- Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Ouraring, Inc.All claims unpatentablePTAB · Dec 2, 2025 · IPR2024-00928 · APJ Neil T Powell · IPR · Final written decision
Claims 1–5, 11–13, and 16–18 are unpatentable as obvious over Schröder and Yuen, LeBoeuf, or LeBoeuf and Wissmar; Schröder alone did not render its challenged claims unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Patent Owner agrees with Petitioner’s proposed definition of a person of ordinary skill in the art. PO Resp. 14. We adopt this uncontested definition of the level of ordinary skill in the art. This definition is supported by the record and consistent with the disclosure in the ’034 patent and the references cited in the Petition.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner has the better position, as we agree with Petitioner that the ’034 patent discloses an embodiment that uses transparent potting as a window, rather than to form the overall form factor and encapsulate components: [Figure] 16C is a perspective view of the WCD with potting material 1630. As described above, the PCB, battery, and components can be disposed within the space. Once disposed therein, a potting 1630 can be provided atop the components and within the cutaway portion 1616. The potting 1630 can be transparent to allow for transmission of light through the cutaway portions 1616. Ex. 1001, 20:51–57. This configuration is shown below in Figure 16C. “[Figure] 16C is a perspective view of the WCD with potting material.” Ex. 1001, 6:1–2. As Figure 16C shows, potting material 1616 forms a window in only a portion of the WCD’s exterior. can be used to encapsulate components and form the overall form factor in some embodiments. E.g., Ex. 1001, 17:4–8, 18:61–62. But Patent Owner does not persuade us that claim 12 is limited to those embodiments. PO Resp. 29; SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim.”). Accordingly, we do not construe claim 12’s “external transparent potting” as requiring material that “forms the ‘overall form factor of the WCD 120, in addition to providing a housing for one or more electronic components,’” as suggested by Patent Owner. PO Resp. 29. Nor do we construe the claim language as requiring material that “also fills the space and encapsulates the components,” as suggested by Patent Owner. Id.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We are not persuaded by Petitioner’s arguments and find that Patent Owner has the better position. Although Schröder describes some aspects that are similar to those of a printed circuit board, Petitioner has not sufficiently demonstrated that a person having ordinary skill in the art would understand Schröder’s inlay 12 or carrier foil to be a “printed circuit board,” as recited in independent claims 1, 11, and 16. As an initial matter, while Schröder refers to a “circuit board” in another context, it never refers to the carrier foil or inlay in its finger-ring embodiment as such. See Ex. 1007, 22:48–49; see also Ex. 1079 ¶ 21 (Dr. Anthony acknowledging that Schröder’s only reference to a “circuit board” is “unrelated to Schröder’s finger-ring teachings”). Instead, Schröder describes features of that inlay, explaining that “[t]he carrier foil itself consists of a flexible plastic material, e.g.[,] PET or Kapton” and “antenna coil 8 can for example be printed on the carrier foil by means of a conductive paste” and “a depression is manufactured in the carrier foil, e.g.[,] by milling, lasering, etching, before the chip module 10, the antenna coil 8 and optional further electronic devices are inserted into the depression.” Ex. 1007, 13:26–31, 13:35–37. Schröder further describes that “[a]t least one further foil can be applied to the carrier foil or the ring blank on at least one side” to produce a “multilayer foil composite” that can be “interconnected” by means of “glue” slip op. at 23
- Expert testimonyPetitioner expert discountedOther
“show that Schröder’s inlay 12 is a PCB. Relying on testimony from Dr. Anthony, Petitioner asserts that Schröder’s inlay 12 serves as a flexible carrier made of materials “commonly understood to be printed circuit board materials” such as PET and Kapton. Pet. 23 (citing Ex. 1002 ¶ 172; Ex. 1006, 12:28–29). Dr. Anthony did not provide a clear explanation of a person of ordinary skill in the art’s understanding of a PCB in his direct testimony. article describing a PCB as a “laminated sandwich structure of conductive and insulating layers” was an accurate description of a PCB: Q. So is the first sentence of this Wiki page, in your mind, an accurate description of a printed circuit board? A. So, the first sentence, “A printed circuit board (PCB)[] also called [a] printed wiring board, []is a laminated sandwich structure of conductive and insulating layers, each with a pattern of traces, planes, and other features (similar to wires on a flat surface) etched from one or more sheets of copper laminated onto or between sheet layers of nonconductive substrate.” And so your question again was? Q. Is that a fair definition of printed circuit board in your mind? A. It’s a fair description of the general process for circuit boards, layers of conductive traces.” slip op. at 21
Patent outcomesUS 9,582,034 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 9,582,034 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Eyesmatch Ltd.All claims unpatentablePTAB · Nov 21, 2025 · IPR2024-00810 · APJ Neil T Powell · IPR · Final written decision
Claims 1–18 are unpatentable: claims 1–6 and 10–12 over Rosenberg and Park, and claims 3, 4, 7–9, and 11–18 over Rosenberg, Park, and Geisner.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for patent owner
“Turning to the substantive issues, we find the District Court’s “mirror tracking mode” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent, which is incorporated in the ’110 patent. See Ex. 2008, 16 (citing Ex. 1021, 2:5–27, Figs. 5A, 5B), 40 (citing “same reasons set forth regarding the term ‘it appears to mimic a reflection of a mirror’” in support of construction of “mirror tracking mode”). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1021, 14:46–51, 15:41–47), 40.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“persuasively address limitation 1[f]’s “mirror tracking mode.” In particular, Petitioner does not address persuasively the requirement, as explained in Section II.B above, that mirror tracking mode involves processing camera-captured images in a way that “maintains roughly the same size regardless of the user movement.” At odds with this requirement, Petitioner founds its case on an assertion that “Haan teaches the claimed mirror tracking mode” because “if the viewer is within 35 cm of the camera, a tracking mode is entered, applying resizing transformation.” Pet. 44 (emphasis added) (citing Ex. 1005 ¶¶ 75–76, 80–82, 90–94, 97; Ex. 1003 ¶¶ 205–210). The resizing transformation Petitioner references actually involves magnifying the user’s image by an amount that changes based on the user’s position relative to the camera, quite the opposite of maintaining image size regardless of the user movement. Ex. 1005 ¶¶ 75–76, Fig. 8. Thus, Petitioner’s initial position is unpersuasive. Petitioner’s shift to Haan’s “reflective mirror mode and conventional mirror period in the dual mode” is also unavailing. Reply 8. Consistent with Patent Owner’s arguments, Petitioner does not provide persuasive evidence that these operating states of Haan’s device involve any processing of camera-captured images. Sur-reply 13–14. To the contrary, Haan suggests that anytime its device provides an unmagnified image, it comes from a reflection off a physical reflective surface. See, e.g., Ex.1005 ¶ 76 (“This can be done for instance by using the device as a simple mirror, i.e. not displaying an image on the display device, but using the device in the reflective mode.”) (emphasis added), ¶ 92 (“a simple reflective mode, to act as a mirror”), ¶ 29 (“for a first range of positions, no image is displayed, whereby the reflective layer acts as a mirror, and for a second range of positions, the recorded image is displayed.”) (emphasis added). We also find unpersuasive Petitioner’s Reply arguments based on Haan’s disclosure of smoothly transitioning from “using the device as a simple mirror” (i.e., using a physical reflecting surface) to displaying a magnified image. Reply 11 (citing Ex. 1005 ¶¶ 76, 80). To the extent this may establish a point around the transition at which Haan’s system displays an image with relatively little magnification, it does not establish that Haan teaches, suggests, or renders obvious holding the displayed size roughly constant, “regardless of the user movement.” Indeed, given Haan’s focus on helping the user see things more clearly with image magnification, Petitioner’s argument that it would have been obvious to hold the size of the image constant is not persuasive. See, e.g., Ex. 1005 ¶ 4. Thus, on the whole, Petitioner’s shifting, scattered arguments do not persuasively address limitation 1[f]. Accordingly, Petitioner has not shown by a preponderance of the evidence that claim 1 would have been obvious over Haan and Francois. And Petitioner’s arguments and evidence addressing claims 2–6, 10–12, 16, and 17 do not cure the foregoing deficiencies in the challenge of claim 1. Pet. 46–52. Accordingly, Petitioner has not shown by a preponderance of the evidence that any of claims 1–6, 10–12, 16, and 17 would have been obvious over Haan and Francois.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We do not agree. Petitioner demonstrates persuasively that a person of ordinary skill would have combined these references “to correct image distortions and provide a more realistic mirror image.” Pet. 52–55; Ex. 1003 ¶¶ 242–249. We are not persuaded by Patent Owner that by specifically disclosing “flipping” the image, Rosenberg is discouraging or teaching away from performing other transformations to achieve its objective of “replicat[ing] the performance of a standard household mirror.” See PO Resp. 35, 38–39 (Patent Owner asserting lack of motivation to combine the references). A reference may be said to “teach away” “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Galderma Lab'ys, L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013) (quoting DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.Cir.2009)). “A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.” Id. Further, when conducting an obviousness analysis, the Board must consider a prior art reference “not only for what it expressly teaches, but also for what it fairly suggests.” Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019) (quoting In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994)). We are not convinced that the references before us “teach away” from performing the other transformations. In sum, we find for the reasons given that Petitioner has demonstrated by a preponderance of evidence that to a person of ordinary skill, Rosenberg alone or with Park teaches or suggests limitation 1[f].” slip op. at 44
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“shows by a preponderance of the evidence that limitations 1[c] and 1[e] are taught or suggested by Rosenberg and Park, in combination. Pet. 58–64; PO Resp. 39–40; Reply 19–20; Sur-reply 19. Petitioner persuades us that limitations 1[c] and 1[e], would have been obvious over Rosenberg and Park, in combination. Pet. 58–64; Reply 19–20. Patent Owner’s counter arguments are unavailing for multiple reasons. Patent Owner’s arguments fail because they improperly attack Rosenberg’s teachings individually, rather than addressing Petitioner’s combination of the references. PO Resp. 39–40; Sur-reply 19. This is fatal to Patent Owner’s arguments. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover, Petitioner presents persuasive arguments and evidence that the references, in combination, teach limitations 1[c] and 1[e], including persuasive evidence that the references’ tilting, resizing, and zooming meet the claim limitations’ “adaptive transformation mapping . . . to generate modified images that appear to be captured from a different point of view” that “corresponds to an image taken from a different angle and a different distance.” Pet. 58–64 (citing Ex. 1001, 3:26–28; Ex. 1003 ¶¶ 65–67, 253–268; Ex. 1006 ¶¶ 26–28, 50, 52, 61, 75 ; Ex. 1011 ¶¶ 50–51, 59, Figs. 6A–6B, 7, 8, 14, 15; Ex. 1019, 16–20; Ex. 1021, 2:19–27, 17:19–24, 21:60, 23:65–24:9, 25:46–48, 30:4–11, Fig. 11); Reply 19–20 (citing Ex. 1003 ¶¶ 253–268; Ex. 1021, 17:17–23; Ex. 2012, 63:13–22, 111:13–21). Regarding tilting, after noting the ’110 patent’s disclosure (incorporated from the ’109 patent) of performing tilt transformations (Pet. 10–11), Petitioner advances persuasive evidence that Park discloses such a tilting transformation, thereby teaching the claimed “different angle” (id. at 61–63). Regarding resizing and zooming, citing extensive discussion in the ’110 patent (incorporated from the ’109 patent) of resizing and/or zooming to address the effects of varying distance between an object and a camera, Petitioner and Dr. Karam explain that the prior art’s zooming and resizing meet the claimed “different distance.” Pet. 63 (Ex. 1001, 3:26–28; Ex. 1021, 17:19–23, 21:57–60, 23:65–24:9, 25:46–48, 30:4–11, Fig. 11); Ex. 1003 ¶ 265 (citing Ex. 1001, 3:26–28; Ex. 1021, 17:19–23, 21:57–60, 23:65–24:9, 25:46–48, 30:4–11, Fig. 11). In its counterarguments, Patent Owner suggests that zooming and resizing do not account for “occlusion effects,” but Patent Owner does not persuasively tie this argument to the ’110 patent, failing to cite any portion of the ’110 patent that evinces its invention addresses such effects. PO Resp. 23–25, 39–40.” slip op. at 39
Patent outcomesUS 8,982,110 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,982,110 - Baker Hughes Incorporated / Baker Hughes Oilfield Operations, Inc. v. Packers Plus Energy Services, Inc.All claims unpatentablePTAB · Aug 29, 2017 · IPR2016-00656 · APJ Neil T Powell · IPR · Final written decision
Claims 1–13 are unpatentable: anticipated by Themig and Flores; claims 4, 8, 9, and 13 also are obvious over Flores and over Flores with Whiteley.
RulingsFinal written decision- Skill levelOther
“ordinary skill in the art would have recognized the possibility of making various design changes. See PO Resp. 13–16. Patent Owner rests this argument on the testimony on page 12 of Mr. McGowen’s declaration, where he opines about various design changes that could be made. See id. We afford this particular testimony little weight because Mr. McGowen does not cite any underpinning evidence for his assertions about the possible variations. See Ex. 2006, 12; 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We also note that this testimony discusses a number of possible variations, but does not discuss omitting the port-opening sleeve as a possible variation. See id. Thus, even if we credit Mr. McGowen’s testimony, it provides limited support for the proposition that the ’807 application demonstrates possession of a system without a portopening sleeve. Moreover, as Petitioner notes, Mr. McGowen indicated the variations he discussed would have been “obvious,” which is not enough to establish written description support. See ICU Medical, 558 F.3d at 1378– 1379.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Although the Specifications of the ’009 patent and the ’807 patent do not use the word “necessary,” we are persuaded that, just as a person of ordinary skill in the art would have understood that the spike was necessary in ICU Medical, a person of ordinary skill in the art would have understood that the port opening sleeve (i.e., sleeve 322) is necessary here. See ICU Medical, 558 F.3d at 1378; see also LizardTech. Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344–45 (Fed. Cir. 2005) (The disclosure of only one way to create a seamless DWT—by maintaining updated sums—did not provide written description support for claims that did not recite maintaining updated sums.). As Petitioner explains, the original claims of the ’807 application all require a “port-opening sleeve,” as recited in independent claims 1 and 15. Ex. 1019, 39–42; Pet. 22. Similarly, the Abstract of the ’807 application describes a tubing string assembly that includes closures, in which “[t]he closures are openable by a sleeve drivable through the tubing string inner bore.” Ex. 1019, 43. These disclosures would have strongly suggested to a person of ordinary skill in the art that a port-opening sleeve was a necessary component in the invention. See ICU Medical, 558 F.3d at 1378 (noting claims omitting spike recitation not filed with original application, but added years later during prosecution). Consistent with this, Petitioner persuades us that the only way the ’807 application teaches the claimed requirement of allowing a plug to open and then pass through a sleeve or sleeves is by using a port-opening sleeve, such as sleeve 322. Pet. 24; Reply 7. Petitioner argues that the Figure 6 embodiment cannot function without the port-opening sleeve. Pet. 24. Petitioner explains that port-closure sleeves 325a, 325b “have an inner diameter that ‘is generally equal’ to the inner diameter of the tubing string, meaning that any ball or plug that can traverse the tubing string will—in the absence of an intermediate port-opening sleeve—necessarily also pass through the port-closure sleeves [without opening them].” Id. (citing Ex. 1001, 10:1–6, Fig. 6); see also Ex. 1019, 34 (Disclosing that “sleeve 325a is selected to have an inner diameter that is generally equal to the tubing string inner diameter.”).” slip op. at 12
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“Although the Specifications of the ’009 patent and the ’807 patent do not use the word “necessary,” we are persuaded that, just as a person of ordinary skill in the art would have understood that the spike was necessary in ICU Medical, a person of ordinary skill in the art would have understood that the port opening sleeve (i.e., sleeve 322) is necessary here. See ICU Medical, 558 F.3d at 1378; see also LizardTech. Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344–45 (Fed. Cir. 2005) (The disclosure of only one way to create a seamless DWT—by maintaining updated sums—did not provide written description support for claims that did not recite maintaining updated sums.). As Petitioner explains, the original claims of the ’807 application all require a “port-opening sleeve,” as recited in independent claims 1 and 15. Ex. 1019, 39–42; Pet. 22. Similarly, the Abstract of the ’807 application describes a tubing string assembly that includes closures, in which “[t]he closures are openable by a sleeve drivable through the tubing string inner bore.” Ex. 1019, 43. These disclosures would have strongly suggested to a person of ordinary skill in the art that a port-opening sleeve was a necessary component in the invention. See ICU Medical, 558 F.3d at 1378 (noting claims omitting spike recitation not filed with original application, but added years later during prosecution). Consistent with this, Petitioner persuades us that the only way the ’807 application teaches the claimed requirement of allowing a plug to open and then pass through a sleeve or sleeves is by using a port-opening sleeve, such as sleeve 322. Pet. 24; Reply 7. Petitioner argues that the Figure 6 embodiment cannot function without the port-opening sleeve. Pet. 24. Petitioner explains that port-closure sleeves 325a, 325b “have an inner diameter that ‘is generally equal’ to the inner diameter of the tubing string, meaning that any ball or plug that can traverse the tubing string will—in the absence of an intermediate port-opening sleeve—necessarily also pass through the port-closure sleeves [without opening them].” Id. (citing Ex. 1001, 10:1–6, Fig. 6); see also Ex. 1019, 34 (Disclosing that “sleeve 325a is selected to have an inner diameter that is generally equal to the tubing string inner diameter.”).” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Petitioner’s assertions and evidence persuade us that Themig anticipates each of claims 1–13. Pet. 24–33. Patent Owner’s sole argument that Themig does not anticipate claims 1–13 is that the claims are entitled to the filing date of the ’807 application, such that Themig is not prior art to claims 1–13. PO Resp. 21. For the reasons, explained above in Section III.B, we find this argument unpersuasive.” slip op. at 16
Patent outcomesUS 8,657,009 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 8,657,009 - Baker Hughes Incorporated / Baker Hughes Oilfield Operations, Inc. v. Packers Plus Energy Services, Inc.All claims unpatentablePTAB · Aug 29, 2017 · IPR2016-00657 · APJ Neil T Powell · IPR · Final written decision
Claims 1–8 are unpatentable as anticipated by Themig and Flores, and obvious over Flores and Flores with Whiteley; obviousness over Echols with Thomson, with or without Whiteley, was not shown.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Petitioner persuades us that the ’807 application does not provide written description support for the challenged claims of the ’451 patent. Aside from the Figure 6 embodiment of the ’451 patent and ’807 application, no other disclosed embodiment falls within the scope of the challenged claims. As noted in our Institution Decision and in Section III.A above, each of the challenged claims requires an apparatus or method with a sleeve (or multiple sleeves) actuatable or opened by a plug, where the sleeve (or multiple sleeves) allows the plug to pass through the sleeve in the open position. Inst. Dec. 5–6. Aside from the Figure 6 embodiment, we do not find (and Patent Owner does not argue) that any of the other embodiments teaches a sleeve or sleeves that allow a plug to pass through in the open position of the sleeve or sleeves. In view of this, Petitioner persuades us that none of the disclosed embodiments other than Figure 6 of the ’807 application could potentially provide written description support for the challenged claims of the ’451 patent.” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“Petitioner persuades us that the ’807 application does not provide written description support for the challenged claims of the ’451 patent. Aside from the Figure 6 embodiment of the ’451 patent and ’807 application, no other disclosed embodiment falls within the scope of the challenged claims. As noted in our Institution Decision and in Section III.A above, each of the challenged claims requires an apparatus or method with a sleeve (or multiple sleeves) actuatable or opened by a plug, where the sleeve (or multiple sleeves) allows the plug to pass through the sleeve in the open position. Inst. Dec. 5–6. Aside from the Figure 6 embodiment, we do not find (and Patent Owner does not argue) that any of the other embodiments teaches a sleeve or sleeves that allow a plug to pass through in the open position of the sleeve or sleeves. In view of this, Petitioner persuades us that none of the disclosed embodiments other than Figure 6 of the ’807 application could potentially provide written description support for the challenged claims of the ’451 patent.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Petitioner’s assertions and evidence persuade us that Themig anticipates each of claims 1–8. Patent Owner’s sole argument that Themig does not anticipate claims 1–8 is that the claims are entitled to the filing date of the ’807 application, such that Themig is not prior art to claims 1–8. PO Resp. 21. For the reasons, explained above in Section II.B, we find this argument unpersuasive.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Patent Owner persuades us that Petitioner has not provided rational underpinning for its contention that it would have been obvious to add multiple examples of Echols’ sleeve to each interval of Thomson’s system. We find unpersuasive Petitioner’s argument that neither the claims nor the challenge requires a cement casing in the well. Regardless of what the claims require, Petitioner chose Thomson and Echols as the prior art to support its obviousness contention. On this record, we are persuaded that Thomson discloses using its tubing string in a well lined with a cement casing. Thomson discloses that “[b]efore running the completion, each well was perforated with tubing-conveyed perforating (TCP) guns.” Ex. 1005, 3. Thomson also discusses “installation into the horizontal section of the liner,” and admonishes that “[t]he well in general and liner in particular needs to be properly cleaned and conditioned. This is essential for running ten packers in a horizontal liner.” Id. at 3–4. These disclosures indicate that Thomson’s system includes a cement liner in the wellbore. Consistent with this, Figure 3 of Thomson, reproduced below, appears to show a liner at the periphery of the wellbore.” slip op. at 26
Patent outcomesUS 9,074,451 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 9,074,451 - Oracle Corporation / Netapp Inc. v. Crossroads Systems, Inc.All claims unpatentablePTAB · Jan 29, 2016 · IPR2014-01207 · APJ Kristina M Kalan · IPR · Final written decision
Claims 14–39 are unpatentable as obvious over the CRD Manual, CRD-5500 Data Sheet, and Smith, and over Kikuchi and Bergsten; unpatentability over Bergsten and Hirai was not shown.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner
“The construction proposed by Patent Owner is overly narrow. Although Patent Owner emphasizes that the map must identify specific host devices, it does not explain persuasively why the claim language should be construed to exclude doing so via intermediate identifiers. See PO Resp. 2–3. Patent Owner does not identify any disclosure in the ’147 patent’s specification that clearly disavows mapping to a device indirectly, or mapping to a device via an intermediate identifier that could identify a different host if the system were configured differently. See Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005) (holding that “words or expressions of manifest exclusion or explicit disclaimers in the specification are necessary to disavow claim scope” (internal quotations omitted)). Its discussion of Figure 3, for example, is insufficient to compel a narrow construction of the term because it analyzes only a preferred embodiment of the invention. PO Resp. 45–46; see, e.g., In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (holding that limitations should not be imported from preferred embodiments into the claims absent a clear disclaimer of claim scope in the specification). Moreover, the ’147 patent specifically discusses mapping with identifiers that are not immutable. For example, the specification discusses addressing devices on an FC loop using an AL_PA (arbitrated loop physical address), and the possibility of “FC devices changing their AL-PA due to device insertion or other loop initialization.” Ex. 1001, 8:40–46; Reply 3–6 (discussing evidence supporting the use of intermediate identifiers, including testimony by Patent Owner’s proffered expert). Further, the challenged claims of the ’147 patent indicate the mapping may use mere representations of a device rather than requiring direct mapping to the device itself. Claim 15, for example, recites mapping including “virtual LUNs that provide a representation of the storage device,” and claim 17 recites “mapping from a host device ID to a virtual LUN representation of the remote storage device.” Although these claims refer to “virtual” representations of storage devices rather than host devices, the “maps between” term of the independent claims uses the same language when referring to both the devices and storage devices—for example, claim 14 merely recites a “map between the device and the remote storage device.” The claim language does not indicate that the mapping may address storage devices one way, but that devices must be addressed in a different, more specific or direct way. For the reasons above, we are not persuaded that the broadest reasonable interpretation of “map between the device and the remote storage device” mandates mapping directly or immutably to a host device itself, or excludes mapping to devices using intermediate identifiers.” slip op. at 7
- Prior constructionPrior construction adoptedDecided for patent owner
“The parties note that a district court in a related case construed the term as follows, and the Special Master in the co-pending litigation between the parties recommended adoption of this construction: To create a path from a device on one side of the storage router to a device on the other side of the router. A “map” contains a representation of devices on each side of the storage router, so that when a device on one side of the storage router wants to communicate with a device on the other side of the storage router, the storage router can connect the devices. Ex. 2034, 4; see also PO Resp. 2. Although we are not bound by the construction or reasoning of the district court, we do not disregard the analysis and conclusions of a court construing the same claim term in a concurrent proceeding concerning the same patent. Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326–1327 (Fed. Cir. 2015) (discussing the Board’s error in declining to address or acknowledge the district court’s claim construction). After considering the construction of the district court, we determine this construction corresponds to the broadest reasonable interpretation and adopt it for purposes of this Decision.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We credit the testimony of Dr. Chase that one of ordinary skill in the art would have been motivated and able to combine Kikuchi and Bergsten in the manner proposed by Petitioner. Ex. 1010 ¶¶ 142–147; Ex. 2054, 180–213. Patent Owner’s arguments to the contrary address the purported complexity of the combination, but do not establish that a person of ordinary skill would not have had a reasonable expectation of success. Obviousness does not require absolute predictability. In re Kronig, 539 F.2d 1300, 1304 (CCPA 1976). Both experts agree that the modifications were within the level of ordinary skill in this field (Ex. 1010 ¶ 145; Ex. 1218, 103:16–21). Dr. Chase’s Declaration states that tables and trees are interchangeable data lookup constructs for address translations, and that the “tree mapping” of Bergsten may be collapsed into a simple mapping table construct such as that of Kikuchi in a single-controller implementation; his deposition testimony provides greater detail in response to Patent Owner’s questions on how the collapsing would occur in different circumstances. Ex. 1010 ¶ 145; 2054, 180–219. Thus, we are persuaded by Petitioner’s testimony and evidence that the combination of Kikuchi and Bergsten was within the skill level of an ordinarily skilled artisan, and would not change the principles of operation of the respective references.” slip op. at 28
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“there must be continuous exercise of reasonable diligence. In re McIntosh, 230 F.2d 615, 619 (CCPA 1956); see also Burns v. Curtis, 172 F.2d 588, 591 (CCPA 1949) (referring to “reasonably continuous activity”). A party alleging diligence must account for the entire critical period. Griffith v. Kanamuru, 816 F.2d 624, 626 (Fed. Cir. 1987); Gould v. Schawlow, 363 F.2d 908, 919 (CCPA 1966). Even a short period of unexplained inactivity is sufficient to defeat a claim of diligence. Morway v. Bondi, 203 F.2d 742, 749 (CCPA 1953); Ireland v. Smith, 97 F.2d 95, 99–100 (CCPA 1938). In In re Mulder, 716 F.2d 1542, 1542–46 (Fed. Cir. 1983), the Federal Circuit affirmed a determination of lack of reasonable diligence, where the evidence of record was lacking for a two-day critical period. Likewise, in Rieser v. Williams, 255 F.2d 419, 424 (CCPA 1958), there was insufficient diligence where no activity was shown during the first 13 days of the critical period.” slip op. at 21
Patent outcomesUS 7,051,147 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,051,147 - NHK Seating Of America, Inc. v. Lear CorporationAll claims unpatentablePTAB · Jan 5, 2016 · IPR2014-01101 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 3 and 7 are unpatentable as obvious over Schubring and Kage and over Nakano and Kage; anticipation of claim 3 by Nakano was not shown.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“spring, linkage, or bumper” to Schubring’s system because it would slow down the actuation of Schubring’s system. Resp. 24–27. Lear contends that because slowing the actuation of Schubring’s system would change the principle of operation of Schubring’s system, activating the headrest as quickly as possible, a skilled artisan would not have been motivated to slow the forward velocity of Schubring’s headrest. Id. at 25–26. NHK responds that Lear fails to establish why the use of a spring to slow Schubring’s headrest just before impact would necessarily prevent Schubring’s headrest from achieving its intended supportive position early enough to provide effective support. Reply 12–13 (citing Ex. 1012 ¶ 16). We also note that Kage slows its headrest before the headrest contacts the occupant’s head but successfully moves the headrest into position early enough to support the occupant’s head. NHK persuades us that a skilled artisan would have considered hardware such as a spring, a modification to Schubring’s linkage, or a bumper were well-known mechanisms for slowing a headrest as it approaches contact with the occupant’s head in accordance with Kage’s express suggestion to do so.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“movement of its headrest is insufficient to establish whether the first forward velocity of the headrest is greater than the second forward velocity. Resp. 37–39. As explained above, Nakano describes first “lifting up the head rest,” Ex. 1005 ¶ 26, and subsequently lifting the headrest “‘obliquely forward’ . . . to a position where it is close to the passenger’s head,” id. ¶ 29. Nakano’s description thus implies, if anything, that the forward velocity of the headrest increases rather than decreases as Nakano’s headrest moves along its path. 4. Conclusion Based on our review of the evidence of record, NHK fails to persuade us that Nakano describes a headrest that moves with a first forward velocity along a first trajectory that is greater than a second forward velocity along a second trajectory as required in claim 3. Accordingly, we are not persuaded that Nakano anticipates claim 3.” slip op. at 23
- Expert testimonyPetitioner expert discountedDecided for patent owner
“because the accuracy of those models depend upon using drawings that are to scale, which NHK fails to establish. Resp. 9 (citing Nystrom v. TREX Co., 424 F.3d 1136, 1148–49 (Fed. Cir. 2005) (holding that because “patent drawings do not define the precise proportions of the elements” the district court erred in determining invalidity based on “models made from [such] drawings.”); In re Olson, 212 F.2d 590, 592 (C.C.P.A. 1954) (“drawings which accompany an application for a patent are merely illustrative of the principles embodied in the alleged invention”)). Under Nystrom, we may not rely on evidence based solely upon patent illustrations to establish precise proportions of a disclosed structure. The proponent of the modeling must establish that the reference containing the illustrations provides at least some indication that the illustrations are to scale. Nystrom, 424 F.3d at 1149. Just as in Nystrom, NHK attempts to transform static images that are not established as being drawn to scale into a model that reveals undisclosed details about the illustrated structure. NHK goes even farther than the Nystrom defendant, however, because NHK uses Nakano’s static images to generate a dynamic model of Nakano’s headrest to derive the path through which the headrest moves. Accordingly, under Nystrom, NHK fails to persuade us that we can rely upon any of the modeling performed by either expert as persuasive evidence of the path through which Nakano’s headrest would move.” slip op. at 22
- ExcludeMotion to exclude, deniedDenied
“the Motion, and Lear’s Reply in support of the Motion. Based on our review, we deny the Motion in all respects for one or both of the following reasons: (1) the Motion is moot because it seeks to exclude evidence not considered or relied upon in rendering this Decision or (2) the Motion addresses issues more appropriate to determining the weight ascribed to the evidence rather than the admissibility of evidence. In rendering this Decision, we determine and ascribe the appropriate weight to all proffered evidence and, when appropriate, comment upon the weight ascribed.” slip op. at 27
Patent outcomesUS 6,631,955 unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,631,955
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.