66–69; Pet. Reply 7–12, 19–21; see also PO Sur-reply 1–10, 19–21. We do not need to construe this term explicitly for our decision, and to the extent we need to interpret this or any other terms, we address the terms below in the context of the prior art. See 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))).” slip op. at 10

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

    “We find Google’s argument unpersuasive.10 Tarpenning’s assignment operation for hotkey 82 is in the nature of a drag-and-drop operation, where the user drags the pen from hotkey 82 to the intended menu item to which hotkey 82 will be assigned. But Google identifies the “function [to be] activated”—not as the actual assignment of hotkey 82 to the menu item when the user lifts from the intended menu item—but as the underlying software process that looks to see whether the user has lifted yet from the selected menu item. See Pet. Reply 19–20; Tr. 37:17–39:16. Essentially, Google asserts that the recited function is part of processing the gesture itself, which we do not find persuasive. As counsel for Neonode argued at the hearing, unless the user lifts off from a menu item, no assignment to hotkey 82 has been made and nothing has actually been done. See Tr. 80:4– 13. 10 We also consider this argument untimely, as it appears to contradict Google’s original theory of obviousness in the Petition, which states that the “‘assignment’ function” is “completed when the user reaches the target item to be assigned.” Pet. 79; see also Tr. 80:2–3 (counsel for Neonode arguing, “I submit that’s not only a new point they’re making, it’s unsupported and . . . incorrect.”); 37 CFR § 42.23(b) (“A reply may only respond to arguments raised in the corresponding . . . patent owner response[] or decision on institution.”). We also find unpersuasive Google’s original argument in the Petition that the recited “function” is activated when the user reaches the target menu item being assigned to hotkey 82. See Pet. 79. This is essentially a traditional drag-and-drop operation. But we credit Dr. Rosenberg’s testimony that when the user lifts from the intended menu item, no function has actually been activated. See Ex. 2019 ¶ 139. Rather, at this point a function has merely been assigned to the hotkey for future activation by touching the hotkey. See id. Thus, we determine that Google has not identified any disclosure in Tarpenning in which any “function is activated by a multi-step operation” as recited in limitation 1c. Absent that teaching or suggestion, Google’s argument (Pet. 80–82) does not adequately articulate why a person of ordinary skill in the art would have modified Tarpenning’s book menu key 84 or library menu key 86 to achieve limitation 1c, and we find Google’s obviousness argument unpersuasive as to claim 1.” slip op. at 36

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “would have understood Robertson’s “flick” gesture to comprise “gliding . . . away” as we interpret that term. Robertson says very little about the “flick” gestures themselves, other than using the word flick. See, e.g., Ex. 1005, 39. Robertson teaches that its gestures should be “easily differentiated,” and in addition to “flick” gestures, Robertson also teaches “drag and drop” operations. Id. at 36 (“[Y]ou can drag a document icon and drop it into a printer icon to print the document . . . .”). We credit Dr. Rosenberg’s testimony that, for the XButton system to immediately distinguish between dragging and flicking, there must be some distinction between a “flick” and a “drag,” and that the most plausible difference is in terms of their speed, distance, or both. See Ex. 2019 ¶ 90. Although Robertson discloses that its system is capable of recognizing gestures that start on an XButton and extend outside it (see Ex. 1005, 43), a “glide” or that the distinction is arbitrary. Cf. Braintree Labs., Inc. v. Novel Labs., Inc., 749 F.3d 1349, 1360 (Fed. Cir. 2014) (“Descriptive words . . . are commonly used in patent claims, to ‘avoid[] a strict numerical boundary to the specified parameter.’” (alteration in original) (quoting Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995))) the only gesture for which Robertson specifically indicates this would be necessary is a “circling gesture[] for grouping, moving, and copying graphical objects” (id. at 39). Thus, we disagree with Google that Robertson’s teaching in this regard is relevant to what Robertson means by a “flick” gesture. We also find persuasive Neonode’s dictionary definitions, spanning from 1993 to 2012, which consistently indicate that the word flick describes a movement that is “light,” “sharp” or “quick,” and “jerky” or “sudden,” as opposed to definitions of “glide” referring to a movement that is “smooth,” “continuous,” and possibly “quiet” or “effortless.” Exs. 2049, 2050, 2052, 2057.9 And although the evidence postdates Robertson, we find relevant the supporting evidence that modern Apple and Google developers maintain a meaningful distinction between “flick” and “swipe” gestures. See Ex. 2022, 4; Ex. 2023, 6; Ex. 2025, 21; Ex. 2026, 5; Ex. 2029, 2; Ex. 2019 ¶¶ 80–81. We further credit Dr. Rosenberg’s opinion that in the relevant time frame, a person of ordinary skill in the art would have interpreted a “flick” gesture as one in which “the pen would touch the screen, but only moves on the screen for a very short distance and is quickly lifted from the screen in a ‘jerky’ motion.” Ex. 2019 ¶¶ 85–86. 9 The earliest dictionary definitions (Ex. 2052) are from 1993, which is roughly contemporary with Robertson (1991), and are sufficiently close in time to be relevant. Google does not present any evidence suggesting that the meaning of flick had changed between 1991 and 1993. See PO Sur-reply 2. Thus, we agree with Neonode that Google has not shown that Robertson’s “flick” gesture comprises “gliding . . . away,” and thus falls within the scope of claim 1. Finally, we also agree with Neonode that Google has not established that Robertson’s “insert” (caret) gesture comprises “gliding . . . away.” Although Robertson does not provide much information about this gesture, we find Dr. Rosenberg’s interpretation and annotated version of Figure 1 (Ex. 2019 ¶¶ 99–102) more credible than those of Dr. Wobbrock (Ex. 1003 ¶ 108). We credit Dr. Rosenberg’s testimony that a person of ordinary skill in the art would have understood the “insert” gesture to be similar to the way a person would draw a caret to indicate an insertion within existing text. See Ex. 2019 ¶ 99. Thus, we agree it would involve two brief, connected movements with a sharp peak, neither of which would be a continuous gliding or swiping motion. Id. ¶¶ 100–102.” slip op. at 27

  Patent outcomesUS 8,095,879 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,095,879
• Coalition For Affordable Drugs Viii, LLC v. The Trustees Of The University Of PennsylvaniaNo claims unpatentable
  PTAB · Mar 6, 2017 · IPR2015-01836 · APJ Lora M Green · IPR · Final written decision

  Claims 1–8 were not shown unpatentable under § 103 because the prior art did not establish a reasonable expectation of success using lomitapide in the claimed dosing regimen.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “The reasonable expectation of success requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). As to reasonable expectation of success, we agree with Patent Owner that the ordinary artisan would not have had a reasonable expectation of success of combining Pink Sheet with Chang to arrive at the claimed invention. To the extent that Petitioner relies on our Institution Decision, we note that decision was based on the evidence of record at that time. The evidence advanced by Patent Owner during trial, discussed herein, however, tips the scale in favor of a finding different from that set forth in our Institution Decision. slip op. at 36

  • ExcludeMotion to exclude, deniedMixed

    “As to Exhibit 1052, which is the Deposition Transcript of S. David Kimball, and which Patent Owner acknowledges that Petitioner cites in its Reply, Patent Owner argues that it timely objected to the exhibit as an improper duplicate of Exhibit 2304. Mot. Exclude 7. Petitioner responds that Exhibits 2304 and 1052 are the transcripts of Petitioner’s expert. Opp. Mot. Exclude 4. Although acknowledging that the party taking the deposition normally files the transcript, Petitioner asserts that its Reply cites to Ex. 1056, and Patent Owner does not cite to either exhibit. Id. Patent Owner replies that Exhibit 2304 also contains Dr. Kimball’s signed errata sheet and is, thus, the more complete of the two documents. Reply Mot. Exclude. 3. Patent Owner asserts that the citations in Petitioner’s Reply can be updated to reflect the correct exhibit number, if necessary. Id. Given the posture of this proceeding, that is, it is at final written decision, and as Patent Owner notes, the two documents are not exact duplicates, we decline to exclude Ex. 1056, but will allow both Exhibit 1056 and 2034 to remain in the record.” slip op. at 44

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “the unrebutted evidence of commercial success further supports the patentability of the challenged claims. Looking at the entire record before us, we conclude that Petitioner has not meet its burden to establish unpatentability of challenged claims 1‒8 by a preponderance of the evidence over the combination of Pink Sheet and Chang. E. Motion to Amend As discussed above, because we conclude that Petitioner has not demonstrated the obviousness of the claims by a preponderance of the evidence, we need not reach the merits of Patent Owner’s contingent Motion to Amend (Paper 24). We, thus, dismiss the motion a moot.” slip op. at 44

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “biotechnology and medical device companies.” Id. The press release does not even mention Dr. Stein. Thus, there is nothing in the press release suggesting that the ordinary artisan in the cardiovascular/cardiac field, or interested in MTP inhibitors, should attend the presentation. We, therefore, decline to credit Dr. Mayersohn’s testimony that “[a]person of ordinary skill in the art interested in the development of MTP inhibitors could apparently have attended the meeting or accessed the presentation itself via webcast or on the PPD website shortly thereafter” (Ex. 1003 ¶ 25 (citing the PPD Press Release)), as there was nothing in the press release discussing MTP inhibitors. That finding informs our analysis of the factors set forth in Klopfenstein. Thus, although the ordinary artisan may have been able to copy the presentation, and although there may have been an expectation that the materials could be copied, Petitioner does not provide any evidence establishing that the target audience would have been an ordinary artisan in the relevant field.” slip op. at 19

  Patent outcomesUS 7,932,268 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,932,268
• Coalition For Affordable Drugs Viii, LLC v. The Trustees Of The University Of PennsylvaniaNo claims unpatentable
  PTAB · Mar 6, 2017 · IPR2015-01835 · APJ Lora M Green · IPR · Final written decision

  Claims 1–10 were not shown unpatentable under § 103 because the prior art did not establish a reasonable expectation of success substituting lomitapide into Pink Sheet’s dosing protocol.

  RulingsFinal written decision

  • BurdenFwd all claims patentableNot shown unpatentable

    “We have jurisdiction under 35 U.S.C. § 6. Petitioner bears the burden of proving unpatentability of the challenged claims, and that burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must establish facts supporting its challenge by a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. Based on the record before us, we conclude that Petitioner has failed” slip op. at 3

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (citing In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)).” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation not foundMixed

    “Although we find this issue to be very close, we find that the Petitioner has established by a preponderance of the evidence that the ordinary artisan would have looked at other MTP inhibitors, such as lomitapide as taught by Chang, that could be used in the dosing protocol taught by Pink Sheet. Specifically, Pink Sheet teaches a dosing method with the MTP inhibitor, implitamide, wherein, as discussed above, the dosing schedule meets the dosing schedule required by claim 1. Ex. 1013. In addition, Pink Sheet discusses MTP inhibitors generally, and notes that they may have efficacy in situations where high-dose statins are ineffective or inadequate, such as homozygous and severe heterozygous familial hypercholesterolemia. Id. Pink Sheet also acknowledges that the toxicity seen with MTP inhibitors may have been due to the high doses used during the clinical trials. Id. Chang discusses the clinical efficacy of MTP inhibitors, including implitapide (BAY-13-9952) and lomitapide (BMS-201038). Ex. 1015, 566. Specifically, Chang discusses the clinical efficacy of CP-346086, and then notes that similar efficacy was reported for implitapide and lomitapide. Id. Given that implitapide and lomitapide are from the same class of therapeutics, that is, MTP inhibitors, and that they are known to have similar clinical efficacy, based on the record before us, we determine that Petitioner has demonstrated a reasonable basis as to why the ordinary artisan would have substituted lomitapide as taught by Chang for implitapide in the method of Pink Sheet.” slip op. at 32

  • Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia with nexusDecided for patent owner

    “Initially, we note that Petitioner does not contest that Juxtapid is a commercial success, and, thus, in view of the unrebutted evidence provided by Patent Owner, we find that Patent Owner has established that Juxtapid is a commercial success. As to Petitioner’s argument that the Juxtapid website does not suggest a forced titration, as set forth in our section on claim construction above, we decline to construe independent challenged claim 1 as requiring a forced titration. Moreover, as shown in the table below, the dosing schedule of independent claim 1 encompasses the dosing method that is given to doctors on the Juxtapid website (Ex. 2301, 1):” slip op. at 43

  Patent outcomesUS 8,618,135 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,618,135
• Kaiser Aluminum v. Constellium Rolled Products Ravenswood, LLCNo claims unpatentable
  PTAB · Nov 2, 2015 · IPR2014-01002 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claim 10 was not shown unpatentable under § 103 over Balmuth1, the Starke Reference, or ’662 Balmuth combined with ’910 Pickens.

  RulingsFinal written decision

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

    “Claim Interpretation We interpret claims of an unexpired patent using the “broadest reasonable construction in light of the specification of the patent in which [the claims] appear[].” 37 C.F.R. § 42.100(b). Under this standard, claim terms are given their ordinary and customary meaning in view of the specification, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For purposes of our Decision to Institute, we determined that the terms in the challenged claims did not need to be construed expressly, and we see no reason to modify that determination in light of the record developed at trial. B.” slip op. at 4

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

    “Given the complexities involved in developing a thick plate composition from a thin sheet, and the breadth of potential applications within the aerospace industry, we determine that Mr. Balmuth and Dr. Starke fail to provide sufficient reasoning as to why one of ordinary skill in the art would have attempted to manufacture thick plates having the claimed properties from the thin sheets described in the prior art. See, e.g., InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1348–49 (Fed. Cir. 2014) (holding expert testimony to be impermissible hindsight for failing to explain what reason or motivation one of ordinary skill in the art at the time of the invention would have had to place the prior art together). In an obviousness determination, we must avoid analyzing the prior art through the prism of hindsight. Instead, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, 721 F.2d 1540, 1553 (Fed. Cir. 1983). Here, Petitioner attempts to imbue one of ordinary skill in the art with knowledge of the claimed invention, when there is insufficient evidence of record to convey or suggest that knowledge. Rather, Petitioner’s arguments that a person having ordinary skill in the art would have only needed to use routine experimentation to manufacture a thick plate alloy having the claimed properties appears to be premised on Petitioner’s knowledge of the ’509 patent itself. See, e.g., Pet. 20 (“In this case, the ’509 patent confirmed that the chemistry in the Balmuth1 reference relating to sheet material could be used for plate products without adjusting the chemistry to arrive at the beneficial strength and toughness properties using merely routine testing procedures.”). Petitioner’s contentions that it would have been obvious to try to manufacture thick plates having the claimed properties and that “one of ordinary skill in the art had a ‘good reason to pursue the known options within his . . . technical grasp’” to do so similarly are insufficient. See Pet. 22; id. at 21–24. The Federal Circuit has held that “a finite number of identified, predictable solutions” may support an inference of obviousness, but “[t]o the extent an art is unpredictable, as the chemical arts often are, KSR’s focus on these ‘identified, predictable solutions’ may present a difficult hurdle because potential solutions are less likely to be genuinely predictable.” Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 1359 (Fed. Cir. 2008) (citing KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has a good reason to pursue known options within this or her technical grasp.”)). As set forth above, we credit Dr. Pickens’s testimony that designing a thick plate alloy product having the claimed properties from a thin sheet alloy product would be costly and unpredictable. Accordingly, Petitioner has not shown sufficiently that a person having ordinary skill in the art would have considered it obvious to try to manufacture a thick plate composition with the properties recited in claim 10 of the ’509 patent.” slip op. at 15

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

    “In an obviousness determination, we must avoid analyzing the prior art through the prism of hindsight. Instead, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, 721 F.2d 1540, 1553 (Fed. Cir. 1983). Here, Petitioner attempts to imbue one of ordinary skill in the art with knowledge of the claimed invention, when there is insufficient evidence of record to convey or suggest that knowledge. Rather, Petitioner’s arguments that a person having ordinary skill in the art would have only needed to use routine experimentation to manufacture a thick plate alloy having the claimed properties appears to be premised on Petitioner’s knowledge of the ’509 patent itself. See, e.g., Pet. 20 (“In this case, the ’509 patent confirmed that the chemistry in the Balmuth1 reference relating to sheet material could be used for plate products without adjusting the chemistry to arrive at the beneficial strength and toughness properties using merely routine testing procedures.”). Petitioner’s contentions that it would have been obvious to try to manufacture thick plates having the claimed properties and that “one of ordinary skill in the art had a ‘good reason to pursue the known options within his . . . technical grasp’” to do so similarly are insufficient. See Pet. 22; id. at 21–24. The Federal Circuit has held that “a finite number of identified, predictable solutions” may support an inference of obviousness, but “[t]o the extent an art is unpredictable, as the chemical arts often are, KSR’s focus on these ‘identified, predictable solutions’ may present a difficult hurdle because potential solutions are less likely to be genuinely predictable.” Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 1359 (Fed. Cir. 2008) (citing KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has a good reason to pursue known options within this or her technical grasp.”)). As set forth above, we credit Dr. Pickens’s testimony that designing a thick plate alloy product having the claimed properties from a thin sheet alloy product would be costly and unpredictable. Accordingly, Petitioner has not shown sufficiently that a person having ordinary skill in the art would have considered it obvious to try to manufacture a thick plate composition with the properties recited in claim 10 of the ’509 patent.” slip op. at 16

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “to be persuasive. In order to rely on inherency to establish the existence of a missing claim limitation in an obviousness analysis, “the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.” PAR Pharma., Inc. v. TWI Pharmas., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014). Neither Mr. Balmuth’s nor Dr. Starke’s statements regarding the inherent properties of a thick plate with the same chemistry as a thin sheet are supported by sufficient objective evidence or analysis demonstrating that the claimed properties would necessarily be present in the thick plate. Mr. Balmuth and Dr. Starke simply state that such a thick plate would inherently have the properties necessitated by the chemistry involved, without providing sufficient and credible explanations as to why that would be the case. See Ex. 1006 ¶ 13; Ex. 1008 ¶ 32. Mr. Balmuth, for example, states that “it is generally understood that the strength and fracture toughness properties of a plate are less than those of a sheet having similar chemistry,” but that “one of ordinary skill in the art would predict improved properties for a plate upon a showing of improved properties in a sheet having similar chemistry,” and does not expound upon the reasons why a person skilled in the art would understand that to mean that the thick plate would display the same mechanical properties as the thin sheet. See Ex. 1006 ¶ 14. Based upon the evidence presented, we find that the opinions of Mr. Balmuth and Dr. Starke are not persuasive as they are not supported by the evidence of record. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (stating a lack of objective support for an expert opinion “may render the testimony of little probative value in [a patentability] determination”). Patent Owner, in contrast, provides reasoning as to why a person having ordinary skill in the art would not have understood that a thick plate would have similar properties to a thin sheet having the same chemistry. PO Resp. 13–14, 34–35, 37–40, 42–44. For example, Patent Owner notes that since according to Mr. Balmuth you ‘don’t have the ability’ or ‘any interest’ in measuring toughness in the S-T direction in sheet, Petitioner has not established that the strength and toughness properties in sheet would necessarily be predictive of the strength and toughness properties of plate, such as described in Claim 10. Id. at 14. Dr. Pickens also testified to the complexities involved in developing thick plate aluminum-lithium alloys: For example, quench sensitivity, stress-corrosion cracking resistance, in plane anisotropy, through thickness heterogeneity, and lower short transverse fracture toughness are a few factors that make developing thick plate aluminum-lithium alloys very complicated. Furthermore, lithium lowers the thermal conductivity of aluminum which is problematic in several areas. Heat is more difficult to extract during direct-chill casting thereby exacerbating metallurgical segregation problems. Hot rolling can break down segregation, such as heterogeneous segregations at grain boundaries, so that it may be less harmful, although there is a practical limit on how thick aluminum alloy rolling ingot can be cast. The reduction ratio, i.e. scalped ingot thickness to final product gauge, is an important real-world processing variable when developing a thick plate aluminum lithium alloy. Ex. 2043 ¶ 11; see also PO Resp. 16–17 (discussing the “recognition in the art of complex differences between sheet and thick plate”). Patent Owner further notes that Dr. Pickens testified “that he would not have been motivated to add Mn in the claimed amount to an Al-Cu-Li-Mg-Ag alloy with a thickness of at least about 3 inches, or scale up a sheet alloy to the” slip op. at 11

  Patent outcomesUS 7,229,509 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,229,509

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.