• Platinum Optics Technology, Inc. v. Viavi Solutions Inc.All claims unpatentable
  PTAB · Apr 11, 2024 · IPR2022-01489 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–19 are unpatentable: Hendrix anticipates them, and the listed combinations also render their respective claims obvious.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “In the Decision on Institution, we adopted a slightly modified version of this definition in which we removed the open-ended term “at least.” Inst. Dec. 10–11. Patent Owner does not address the definition of a POSA. See generally PO Resp. Patent Owner’s declarant Dr. Clemens applies Petitioner’s definition, but does not opine on whether it is correct. Ex. 2001 ¶¶ 22–23. As in the Decision on Institution (Inst. Dec. 10), we apply the same slightly modified version of Petitioner’s definition of the level of ordinary skill in the art that removes the open-ended term “at least.” We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ794 patent and the” slip op. at 11

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

    “filter comprises “a third set of layers on the second side, whether the third set of layers includes oxygen.” Ex. 1001, 10:41–49. Petitioner argues that the proper construction of this limitation “means that there is a third set of layers on the opposite side of the substrate, whether or not [the layers] include oxygen” – i.e., that the third set of layers do not need to include oxygen. Pet. 7–8. Patent Owner agrees that this is the “literal” reading of the language, but contends that one of ordinary skill in the art “would have appreciated that this language was intended to read ‘wherein’ rather than ‘whether’” and that the claim requires that this set of layers must include oxygen. PO Resp. 24–26 (citing Ex. 2001 ¶¶ 53–55). We agree with Petitioner’s representation that each of the challenges presented either anticipates or renders obvious a third set of layers with oxygen on a second side of a substrate (Pet. 8) and therefore, no claim construction is necessary for this term. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

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

    “415 F.3d at 1314): “a first set of layers on the first side, wherein the first set of layers includes silicon and hydrogen” (claim 1) and “a first set of layers including silicon and hydrogen” (claims 9 and 15). Ex. 1001, 10:41–49, 10:65–11:4, 11:17–12:5. As the parties agree, these recitations are broadly worded. See Pet. 14 (describing the recitations of the claims as “broad” and directed to “layers of any material that has both ‘silicon and hydrogen’”); PO Resp. 42 (describing the claims as “simply specifying physical layers including silicon and hydrogen in them”), 44 (describing the disputed terms as “open-ended claiming of layers including hydrogen and silicon”). Despite this broad language, Patent Owner contends that we must read “layers including silicon and hydrogen” in conjunction with other limitations in the claims reciting a “near infrared bandpass filter.” PO Resp. 35–37 (citing Ex. 2001 ¶¶ 65–66). For purposes of our analysis, we limit “layers including silicon and hydrogen” to only materials suitable for NIR bandpass filters, as suggested by Patent Owner. We next examine the rest of the intrinsic evidence. The specification of the ’794 patent does not contain language that generally describes “layers including silicon and hydrogen.” Instead, the specification describes only layers of hydrogenated silicon: its abstract is directed to an “optical filter” that “includes a filter stack formed of hydrogenated silicon layers” (Ex. 1001, code (57)); the technical field of the invention is described as “relat[ing] to optical filters including hydrogenated silicon layers and to sensor systems comprising such optical filters” (id. at 1:20–23); the summary of the invention describes “the present invention” as an optical filter or sensor system “comprising” “a plurality of hydrogenated silicon layers” (id. at 2:57–3:19); and the detailed description begins with a hydrogenated silicon (Si:H) layers” (id. at 4:19–20). The specification only mentions silicon and hydrogen separately with respect to the disclosed sputter-deposition system “used to produce the hydrogenated silicon material.” Id. at 4:35–5:61, 7:10–19. In particular, the specification describes how “cathode 430 includes a silicon target 431, which is sputtered in the presence of hydrogen (H2), as well as an inert gas such as argon, to deposit the hydrogenated silicon material as a layer on the substrate 420.” Id. at 4:44–47. The specification also describes how altering the hydrogen flow rate in the deposition process affects the optical properties of hydrogenated silicon produced by the deposition system. See id. at 5:1–61. But the only end product described from the sputter-deposition process using silicon and hydrogen is hydrogenated silicon. See id. at 4:35–5:61, 7:10–19. As such, the specification does not provide any indication of materials beyond hydrogenated silicon that are within the scope of “layers including silicon and hydrogen.”” slip op. at 15

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “hydrogen” defines a genus. The test for providing a written description that supports a genus claim is whether the description provides “either a representative number of species falling within the scope of the genus or in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010) (en banc). “Regarding whether common structural features must exist between a claim and a putative priority disclosure, those features must constitute the near-entirety of the structures being compared.” Regents of the Univ. of Minnesota v. Gilead Scis., Inc., 61 F.4th 1350, 1358 (Fed. Cir. 2023). Yet the patentees only disclosed hydrogenated silicon as a possible species. Indeed, the specification focuses on a singular example of a sputterdeposition system that is used to produce an improved hydrogenated silicon material. See Ex. 1017 ¶¶ 36–38. Patent Owner cites this deposition process as written description support for “the claimed layers containing silicon and hydrogen.” See PO Resp. 44. But this example supports only how to make hydrogenated silicon and does not include any indication about what other materials would be within the scope of the claimed genus. Under these circumstances, the specification’s disclosure of a single species is not an adequate number to show possession of the entire genus of “layers including silicon and hydrogen.” Beyond the disclosure of the sputter-deposition process for producing hydrogenated silicon, Patent Owner does not identify—and we cannot discern—any other examples of a “structure, formula, chemical name, physical properties, or other properties, of species falling within the genus sufficient to distinguish the genus from other materials.” Ariad, 598 F.3d at 1350. This is particularly noteworthy given that undisputed record evidence shows numerous other potential filter materials “including silicon and hydrogen.” See supra § II.D.1.a. In the absence of structural description supporting “layers including silicon and hydrogen,” we determine that an” slip op. at 19

  Patent outcomesUS 11,131,794 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 11,131,794
• Configit A/S v. Versata Development Group, Inc.All claims unpatentable
  PTAB · Dec 20, 2022 · IPR2021-01055 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–5 and 9–19 are unpatentable as obvious under § 103 over the combinations of Oracle1, Oracle2, and the additional references listed for each ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of ordinary skill in the art at the time of the invention would have had “a Bachelor’s degree in Computer Science, Computer or Electrical Engineering, Engineering Science, an engineering major with a significant computational component, or a similar discipline, or with at least two years of research or experience in configurable systems including testing.” Pet. 8 (citing Ex. 1003 ¶¶ 53–55). Patent Owner argues that “[t]here may be some differences between this and the correct level of skill in the art, but those differences will not affect this case at this stage,” such that Patent Owner applies the proposed level of skill in the art without agreeing to it. PO Resp. 11 (citing Ex. 2004 ¶¶ 35–37). We continue to find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision. See Dec. 6.” slip op. at 6

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

    “With respect to this rationale, we are not persuaded by Patent Owner’s arguments. The first part of the claim construction, namely rules not being properly defined and “produc[ing] an undesired effect,” does not specify an error being “internal” to the configuration engine. The specification provides that such a configuration error “may occur when a rule or series of rules is not properly defined and produces an undesired effect, such as the exclusion of a part that should be selectable” (Ex. 1001, 1:54–61, emphasis added), but the latter clause provides only one example of the undesired effect. While it seems clear that “internal” errors may result in a “configuration error,” we are not persuaded that the specification limits the term to only such errors. Further, the recitation in the specification that the invention is concerned with configuration errors in a system for configuring products describes generally the context of such configuration errors, and not that they need to be explicitly “in” the system. As such, we are not persuaded that “configuration errors,” as recited in the instant claims must be limited to errors contained in the configuration engine.” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner

    “Looking at all of the evidence presented and taking the arguments of the parties into consideration, we continue to determine that Petitioner has sufficiently shown that Oracle1 and Oracle2 were publicly available to serve as art under § 102(a). We further determine that Petitioner has shown by a preponderance of the evidence that the references were published at dates consistent with the evidence and testimony submitted, with the publication date for Oracle1 as April 30, 2000 and with the publication date for Oracle2 as March 31, 2000.” slip op. at 19

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “arguments. We find it curious that Patent Owner has not polled its own expert declarant or provided other evidence such as a survey of the appropriate literature at the time that the application that resulted in the ’766 Patent was filed to provide a showing of what the appropriate understanding of “configuration error” would have been. Looking to the examples cited in Dr. Woods testimony, they are purely exemplary, and he is certainly not definitive, as Patent Owner appears to acknowledge, when using the term “configuration error.” Patent Owner seeks to have us give weight to the portions that seem to support its understanding of the claim term, but give less weight to portions that do not, asserting the latter to be guided only by hindsight. This does not even address Patent Owner’s other assertions that Dr. Woods declaration should be entitled to little weight because it is “incomplete.” PO Resp. 37–39. In sum, according to Patent Owner, we should pick and choose aspects of Dr, Wood’s testimony to support Patent Owner’s contention, where the overall declaration should be given little weight. Looking at the totality of Dr. Wood’s testimony and his deposition testimony (Exs. 1002, 2005), we are not persuaded that it supports the proposition that Patent Owner relies upon to illustrate, namely that those of skill in the art would have known that configuration errors are internal to the configurator. Exemplary of this, Dr Wood avers that “[t]hroughout my Declaration I provide context of other configuration errors that would be understood by a person of ordinary skill in the art at the time of the patent. They can include syntax types of errors, semantic errors, logical errors, logical rule errors, as examples.” Ex. 2005, 59:22–60:05. Petitioner points out that Dr. Wood cited examples from Exhibits 1006, 1033, 1046, and 1050 pertaining to “configuration errors,” and those citations are not limited to those that would have been internal to the configurator. Pet. Reply 8 (citing Ex. 1002 ¶¶ 40–41, 48–49). As such, we are not persuaded that there is sufficient evidence before us that those of skill in the art would have known that configuration errors are internal to the configurator.” slip op. at 13

  Patent outcomesUS 6,836,766 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,836,766
• Astronics Test Systems, Inc. v. Teradyne, Inc.All claims unpatentable
  PTAB · Jul 20, 2022 · IPR2021-00350 · APJ Debra K Stephens · IPR · Final written decision

  Claims 1–8 are unpatentable as obvious over Schinabeck; the Board did not reach the Miyamoto and Frame grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we adopted Petitioner’s definition of the level of ordinary skill in the art with minor modification (Dec. 8–9; see Pet. 20). In particular, we removed the qualifier “at least” from the education level and from the experience level, because the qualifier introduces ambiguity. Patent Owner does not dispute this determination of the level of a person of ordinary skill in the art at the time of the invention (PO Resp. 8). Thus, we determine an ordinarily skilled artisan at the time of the invention would have had (i) a bachelor’s degree in electrical engineering, computer engineering, or a related field and (ii) one year of experience with testing of electronic equipment. We determine this asserted level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ’479 Patent and the prior art of record (cf. Okajima, 261 F.3d at 1355 (the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “execute a user program, the test equipment comprising” is the preamble and that it is limiting (Ex. 1003, 13:57–58; PO Resp. 9). In particular, Patent Owner contends, “the preamble of claim 1 [is] limiting because it serves as antecedent basis for multiple terms in the body of the claim, and it supplies ‘essential structure’ of the claimed invention” (PO Resp. 9). Petitioner does not address this contention (see Pet. Reply 4–5). We agree with Patent Owner that the preamble is limiting because the body of the claim refers to the user program as well as the automatic test equipment (Ex. 1003, 13:57–58, 14:14–17; see Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) ([D]ependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention”)). Patent Owner asserts the following limitation, “a channel circuit having a signal connection point adapted to be coupled to a signal line of a unit under test to receive an input signal having a value” (Ex. 1003, 13:58–61), “although formatted within the same paragraph as the preamble[,] is not actually part of the preamble, but rather part of the body of the claim” (PO Resp. 10). However, further in its argument, Patent Owner flips its statement in arguing “input signal having a value” and contends this is a “requirement[] of the preamble” (id. at 11). Petitioner’s contentions are only directed to the limitation (Pet. Reply 4–5).” slip op. at 12

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

    “Initially, we note the claim recites “a channel circuit having a signal connection point adapted to be coupled to a signal line of a unit under test to receive an input signal having a value” (Ex. 1003, 13:58–61), Thus, due to the recitation, we determine the input signal could be either that the signal connection point receives an input signal or the channel circuit receives an input signal (id.). The next limitation recites the comparison sub-circuit has “a signal input . . . wherein each of the comparison sub-circuits is adapted to produce a comparison output signal at the comparison output having a value input signal” (id. at 13:62–14:3). The claim does not recite that the “signal input” receives “the input signal.” Nevertheless, in light of the claim language and the Specification and because Petitioner has contended both interpretations are shown, we interpret the recited “input signal” as the signal received from the UUT. The portion of the ’479 Patent describing, in part, Figure 1, cited by Patent Owner discloses ATE 139 includes multiple instruments that may generate and measure signals. A host computer 120 executes a software program that controls operation of each of the instruments. Host computer 120 may be programmed to analyze these outputs to determine whether the system under test 189 is operating properly. Such programming is traditionally a part of a user program and drives programmed values and compares measured values to expected values on one or more signal lines connected to the UUT. These steps may be programmed for multiple lines for multiple test cycles (Ex. 1003, 3:32–51; PO Sur-reply 3). The ’479 Patent further describes an “ATE . . . provide[s] stimulus to . . . the UUT and then measure[s] the output to determine if the UUT has performed to its specifications” (Ex. 1003, 1:30–33; PO Sur-reply 3). Thus, these descriptions support both interpretations. Nevertheless, the ’479 Patent describes a signal being supplied and compared to expected values. Accordingly, we interpret “an input signal” as being the signal received from a unit under test (UUT).” slip op. at 14

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

    “We determine Schinabeck teaches the structure of the comparison sub-circuits recited in claim element 1a. Indeed, given that switches and comparators were known (Tr. 35:5–8; Ex. 1026, 17:17–18:8, 30:16–22), we determine switching certain switches on or off is a switch performing the same function it had been known to perform, yielding no more than one would expect from such an element (KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)). Thus, turning switches off or on in Schinabeck’s circuitry, would not have been “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art” (see Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19)). A skilled artisan is “a person of ordinary creativity, not an automaton” (see KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420-21 (2007)). An ordinarily skilled artisan “must be presumed to know something” about the art “apart from what the references disclose” (In re Jacoby, 309 F.2d 513, 516 (CCPA 1962)). We further credit Dr. Wicker that an ordinarily skilled artisan “would have understood that switch K3a can be opened or closed depending upon the desired test set-up” and “by definition, switches are controlled to be open or closed” (Ex. 1001 ¶ 90). And again, Schinabeck contemplates use of the circuitry as recited, as described in claim 10 discussed supra. We thus are persuaded that Schinabeck teaches or at least suggests limitation 1a). We are also not persuaded Petitioner used impermissible hindsight reconstruction as the circuitry elements in Schinabeck are being used as was known to be used for the purpose of “monitoring response signals during automated testing of any other circuit elements –– Petitioner is relying on closing switches in the disclosed circuity of Schinabeck (Pet. 25–27). Additionally, Schinabeck discloses coupling comparison circuits to the same response signal (Ex. 1008, 11:49–53, 12:56–13:7, 4:49–66 and thus, Patent Owner’s contention that this grouping is “not any ‘desired’ configuration for functional or parametric testing” in Schinabeck is not supported by Schinabeck’s disclosure.” slip op. at 31

  Patent outcomesUS 7,395,479 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,395,479
• Maxlite, Inc. v. Jiaxing Super Lighting Electric Appliance Co., Ltd.All claims unpatentable
  PTAB · Apr 29, 2022 · IPR2020-00208 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 7, and 12–18 are unpatentable as anticipated by Duan under § 102(a)(1).

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a B.S. degree in electrical engineering, or an equivalent field, as well as at least 2-4 years of academic or industry experience in lighting design, including knowledge of LEDs and related technology for driving LEDs. A person of ordinary skill in the art with a higher level of education may have fewer years of academic or industry experience, or vice versa. Pet. 22 (citing Ex. 1002 ¶ 10). Patent Owner does not contest Petitioner’s articulation of the level of skill in the art. PO Resp. 4–5. We regard Petitioner’s definition as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, we adopt Petitioner’s proposal.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “embodiments that operate with a low frequency driving signal in a double-ended configuration, Patent Owner did not recite “low frequency” or “double-ended” in its claims and instead chose the broader term “first driving mode.” See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). The fact that a limitation in the specification may define over the prior art does not justify importing that limitation into the claims unless a term is expressly defined such that the patentee becomes his own lexicographer or there is an express disavowal of claim scope. See GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1308–09 (Fed. Cir. 2014). There is no evidence of an express disavowal here. As to lexicography, we disagree with Patent Owner’s contention that the Specification defines the phrase “first driving mode.” Patent Owner relies on the mere fact that the specification describes an embodiment with a first driving mode that has a low frequency driving signal and is in a “double-ended” configuration, but this is not sufficient to define the term. The specification does not require that a low frequency driving signal must necessarily be used. In fact the specification, although not entirely clear, suggests that the driving signal may be from a high frequency ballast. Ex. 1001, 51:8–14. Thus, the fact that the patent here discloses a low frequency driving signal does not mean that all the claims are directed to such a driving signal. See E-Pass Tech., Inc. v. 3Com Corp., 343 F.3d 1364, 1368–69 (Fed. Cir. 2003). Indeed, dependent claim 15 recites “the first driving mode is performed when the external driving signal is a relatively low frequency or voltage signal,” while the independent claims were directed to a more general driving signal. The doctrine of claim differentiation suggests that the independent claims here should not include explicit limitations of a dependent claim. See Phillips, 415 F.3d at 1315 (“[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.”); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004).” slip op. at 7

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “We determine that Patent Owner has not shown sufficiently that the Chinese priority patent applications it relies on—the ’636 Chinese Application and the ’586 Application—provide written description support for the limitation of “a mode determination circuit, configured to generate a first determined result signal based on the external driving signal” and “a mode switching circuit, coupled to the filter circuit and the driving circuit, configured to determine whether to perform a first driving mode or a second driving mode based on the first determined result signal,” recited in claim 1. PO Resp. 31–34, 60–67. Specifically, Patent Owner relies on structures in the ’636 Chinese Application and the ’586 Application that are not sufficiently similar to structures in the ’826 patent i.e., DR Circuit 140, excluding diodes D5 and D6, as shown in Figs. 24i-j and 29b. Id. at 27 (citing Ex. 2001, 23–24, 29, and 33, Fig. 24i–j and 29b).” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “For the reasons above, Patent Owner has not established that claim 1 of the ’826 patent is entitled to the effective filing date of the ’636 Chinese Application (i.e., June 10, 2015) or the ’586 Application (i.e., March 26, 2015). Because the remaining asserted claims are dependent claims, Patent Owner has also not established that claims 7 and 12–18 of the ’826 patent are entitled to the effective filing date of the ’636 Chinese Application or the ’586 Application. The application that led to the ’826 patent was filed on March 25, 2016. The ’826 patent claims it is a continuation-in-part of application No. 15/055,630 (“the ’630 Application”), filed on February 28, 2016. So, even if the challenged claims were entitled to the earlier February 28, 2016 filing date, Duan issued on July 1, 2015, and is, thus, prior art to the challenged claims of the ’826 patent under 35 U.S.C. § 102(a)(1).” slip op. at 18

  Patent outcomesUS 9,807,826 unpatentable
  Claim construction§ 102 anticipation§ 112 disclosurecites Phillips
  Patents in suitUS 9,807,826
• Vudu, LLC v. Ideahub, Inc.All claims unpatentable
  PTAB · Apr 14, 2022 · IPR2020-01688 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1, 3, 4, 6, 8, 11, 13, 15, 18, 19, 21, and 23 are unpatentable over DIS 23009-1; the revised contingent motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 18–19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor 6 Patent Owner does not present objective evidence of nonobviousness. does it present its own definition. We adopt Petitioner’s definition as it is consistent with the specification of the ’830 patent and the cited references.” slip op. at 10

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

    “Petitioner proposes that we construe “adaptation set,” “SegmentBase,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in its briefing. We need not construe any claim term to resolve any issues before us, and therefore, do not expressly define any claim term in our Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied

    “not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely because paragraph 253 uses the term “[h]ereinafter” before it discloses “two simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited 8 Ex. 2005 is Application No. 16/168,933 (“the ’933 application”). in limitations [38.6], [40.6], and [46.6]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicates a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. MTA 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 38, 40, and 46 do not find sufficient written description support in the ’644 application nor in the ’933 application, whether considered individually or collectively, and thus, these claims contain new matter.” slip op. at 35

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

    “rationale for combining DIS 23009-1 with M20060, Petitioner persuasively contends that: A POSA would have been motivated to add the additional “metadata” described in M20060 to the MPDs described in the DIS 23001-6 or DIS 23009-1 references in order to enable the client to choose the most suitable version of media content among alternative versions of media content. For example, M20060 describes that the additional metadata (e.g., the extended accessibility element and the usedWith, equivalentTo, bitDepth, minBitDepth, and maxBitDepth attributes) helps “both users and clients to select appropriate representations” by, for example, “1) supporting accessibility, 2) describing relationships of representations, and 3) describing media’s bit depth.” Moreover, a POSA would have had an expectation of success in modifying the MPDs in DIS 23001-6 or DIS 23009-1 to include the additional metadata described below because it simply would have been a matter of adding additional metadata to the MPD XML schemas described in DIS 23001-6 or DIS 23009-1. Id. (citing Ex. 1094 ¶ 33; Ex. 1097 § 1, 1). Dr. Bestavros persuasively explains that “M20060 expressly references the DIS 23001-6 reference and proposes specific modifications to the MPEG DASH metadata included in the MPD XML schema.” Ex. 1094 ¶ 34 (citing Ex. 1097 § 1, 1 (introduction of M20060); Ex. 1097, 7 (references cited by M20060)).” slip op. at 41

  Patent outcomesUS 10,270,830 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,270,830
• Vudu, Inc. v. Ideahub, Inc.All claims unpatentable
  PTAB · Apr 14, 2022 · IPR2020-01689 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1, 11, 25, 27, and 29 are unpatentable as anticipated by and obvious over DIS 23009-1; the revised contingent motion to amend proposing claims 31–35 is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level Of Ordinary Skill In The Art Petitioner contends that: A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor does it present its own definition in any of its briefing. We adopt Petitioner’s definition as it is consistent with the Specification of the ’414 patent and the cited references.” slip op. at 10

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

    “Petitioner proposes that we construe “adaptation set,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in any of its briefing. 6 Patent Owner does not present objective evidence of nonobviousness. and therefore, do not expressly define any claim term in our Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 10

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot shown unpatentable

    “The newly-cited portion in paragraph 232 does not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited in limitations [31.11], [32.12], and [35.7]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicate a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 31, 32, and 35 do not have sufficient written description support in the ’644 application and the ’092 application, either individually or collectively, and as such, contain new matter.” slip op. at 29

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “are not entitled to a priority date earlier than March 16, 2012 (the filing date of PCT ’922), because the disclosure of KR10-2011-0023271 does not support at least the limitations of: “the adaptation set includes one or more attributes or elements that are common to each of the representations for that adaptation set,” as recited in independent claims 1 and 11, and the “SegmentTemplate” recited in independent claims 25. Patent Owner has not asserted, after institution, that the challenged claims are entitled to an earlier date. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327–28 (Fed. Cir. 2008) (indicating that patent owner bears a burden of production in arguing that the asserted references are not prior art based on entitlement to an earlier priority date). As such and for the reasons discussed below, Petitioner has persuasively demonstrated that DIS 23001-6, DIS 23009-1, and 3GPP TS 26.247 qualify as prior art to the challenged claims, because Petitioner has sufficiently demonstrated that the references were publicly accessible prior to the applicable priority date of March 16, 2012.” slip op. at 12

  Patent outcomesUS 10,313,414 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,313,414
• Unified Patents Inc. v. Ideahub, Inc.All claims unpatentable
  PTAB · Feb 7, 2022 · IPR2020-01338 · APJ Michael T Cygan · IPR · Final written decision

  Claims 1–9 are unpatentable; substitute claims 13–16 are denied as obvious over Chen, OAI, 3GPP, and Brueck, and claims 17–20 are withdrawn.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert discountedDenied

    “B. Patent Owner’s Motion under § 42.64(c) is denied as based on untimely objections to testimony. Patent Owner styled its Motion as a “Motion to Exclude Petitioner’s” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner offers an assessment as to the level of skill in the art as of” slip op. at 18

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

    “9. Rationale to combine Chen and OAI” slip op. at 39

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

    “8. Whether OAI is Analogous Prior Art Petitioner set forth reasons why OAI is analogous art in its Petition.” slip op. at 34

  Patent outcomesUS 8,645,562 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 8,645,562
• Apple Inc. v. Corephotonics, Ltd.All claims unpatentable
  PTAB · Dec 7, 2021 · IPR2020-00862 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 2, 5, 9–14, 17, 21, and 22 are unpatentable under §103 over the Golan-based combinations; the Board found the combinations taught the limitations and secondary considerations lacked nexus.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “Here, as explained below in Section III.E.2., under either articulation of the level of skill in the art Petitioner has shown the claims would have been obvious. Therefore, we do not need to determine whether knowledge of photography is required for the level of skill in this case. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (Where a determination of level of skill would not change the result “we find no harm under the circumstances of this case in the Board’s failure to set forth express findings as to the level of skill.”). For the reasons above, we determine, on the full record before us, that the level of ordinary skill in the art proposed by Petitioner is consistent with the ’332 patent and the asserted prior art. We adopt that level for the purpose of this Decision.” slip op. at 9

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

    “Petitioner asserts “for the purposes of this proceeding and the analysis presented herein, no claim term requires express construction [and that it] analyzes the claims consistent with ordinary and customary meaning as would be understood by a POSITA in light of the specification.” Pet. 8. Patent Owner does not request construction of any claim term. See generally PO Resp. 12 12 Patent Owner proposed a construction for the limitation “no-switching criterion,” as recited in each of the challenged claims in its Preliminary Response. Prelim. Resp. 7–8. Patent Owner asserted “no-switching criterion” should be construed as “one more criteria determined based on inputs obtained from the two camera images.” Id. at 7. In the Institution Decision, we did not limit “no-switching criterion” to “one more criteria determined based on inputs obtained from the two camera images.” Patent Owner did not address claim construction in its Patent Owner Response. See generally PO Resp. Our Scheduling Order states that “Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.” Paper 8, 8. Thus, Patent Owner’s proposed construction for the limitation “no-switching criterion” is waived and we do not explicitly We do not discern a dispute between the parties regarding any limitation and we need not expressly construe any limitation to resolve the controversy before us. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

  • BurdenUnpatentable

    “We have reviewed Petitioner’s arguments, the supporting testimony provided by Dr. Durand, the cited portions of Golan, Martin, and Togo and the other cited evidence and we are persuaded that the proposed combination teaches the limitations recited in independent claim 1 as set forth above. Petitioner’s rationales for combining Golan and Martin and Golan, Martin, and Togo are set forth earlier in this Section, and is determined to be supported by sufficient rational underpinning for at least the reasons set forth above. Patent Owner’s contentions regarding secondary considerations of non-obviousness are set forth above and, as discussed, do not weigh in favor of non-obviousness because Patent Owner has not established a nexus between the claimed invention and the cited evidence. For the foregoing reasons, we conclude Petitioner establishes unpatentability of independent claim 1 over Golan and Martin by a preponderance of the evidence. Accordingly, we are persuaded that Petitioner demonstrates the unpatentability of claim 1 over the combination of Golan, Martin, and Togo by a preponderance of the evidence.” slip op. at 55

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

    “We do not agree with Patent Owner’s arguments, which are premised on a “physical” or “bodily” incorporation of limitations of one reference into the other. This is not the standard. See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”). The relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Rather than express obviousness as the physical incorporation of a structure from one reference into the structure of another reference, the prior art should be viewed as a combination of teachings from different sources, and the use of those teachings by one of ordinary skill in the art. See KSR Int’l Co., 550 U.S. at 418(the conclusion of obviousness can be based on the interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art). Petitioner contends “Togo’s image-quality-based no-switching criterion teachings apply to the combination regardless of whether a distance between cameras is close or whether optical axes are parallel.” Pet. Reply 10 (citing Ex. 1040 ¶ 52). Petitioner seeks only “to incorporate Togo’s teachings of a no-switching criterion based on a specific ‘setting magnification X’ and ‘photography distance Y’ of an object to be imaged.” Pet. 32 (citing Ex. 1005 ¶ 15; Ex. 1010 ¶¶ 2, 37, 49; Ex. 1003 ¶ 68). Thus, Patent Owner’s argument does not undermine Petitioners showing For the foregoing reasons, we are persuaded that Petitioner’s rationale for combining Golan, Martin, and Togo is supported by sufficient rational underpinning. See KSR, 550 U.S. at 418. We are further persuaded that the cited evidence sufficiently supports Dr. Durand’s testimony.” slip op. at 43

  Patent outcomesUS 10,356,332 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,356,332
• Apple Inc. v. Corephotonics, Ltd.All claims unpatentable
  PTAB · Dec 7, 2021 · IPR2020-00861 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 4, 8–12, 15, 19, and 20 are unpatentable as obvious over the Golan, Martin, and Togo combinations, with Levey, Border, or Parulski added for certain dependent claims.

  RulingsFinal written decision

  • Skill levelOther

    “Here, as explained below in Section III.E.2., under either articulation of the level of skill in the art Petitioner has shown the claims would have been obvious. Therefore, we do not need to determine whether knowledge of photography is required for the level of skill in this case. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (Where a determination of level of skill would not change the result, “we find no harm under the circumstances of this case in the Board’s failure to set forth express findings as to the level of skill.”). For the reasons above, we determine, on the full record before us, that the level of ordinary skill in the art proposed by Petitioner is consistent with the ’898 patent and the asserted prior art. We adopt that level for the purpose of this Decision.” slip op. at 8

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

    “Petitioner asserts “for the purposes of this proceeding and the analysis presented herein, no claim term requires express construction [and that it] analyzes the claims consistent with ordinary and customary meaning as would be understood by a POSITA in light of the specification.” Pet. 8. Patent Owner does not request construction of any claim term. See generally PO Resp.12 12 Patent Owner proposed a construction for the limitation “no-switching criterion,” as recited in each of the challenged claims, in its Preliminary Response. Prelim. Resp. 7–9. Patent Owner asserted “no-switching criterion” should be construed as “one more criteria determined based on inputs obtained from the two camera images.” Id. at 7. In the Institution Decision, we did not limit “no-switching criterion” to “one more criteria determined based on inputs obtained from the two camera images.” Patent Owner did not address claim construction in its Patent Owner Response. See generally PO Resp. Our Scheduling Order states that “Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.” Paper 8, 8. Thus, Patent Owner’s proposed construction for the limitation “no-switching criterion” is waived, and we do not We do not discern a dispute between the parties regarding any limitation and we need not expressly construe any limitation to resolve the controversy before us. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

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

    “from parallax, which Martin depends on. Id. at 40 (citing Ex. 2001 ¶ 84; Ex. 1001, 7:50–53). “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.” Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (quoting In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)). We are not persuaded that the invention claimed in the ’898 patent or Golan teaches away from Martin because they do not discourage or lead one in a direction divergent from Martin’s teachings relevant to “evaluat[ing] if a no-switching criterion is fulfilled or not fulfilled . . .” as recited in claim 1. In addition to providing an autostereoscopic display of 3D images using parallax images, Martin also discloses aligning these same parallax images using transformation parameters. See Ex. 1006, 5:38–42. Thus, Martin’s teaching of critical alignment does not appear to be divergent from or incompatible with the scope of independent claim 1 or the objectives of the ’898 patent. Nor is Martin incompatible with Golan for having a different objective. Petitioner need not show that Martin shares a common objective with Golan or the patent at issue. Intelligent Bio-Systems, 821 F.3d at 1367. Thus, Patent Owner’s teaching away argument does not undermine Petitioner’s contentions.” slip op. at 34

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

    “from parallax, which Martin depends on. Id. at 40 (citing Ex. 2001 ¶ 84; Ex. 1001, 7:50–53). “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.” Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (quoting In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)). We are not persuaded that the invention claimed in the ’898 patent or Golan teaches away from Martin because they do not discourage or lead one in a direction divergent from Martin’s teachings relevant to “evaluat[ing] if a no-switching criterion is fulfilled or not fulfilled . . .” as recited in claim 1. In addition to providing an autostereoscopic display of 3D images using parallax images, Martin also discloses aligning these same parallax images using transformation parameters. See Ex. 1006, 5:38–42. Thus, Martin’s teaching of critical alignment does not appear to be divergent from or incompatible with the scope of independent claim 1 or the objectives of the ’898 patent. Nor is Martin incompatible with Golan for having a different objective. Petitioner need not show that Martin shares a common objective with Golan or the patent at issue. Intelligent Bio-Systems, 821 F.3d at 1367. Thus, Patent Owner’s teaching away argument does not undermine Petitioner’s contentions.” slip op. at 34

  Patent outcomesUS 10,230,898 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,230,898
• Apple Inc. v. Corephotonics, Ltd.All claims unpatentable
  PTAB · Dec 7, 2021 · IPR2020-00896 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1–12 are unpatentable: claims 1–11 over the listed §103 grounds, and claim 12 over Chen, Iwasaki, and Beich.

  RulingsFinal written decision

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

    “testimony, and the accompanying Zemax diagrams and we are persuaded that Petitioner establishes that the combination of Ogino and Chen II teaches the limitation recited in claim 4. Petitioner apparently relies on the same motivation to combine Ogino and Chen II as it does for independent claim 1, which we determined above is supported by sufficient rational underpinning with a reasonable expectation of success. See Pet. 26–36; supra § III.E.3.b. Accordingly, we are persuaded that Petitioner establishes unpatentability of claim 4 over the combination of Ogino and Chen II by a preponderance of the evidence.” slip op. at 30

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art” slip op. at 9

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

    “determine that Petitioner’s contentions and Dr. Sasián’s supporting testimony are sufficiently supported by the cited portions of Iwasaki and that Iwasaki teaches each of the limitations of claim 1 and its preamble. Patent Owner does not dispute Petitioner’s showing. For the foregoing reasons, we are persuaded that Petitioner establishes the unpatentability of claim 1 over Iwasaki by a preponderance of the evidence.” slip op. at 17

  Patent outcomesUS 10,317,647 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,317,647

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.