• Sensor Electronic Technology, Inc. v. Lite-On Technology CorporationSome claims unpatentable
  PTAB · Jun 26, 2023 · IPR2022-00395 · APJ Jean R Homere · IPR · Final written decision

  Claims 1, 2, and 5 are unpatentable under § 103; claim 3 was not shown unpatentable. The contingent motion to amend was granted for substitute claims 20–22.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “5. Conclusion Weighing the Graham factors, we conclude that Petitioner has not” slip op. at 83

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

    “merely by increasing the light extraction due to their low refractive index. Id. at 5. Accordingly, Petitioner submits that a POSITA would be apprised that “the amount of light emitted from the light-emitting element 310 reaching the cup-shaped sidewall of the package…can be reduced, so that deterioration of the package can be prevented.” Id. (citing Ex. 1007 ¶ 42; Ex. 1026, 14:13–20). Thus, Petitioner argues, removing the silicone sealing layer and replacing it with an air gap would increase the light extraction from the package, thus performing the same function of the sealing layer disclosed in Nichia-825. Id. (citing Ex. 1014 ¶¶ 35, 36). Additionally, Petitioner argues that Omata’s air hole is designed to allow air to flow out of the LED package to help balance the pressure inside the package with the external air pressure during the reflow process. Id. at 6–7 (Ex. 1021 ¶ 39; Ex. 1026, 22:10–19, 32:2–4). Thus, Petitioner submits that Omata discloses no concern with introducing external contaminants through the air hole, which allows air to flow in the opposite direction once pressure has been equalized. Id. at 7.” slip op. at 61

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

    “Examiner’s rejections based on the oval-shaped drawing during prosecution of the ’685 patent, and because the depictions of different circles and an oval, each having a different center, were not drawn to scale in the Reply, they cannot be relied upon as evidence to support Petitioner’s position that the center of curvature may involve more than one circle or even an oval, each having a different center. Id. at 7–10. Accordingly, Patent Owner submits that the “center of curvature” should be construed consistent with” slip op. at 13

  Patent outcomesUS 10,916,685 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham · Nautilus
  Patents in suitUS 10,916,685
• Microsoft Corporation v. Ipa Technologies Inc.Some claims unpatentable
  PTAB · Dec 22, 2022 · IPR2019-00836 · APJ Kevin C Trock · IPR · Remand

  On remand, claims 8 and 86–89 of the ’115 patent and claims 10 and 11 of the ’560 patent are unpatentable under § 103; claims 9, 10, and 63 of the ’115 patent and claim …

  RulingsRemand decision

  • RemandOther

    “the ’560 patent, we found in the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR that Petitioner did not present sufficient evidence to show how or why a person of ordinary skill in the art would have combined Kiss and FIPA97 to obtain the recited subject matter of these claims. 810 Final Dec. 145–149; 814 Final Dec. 135; 835 Final Dec. 108. On appeal, the Federal Circuit reversed our finding and remanded “for the Board to address any remaining obviousness disputes concerning these claims.” Microsoft, 2022 WL 989403, at *3–5. On remand, Patent Owner appears to disagree with the Federal Circuit’s decision and argues that Petitioner failed to show how a person of ordinary skill in the art would have combined Kiss and FIPA97. PO Remand Opening Br. 2–9; PO Remand Resp. Br. 2. In response, Petitioner argues Patent Owner’s argument is improper because the mandate rule “prevents parties from raising issues on remand that were within the scope of the judgment appealed from and resolved by the appellate court.” Pet. Remand Resp. Br. 3–4 (citing Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999)). Petitioner further argues that the Federal Circuit has expressly resolved the question of whether the Petition has sufficiently set forth “the ‘how’ and ‘why’ of the cited combination” in favor of Petitioner and, therefore, we should not address or revisit the issue on remand. Id. at 7. We agree with Petitioner’s argument. We disagree with and reject Patent Owner’s argument in its remand papers directed to Petitioner’s reasons for the cited combination as being inconsistent with the Federal Circuit’s decision, which determined that Petitioner has shown sufficiently and FIPA97 to obtain the subject matter recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. See Microsoft, 2022 WL 989403, at *3–5. Pursuant to the Federal Circuit’s decision and mandate, we address below the remaining obviousness disputes concerning claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. In the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR, we did not reach the issue of whether Petitioner has shown sufficiently that the cited combination teaches or suggests all limitations of these claims. See 810 Final Dec. 144– 149; 814 Final Dec. 132–135; 835 Final Dec. 106–109. We do so now and address the parties’ disputes regarding the teachings of the cited prior art as they relate to the limitations recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent.” slip op. at 23

  • Skill levelSkill level board ownDecided for patent owner

    “B. Level of Ordinary Skill in the Art In the Final Written Decisions, we determined that a person of ordinary skill in the art at the time of the claimed invention would have had “a Bachelor’s degree in Computer Science or equivalent field and at least two years of work experience in design and development of distributed systems, software specification languages, or a related area.” 810 Final Dec. 12; 811 Final Dec. 12; 814 Final Dec. 11; 835 Final Dec. 12; 836 Final Dec. 12. We see no reason to depart from this determination, which the parties did not challenge on appeal.” slip op. at 18

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

    “claim term “trigger” recited in claim 8. See Ex. 1003 ¶ 371. We agree with this construction because claim 8 incorporates all of the limitations of claim 1 from which it depends and the same terms appearing in different portions of a claim should be given the same meaning absent compelling evidence to the contrary. See Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075, 1087 (Fed. Cir. 2009) (“We apply a presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.” (internal quotation marks omitted) (citations omitted)); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (“[W]e presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning.”). We also agree with Dr. Lieberman’s proposed interpretation of the claim term “trigger declaration” as “a statement in a program that specifies the characteristics of a trigger” (Ex. 1003 ¶ 371) because the construction is consistent with the disclosure in the Specification. See Ex. 1001, 17:5–9 (“Each registered agent may be optionally associated with one or more triggers, which preferably could be referenced through their associated Trigger Declaration fields 712 in the parent facilitator Agent Registry 702.”); see also Ex. 1003 ¶ 374 (citing Ex. 1001, 17:5–9, Fig. 7).” slip op. at 28

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

    “the ’560 patent, we found in the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR that Petitioner did not present sufficient evidence to show how or why a person of ordinary skill in the art would have combined Kiss and FIPA97 to obtain the recited subject matter of these claims. 810 Final Dec. 145–149; 814 Final Dec. 135; 835 Final Dec. 108. On appeal, the Federal Circuit reversed our finding and remanded “for the Board to address any remaining obviousness disputes concerning these claims.” Microsoft, 2022 WL 989403, at *3–5. On remand, Patent Owner appears to disagree with the Federal Circuit’s decision and argues that Petitioner failed to show how a person of ordinary skill in the art would have combined Kiss and FIPA97. PO Remand Opening Br. 2–9; PO Remand Resp. Br. 2. In response, Petitioner argues Patent Owner’s argument is improper because the mandate rule “prevents parties from raising issues on remand that were within the scope of the judgment appealed from and resolved by the appellate court.” Pet. Remand Resp. Br. 3–4 (citing Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999)). Petitioner further argues that the Federal Circuit has expressly resolved the question of whether the Petition has sufficiently set forth “the ‘how’ and ‘why’ of the cited combination” in favor of Petitioner and, therefore, we should not address or revisit the issue on remand. Id. at 7. We agree with Petitioner’s argument. We disagree with and reject Patent Owner’s argument in its remand papers directed to Petitioner’s reasons for the cited combination as being inconsistent with the Federal Circuit’s decision, which determined that Petitioner has shown sufficiently and FIPA97 to obtain the subject matter recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. See Microsoft, 2022 WL 989403, at *3–5.” slip op. at 23

  Patent outcomesUS 7,069,560 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,069,560
• Microsoft Corporation v. Ipa Technologies Inc.Some claims unpatentable
  PTAB · Dec 22, 2022 · IPR2019-00835 · APJ Kevin C Trock · IPR · Remand

  Claims 8 and 86–89 of the ’115 patent and claims 10 and 11 of the ’560 patent are unpatentable over Kiss and FIPA97; the remaining remanded claims were not shown unpatentable.

  RulingsRemand decision

  • RemandOther

    “On appeal, the Federal Circuit affirmed all of our determinations of unpatentability of challenged claims. See Microsoft, 2022 WL 989403, at *1. The Federal Circuit also affirmed our “determination of no proven unpatentability of claims 29–47 of the ’115 patent and claims 50–51 and 53–55 of the ’560 patent.” Id. The Federal Circuit reversed certain findings we made in concluding that claims 8–10, 63, and 86–89 of the ’115 patent and claims 10, 11, and 28 of the ’560 patent had not been proven unpatentable and remanded for further consideration of those claims. Id. Upon our authorization (Paper 45), the parties filed additional briefing limited to addressing the remanded claims. See Petitioner’s Remand Opening Brief (Paper 50, “Pet. Remand Opening Br.”), Patent Owner’s Remand Opening Brief (Paper 51, “PO Remand Opening Br.”), Petitioner’s Remand Response Brief (Paper 53,” slip op. at 6

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

    “Circuit’s decision and argues that Petitioner failed to show how a person of ordinary skill in the art would have combined Kiss and FIPA97. PO Remand Opening Br. 2–9; PO Remand Resp. Br. 2. In response, Petitioner argues Patent Owner’s argument is improper because the mandate rule “prevents parties from raising issues on remand that were within the scope of the judgment appealed from and resolved by the appellate court.” Pet. Remand Resp. Br. 3–4 (citing Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999)). Petitioner further argues that the Federal Circuit has expressly resolved the question of whether the Petition has sufficiently set forth “the ‘how’ and ‘why’ of the cited combination” in favor of Petitioner and, therefore, we should not address or revisit the issue on remand. Id. at 7. We agree with Petitioner’s argument. We disagree with and reject Patent Owner’s argument in its remand papers directed to Petitioner’s reasons for the cited combination as being inconsistent with the Federal Circuit’s decision, which determined that Petitioner has shown sufficiently and FIPA97 to obtain the subject matter recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. See Microsoft, 2022 WL 989403, at *3–5.” slip op. at 23

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

    “In the context of claim 1 from which claim 8 depends, Petitioner argued in the Petition that a “trigger” recited in claim 1 (see Ex. 1001, 29:10–24) is “a general mechanism for requesting some action be taken when one or more conditions is met.” Pet. 11 (citing Ex. 1001, 21:21–22:31; Ex. 1003 ¶¶ 80–81). Patent Owner did not dispute Petitioner’s proposed meaning of “trigger” recited in claim 1. See PO Resp. 24–38. In the Final Written Decision in the 810 IPR, we adopted this undisputed interpretation of “trigger” because the construction is consistent with the disclosure in the Specification. 810 Final Dec. 120 (citing Ex. 1001, 21:22–24 (“triggers [provide] a general mechanism for requesting some action be taken when a set of conditions is met”)). This claim construction was not appealed and, as noted above, the Federal Circuit did not address the construction of this claim term. See Microsoft, 2022 WL 989403. Considering the full record, we see no reason to depart from the claim construction of the term “trigger” the same claim construction for purposes of this Remand Decision. Petitioner and Dr. Lieberman proposed the same interpretation for the claim term “trigger” recited in claim 8. See Ex. 1003 ¶ 371. We agree with this construction because claim 8 incorporates all of the limitations of claim 1 from which it depends and the same terms appearing in different portions of a claim should be given the same meaning absent compelling evidence to the contrary. See Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075, 1087 (Fed. Cir. 2009) (“We apply a presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.” (internal quotation marks omitted) (citations omitted)); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (“[W]e presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning.”). We also agree with Dr. Lieberman’s proposed interpretation of the claim term “trigger declaration” as “a statement in a program that specifies the characteristics of a trigger” (Ex. 1003 ¶ 371) because the construction is consistent with the disclosure in the Specification. See Ex. 1001, 17:5–9 (“Each registered agent may be optionally associated with one or more triggers, which preferably could be referenced through their associated Trigger Declaration fields 712 in the parent facilitator Agent Registry 702.”); see also Ex. 1003 ¶ 374 (citing Ex. 1001, 17:5–9, Fig. 7).” slip op. at 27

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

    “Patent Owner’s argument is unavailing because, as discussed above, Dr. Lieberman persuasively explained that in FIPA97’s FIPA-AVEB- Request-Notification contract-net “[t]he GA is responsible for the creation and management of a content index, and uses this index to respond to requests from the CA” (Ex. 1003 ¶ 373 (citing Ex. 1011, 11)) and that a person of ordinary skill in the art would have understood that, for the GA to monitor for changes over a given time period and inform the CA of any changes to the status of a specific AV program that conform to a precondition “preconditions2” within that period, “the agent registry must include declaration functionality” for preconditions relating to the status of AV programs (id. ¶ 374). We are persuaded that the cited disclosures of FIPA97 at least would have suggested to a person of ordinary skill in the art that the GA’s context index (the claimed “agent registry data structure”) includes a statement of a precondition relating to a specific AV program listed in the content index. In its remand paper, Patent Owner argues that “nothing in Part 6 FIPA97 explicitly teaches that a precondition2 is stored within a General Agent as asserted by Petitioner.” PO Remand Resp. Br. 7 (underlined emphasis added). Patent Owner’s argument is unavailing because Petitioner’s asserted theory of unpatentability is one of obviousness, not anticipation. Thus, Petitioner need not show “FIPA97 explicitly teaches that a precondition2 is stored within a [Guide] Agent,” as Patent Owner demands. See id. For the reasons discussed above, we are persuaded that Petitioner set forth sufficient evidence in the Petition to show that the cited disclosures of FIPA97 at least would have suggested to a person of ordinary structure”) includes a statement of a precondition (the claimed “trigger declaration”) relating to a specific AV program listed in the content index. Thus, we determine that the Petition establishes sufficiently that FIPA97 teaches or suggests “the agent registry data structure includes at least one trigger declaration for one active agent,” as recited in claim 8.” slip op. at 29

  Patent outcomesUS 7,069,560 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,069,560
• Microsoft Corporation v. Ipa Technologies Inc.Some claims unpatentable
  PTAB · Dec 22, 2022 · IPR2019-00814 · APJ Kevin C Trock · IPR · Remand

  Claims 8 and 86–89 of the ’115 patent and claims 10 and 11 of the ’560 patent are unpatentable as obvious over Kiss and FIPA97; claims 9, 10, and 63 of the ’115 patent and …

  RulingsRemand decision

  • RemandOther

    “the ’560 patent, we found in the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR that Petitioner did not present sufficient evidence to show how or why a person of ordinary skill in the art would have combined Kiss and FIPA97 to obtain the recited subject matter of these claims. 810 Final Dec. 145–149; 814 Final Dec. 135; 835 Final Dec. 108. On appeal, the Federal Circuit reversed our finding and remanded “for the Board to address any remaining obviousness disputes concerning these claims.” Microsoft, 2022 WL 989403, at *3–5. On remand, Patent Owner appears to disagree with the Federal Circuit’s decision and argues that Petitioner failed to show how a person of ordinary skill in the art would have combined Kiss and FIPA97. PO Remand Opening Br. 2–9; PO Remand Resp. Br. 2. In response, Petitioner argues Patent Owner’s argument is improper because the mandate rule “prevents parties from raising issues on remand that were within the scope of the judgment appealed from and resolved by the appellate court.” Pet. Remand Resp. Br. 3–4 (citing Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999)). Petitioner further argues that the Federal Circuit has expressly resolved the question of whether the Petition has sufficiently set forth “the ‘how’ and ‘why’ of the cited combination” in favor of Petitioner and, therefore, we should not address or revisit the issue on remand. Id. at 7. We agree with Petitioner’s argument. We disagree with and reject Patent Owner’s argument in its remand papers directed to Petitioner’s reasons for the cited combination as being inconsistent with the Federal Circuit’s decision, which determined that Petitioner has shown sufficiently and FIPA97 to obtain the subject matter recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. See Microsoft, 2022 WL 989403, at *3–5. Pursuant to the Federal Circuit’s decision and mandate, we address below the remaining obviousness disputes concerning claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. In the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR, we did not reach the issue of whether Petitioner has shown sufficiently that the cited combination teaches or suggests all limitations of these claims. See 810 Final Dec. 144– 149; 814 Final Dec. 132–135; 835 Final Dec. 106–109. We do so now and address the parties’ disputes regarding the teachings of the cited prior art as they relate to the limitations recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent.” slip op. at 23

  • BurdenDecided for patent owner

    “We note, as an initial matter, that it is Petitioner’s burden to explain how the challenged claims should be construed and how, as so construed, they are unpatentable. See 37 C.F.R. § 42.104(b)(3)–(4). Despite having been afforded an opportunity on remand to address our claim construction set forth in the Final Written Decisions, Petitioner does not address in its how the cited prior art teaches or suggests the limitation under our construction. See Pet. Remand Opening Br. 3–5, 7. Thus, Petitioner does not meet its burden to show by a preponderance of the evidence that claims 9, 10, and 63 of the ’115 patent and claim 28 of the ’560 patent are unpatentable over the combination of Kiss and FIPA97. In addition, for the reasons discussed below, Petitioner’s cited evidence does not show sufficiently that the cited prior art teaches or suggests “process characteristics” recited in the claims under our construction of the term—i.e., “characteristics of a process for an agent.” As noted above, Petitioner argued during trial that FIPA97’s “interaction-protocols” parameter is “analogous to both the Machine Type and Language examples [of Process Characteristics] from the specification.” See Pet. Reply 78. On remand, Petitioner does not present this “similarity” argument. See generally Pet. Remand Opening Br., Pet. Remand Resp. Br. Although Petitioner’s argument on the alleged similarity of FIPA97’s “interaction-protocols” to the Specification’s examples of Process Characteristics may be relevant to the question of whether FIPA97 teaches or suggests the recited “process characteristics” under our construction, we are not persuaded that Petitioner has cited sufficient evidence to show FIPA97’s “interaction-protocols” parameter is analogous to the Specification’s Machine Type and Language examples.” slip op. at 32

  • Skill levelSkill level board ownDecided for petitioner

    “B. Level of Ordinary Skill in the Art In the Final Written Decisions, we determined that a person of ordinary skill in the art at the time of the claimed invention would have had “a Bachelor’s degree in Computer Science or equivalent field and at least two years of work experience in design and development of distributed systems, software specification languages, or a related area.” 810 Final Dec. 12; 811 Final Dec. 12; 814 Final Dec. 11; 835 Final Dec. 12; 836 Final Dec. 12. We see no reason to depart from this determination, which the parties did not challenge on appeal.” slip op. at 18

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

    “argued in the Petition that a “trigger” recited in claim 1 (see Ex. 1001, 29:10–24) is “a general mechanism for requesting some action be taken when one or more conditions is met.” Pet. 11 (citing Ex. 1001, 21:21–22:31; Ex. 1003 ¶¶ 80–81). Patent Owner did not dispute Petitioner’s proposed meaning of “trigger” recited in claim 1. See PO Resp. 24–38. In the Final Written Decision in the 810 IPR, we adopted this undisputed interpretation of “trigger” because the construction is consistent with the disclosure in the Specification. 810 Final Dec. 120 (citing Ex. 1001, 21:22–24 (“triggers [provide] a general mechanism for requesting some action be taken when a set of conditions is met”)). This claim construction was not appealed and, as noted above, the Federal Circuit did not address the construction of this claim term. See Microsoft, 2022 WL 989403. Considering the full record, we see no reason to depart from the claim construction of the term “trigger” the same claim construction for purposes of this Remand Decision. Petitioner and Dr. Lieberman proposed the same interpretation for the claim term “trigger” recited in claim 8. See Ex. 1003 ¶ 371. We agree with this construction because claim 8 incorporates all of the limitations of claim 1 from which it depends and the same terms appearing in different portions of a claim should be given the same meaning absent compelling evidence to the contrary. See Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075, 1087 (Fed. Cir. 2009) (“We apply a presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.” (internal quotation marks omitted) (citations omitted)); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (“[W]e presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning.”). We also agree with Dr. Lieberman’s proposed interpretation of the claim term “trigger declaration” as “a statement in a program that specifies the characteristics of a trigger” (Ex. 1003 ¶ 371) because the construction is consistent with the disclosure in the Specification. See Ex. 1001, 17:5–9 (“Each registered agent may be optionally associated with one or more triggers, which preferably could be referenced through their associated Trigger Declaration fields 712 in the parent facilitator Agent Registry 702.”); see also Ex. 1003 ¶ 374 (citing Ex. 1001, 17:5–9, Fig. 7).” slip op. at 27

  Patent outcomesUS 6,851,115 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,851,115
• Microsoft Corporation v. Ipa Technologies Inc.Some claims unpatentable
  PTAB · Dec 22, 2022 · IPR2019-00811 · APJ Kevin C Trock · IPR · Remand

  On remand, claims 8 and 86–89 of the ’115 patent and claims 10 and 11 of the ’560 patent are unpatentable under § 103; claims 9, 10, and 63 of the ’115 patent and claim …

  RulingsRemand decision

  • RemandOther

    “We agree with Petitioner’s argument. We disagree with and reject Patent Owner’s argument in its remand papers directed to Petitioner’s reasons for the cited combination as being inconsistent with the Federal Circuit’s decision, which determined that Petitioner has shown sufficiently and FIPA97 to obtain the subject matter recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. See Microsoft, 2022 WL 989403, at *3–5. Pursuant to the Federal Circuit’s decision and mandate, we address below the remaining obviousness disputes concerning claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. In the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR, we did not reach the issue of whether Petitioner has shown sufficiently that the cited combination teaches or suggests all limitations of these claims. See 810 Final Dec. 144– 149; 814 Final Dec. 132–135; 835 Final Dec. 106–109. We do so now and address the parties’ disputes regarding the teachings of the cited prior art as they relate to the limitations recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent.” slip op. at 23

  • Skill levelSkill level board ownDecided for petitioner

    “B. Level of Ordinary Skill in the Art In the Final Written Decisions, we determined that a person of ordinary skill in the art at the time of the claimed invention would have had “a Bachelor’s degree in Computer Science or equivalent field and at least two years of work experience in design and development of distributed systems, software specification languages, or a related area.” 810 Final Dec. 12; 811 Final Dec. 12; 814 Final Dec. 11; 835 Final Dec. 12; 836 Final Dec. 12. We see no reason to depart from this determination, which the parties did not challenge on appeal.” slip op. at 18

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

    “argued in the Petition that a “trigger” recited in claim 1 (see Ex. 1001, 29:10–24) is “a general mechanism for requesting some action be taken when one or more conditions is met.” Pet. 11 (citing Ex. 1001, 21:21–22:31; Ex. 1003 ¶¶ 80–81). Patent Owner did not dispute Petitioner’s proposed meaning of “trigger” recited in claim 1. See PO Resp. 24–38. In the Final Written Decision in the 810 IPR, we adopted this undisputed interpretation of “trigger” because the construction is consistent with the disclosure in the Specification. 810 Final Dec. 120 (citing Ex. 1001, 21:22–24 (“triggers [provide] a general mechanism for requesting some action be taken when a set of conditions is met”)). This claim construction was not appealed and, as noted above, the Federal Circuit did not address the construction of this claim term. See Microsoft, 2022 WL 989403. Considering the full record, we see no reason to depart from the claim construction of the term “trigger” the same claim construction for purposes of this Remand Decision. Petitioner and Dr. Lieberman proposed the same interpretation for the claim term “trigger” recited in claim 8. See Ex. 1003 ¶ 371. We agree with this construction because claim 8 incorporates all of the limitations of claim 1 from which it depends and the same terms appearing in different portions of a claim should be given the same meaning absent compelling evidence to the contrary. See Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075, 1087 (Fed. Cir. 2009) (“We apply a presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.” (internal quotation marks omitted) (citations omitted)); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (“[W]e presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning.”). We also agree with Dr. Lieberman’s proposed interpretation of the claim term “trigger declaration” as “a statement in a program that specifies the characteristics of a trigger” (Ex. 1003 ¶ 371) because the construction is consistent with the disclosure in the Specification. See Ex. 1001, 17:5–9 (“Each registered agent may be optionally associated with one or more triggers, which preferably could be referenced through their associated Trigger Declaration fields 712 in the parent facilitator Agent Registry 702.”); see also Ex. 1003 ¶ 374 (citing Ex. 1001, 17:5–9, Fig. 7).” slip op. at 27

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

    “Patent Owner’s argument is unavailing because, as discussed above, Dr. Lieberman persuasively explained that in FIPA97’s FIPA-AVEB- Request-Notification contract-net “[t]he GA is responsible for the creation and management of a content index, and uses this index to respond to requests from the CA” (Ex. 1003 ¶ 373 (citing Ex. 1011, 11)) and that a person of ordinary skill in the art would have understood that, for the GA to monitor for changes over a given time period and inform the CA of any changes to the status of a specific AV program that conform to a precondition “preconditions2” within that period, “the agent registry must include declaration functionality” for preconditions relating to the status of AV programs (id. ¶ 374). We are persuaded that the cited disclosures of FIPA97 at least would have suggested to a person of ordinary skill in the art that the GA’s context index (the claimed “agent registry data structure”) includes a statement of a precondition relating to a specific AV program listed in the content index. In its remand paper, Patent Owner argues that “nothing in Part 6 FIPA97 explicitly teaches that a precondition2 is stored within a General Agent as asserted by Petitioner.” PO Remand Resp. Br. 7 (underlined emphasis added). Patent Owner’s argument is unavailing because Petitioner’s asserted theory of unpatentability is one of obviousness, not anticipation. Thus, Petitioner need not show “FIPA97 explicitly teaches that a precondition2 is stored within a [Guide] Agent,” as Patent Owner demands. See id. For the reasons discussed above, we are persuaded that Petitioner set forth sufficient evidence in the Petition to show that the cited disclosures of FIPA97 at least would have suggested to a person of ordinary structure”) includes a statement of a precondition (the claimed “trigger declaration”) relating to a specific AV program listed in the content index. Thus, we determine that the Petition establishes sufficiently that FIPA97 teaches or suggests “the agent registry data structure includes at least one trigger declaration for one active agent,” as recited in claim 8.” slip op. at 29

  Patent outcomesUS 6,851,115 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,851,115
• Microsoft Corporation v. Ipa Technologies Inc.Some claims unpatentable
  PTAB · Dec 22, 2022 · IPR2019-00810 · APJ Kevin C Trock · IPR · Remand

  On remand, claims 8 and 86–89 of the ’115 patent and claims 10 and 11 of the ’560 patent were held unpatentable under §103; claims 9, 10, and 63 of the ’115 patent and claim …

  RulingsRemand decision

  • RemandOther

    “We agree with Petitioner’s argument. We disagree with and reject Patent Owner’s argument in its remand papers directed to Petitioner’s reasons for the cited combination as being inconsistent with the Federal Circuit’s decision, which determined that Petitioner has shown sufficiently and FIPA97 to obtain the subject matter recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. See Microsoft, 2022 WL 989403, at *3–5. Pursuant to the Federal Circuit’s decision and mandate, we address below the remaining obviousness disputes concerning claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. In the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR, we did not reach the issue of whether Petitioner has shown sufficiently that the cited combination teaches or suggests all limitations of these claims. See 810 Final Dec. 144– 149; 814 Final Dec. 132–135; 835 Final Dec. 106–109. We do so now and address the parties’ disputes regarding the teachings of the cited prior art as they relate to the limitations recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent.” slip op. at 23

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

    “argued in the Petition that a “trigger” recited in claim 1 (see Ex. 1001, 29:10–24) is “a general mechanism for requesting some action be taken when one or more conditions is met.” Pet. 11 (citing Ex. 1001, 21:21–22:31; Ex. 1003 ¶¶ 80–81). Patent Owner did not dispute Petitioner’s proposed meaning of “trigger” recited in claim 1. See PO Resp. 24–38. In the Final Written Decision in the 810 IPR, we adopted this undisputed interpretation of “trigger” because the construction is consistent with the disclosure in the Specification. 810 Final Dec. 120 (citing Ex. 1001, 21:22–24 (“triggers [provide] a general mechanism for requesting some action be taken when a set of conditions is met”)). This claim construction was not appealed and, as noted above, the Federal Circuit did not address the construction of this claim term. See Microsoft, 2022 WL 989403. Considering the full record, we see no reason to depart from the claim construction of the term “trigger” the same claim construction for purposes of this Remand Decision. Petitioner and Dr. Lieberman proposed the same interpretation for the claim term “trigger” recited in claim 8. See Ex. 1003 ¶ 371. We agree with this construction because claim 8 incorporates all of the limitations of claim 1 from which it depends and the same terms appearing in different portions of a claim should be given the same meaning absent compelling evidence to the contrary. See Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075, 1087 (Fed. Cir. 2009) (“We apply a presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.” (internal quotation marks omitted) (citations omitted)); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (“[W]e presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning.”). We also agree with Dr. Lieberman’s proposed interpretation of the claim term “trigger declaration” as “a statement in a program that specifies the characteristics of a trigger” (Ex. 1003 ¶ 371) because the construction is consistent with the disclosure in the Specification. See Ex. 1001, 17:5–9 (“Each registered agent may be optionally associated with one or more triggers, which preferably could be referenced through their associated Trigger Declaration fields 712 in the parent facilitator Agent Registry 702.”); see also Ex. 1003 ¶ 374 (citing Ex. 1001, 17:5–9, Fig. 7).” slip op. at 27

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

    “Patent Owner’s argument is unavailing because, as discussed above, Dr. Lieberman persuasively explained that in FIPA97’s FIPA-AVEB- Request-Notification contract-net “[t]he GA is responsible for the creation and management of a content index, and uses this index to respond to requests from the CA” (Ex. 1003 ¶ 373 (citing Ex. 1011, 11)) and that a person of ordinary skill in the art would have understood that, for the GA to monitor for changes over a given time period and inform the CA of any changes to the status of a specific AV program that conform to a precondition “preconditions2” within that period, “the agent registry must include declaration functionality” for preconditions relating to the status of AV programs (id. ¶ 374). We are persuaded that the cited disclosures of FIPA97 at least would have suggested to a person of ordinary skill in the art that the GA’s context index (the claimed “agent registry data structure”) includes a statement of a precondition relating to a specific AV program listed in the content index. In its remand paper, Patent Owner argues that “nothing in Part 6 FIPA97 explicitly teaches that a precondition2 is stored within a General Agent as asserted by Petitioner.” PO Remand Resp. Br. 7 (underlined emphasis added). Patent Owner’s argument is unavailing because Petitioner’s asserted theory of unpatentability is one of obviousness, not anticipation. Thus, Petitioner need not show “FIPA97 explicitly teaches that a precondition2 is stored within a [Guide] Agent,” as Patent Owner demands. See id. For the reasons discussed above, we are persuaded that Petitioner set forth sufficient evidence in the Petition to show that the cited disclosures of FIPA97 at least would have suggested to a person of ordinary structure”) includes a statement of a precondition (the claimed “trigger declaration”) relating to a specific AV program listed in the content index. Thus, we determine that the Petition establishes sufficiently that FIPA97 teaches or suggests “the agent registry data structure includes at least one trigger declaration for one active agent,” as recited in claim 8.” slip op. at 29

  • BurdenNot shown unpatentable

    “We note, as an initial matter, that it is Petitioner’s burden to explain how the challenged claims should be construed and how, as so construed, they are unpatentable. See 37 C.F.R. § 42.104(b)(3)–(4). Despite having been afforded an opportunity on remand to address our claim construction set forth in the Final Written Decisions, Petitioner does not address in its how the cited prior art teaches or suggests the limitation under our construction. See Pet. Remand Opening Br. 3–5, 7. Thus, Petitioner does not meet its burden to show by a preponderance of the evidence that claims 9, 10, and 63 of the ’115 patent and claim 28 of the ’560 patent are unpatentable over the combination of Kiss and FIPA97. In addition, for the reasons discussed below, Petitioner’s cited evidence does not show sufficiently that the cited prior art teaches or suggests “process characteristics” recited in the claims under our construction of the term—i.e., “characteristics of a process for an agent.” As noted above, Petitioner argued during trial that FIPA97’s “interaction-protocols” parameter is “analogous to both the Machine Type and Language examples [of Process Characteristics] from the specification.” See Pet. Reply 78. On remand, Petitioner does not present this “similarity” argument. See generally Pet. Remand Opening Br., Pet. Remand Resp. Br. Although Petitioner’s argument on the alleged similarity of FIPA97’s “interaction-protocols” to the Specification’s examples of Process Characteristics may be relevant to the question of whether FIPA97 teaches or suggests the recited “process characteristics” under our construction, we are not persuaded that Petitioner has cited sufficient evidence to show FIPA97’s “interaction-protocols” parameter is analogous to the Specification’s Machine Type and Language examples. First, Petitioner did not explain during trial, nor does it explain on remand, why FIPA97’s “interaction-protocols” parameter is analogous to the Machine Type and Language examples in the Specification. See Pet. Reply 78; see generally Pet. Remand Opening Br., Pet. Remand Resp. Br. In addition, Petitioner did not cite, nor does it cite on remand, any declaration generally Pet. Remand Opening Br., Pet. Remand Resp. Br. Petitioner’s argument, therefore, is conclusory and unpersuasive as unsupported attorney argument. See Icon Health & Fitness, Inc. v. Strava Inc., 849 F.3d 1034, 1046 (Fed. Cir. 2017) (“Attorney argument is not evidence or explanation in support of a conclusion.”); Invitrogen Corp. v. Clontech Lab., Inc., 429 F.3d 1052, 1068 (Fed. Cir. 2005) (“Unsubstantiated attorney argument regarding the meaning of technical evidence is no substitute for competent, substantiated expert testimony.”).” slip op. at 32

  Patent outcomesUS 6,851,115 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,851,115
• Veeam Software Corp. v. Hybir Inc.Some claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01038 · APJ John R Kenny · IPR · Final written decision

  Claims 30, 32, 33, 35, and 37–40 are unpatentable as obvious; claims 31, 34, and 36 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “E. Level of Skill in the Art To determine the level of an ordinarily skilled artisan, various factors” slip op. at 10

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

    “claim terms for construction at that stage of the proceeding, and we did not construe any claim terms expressly as none of the terms were in dispute. Inst. Dec. 22. In the briefing following institution, Patent Owner proposed a construction for the term “inventory,” see, e.g., PO Resp. 21–28, and it became clear that the parties dispute the meaning of the term. Accordingly, we address the parties’ proposed constructions for “inventory” and the arguments they present for those constructions.” slip op. at 13

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

    “As set forth above, we resolved those disputed issues in favor of Petitioner. For the portions of the preamble and limitations of claim 35 that are not recited in claim 30, we have reviewed Petitioner’s arguments and evidence for claim 35 and are persuaded that Field teaches or suggests the preamble and claim limitations. Pet. 25–28 (and the exhibits cited therein). Thus, we find that Field teaches or suggests all limitations of claim 35. Accordingly, we determine Petitioner has proven that claim 35 would have been obvious over Field.” slip op. at 55

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

    “metadata into its signature generating algorithm to create a more robust signature. Ex. 1005 ¶ 46. An ordinarily skilled artisan would have been motivated to use such an augmented signature generating algorithm in Field’s environment. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Thus, an ordinarily skilled artisan would have modified Field’s cryptographic signature generating algorithm so it would compute a file’s signature using a file’s metadata. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Accordingly, Field and Anderson disclose that “the cryptographic signature is also computed with the metadata.” Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40.” slip op. at 76

  Patent outcomesUS 8,051,043 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,051,043
• Veeam Software Corp. v. Hybir Inc.Some claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01037 · APJ John R Kenny · IPR · Final written decision

  Claims 1, 2, 5, 6, 8–15, 18, 19, 21–29, and 34 are unpatentable as obvious over Field and Anderson; claims 3, 4, 7, 16, 17, and 20 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “regarding the level of ordinary skill in the art, and Petitioner does not address our preliminary finding in its Reply. Accordingly, we see no reason to disturb that finding, and, therefore, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, Software Engineering, or an equivalent field, as well as at least three to five years of academic or industry experience in the fields of data storage, data backup, data restoration, data replication and deduplication, and/or data synchronization.” slip op. at 16

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

    “Accordingly, we find that the record does not support construing” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “away and (2) whether one of ordinary skill in the art would have been motivated to not transmit an inventory with multiple signatures due to a concern with backup efficiency. With respect to whether Field teaches away, Patent Owner’s argument is premised, in part, on a requirement derived from its proposed construction of “inventory”—that the claimed “inventory” must include additional data, such as filenames and directories. As discussed above, we do not agree with Patent Owner’s construction. Similar to Patent Owner’s earlier argument of a teaching away, Patent Owner fails to identify anything in Field that criticizes, discredits, or otherwise discourages one of ordinary skill in the art from creating an inventory, as properly construed. Accordingly, we do not find that Field teaches away from using or creating an inventory.” slip op. at 81

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

    “144, 202; Pet. Reply 20–21; Ex. 1024 ¶¶ 59–62. Accordingly, we determine that Petitioner has not proven that claims 3 and 16 would have been obvious over Field and Anderson. Ex. 2008 ¶¶ 129–130.” slip op. at 101

  Patent outcomesUS 8,051,043 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,051,043
• Apple Inc. v. Corephotonics, Ltd.Some claims unpatentable
  PTAB · Nov 2, 2021 · IPR2020-00878 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 2, 4–6, 9–15, 17, 18, 20–23, and 25–29 are unpatentable; claims 3, 8, 16, 19, 24, and 30 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenMixed

    “35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 1, 2, 4–6, 9–15, 17, 18, 20–23, and 25–29 of the ’897 patent are unpatentable and that Petitioner has not shown, by a preponderance of the evidence, that claims 3, 8, 16, 19, 24, and 30 of the ’897 patent are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would include someone who had, at the priority date of the ’897 Patent, (i) a Bachelor’s degree in Physics, Optical Sciences, or equivalent training, as well as (ii) approximately three years of experience in designing multi-lens optical systems. Such a person would have had experience in analyzing, tolerancing, adjusting, and optimizing multi-lens systems for manufacturing, and would have been familiar with the specifications of lens systems and their fabrication. In addition, a POSITA [person of ordinary skill in the art] would have known how to use lens design software such as Code V, Oslo, or Zemax, and would have taken a lens design course. Pet. 6–7 (citing Ex. 1003 ¶¶ 19–20). Patent Owner applied the same level of skill for the purposes of this IPR. PO Resp. 14–15 (citing Ex. 2001 ¶ 19). We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Therefore, for purposes of this Final Written Decision, we adopt Petitioner’s assessment of the level of skill in the art because it is consistent with the ’897 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 11

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

    “Patent Owner argues that no “dispute between the parties in this IPR depends on the construction of EFL, TTL, or of any other claim term [and] submits that the Board should refrain from construing any terms in the patent for the purposes of this proceeding.” PO Resp. 17. Petitioner does not respond to this argument. See generally Pet. Reply. We agree with Patent Owner. If we were to adopt either construction, it would not change the determination made in this Decision. Thus, we decline to construe any claim terms for purposes of this Final Written Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “unpatentable under 35 U.S.C. § 102 as anticipated by Ogino. Pet. 10–40. Patent Owner does not present arguments related to this ground. See generally PO Resp. For the reasons that follow, we are persuaded that the evidence supports Petitioner’s arguments and thus, Petitioner establishes by a preponderance of the evidence that claims 1, 4, 9–15, 17, 20, and 25–29 are unpatentable under 35 U.S.C. § 102 as anticipated by Ogino.” slip op. at 17

  Patent outcomesUS 10,330,897 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,330,897
• Apple Inc. v. Corephotonics, Ltd.Some claims unpatentable
  PTAB · Nov 2, 2021 · IPR2020-00877 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1, 2, 5–7, 11–13, 15, 16, 18, 20, and 21 are unpatentable as obvious; claims 3 and 4 were not shown unpatentable because the May combination was insufficiently supported.

  RulingsFinal written decision

  • BurdenMixed

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). The burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, 800 F.3d at 1378 (citing Tech. Licensing Corp. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in an inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” Magnum, 829 F.3d at 1380. Thus, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art render the challenged claims unpatentable. slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends [A] person of ordinary skill in the art (“POSITA”) would include someone who had, as of the priority date of the ’840 Patent (i) a Bachelor’s degree in Physics, Optical Sciences, or equivalent training, as well as (ii) approximately three years of experience in designing miniature lens systems for mobile device applications. . . . Such a person would have had experience in analyzing, tolerancing, adjusting, and optimizing multi-lens systems, and would have been familiar with the specifications of lens systems, especially lenses configured for use in mobile devices, such as cell phones. . . . In addition, a POSITA would have known how to use lens design software such as Code V, Oslo, or Zemax, and would have taken a lens design course. . . . Such a POSITA would have been familiar with photographic lenses and with mechanical and electronic devices. Lack of work experience can be remedied by additional education, and vice versa. Pet. 6–7 (citing Ex. 1003, 10). Patent Owner “applies the level of ordinary skill in the art set forth in the petition and used by the Board in its Institution Decision.” PO Resp. 3 (Inst. Dec. 8). We determine that the level of ordinary skill in the art proposed by Petitioner is consistent with the ’840 patent and the asserted prior art. We apply Petitioner’s definition in making the findings and conclusions rendered in this Decision.” slip op. at 8

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

    “Independent claim 1 recites “the Telephoto lens unit and the Wide lens unit having, respectively, total track length (TTL)/effective focal length (EFL) ratios smaller and larger than 1 and defining separate Telephoto and Wide optical paths.” Ex. 1001, 19:48–52. Petitioner asserts that “a POSITA would find, in light of the specification, the term ‘total track length (TTL)’ to include ‘the length of the optical axis spacing between the object-side surface of the first lens element and the image plane.’” Pet. 8 (citing Ex. 1003, 20) (emphasis omitted). Petitioner further asserts that, although the Specification of the ’840 patent does not expressly define EFL, “its meaning is well known in the art, as exemplified in Li ([Ex.] 1007), which states that ‘[t]he focal length of a lens assembly [is] also referred to as the effective focal length[.]’” Pet. 8–9 (quoting Ex. 1007, 2:59–61) (alterations in the original). Patent Owner “does not believe that any terms require construction to resolve the disputes addressed in this response.” PO Resp. 3. We do not discern a dispute as to the claim terms TTL and EFL in this proceeding and as such, we need not expressly construe these terms. Nidec Motor Corp., 868 F.3d at 1017. .” slip op. at 10

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

    “(2) Discussion of Rationale for Combining We have reviewed the record developed at trial including the cited portions of Parulski, Huang, and Tang. We determine that Petitioner has supported its seven reasons for combining Parulski, Huang, and Tang with sufficient rational underpinning evidenced by the exhibits cited above. Patent Owner does not dispute Petitioner’s rationale for combining. See generally PO Resp. We determine that Petitioner has shown that an ordinarily skilled artisan would have been motivated to combine Parulski, Huang, and Tang, and that such motivation is supported by sufficient rational underpinning. Based on the complete record developed at trial, we determine that cited portions of Parulski, Huang, and Tang sufficiently support Petitioner’s contentions with respect to the telephoto lens unit and the wide lens unit as claimed.” slip op. at 22

  Patent outcomesUS 10,288,840 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,288,840

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.