• 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
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Tot Power Control, S.L.Institution denied
  PTAB · May 2, 2023 · IPR2022-01536 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution because neither asserted obviousness ground showed a reasonable likelihood of establishing claims 1–12 unpatentable.

  RulingsInstitution decision

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

    “institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the parties’ briefing and the evidence of record, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of claims 1–12 of the ’865 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the alleged invention of the ’865 patent “would have had at least a Bachelor’s degree in computer science, electrical engineering, computer engineering, or related field, with 2-3 years of experience in telecommunication systems and knowledge of telecommunication standards, with superior education compensating for less work experience.” Pet. 18 (citing Ex. 1003 ¶ 38). Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 20–21. On the present record, we determine that Petitioner’s proposed level of ordinary skill in the art is consistent with the ’865 patent and asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Therefore, we adopt Petitioner’s proposal for purposes of deciding whether to institute inter partes review, except that we do not include the qualifier “at least,” which would expand the required amount of education and experience indefinitely.” slip op. at 9

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

    “Neither party proposes a construction for any claim term. Petitioner contends that no claim terms require express construction for purposes of applying the prior art. Pet. 17–18. Patent Owner submits that, at this stage of the proceeding, we should adopt the ordinary and customary meaning of the claim terms. Prelim. Resp. 21. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

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

    “received (SIRrec) based on a data signal (107, 108) received from a base station (102, 103) or mobile station (104).” Ex. 1001, 8:48–50. For this limitation, which relates to closed (inner) loop power control, Petitioner relies on a combination of Laakso and TS214. Pet. 35. First, Petitioner contends that Laakso discloses closed loop power control in WCDMA. Id. (citing Ex. 1005, 2:14–23, 8:28–9:8, 9:20–30; Ex. 1003 ¶ 105). Petitioner also contends that a person of ordinary skill in the art would have been aware of closed loop power control standards, such as TS214, which require estimating SIR based on a data signal received from a base station or mobile station. Id. (citing Ex. 1006, 12–15 (§ 5.1.2.2), 49 (Annex B.2); Ex. 1003 ¶ 105). Petitioner further contends that a person of ordinary skill in the art would have been motivated to combine Laakso’s outer loop power control success. Id. (citing Ex. 1003 ¶ 105); id. at 29–33 (citing Ex. 1003 ¶¶ 92–101) (addressing motivation to combine Laakso and TS214).” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,532,865
• 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 · IPR2019-00810 · 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
• Commscope, Inc. v. TQ Delta, LLCInstitution denied
  PTAB · Nov 2, 2022 · IPR2022-00697 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 9–11, 17–19, and 25 were unpatentable under either obviousness ground.

  RulingsInstitution decision

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

    “institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the parties’ briefing and the evidence of record, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’411 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 6 (citing Ex. 1003 ¶ 224). Based on the current record, including the ’411 patent, the prior art references, and the testimony of Dr. Jacobsen, we find that a person of ordinary skill in the art would have had some familiarity with DSL. The record, however, does not support defining a person of ordinary skill in the art as one who was familiar with all of the DSL standards and contributions to the standards bodies. Accordingly, for purposes of this Decision, we apply the level of ordinary skill as articulated by Petitioner, with two exceptions. See Pet. 12. First, we omit the qualifier “at least,” which could expand the required amount of experience indefinitely. Second, the “experience” of a person of ordinary skill in the art would have included some familiarity with DSL technology. We note that our findings and conclusions in this Decision would not change if a person of ordinary skill in the art had “no specialized knowledge of DSL,” as Patent Owner proposes, or was familiar with DSL standards and contributions to standards bodies.” slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “For all of these arguments, Petitioner cites only the testimony of its declarant, Dr. Jacobsen. Id. at 27–28, 31–32. Dr. Jacobsen, however, does not support her statements with any evidence, such as citation to a reference that explains delay jitter, and therefore we give her testimony little weight on this point. 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.”). On the record before us, particularly in view of BI-089’s teaching or suggestion of replacing interleaving with ARQ, Petitioner has not made a sufficient showing that a person of ordinary skill in interleaving in a suite of tools and would have designed a system in which the transceiver chooses whether to use retransmission or interleaving in each direction.” slip op. at 19

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

    “Second, we agree with Patent Owner that Petitioner has not shown with sufficient evidentiary support that a person of ordinary skill in the art would have combined the teachings of G.993.2 and BI-089 in the manner asserted. See Prelim. Resp. 42–45. Although BI-089 teaches or suggests replacing interleaving with ARQ in ADSL, Petitioner argues that a person of ordinary skill in the art would have added ARQ to G.993.2 as an additional tool or technique, not as a replacement for interleaving. See Pet. 27 (citing Ex. 1003 ¶ 297); id. at 30 (citing Ex. 1003 ¶ 311). Petitioner further argues that a person of ordinary skill in the art would have wanted the VTU-O transceiver in G.993.2 to be able to choose whether to use ARQ or interleaving in one or both transmission directions. Id. at 27 (citing Ex. 1003 ¶ 297); id. at 31–32 (citing Ex. 1003 ¶ 318). Petitioner contends that such “flexibility” would have been desirable because it was known in the art that ARQ introduces delay jitter, which some services can tolerate but others cannot. Id. at 27–28 (citing Ex. 1003 ¶ 297); id. at 32 (citing Ex. 1003 ¶ 318). For all of these arguments, Petitioner cites only the testimony of its declarant, Dr. Jacobsen. Id. at 27–28, 31–32. Dr. Jacobsen, however, does not support her statements with any evidence, such as citation to a reference that explains delay jitter, and therefore we give her testimony little weight on this point. 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.”). On the record before us, particularly in view of BI-089’s teaching or suggestion of replacing interleaving with ARQ, Petitioner has not made a sufficient showing that a person of ordinary skill in interleaving in a suite of tools and would have designed a system in which the transceiver chooses whether to use retransmission or interleaving in each direction. Finally, even if Petitioner could overcome the deficiencies already identified to show that a person of ordinary skill in the art would have had reason to combine the teachings of G.993.2 and BI-089 to include both retransmission and interleaving techniques, Petitioner has not shown sufficiently that a person of ordinary skill in the art would have modified the O-PMS message as proposed to indicate how to allocate memory between a retransmission function and an interleaving/deinterleaving function. Relying again only on Dr. Jacobsen’s testimony, which is unsupported by citation to any evidence of record, Petitioner argues that a person of ordinary skill in the art would have been motivated to add a field to the O-PMS message in G.993.2 to specify whether ARQ should be used in both directions, interleaving should be used in both directions, or ARQ should be used in one direction (upstream or downstream) and interleaving should be used in the other direction. Pet. 31–32 (citing Ex. 1003 ¶ 318). But the Petition and the cited paragraph of Dr. Jacobsen’s testimony do not provide sufficient explanation or evidentiary support for why a person of ordinary skill would have considered modifying the format of a standardized message to include an additional field that the asserted references do not disclose. See id.; Ex. 1003 ¶ 318. Nor do the Petition and cited paragraphs of Dr. Jacobsen’s testimony explain sufficiently how the modified O-PMS message would instruct the VTU-R to allocate a memory between a retransmission function and an interleaving or deinterleaving function. See Pet. 35–37; Ex. 1003 ¶¶ 349, 360. with Patent Owner that the Petition fails to show that a person of ordinary skill in the art would have combined the teachings of G.993.2 and BI-089 in the manner asserted to achieve the invention recited in claim 1. See Prelim. Resp. 2, 42–43. Accordingly, based on the present record, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing that independent claim 1 is unpatentable as obvious over the combined teachings of G.993.2 and BI-089.” slip op. at 19

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,468,411
• Qualcomm Incorporated v. Fedex Corporate Services, Inc.Institution denied
  PTAB · Oct 11, 2022 · IPR2022-00587 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–32 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314; see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the parties’ contentions and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of any challenged claim of the ’042 patent. Accordingly, we do not grant Petitioner’s request and do not institute an inter partes review.” slip op. at 2

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “Patent Owner argues that Petitioner should have named Roambee Corp. (“Roambee”) as a real party-in-interest. See, e.g., Prelim. Resp. 1. Patent Owner argues we should decline to institute review because Petitioner failed to comply with the requirement to name real parties-in-interest in good faith, which prevents Petitioner from maintaining the Petition’s original filing date. Id. at 1–2. We need not address Patent Owner’s arguments relating to naming the real parties-in-interest because we do not institute review for other reasons discussed herein.” slip op. at 3

  • Skill levelSkill level petitioner adoptedOther

    “On the current record, we find Petitioner’s contentions that the skilled artisan would have had “at least a bachelor’s degree” and “at least two years” of experience to be too vague as Petitioner’s contentions encompass skill levels beyond the proposed level without a defined limit. We, therefore, adopt Petitioner’s proposal except we do not adopt the “at least” terminology above. We determine that with our changes Petitioner’s proposal is consistent with the level of skill reflected in the ’042 patent Specification and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “Neither party provides an express construction for any term of the challenged claims. Pet. 18; see generally Prelim. Resp. For the reasons provided below, we do not discern a need to construe explicitly any claim See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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 8

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,974,042
• Sensor Electronic Technology, Inc. v. Lite-On Technology Corporation And Genesis Photonics, Inc.Institution denied
  PTAB · Jul 15, 2022 · IPR2022-00397 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3–8, 10, or 11 were unpatentable on any asserted obviousness ground.

  RulingsInstitution decision

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

    “institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the parties’ briefing and the evidence of record, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’013 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the invention of the ’013 patent would have had “a Bachelor’s Degree in electrical engineering, materials science, physics, or a similar discipline,” and “one to two years of experience in the field of LED packaging design with knowledge of device design, the semiconductor and contact metal materials involved with the fabrication of an LED device, as well as LED packaging design.” Pet. 5 (citing Ex. 1010 ¶¶ 30–31). Patent Owner asserts that a person of ordinary skill in the art at the relevant time would have had (i) “at least an undergraduate degree in electrical engineering (or similar discipline with an electrical and/or semiconductor emphasis) and two or more years of experience in LED device design, fabrication and packaging,” (ii) “a master’s degree with at least a year of experience in those fields,” or (iii) “an equivalent combination of education and experience.” Prelim. Resp. 2. 7 With respect to the fourth Graham factor, the parties do not present arguments or evidence regarding objective indicia of non-obviousness. See Pet. 88; see generally Prelim. Resp. We see little difference between the parties’ contentions regarding the level of ordinary skill in the art. For purposes of this Decision, we apply the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the level of skill in the art at the time of the invention as reflected in the ’013 patent and the prior art of record.” slip op. at 8

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

    “1. “orthographic projection” Petitioner argues that “orthographic projection” is a term of art that should be construed according to its plain meaning, which Petitioner contends is “a two-dimensional graphic representation of an object in which the projecting lines are at right angles to the plane of the projection.” Pet. 6 (quoting Ex. 1012, 1 (dictionary.com definition of “orthographic projection”)) (citing Ex. 1010 ¶ 33). Petitioner contends that this construction tracks the term’s usage in the ’013 patent. Id. at 7 (citing Ex. 1001, 4:5–12). Specifically, Petitioner contends that a person of ordinary skill in the art would understand Figure 1B of the ’013 patent “to be a two-dimensional representation of the LED chip as it appears against the plane of the conductive layer.” Id. at 7–8 (citing Ex. 1010 ¶ 36). Patent Owner agrees with Petitioner’s proposed construction of the term “orthographic projection” for purposes of the proceeding. Prelim. Resp. 19. Based on the present record, we agree with Petitioner that its proposed construction is consistent with the term’s usage in the ’013 patent and we adopt it for purposes of this Decision. In particular, we construe “orthographic projection” as “a two-dimensional graphic representation of an object in which the projecting lines are at right angles to the plane of the projection.”” slip op. at 10

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

    “Based on the evidence in the present record, we agree with Patent Owner’s proposed construction and adopt it for purposes of this Decision. In particular, we agree with Patent Owner that “the bonding pad and a corner of the rectangle are correspondingly disposed” means that “the bonding pad is disposed at a location corresponding to a corner of the rectangle,” which is consistent with the Specification of the ’013 patent and further supported by Dr. Lebby’s testimony. We also agree with Patent Owner that the orthographic projection must be “on” the patterned conductive layer, which the claim language expressly requires and which is consistent with Figures 1A and 1B and their descriptions. See Ex. 1001, 4:5–7 (“[A]n orthographic projection of the LED chip 130a of this embodiment on the patterned conductive layer 120a is a rectangle.” (emphasis added)). Therefore, we construe “an orthographic projection of the LED chip on the patterned conductive layer is a rectangle, the bonding pad and a corner of the rectangle are correspondingly disposed” to mean “an orthographic projection of the LED chip on the patterned conductive layer is in a shape of a rectangle and the bonding pad is disposed at a location corresponding to a corner of the rectangle.”” slip op. at 14

  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 8,587,013
• Sensor Electronic Technology, Inc. v. Lite-On Technology CorporationInstitution denied
  PTAB · Jun 27, 2022 · IPR2022-00396 · APJ Joni Y Chang · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–5, 7, 9, 18, and 20 obvious over the asserted references.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any of the challenged claims. We hereby decline to institute an inter partes review in this proceeding.” slip op. at 2

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

    “Ex. 1001, 3:33−34. The Specification discloses that “[r]eferring to FIG. 1, in a preferred embodiment, one end of each first groove 14 extends to the edge of the semiconductor layer 2.” Id. at 4:38−40. Other embodiments of the ’549 patent also show a device having at least one groove that extends to a sidewall of semiconductor layer 2. Ex. 1001, Figs. 3−9. The Specification discloses that, by extending the first grooves to the edges of the second doped layer and the light emitting layer, “the current can spread evenly over the first doped layer through the first contact to improve the problem of current crowding and achieve the uniform distribution of current” in the LED. Id. at 3:4−8. Patent Owner contends that a person of ordinary skill in the art would have understood that the claim phrase “extends to the edge of the first doped layer” means “extends to a sidewall of the first doped layer.” Prelim. Resp. 20 (citing Ex. 2001 ¶ 98). In view of the claim language and the Specification, we agree with Patent Owner.” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner asserts that a person of ordinary skill in the art of the ’549 patent would have had “at least an undergraduate degree in electrical engineering (or similar discipline with an electrical and/or semiconductor emphasis) and two or more years of experience in LED device design, fabrication and packaging,” or alternatively, “a master’s degree with at least a year of experience in those fields, or an equivalent combination of education and experience.” Prelim. Resp. 4 (citing Ex. 2001 ¶¶ 71−72). However, Patent Owner does not point out any meaningful difference between the parties’ assessments. We note that the open-ended language “at least” in Patent Owner’s assessment may cause certain ambiguity. For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’549 patent, prior art of record, and supported by the testimony of Jack Josefowicz, Ph.D.” slip op. at 9

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

    “sufficiently supported by Yasuda or other objective evidence. Petitioner’s analysis rests on impermissible hindsight. An obviousness analysis must provide a sufficient and specific reasoning to guard against the impermissible use of hindsight, even for a structurally simple claimed invention, as here. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[O]bviousness grounds cannot be sustained by mere conclusory statement; instead, there must be some articulated reasoning with some underpinning to support the legal conclusion of obviousness.”); see also id. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”). Notably, Petitioner fails to show that Yasuda discloses extending a” slip op. at 19

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,829,549
• Unified Patents, LLC v. III Holdings 12, LLCInstitution denied
  PTAB · May 26, 2022 · IPR2022-00136 · APJ Brent M Dougal · IPR · Institution

  The Board denied institution for claims 1–5, 14, and 15 because the petition did not show a reasonable likelihood that any challenged claim was anticipated or obvious.

  RulingsInstitution decision

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

    “Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we deny the Petition and decline to institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had at least a Bachelor’s degree in Computer Science, Computer Engineering, Network Engineering, or Electrical Engineering, and two to three years of relevant industry experience or the equivalent thereof.” Pet. 15–16 (citing Ex. 1002 ¶¶ 61–66). Patent Owner does not dispute Petitioner’s definition of one of ordinary skill in the art. Prelim. Resp. 7. We determine that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. We therefore adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 7

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

    “In the Petition, Petitioner proposes that no claim constructions are necessary. Pet. 16. However, Patent Owner argues that the terms “system job” and “compute job,” in both claims 1 and 14, require construction. Prelim. Resp. 6. At this stage we determine it is not necessary to construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 7

  • BurdenNot shown unpatentable

    “We agree that Petitioner’s assertion that “Shawver teaches assigning a job” does not sufficiently address the noted claim limitation. Petitioner provides no explanation for how Shawver’s “assigning a job” teaches or suggests the claims’ “scheduled according to a reservation.” Neither the Petition, nor Petitioner’s declarant, assert that one of ordinary skill in the art would have understood assigning a compute job to a workstation to teach or suggest as “a compute job that is scheduled according to a reservation.” See Pet. 22; Ex. 1002 ¶ 83 (repeating essentially the same sentence as the Petition without further explanation). Further, the section of Shawver (Ex. 1004, 7:31–34) relied on by the Petition does not discuss reservations, but only states that the server is capable of receiving tasks and then assigning those tasks to a workstation. The Petition does not explain why a task assigned to a workstation teaches or suggests a task scheduled according to a reservation.6 In view of the above, the Petition fails to identify how Shawver teaches or suggests all of the limitations of independent claims 1 and 14. Further, the Petition fails to identify how Shawver teaches or suggests all of the limitations of the claims that depend from claims 1 and 14.” slip op. at 10

  Claim constructioncites KSR · Graham
  Patents in suitUS 8,271,980
• Samsung Electronics Co., Ltd. v. Led Wafer Solutions, LLCInstitution denied
  PTAB · Mar 22, 2022 · IPR2021-01526 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, and 5–10 were unpatentable over any asserted obviousness ground.

  RulingsInstitution decision

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

    “institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the parties’ briefing and the evidence of record, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’822 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On the present record, we agree with Patent Owner that the parties’ “positions are substantially similar.” Id. However, for the purposes of this institution decision, we determine that Petitioner’s slightly broader proposed level of ordinary skill in the art is consistent with the ’822 patent and asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 5 With respect to the fourth Graham factor, the parties do not present arguments or evidence regarding objective indicia of non-obviousness. Therefore, the obviousness analysis at this stage of the proceeding is based on the first three Graham factors. 2001). Therefore, we adopt Petitioner’s proposal for purposes of deciding whether to institute inter partes review.” slip op. at 7

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

    “Petitioner contends that no claim terms require express construction for purposes of applying the prior art. Pet. 11–12. Patent Owner submits that, at this stage of the proceeding, the Board should adopt the ordinary and customary meaning of the claim terms as understood by one of ordinary skill in the art. Prelim. Resp. 21. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  • BurdenNot shown unpatentable

    “We agree with Patent Owner that Petitioner has not made an adequate showing with respect to this limitation, at least because Petitioner has not shown sufficiently that a person of ordinary skill in the art would have understood Wirth’s current spreading layer 5 to be part of the claimed “semiconductor LED.” As Patent Owner points out, Wirth discloses that current spreading layer 5 is disposed on, and functionally distinct from, semiconductor function region 2. See Prelim. Resp. 36 (citing Ex. 1007, 18:60–62). For instance, Wirth discloses that “the current spreading layer further is preferably distinguished by high transparency to a radiation to be generated in or received by the semiconductor function region 2.” Id. (emphasis omitted) (quoting Ex. 1007, 19:4–7). Furthermore, although Wirth discloses that current spreading layer 5 can comprise a semiconductor material, as Petitioner contends, Wirth explains that a TCO (Transparent Conducting Oxide) material is preferred. Ex. 1007, 25:37–41. More specifically, Wirth explains that a TCO material is preferred due to its high conductivity in the lateral direction, which facilitates uniform current inflow into the semiconductor region, and its high radiation-transparency over a broad range of wavelengths. Id. at 18:65–19:3, 19:10–19. On this record, we determine that Petitioner has not explained adequately why a person of ordinary skill in the art would have considered Wirth’s current spreading layer to be part of the claimed “semiconductor LED” in view of Wirth’s teachings, not addressed by Petitioner, that current spreading layer 5 is separate from semiconductor function region 2 and preferably made of a conducting material rather than a semiconductor material. See Pet. 19–20. As Patent Owner points out, and as shown in Wirth’s Figure 2, current spreading layer 5 completely covers the top surface (the claimed “first surface”) of semiconductor function region 2 (the “semiconductor LED”) and therefore prevents the semiconductor LED from contacting the bottom surface of envelope 4 (the “optically transparent layer”), even if isolation material 10b is removed. Prelim. Resp. 38–39. Thus, for at least this reason, we determine that Petitioner has not demonstrated sufficiently that Wirth teaches or suggests “a first surface of said semiconductor LED contacts a first portion of a bottom surface of said optically transparent layer,” as recited in claim 1.” slip op. at 13

  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 9,786,822

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.