• Shenzen Chic Electrics Co., Ltd. v. Pilot, Inc.Some claims unpatentable
  PTAB · Jan 9, 2023 · IPR2021-01232 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 1 and 4–20 are unpatentable as obvious; claim 3 was not shown unpatentable because Petitioner presented no evidence under the adopted construction.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of battery charging systems.” Pet. 8. Patent Owner states that it adopts this definition for purposes of its Response. PO Resp. 4. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’653 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’653 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). It is also consistent with the level of skill in the art adopted in the 777 IPR, which also involves the ’653 patent. IPR2021-00777, Paper 7 at 6–7.” slip op. at 9

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

    “construction “contradicts the technical disclosure of the ’653 patent” and that “[t]he proper construction of this term is ‘switching circuit under control of the microcontroller that selectively conducts power supply or power outage for the load.’” Pet. Suppl. Br. 3.10 In particular, Petitioner contends that claim 3, through claim 1, only recites one connection between the microcontroller and the first battery, such that the connections in claim 3 do not allow the power supply from the first battery to pass through the microcontroller to the load. Pet. Suppl. Br. 4–5. Claim 1, however, recites “an automobile charger, comprising . . .” which is an open-ended term, meaning that claim 1 is not limited to only the connections expressly recited therein. Petitioner’s arguments do not address this open-ended aspect of the plain language of the claims. Petitioner also argues that the language of claim 3 is consistent with its construction because claim 3 “places the switching circuit between the second pole of the first battery . . . and the second lead of the load.” Pet. Suppl. Br. 5. Although Petitioner’s interpretation may be consistent with the language in claim 3, we discern nothing in claim 3 that expressly limits the placement of the switching circuit, especially considering the open-ended “comprising” language used in claims 1 and 3.” slip op. at 11

  • Strike new argumentNew argument consideredDecided for petitioner

    “Specifically, Dr. Kirtley testifies that a person of ordinary skill in the art would have understood that connections between components depicted as single lines in Yu’s figures “may comprise multiple connections, such as multiple signal connections, and common power and ground connections for sensors and microprocessors.” Ex. 1020 ¶ 84 (citing Ex. 1021 (US 7,973,534 B2)). We credit Dr. Kirtley’s testimony, as Patent Owner does not dispute the substance of Dr. Kirtley’s testimony or the supporting exhibit. Instead, Patent Owner argues that Petitioner is attempting to “sneak in new evidence that is improper in a reply” and create a new ground. Sur-reply 13–15. We disagree, as Petitioner and Dr. Kirtley offer this evidence to demonstrate what a person of ordinary skill in the art would have understood in considering Yu—not as a new ground. Moreover, Petitioner properly offered this exhibit and Dr. Kirtley’s testimony in response to Patent Owner’s arguments that claim 1 requires negative side switching, which Yu does not disclose. In its Reply, Petitioner is entitled to “respond to arguments raised in the corresponding . . . patent owner response.” 37 C.F.R. § 42.23(b). A party also may submit rebuttal evidence in support of its reply. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077–78 (Fed. Cir. 2015).” slip op. at 26

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

    “After considering the parties’ arguments and evidence, we find Petitioner has established, by a preponderance of the evidence, that claim 4 is unpatentable as obvious in view of Yu and Thomason. As discussed above, we disagree with Patent Owner’s arguments regarding negative pole switching, and find that Petitioner presents persuasive evidence that Yu teaches or suggests the limitations of claim 1. Petitioner also presents undisputed evidence that Yu and Thomason teach or suggest the additional limitations in claim 4. Pet. 52–54. Additionally, Petitioner directs us to a disclosure in Thomason itself regarding a protection mechanism to prevent the jump starter from self-destructing, and presents testimony from Dr. Kirtley that a person of ordinary skill in the art would have considered Thomason’s teaching in order to avoid damage to Yu’s internal battery, and would have been able to implement Thomason’s teachings. Pet. 52–54; Reply 20–21; Ex. 1004 ¶¶ 189–192. Patent Owner and Mr. McAlexander do not challenge or otherwise refute this testimony. PO Resp. 9–10. Thus, contrary to Patent Owner’s assertions, Petitioner does direct us to evidence in the asserted prior-art references themselves that provide a reason to combine their teachings, and does not rely solely on conclusory statements regarding the similarities of Yu and Thomason to support its obviousness challenge. In view of Petitioner’s persuasive evidence demonstrating where the prior-art references teach or suggest each limitation in the challenged claims, and explaining why a person of ordinary skill in the art would have had reason to combine the prior-art references with a reasonable expectation of success, we find Petitioner has established, by a preponderance of the evidence, that claim 4 is unpatentable as obvious in view of Yu and Thomason.” slip op. at 33

  Patent outcomesUS 10,046,653 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,046,653
• SNF S.A. v. Solenis Technologies, L.P.Rehearing denied
  PTAB · Nov 4, 2021 · IPR2020-01730 · APJ David Cotta · IPR · Rehearing

  The Board denied rehearing and, despite finding a reasonable likelihood of obviousness for claims 12 and 13, denied institution because most challenged claims did not meet the threshold and review would be inefficient.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be found if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2

  • Obviousness (§103) › KSR rationalesNot reached

    “Petitioner offers to waive its arguments with respect to invalidity grounds 2 and 3 if we institute inter partes review. Id. This offer makes our exercise of discretion a closer call, but even absent grounds 2 and 3, granting institution would require that we institute on all claims. We have determined that, for a sizeable majority of challenged claims, Petitioner has not demonstrated a reasonable likelihood of prevailing. Under the circumstances presented here, we determine it would not be an efficient use of the Board’s time and resources to institute review. See Chevron, Paper 9 at 10–11; Deeper, Paper 7. Accordingly, we exercise discretion under 35 U.S.C. § 324(a) to decline to institute post-grant review.” slip op. at 11

  • Other 314aInstitution denied discretionary otherInstitution denied

    “reasons discussed herein and in the Decision, Petitioner has failed to demonstrate a reasonable likelihood that it will prevail with respect to challenged claims 1–11 and 14–21. However, based on the preliminary record, Petitioner has demonstrated a reasonable likelihood that claims 12 and 13 would have been obvious over the cited art. Accordingly, this case presents the question whether we should exercise our discretion to deny institution. Our decision as to whether discretionary denial is warranted is guided by Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 (PTAB Nov. 7, 2018) (informative) and Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (informative). Both of these cases explain that “the Board may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a).” Chevron, Paper 9 at 10–11; Deeper, Paper 7 at 42. In Chevron, the panel ultimately exercised discretion to deny institution where “Petitioner demonstrate[d], at most, a reasonable likelihood of prevailing with respect to two dependent claims out of a total of twenty challenged claims.” Chevron, Paper 9 at 12. Similarly, in Deeper, the panel exercised discretion to deny institution where Petitioner demonstrated a reasonable likelihood of prevailing with respect to only two out of twenty three challenged claims. Deeper, Paper 7 at 43.” slip op. at 10

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

    “art – selecting values within the ranges disclosed in the prior art to calculate a ratio – did not support institution because Petitioner never explained how or why it selected any of the specific values it used to calculate the claimed ratio. Dec. 13. We concluded that Petitioner’s second use of the ranges disclosed in the art – optimizing within the disclosed ranges – did not support institution because the prior art did not disclose that the ratio of WAMW to % DADMAC was a result effective variable (id. at 17) and because Petitioner had not shown that independently optimizing WAMW and % DADMAC would lead to copolymer having the claimed ratio (id. at 17–20).” slip op. at 4

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 9,644,320
• Neenah, Inc. v. Jodi A. SchwendimannAll claims unpatentable
  PTAB · Nov 1, 2021 · IPR2020-00915 · APJ Michelle N Ankenbrand · IPR · Final written decision

  Claims 1–21 are unpatentable as obvious over Kronzer and Oez-US; the Board did not reach the other asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art In the Institution Decision, we determined that a person of ordinary skill in the art at the time of the invention of the ’475 patent would have had “a Bachelor’s degree in Chemistry, Chemical Engineering, Imaging Technology or Material Science with at least one year of experience in coating technologies and imaging technologies, or at least five years of work experience in the field of coating technologies and imaging technologies” because that description was consistent with the level of skill reflected in the prior art. DI 8 (adopting Dr. Ellison’s description of the level of ordinary 6 The record does not contain evidence or argument regarding objective evidence of nonobviousness. skill in the art). For purposes of this Final Written Decision, we maintain our determination from the Institution Decision because neither party disputes that determination and that level of ordinary skill is consistent with the record. See Resp. 15; see generally Reply.” slip op. at 9

  • Prior constructionPrior construction adoptedTerm construed petitioner constructionDecided for petitioner

    “construction of “white layer” that differs from the construction adopted in the Arkwright Lawsuit and in our Institution Decision. Specifically, Patent Owner’s proposed construction includes “a layer comprising a concentration or configuration of pigment providing a white background for received indicia and which further comprises a polymer that softens or melts, such that it mixes with another layer or layers during application, without the resulting composition needing to be substantially uniform.” Resp. 16–17. (Patent Owner’s modifications underlined). Petitioner contends that we should again reject Patent Owner’s attempt to rewrite the construction of “white layer” because it is “completely at odds” with the construction in both the Arkwright Lawsuit and the Delaware Lawsuit, which requires actual melting, not just softening, and construes “mix” to have its plain and ordinary meaning. Reply 2 (citing Ex. 1022, 8–18; Ex. 1066, 6, 8–9). We agree, and decline to adopt Patent Owner’s construction that departs from the construction in the Arkwright Lawsuit and the Delaware Lawsuit. Ex. 1022, 17; Ex. 1066, 6. Accordingly, for purposes of this Final Written Decision, we maintain our construction of the term “white layer” from the Institution Decision. We note, however, that Patent Owner states that “the parties’ disputes with respect to the construction of the ‘white layer’ make no difference to the Board’s resolution of this matter.” Resp. 17; Tr. 13:21–14:3; 53:19–21.” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “Furthermore, record evidence supports Petitioner’s position that a person of ordinary skill in the art would have understood that incorporating titanium dioxide within a polymer layer provides a white background whether the polymer is cross-linked or not. Ex. 1062 ¶¶ 17–18 (citing Ex. 1055, 120–121); Ex. 1063, 304:8–22 (Dr. Ellison’s testimony that the reactions described in Oez-US would not be required for titanium dioxide to provide whiteness). Regarding the purported changes titanium dioxide would have on certain properties or characteristics of the polymer layers, Patent Owner’s argument is based solely on Dr. Ellison’s conclusory declaration testimony, which is entitled to little or no weight. See Ex. 2011 ¶¶ 181–184; 37 C.F.R. § 42.65(a).” slip op. at 32

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Furthermore, although we agree with Patent Owner that identity of subject matter alone is insufficient to demonstrate that the ordinarily skilled artisan would have had reason to combine the teachings of Kronzer and Oez- US, Petitioner does not rely on identity of subject matter alone, as discussed in more detail below. Nevertheless, we consider Petitioner’s discussion of the identity of subject matter to be relevant for purposes of demonstrating the references are analogous art, which is part of the obviousness analysis. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010); see also In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as to whether a person of ordinary skill in the art would have sought to combine the references “picks up where the analogous art test leaves off”).” slip op. at 19

  Patent outcomesUS 7,766,475 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,766,475
• NXP B.V. / NXP USA, Inc. et al. v. Bell Semiconductor, LLCInstituted
  PTAB · Oct 8, 2021 · IPR2021-00966 · APJ Juliet Mitchell Dirba · IPR · Institution

  The Board instituted review of claims 1–19 on all asserted grounds, finding a reasonable likelihood of success on at least one claim; it dismissed the renewed joinder motion as moot.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “light of trial dates that have been set in parallel litigations. See Fintiv, Paper 11 at 3, 5, 9. Where, as here, the trial date is approximately six months earlier than the projected date of our Final Written Decision, the Board has weighed this factor in favor of exercising discretion to deny institution. See id. at 9. Although the trial could be delayed (e.g., as a result of the COVID-19 pandemic), the record includes no evidence indicating that such a delay is likely, and we decline to speculate about the likelihood of such a delay. Therefore, we find that factor 2 weighs in favor of exercising our discretion to deny institution.” slip op. at 11

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

    “Conclusion Petitioner’s assertions and explanations are consistent with and supported by the evidence cited by Petitioner. Moreover, Petitioner sufficiently explains why a person of ordinary skill in the art would have understood Chin to teach or suggest each limitation of claim 1. On the current record, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it will prevail in showing that the subject matter of claim 1 would have been obvious over Chin.” slip op. at 35

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’340 patent and the asserted prior art. This definition is also supported by the testimony of Dr. Choi. See Ex. 1003 ¶ 26. For purposes of this Decision, we adopt Petitioner’s proposed level of skill. To the extent the level of ordinary skill in the art is in dispute or makes a material difference in the obviousness analysis, the parties should brief their respective positions in this regard during trial.” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingMixed

    “On this record, we agree with Patent Owner.12 Claim 1 recites “[a]n integrated circuit package substrate comprising,” inter alia, “a plurality of rows of contact pads . . . for making a direct connection between the integrated circuit package substrate and a printed circuit board.” Ex. 1001, 6:36–43. The phrase “the integrated circuit package substrate” derives antecedent basis from the preamble. See id. Given the structure of this claim, we conclude that the preamble is limiting. See Bio-Rad Labs., Inc. v. 10X Genomics Inc., 967 F.3d 1353, 1371 (Fed. Cir. 2020) (“The fact that [two of] the terms [in preamble] . . . provide antecedent basis for these terms in the body of the claim is a strong indication that the preamble acts ‘as a necessary component of the claimed invention.’” (quoting Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003))); see also Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 1368 (Fed. Cir. 2020) (“While antecedent basis alone is not determinative of whether a preamble is limiting, use of preamble terms to define positive limitations in the body of claims can evince an inventor’s intent that the preamble limit the scope of the claim.”). This conclusion, however, does not apply to the other two independent claims of the ’340 patent. While independent claims 7 and 12 recite the same preamble as claim 1, the bodies of these claims do not rely on the preamble for antecedent basis. See Ex. 1001, 7:22–36 (no recitation of “integrated circuit package substrate” in body of claim 7), 8:8–21 (same 12 Petitioner has not yet had an opportunity to respond to this claim construction issue, but may do so in its reply brief at trial. for claim 12). Patent Owner provides (and we perceive) no other reason to conclude that the preamble of either of these claims is limiting. See Prelim. Resp. 12–13 (addressing preamble of claim 1, but not claims 7 and 12). Accordingly, on this record, we conclude that independent claims 7 and 12 are not limited by their preambles.” slip op. at 19

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,049,340
• Stahls’ Inc. v. Jodi A. Schwendimann, F/K/A Jodi A. Dalvey, And Nucoat, Inc.Some claims unpatentable
  PTAB · Oct 1, 2021 · IPR2020-00641 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1–3 and 5 are unpatentable over Williams; claim 4 was not shown unpatentable because the other grounds failed.

  RulingsFinal written decision

  • BurdenMixed

    “To anticipate, a reference must “show all of the limitations of the claims arranged or combined in the same way as recited in the claims.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Although the elements must be arranged or combined in the same way as the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., the identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Further, to be anticipating, a prior art reference must be enabling and must describe the claimed invention sufficiently to have placed it in possession of a person of ordinary skill in the art. Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed. Cir. 2000); In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994).” slip op. at 11

  • Skill levelSkill level patent owner adoptedOther

    “In the Decision on Institution, we determined that a person of ordinary skill in the art at the time of the invention of the ’623 patent would have at least a Bachelor’s degree in Chemistry, Chemical Engineering, Imaging Technology or Material Science with at least one year of experience in coating technologies and imaging technologies, or at least five years of work experience in the field of coating technologies and imaging technologies. DI 12 (adopting Patent Owner’s proposed definition). For purposes of this Final Written Decision, we maintain our determination from the Decision on Institution because neither party disputes that determination and because that level of skill is consistent with the record. See generally PO Resp. 13; Pet. Reply 2.” slip op. at 13

  • Prior constructionPrior construction adoptedDecided for patent owner

    “1. “white layer”11 In the Decision on Institution, we construed the term “white layer” to mean “a layer comprising a concentration or configuration of pigment providing a white background for received indicia and which further comprises a polymer that melts and mixes with another layer or layers during application.” DI 14. Our construction was based on the parties’ agreement that the claims of the ’623 patent require a white layer that melts and mixes with another layer and the claim construction the district court in the Arkwright Lawsuit adopted. Ex. 1022, 17 (Arkwright Markman Order); see also Ex. 1045, 6 (Delaware Markman Order). In the Decision on Institution, we rejected Patent Owner’s attempt to broaden the interpretation adopted in the Arkwright Lawsuit to include “a polymer that softens or melts and mixes to some degree with another layer.” Id. (Patent Owner’s modifications indicated with underlining); Prelim. Resp. 14.” slip op. at 14

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

    “2. order of steps In the Decision on Institution we determined that it was not necessary to require that the “peeling,” “contacting,” and “applying” steps be performed in any particular order. DI 16. We based our decision on Petitioner’s argument that “Patent Owner clearly and unmistakably represented to the USPTO . . . that claims 1–5 cover methods where the ‘peeling step’ is performed before the ‘contacting’ and ‘applying heat’ steps, and methods where the ‘peeling step’ is performed after the ‘contacting’ and ‘applying heat’ steps” and Patent Owner’s agreement to adopt Petitioner’s construction, for purposes of its preliminary response. Id. (citing Pet. 17; Prelim. Resp. 14–15). Patent Owner, in its Patent Owner Response, does not advance any construction regarding the order of steps. See generally PO Resp. 14–16. Patent Owner, however, in its Sur-reply confirms its position that “[t]he method steps cover both a ‘peel first heat second’ and ‘heat first peel second’ method of application.” Sur-reply 4. Accordingly, we apply the parties’ undisputed claim construction position, that is, that the claims do not require any particular order of contacting, peeling, and applying. Nidec, 868 F.3d at 1017.” slip op. at 15

  Patent outcomesUS RE41,623 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
• Stahls’ Inc. v. Jodi A. Schwendimann, F/K/A Jodi A. Dalvey, And Nucoat, Inc.All claims unpatentable
  PTAB · Sep 10, 2021 · IPR2020-00635 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 16–19 are unpatentable as obvious over DeVries and Oez, and claims 16 and 18–22 are unpatentable as anticipated by Williams; all challenged claims are unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree that the parties’ positions are not materially different. In view of this, and Petitioner’s acknowledgment that “[n]either party asserts a different result in this IPR based on the level of skill,” we see no reason to deviate from the definition we adopted in our Institution Decision, which we determined was consistent with the level of skill in the art at the time of the invention as reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); Inst. Dec. 11. Accordingly, we maintain our determination that “a person of ordinary skill in the art of inkjet transfer systems would have at least a Bachelor’s degree in Chemistry, Chemical Engineering, or Material Science with at least one year of experience in coating technologies or at least five years of work experience in the field of coating technologies.” Inst. Dec. 11.” slip op. at 13

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

    “the Delaware Litigation. Reply 1. In its Sur-reply, Patent Owner points out that Petitioner has taken the position, consistent with the Delaware Lawsuit Markman Order and our Institution Decision, that the plain and ordinary meaning of melt “requires actual melting, not just ‘softening,’” and Patent Owner advances arguments distinguishing the prior art based on this construction. Sur-reply 1 (citing Reply 1); see also Sur-reply 2–7 (discussing the use of “soften” in DeVries). Additionally, during the oral hearing, counsel for Patent Owner confirmed that Patent Owner is no longer asserting its originally proposed construction of “white layer” that includes “a polymer that softens or melts,” in view of the constructions the district court adopted in the Delaware Litigation. Tr. 53:23–54:5 (“We are no longer asserting [our proposed construction] because . . . the Delaware Court made it clear and that’s the construction we’re living with.”). Accordingly, for purposes of this Final Written Decision, we maintain our determination from the Institution Decision that the claims require a “white layer” that melts and mixes with another layer or layers during application. Our construction is consistent with the construction adopted in the Arkwright Lawsuit and the Delaware Lawsuit.” slip op. at 15

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “We further agree with Petitioner that a person of ordinary skill in the art would have understood DeVries’ polymer layer would have melted when heat and pressure are applied regardless of whether a cross-linking or non-cross-linking polymer was employed. See Reply 9–10; Ex. 1039 ¶¶ 10(e)– (f). DeVries states that when heat and pressure are applied, its polymer coating “softens and penetrates” into the textile substrate and into the interstices between the individual fibers forming the substrate. Ex. 1016, 3:8–11 (emphasis added), 6:28–30. Indeed, each instance where DeVries describes its polymer as softening, DeVries also describes its polymer as penetrating into the textile. Ex. 1016, Abstract, 3:8–13, 3:25, 4:23–26, person of ordinary skill in the art would have understood the polymers of DeVries to melt with or without cross-linking. Ex. 1039 ¶¶ 10(e)–(f). In fact, record evidence suggests that polymeric layer 22 in DeVries must melt, i.e., soften and penetrate into the fibers of the textile fabric, to function properly. Ex. 1039 ¶ 10(e); Ex. 1016, 3:23–26, 6:25–33. The description in DeVries that the polymer softens and penetrates undermines Patent Owner’s argument that DeVries’ disclosure is insufficient to prove melting because it only uses the word softens, and, therefore, does not teach that the polymer “melts,” as the proper construction of the term “white layer” requires. Contrary to Patent Owner’s argument, however, the language in DeVries that the polymer softens and penetrates suggests that the polymers do more than “only soften[ ].” Sur-reply 4. Patent Owner’s own declarant, Dr. Ellison, agreed that for the polymeric layer in DeVries to “go into the fabric,” i.e., penetrate into the substrate, it must first melt: Q. Correct. And for it to go into the fabric, for it to meld into the fabric, doesn’t the polymeric layer 22 have to melt first? A. Yes. Q. So polymeric -- in application of the image to the garment, the polymeric -- the heat is applied, the polymeric layer melts, moves into the fabric, and then if cross-link is used, cross-linking occurred at that point after the melting process, correct? A. Yes.” slip op. at 31

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

    “On this record, we are persuaded that DeVries describes an image- imparting member “including at least one portion comprising a pigment concentration or configuration sufficient to provide an opaque, non-transparent background for received indicia” as claim 16 requires. Ex. 1009, 12:55–61. Notably, claim 16 requires only that the pigment concentration in the image-imparting member is sufficient to provide an opaque background. It is undisputed that DeVries specifies the polymer layer may include “an opacifying agent, such as titanium dioxide, calcium carbonate, calcium fluoride, kaolin, talcum, and the like.” Ex. 1016, 11:50–52. It is also undisputed that DeVries teaches the use of 2 to 25% by weight of an opacifying agent, an amount that overlaps with the amount utilized in the ’042 patent to provide an opaque background, i.e., about 5 to 40% by weight. Ex. 1016, 11:47–50; Ex. 1009, 4:10–13, 4:30–33, 10:52–55. Thus, the evidence of record supports Petitioner’s assertion that DeVries, which discloses using an amount of opacifying agent that overlaps with the amount of opaque pigment in the ’042 patent, at least suggests the use of an opacifying agent in its polymer layer that is sufficient to provide an opaque, non-transparent background for received indicia. Furthermore, even if the “it” in column eleven of DeVries refers to the opacifying agent and not the polymeric coating, as Patent Owner asserts (PO Resp. 26–27), the opacifying agent remains part of the polymeric coating—not the indicia layer—and contains an amount sufficient to provide an opaque background. “there is no white sublimation dye,” we note, as Petitioner accurately points out, that DeVries uses the term “opacifying agent” and not “white sublimation dye.” In view of this, we are persuaded by Petitioner’s argument that a person of ordinary skill in the art would have understood DeVries to teach that “the purpose of [the opacifying agent] is to provide opacity, regardless of its color.” Reply 5. For all of the foregoing reasons, we determine that the preponderance of the evidence supports Petitioner’s position that DeVries teaches or suggests a polymeric coating comprising a pigment concentration or configuration sufficient to provide an opaque, non-transparent background for received indicia.” slip op. at 26

  Patent outcomesUS 7,754,042 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,754,042
• Neenah, Inc. v. Jodi A. SchwendimannAll claims unpatentable
  PTAB · Sep 10, 2021 · IPR2020-00634 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1–6, 8–21, and 24–31 are unpatentable as obvious over Kronzer and Oez-US; the Board did not reach the alternative grounds.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for petitioner

    “In the Decision on Institution, we construed the term “white layer” to mean “a layer comprising a concentration or configuration of pigment providing a white background for received indicia and which further comprises a polymer that melts and mixes with another layer or layers during application.” DI 13–14. Our construction was based on the parties’ agreement that the claims of the ’581 patent require a white layer that melts and mixes with another layer and the the claim construction the district court in the Arkwright Lawsuit adopted. Ex. 1022, 17 (Arkwright Markman Order”). The district court in the Delaware Lawsuit also adopted a similar In the Decision on Institution, we rejected Patent Owner’s attempt to broaden the interpretation adopted in the Arkwright Lawsuit to include “a polymer that softens or melts and mixes to some degree with another layer.” Id. (Patent Owner’s modifications indicated with underlining); Prelim. Resp. 13.” slip op. at 11

  • Skill levelSkill level patent owner adoptedOther

    “In the Decision on Institution, we determined that a person of ordinary skill in the art at the time of the invention of the ’581 patent would have at least a Bachelor’s degree in Chemistry, Chemical Engineering, Imaging Technology or Material Science with at least one year of experience in coating technologies and imaging technologies, or at least five years of work experience in the field of coating technologies and imaging technologies. DI 11–12 (adopting Patent Owner’s proposed definition); see Prelim. Resp. 12. 9 The parties have not asserted or otherwise directed our attention to any objective evidence of nonobviousness. determination from the Decision on Institution because neither party disputes that determination and because that level of skill is consistent with the record. See PO Resp. 17; see generally Pet. Reply.” slip op. at 10

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

    “In weighing the evidence and arguments before us, we find Petitioner advances sufficient reasoning with rational underpinnings to explain why one of ordinary skill in the art would have had reason to combine Kronzer and Oez-US. Pet. 66–67. Petitioner relies on Oez-US’s express teaching that including a white pigment “ensures a greater brilliance of the image . . . especially for printing black textiles.” Ex. 1013, 1:29–31. Accordingly, Petitioner reasons that a person of ordinary skill in the art would have included the white pigment of Oez-US in the polymer layer of Kronzer “to provide a contrasting opaque background for image transfers to dark/black fabrics.” Pet. 69 (citing Ex. 1013, 1:26–31; Ex. 1020 ¶ 224). Patent Owner’s arguments do not address Petitioner’s primary argument, as Patent Owner focuses on alleged differences in how Kronzer and Oez-US solve allegedly different problems, whereas Petitioner focuses on improving the quality of image transfer in general, which is the common result in both Kronzer and Oez-US. Thus, we disagree that Kronzer and Oez-US have “divergent goals” such that a person of ordinary skill in the art would not have had reason to take advantage of the benefits described in Oez-US. See KSR, 550 U.S. at 420 (“Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”). that something is missing from Oez-US or that the combination with Kronzer improves Oez-US—once again misses the main point of Petitioner’s arguments. Petitioner’s arguments are based on Oez-US supplying something beneficial that is missing from Kronzer, and therefore improving the system of Kronzer, not the reverse. We thus disagree that Petitioner has not indicated why a person of ordinary skill in the art would have had reason to combine Oez-US and Kronzer, and Petitioner’s reliance on express teachings from Oez-US and Kronzer undermines Patent Owner’s argument that Petitioner improperly relied on hindsight.” slip op. at 22

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

    “away from using white pigment alone or that Oez-US requires a cross-linking polymer for the white pigment to function. See PO Resp. 42–43. To teach away, a reference must discourage one of ordinary skill in the art from following the path set out in the reference, or lead that person in a direction divergent from the path taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“[A] reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant.”). “A reference does not teach away . . . if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Patent Owner does not identify any teaching in Oez-US that either requires use of a cross-linking polymer with its white pigment or discourages use of a white pigment without a cross-linking polymer. And, our independent review of Oez-US does not reveal any such teaching. The fact that Oez-US uses a white cross-linking is required for TiO2 to function as a pigment nor does it teach away from pursuing the path taken in the ’581 patent. Patent Owner’s arguments that transferring a white pigment from a reactive to non-reactive system would have been unpredictable because the titanium dioxide performs functions beyond whiteness and because the properties and characteristics of the layer would be altered is similarly unavailing. See PO Resp. 42–46. Neither Patent Owner nor its expert, Dr. Ellison, identify anything in Oez-US that suggests the titanium dioxide functions other than to provide a contrasting background. See generally id.; see generally Ex. 2011. Rather, Oez-US consistently refers to the white pigment or titanium dioxide as responsible for providing contrast for images transferred to dark colored textiles. Ex. 1013, 1:28–29, 1:50–52, 2:50–51. In fact, Oez-US states that “[i]f white textiles are to be printed on, the titanium oxide pigment can be omitted.” Id. at 2:31–32. Further, Dr. Ellison’s testimony that “white pigments like titanium dioxide often have a surface chemistry [that] . . . can interact with components of reactive systems [and] . . . can itself chemically react with the components of the single polymer layer of Oez[-US] and become part of the crosslinked network,” is inconclusive and, at best, describes possible interactions in a reactive system—not in a non-reactive system as proposed by Petitioner. Ex. 2011 ¶ 144 (emphasis added). In addition, record evidence supports Petitioner’s position that a” slip op. at 27

  Patent outcomesUS 7,749,581 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,749,581
• Neenah, Inc. / Avery Products Corporation v. Jodi A. Schwendimann, F/K/A Jodi A. Dalvey, And Nucoat, Inc.All claims unpatentable
  PTAB · Sep 10, 2021 · IPR2020-00629 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 1–22 are unpatentable: claims 1–3, 5–8, and 10–22 as obvious over Kronzer and Oez-US; claim 4 with Hare; and claim 9 with DeVries.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In the Institution Decision, we determined that a person of ordinary skill in the art at the time of the invention of the ’042 patent would have at least a Bachelor’s degree in Chemistry, Chemical Engineering, Imaging Technology or Material Science with at least one year of experience in coating technologies and imaging technologies, or at least five years of work experience in the field of coating technologies and imaging technologies. Inst. Dec. 12–13 (adopting Patent Owner’s proposed definition). For purposes of this Final Written Decision, we maintain our determination from the Institution Decision because neither party disputes” slip op. at 12

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

    “construction of “white layer” that differs from the construction adopted in the Arkwright Lawsuit and in our Institution Decision. Specifically, Patent Owner’s proposed construction includes “a layer comprising a concentration or configuration of pigment providing a white background for received indicia and which further comprises a polymer that softens or melts, such that it mixes with another layer or layers during application, without the resulting composition needing to be substantially uniform.” PO Resp. 15–16 (Patent Owner’s modifications indicated with underlining). Petitioner contends that we should again reject Patent Owner’s attempt to rewrite the construction of “white layer” because it is “completely at odds” with the construction in both the Arkwright Lawsuit and the Delaware Lawsuit, which requires actual melting, not just softening, and construes “mix” to have its plain and ordinary meaning. Reply 2 (citing Ex. 1066, 6). We agree, and decline to adopt Patent Owner’s construction that departs from the construction in the Arkwright Lawsuit and the Delaware Lawsuit. Ex. 1022, 17; Ex. 1066, 6. Accordingly, for purposes of this Final Written Decision, we maintain our construction of the term “white layer” from the Institution Decision. We note, however, that Patent Owner states that “the parties’ disputes with respect to the construction of the ‘white layer’ make no difference to the Board’s resolution of this matter.” PO Resp. 17; Tr. 13:21–14:3; 53:19–21. We do not need to construe any other terms for purposes of this Decision. Nidec, 868 F.3d at 1017.” slip op. at 14

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

    “We do not agree with Patent Owner’s arguments that Oez-US teaches away from using white pigment alone or that Oez-US requires a crosslinking away, a reference must discourage one of ordinary skill in the art from following the path set out in the reference, or lead that person in a direction divergent from the path taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“[A] reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant.”). “A reference does not teach away . . . if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Patent Owner does not identify any teaching in Oez-US that either requires use of a crosslinking polymer with its white pigment or discourages use of a white pigment without a crosslinking polymer. Our independent review of Oez-US does not reveal any such teaching. The fact that Oez-US uses a white pigment in addition to a crosslinked polymer does not mean that crosslinking is required nor does it teach away from pursuing the path taken in the ’042 patent. Patent Owner’s arguments that transferring a white pigment from a reactive to a non-reactive system would have been unpredictable because the titanium dioxide performs functions beyond providing whiteness and the properties and characteristics of the layer would be altered are similarly unavailing. See PO Resp. 34–37; Sur-reply 5–6. Neither Patent Owner nor its declarant, Dr. Ellison, identifies anything in Oez-US that suggests the titanium dioxide performs any function other than providing a contrasting background. See generally PO Resp. 34–37; see generally Ex. 2011. Rather, Oez-US consistently refers to the white pigment or titanium dioxide dark-colored textiles. Ex. 1013, 1:25–30, 1:50–54, 2:50–51. In fact, Oez- US states that “[i]f white textiles are to be printed on, the titanium oxide pigment can also be omitted.” Ex. 1013, 2:31–32. Further, Dr. Ellison’s testimony that “white pigments like titanium dioxide often have a surface chemistry [that] . . . can interact with components of reactive systems [and] . . . can itself chemically react with the components of the single polymer layer of Oez[-US] and become part of the crosslinked network,” is inconclusive and, at best, describes possible interactions in a reactive system—not a non-reactive system as Petitioner proposes. Ex. 2011 ¶ 144 (emphasis added).” slip op. at 29

  Patent outcomesUS 7,754,042 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,754,042
• Blasters, Inc v. Waterblasting, LLCSome claims unpatentable
  PTAB · Jul 16, 2019 · IPR2018-00504 · APJ John R Kenny · IPR · Final written decision

  Claims 1–4 and 10 are unpatentable as obvious over Clemons and NLB; claims 5 and 6 were not shown unpatentable over the asserted combinations.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Both Mr. Boos’s and Dr. King’s assessments appear consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Further, neither expert has testified, and neither party has argued, that the difference in the experts’ assessments would affect the analysis of any asserted ground. Under the circumstances, we adopt Dr. King’s assessment due to its greater specificity. We, however, determine the differences between the experts’ assessments would not affect our analysis; we would reach the same conclusions using either assessment.” slip op. at 8

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

    “Petitioner’s proposed construction for “articulating link.” In this proceeding, we construe a claim term to have its broadest reasonable construction. Petitioner’s proposed construction, which is broader than Patent Owner’s proposal, is reasonable in light of the Specification. The only non-testimonial evidence in the record for the ordinary meanings of the terms “articulating” and “link” are the dictionary definitions provided by Petitioner (Ex. 1012, 1015), and those dictionary definitions support Petitioner’s proposed construction. The 1999 edition of the Chambers Dictionary of Science and Technology provides an engineering definition for “articulation,” which is “[t]he connection of two parts in such a way (usually by a pin joint) as to permit relative movement.” Ex. 1015. The 2004 edition of the Merriam-Webster Dictionary defines “link” as “a connecting structure.” Ex. 1012. Mr. Boos testifies, and we agree, that these definitions are evidence that an ordinarily skilled artisan would have understood the ordinary meaning of “articulating link” to be “a connecting structure that connects two parts in such a way as to permit relative movement.” Ex. 1009 ¶ 9. Further, Petitioner’s proposed construction is consistent with the disclosure of an articulating link in the Specification, which describes articulating link 31 as connecting blast head 23 and tractor 20, and permitting relative movement between those parts. Ex. 1001, 4:11–14 (“horizontal movement” and “vertical movement”). In addition, we determine that Patent Owner’s proposed construction is not a reasonable construction in light of the Specification. Neither Patent Owner nor Dr. King directs us to any portion of the Specification that expressly defines the term “articulating link.” Instead, the cited portions of the Specification describe what one exemplary articulating link, link 31, does. For example, a cited portion of the Specification describes that articulating link 31 is capable of horizontal and vertical movement and has a rotatable connection with arms 37, 38, 44, and 45. Ex. 1001, 4:11–43 (cited by Ex. 2012 ¶ 40). Nowhere does the Specification, however, indicate that all articulating links must have such a capacity and such a connection. See id. Instead, the Specification merely discloses that this particular exemplary articulating link has these features. Id. In the absence of an explicit or implicit definition, we cannot read limitations from the Specification into the claims. Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed.” slip op. at 15

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

    “We do not need to provide a different construction because Patent Owner does not dispute that NLB discloses a cleaning system. Therefore, any dispute between the parties that could exist regarding the meaning of the term “cleaning system” is not material to any patentability issue we need to decide. 3. Disputes that Concern Only Petitioner’s Alternative Arguments The parties propose differing constructions for the terms “hard surface,” “high pressure,” “blast head,” “coatings,” and “high power vacuum pump.” Compare Pet. 13–17, with PO Resp. 7–9. The differences in the parties’ constructions for these terms are material only to Petitioner’s alternative arguments that the asserted references without NLB would disclose the recited “hard surface,” “high pressure,” “blast head,” “coatings,” and “high power vacuum pump.” Because we do not need to address those alternative arguments in this Decision, we do not need to construe these terms, as we explain in more detail below. First, Petitioner proposes construing “hard surface,” recited in claims 1 and 4, as “any surface having rigidity sufficient to support the weight of a vehicle carrying the blast head.” Pet. 13. Patent Owner proposes construing the term as “the surface of a material that is hard enough to withstand high-pressure water blasting without disintegrating, for instance paving material in common use for road, parking lot, and airport runway surfaces such as asphalt or concrete.” PO Resp. 8–9. The differences between these proposed claim constructions are material only to Petitioner’s alternative arguments that the asserted references without NLB would disclose a hard surface. Under both parties’ constructions, NLB’s roads, concrete, and asphalt are “hard surfaces,” which neither party has disputed. Ex. 1006, 2. Therefore, we do not need to construe “hard surface.”” slip op. at 19

  • Expert testimonyPetitioner expert discountedMixed

    “After evaluating the parties’ arguments and evidence, we agree with Patent Owner that Mr. Boos is an interested witness because of his positions with and his equity stake in Petitioner, and in evaluating his testimony, we consider his status as an interested witness in determining the probative weight of his opinions. For example, when Mr. Boos’s testimony is not sufficiently corroborated by objective evidence, we attribute little or no weight to his testimony due to that interest. When Mr. Boos’s testimony is sufficiently corroborated by objective evidence, however, we do not so discount his testimony. We do not agree with Petitioner’s suggestion that Patent Owner had to prove that Mr. Boos’s interest influenced his testimony for us to take into account that interest. Patent Owner established Mr. Boos’s interest. Therefore, we consider that interest when evaluating Mr. Boos’s testimony. Ethicon, 135 F.3d at 1465. We are not persuaded by Patent Owner’s other arguments for discounting Mr. Boos’s testimony. First, we do not read the testimony of Mr. Boos cited by Patent Owner as demonstrating that Petitioner’s attorneys, rather than Mr. Boos, were responsible for the technical opinions provided in his declarations. Ex. 1023, 16:10–18:3. Mr. Boos describes the preparation of his declaration as a collaboration with Petitioner’s attorneys. Id. Mr. Boos clarified that Petitioner’s attorneys helped with the legal parts of the declarations, but that Mr. Boos wrote the technical conclusions in his declaration. Id. at 240:24–241:23. Second, Mr. Boos articulated a motivation for combining references. See, e.g., Ex. 1009 ¶¶ 142–147.” slip op. at 23

  Patent outcomesUS 7,255,116 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,255,116
• Fujifilm Corporation v. Sony CorporationSome claims unpatentable
  PTAB · Nov 7, 2018 · IPR2017-01268 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 15 and 17 are unpatentable as anticipated by Ishikawa; the petitioner did not show claims 1–11, 16, and 18–20 unpatentable over Aonuma or Aonuma and Abe.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) at the time of the ’774 patent would have had “a bachelor’s degree in materials science, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience” in industry or academic research relating to magnetic tape, or “a master’s degree or higher” in the same fields and at least three years of experience relating to magnetic tape. Pet. 13 (citing Ex. 1003 ¶ 65; Ex. 1018 ¶ 60). Patent Owner does not dispute Petitioner’s assessment in its Response, and Dr. Talke agrees that it “is reasonable.” Ex. 2026 ¶¶ 25–26. Petitioner’s assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). Accordingly, we adopt Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 8

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

    “the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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)). For the purposes of the Decision on Institution, we determined that, based on the record at that time, no claim term required express construction (Dec. on Inst. 7), and we see no reason to modify that determination in light of the record developed during trial. C.” slip op. at 9

  • Expert testimonyPetitioner expert creditedMixed

    “considerably greater than Ishikawa’s stylus load of 50–300 μN (Ex. 1015 ¶ 45). The Talke Declaration does not address this discrepancy, and Dr. Talke stated during his deposition that reducing the stylus load would reduce scratching of the magnetic tape surface. Ex. 1030, 108:14–19 (“Q: Would reducing the contact pressure for the stylus instrument reduce the scratching of the magnetic tape surface by the stylus? A: Yes, it would, but you have to remember the other problem is the diameter and size of the stylus.”). Moreover, Petitioner provides evidence that it was not uncommon to use stylus-type profilometers to measure the properties of magnetic tape, even after Bhushan was published in 1996. See Reply 6. In particular, Petitioner points to Saliba,6 which describes using a stylus-type profilometer, under identical conditions to those used in Ishikawa, to measure the surface characteristics (including peak-to-valley roughness) of the backcoating of magnetic tape. Ex. 1027, 7:28–40, 57–60. Petitioner further points to Ohno,7 which also describes using “a stylus type 3D profilometer in accordance with JIS B0601” to measure the surface roughness characteristics of magnetic tape. Ex. 1028 ¶ 36; see also Ex. 1015 ¶ 45 (Ishikawa explaining that surface roughness characteristics were measured “in accordance with JIS-B0601-1994”); Ex. 1027, 7:28–39 (Saliba explaining that surface roughness characteristics where measured “in accordance with JIS-B0601-1994”). Accordingly, we are persuaded that the 6 US Patent No. 6,558,774 B1, issued May 6, 2003 (Ex. 1027). 7 U.S. Patent App. Pub. No. US 2005/0175866 A1, published Aug. 11, 2005 (Ex. 1028). evidence establishes that a stylus-type profilometer is a suitable device for measuring the surface characteristics of magnetic tape.” slip op. at 19

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

    “We agree with Petitioner that Ishikawa teaches “peak-to-valley roughness less than about 325 nm” as recited in claim 15. Pet. 24–25; Reply 5–8; Ex. 1003 ¶ 216. In particular, Ishikawa teaches a backcoating layer of a magnetic tape that has a peak-to-valley roughness “Rz of 40 to 250 nm, particularly 50 to 200 nm.” Ex. 1015 ¶ 44. Ishikawa provides five example embodiments of its magnetic tape, and reports the measurements of a number of characteristics of the backcoat layer for each example, including peak-to-valley roughness Rz. Id. ¶¶ 120–134, Table 1. Ishikawa discloses that peak-to-valley roughness Rz was measured using a stylus-type profilometer under the following conditions: Stylus: diameter: 1.5 to 2.5 μm; curvature: 60º Contact pressure: 50 to 300 μN Cut-off length: 80 μm Sampling length: 80 μm Assessment length: 400 μm Id. ¶¶ 45, 49. The reported peak-to-valley roughness Rz values for the five examples ranged from 58 to 87 nm, as shown in the annotated portion of Ishikawa Table 1 from the Petition, reproduced below: Pet. 24 (citing Ex. 1015, Table 1). The annotated portion of Ishikawa Table 1 shows the results for the measured characteristics of the backcoat layer of Examples 1–5, with the peak-to-valley roughness Rz values highlighted by a red box. Id. Because Ishikawa teaches that the backcoating layer of its magnetic tape should have a peak-to-valley roughness “Rz of 40 to 250 nm, particularly 50 to 200 nm,” and because Ishikawa presents examples of magnetic tape with backside surfaces having a peak-to-valley roughness of 87 nm or less, Ishikawa discloses “a peak-to-valley roughness less than about 325 nm” as recited in claim 15.” slip op. at 16

  Patent outcomesUS 7,029,774 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,029,774

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.