• Billerud Aktiebolag (Publ) v. Westrock MWV, LLCSome claims unpatentable
  PTAB · Mar 12, 2025 · IPR2023-01206 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1, 2, and 4–22 are unpatentable as obvious; claim 23 was not shown unpatentable. Substitute claims 25–26 are allowed, while 24 and 27 are denied for lack of written-description support.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “Exhibits 1013 and 1014 are also not admissible as expert testimony because Mr. Wirén is not “qualified as an expert by knowledge, skill, experience, training, or education.” Fed. R. Evid. 703. “To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art. Without that skill, the witness’ opinions are neither relevant nor reliable.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). Mr. Wirén does not meet our definition of a person of ordinary skill in the art. See Section II.B, supra. That definition is based on the undisputed testimony of Messrs. Zotterman and Klass. Ex. 1003 ¶ 24; Ex. 2003 ¶ 26. Although Mr. Wirén has a Master’s of Science in chemical engineering, he lacks any experience or specialization in paperboard manufacturing. Ex. 2011, 12:1–10, 19:6–25, 20:2–7. We therefore agree with Patent Owner that Exhibits 1013 and 1014 are the testimony of Mr. Wirén and should be excluded from evidence because Mr. Wirén is not a person of ordinary skill in the relevant art. PO MTE 5–6, 9; Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362 (Fed. Cir. 2008) (“Unless a patent lawyer is also a qualified technical” slip op. at 61

  • Skill levelSkill level board ownOther

    “Level of Ordinary Skill in the Art Based on the testimony of the parties’ witnesses, we determine that a person of ordinary skill in the art would have had a bachelor’s degree in paper science and engineering, chemical engineering, process engineering, mechanical engineering, or a related degree, with three to five years of experience in paperboard manufacturing, or a master’s degree in paper science and engineering, chemical engineering, process engineering, or mechanical engineering, or a similar field with a specialization in paperboard manufacturing. Ex. 1003 ¶ 24; Ex. 2003 ¶ 26. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’142 Patent Specification and the asserted prior art references.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “A claim construction that excludes a particular element is viewed as a “negative limitation.” Ethicon LLC v. Intuitive Surgical, Inc., 847 Fed. App’x 901, 907 (Fed. Cir. Mar. 15, 2021). “[S]uch exclusions must find support either in ‘the words of the claim’ or through an ‘express disclaimer or independent lexicography in the written description that would justify adding that negative limitation.’” Id. (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366–67 (Fed. Cir. 2002)). “The standards for finding lexicography and disavowal are exacting.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term,’ and ‘clearly express an intent to define the term.’” Id. (citing Thorner, 669 F.3d at 1365). Similarly, disclaimer or disavowal requires that the specification or prosecution history demonstrate that the invention does not include a particular feature. Id. Here, we find no claim language, lexicography, or disclaimer in the ’142 Patent or its file history that would support defining a “hot-hard calender” as requiring that only one of the two rollers be heated to an elevated temperature.” slip op. at 12

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

    “a contact surface of said thermo-roller is heated to an elevated temperature of at least 250°F.” Petitioner shows persuasively that the temperature limitation is taught by the combination of Fugitt and Papermaking. Pet. 32–34. Fugitt discloses that “[t]he rolls of the calender may be steam heated.” Ex. 1004 ¶ 26. In a section titled “Heated Rolls,” Papermaking discloses that “Steam can be used up to 170°C [338°F] surface temperature.” Ex. 1010, 95, 98. Petitioner is thus correct that, “[w]hile Fugitt teaches that a hot calender may be steam heated, Papermaking clarifies that one of ordinary skill in the art would understand that steam heated thermo-rollers may reach up to 338°F.” Pet. 36. Based on these disclosures, we are persuaded by Mr. Zotterman’s testimony that it would have been “obvious to heat the thermo-roller of Fugitt to at least 250°F.” Ex. 1003 ¶ 159. combine Fugitt and Papermaking because of Papermaking’s status as a “trusted handbook[],” because both references disclose a method of manufacturing a paperboard structure with hot calendering,” and “because of the known advantages of heated rollers.” Pet. 36–37; Ex. 1003 ¶¶ 157, 159, 162. Petitioner’s contention is supported by Papermaking’s disclosures that, for cartonboard, “[p]recalendering is used before the coater to reduce roughness and porosity” and “[h]igh thermo roll temperatures (in some cases over 200°C) result in bulk savings because of the temperature gradient.” Ex. 1005, 80–82; see also Pet. 38; Ex. 1003 ¶ 164 (citing these disclosures). Papermaking’s disclosed range of “up to 170°C [338°F]” for steam- heated rolls (Ex. 1010, 98), overlaps the claimed range of “at least 250°F.” Patent Owner agrees. Tr. 27:11–13. “If the relevant comparison between a disputed claim limitation and the prior art pertains to a range of overlapping values, ‘. . . even a slight overlap in range establishes a prima facie case of obviousness.’” Genentech, Inc. v. Hospira, Inc., 946 F.3d 1333, 1341 (Fed. Cir. 2020) (citing In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). “[S]uch an overlap creates a presumption of obviousness, and . . . the burden of production falls upon the patentee to come forward with pertinent evidence that the overlapping range would not have been obvious in light of the prior art.” Id. (citing E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1006, 1008 (Fed. Cir. 2018)). slip op. at 21

  Patent outcomesUS 11,293,142 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,293,142
• Apple Inc. v. RJ Technology LLCSome claims unpatentable
  PTAB · Feb 18, 2025 · IPR2023-01350 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 5–10 are unpatentable as obvious; claims 11–14 were not shown unpatentable because the evidence did not establish the claimed capacity retention after 400 cycles.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art “would have held a Bachelor’s degree in chemistry or chemical engineering, with at least 4 years of experience in cell design, electrochemical techniques, and battery materials development.” Pet. 4. Petitioner further contends that a “Master’s Degree can substitute[] for some of the relevant experience,” and “[e]quivalent training with battery specific experience can accommodate other degreed fields.” Id. 9 The parties here do not address objective evidence of nonobviousness. Patent Owner does not dispute Petitioner’s definition of the ordinarily skilled artisan. PO Resp. 20. We adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the ’641 patent, the prior art of record, and the parties’ arguments.” slip op. at 6

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

    “The parties agree that the term “charge cut-off voltage” is “the maximum voltage to which the battery is configured to be charged.” PO Resp 21–22; Pet. Reply 1. The parties dispute, however, whether the “charge cut-off voltage” is a “battery property” or “the voltage applied to the battery during charging.” PO Resp. 21–24; Pet. Reply 1–6. We need not resolve the precise meaning of “charge cut-off voltage” because there is no dispute that Yamaki discloses this limitation under either party’s interpretation of the claim term. Upon review of the prior art and the parties’ arguments, we determine that no terms of the ’641 patent require express construction. See 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))); Pet. Reply 1 (asserting that the challenged claims are unpatentable under either parties’ construction of “charge cut-off voltage”).” slip op. at 7

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

    “Patent Owner’s arguments do not persuasively undermine Petitioner’s position. Sakamoto expressly discloses setting the ratio of negative to positive electrode active material in the range of 1.05 to 1.30. Ex. 1005 ¶ 8. Sakamoto also explains why this range is preferable, i.e., if the ratio is roughly equal “the charge-discharge cycle performance is insufficient due to significant deterioration from charging and discharging,” and if the ratio is 10 Citations to the prosecution history of Yamaki are to the page numbers added to the lower right corner of the document. too high “too much of the compound does not participate in charging and discharging.” Id. ¶¶ 6, 8. These disclosures are sufficient to explain why one of ordinary skill in the art would have found it obvious to select the ratios disclosed in Sakamoto in Yamaki. Id. ¶ 8 (providing a secondary battery with a capacity ratio between 1.05 and 1.30 and noting that by setting the ratio within this range the resulting secondary lithium battery is “safe due to low risk of heat being generated and an explosion occurring”). We also disagree that Sakamoto teaches away from elevated voltages or from increasing the amount of lithium in circulation. See PO Resp. 29. Contrary to Patent Owner’s arguments, Sakamoto provides no general teaching against using a charge cut-off voltage above 4.2 V, or against increasing the level of lithium in circulation. Nor does Sakamoto “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather, Sakamoto warns against setting the reversible capacities of the positive and negative electrode substantially equal as this may result in excess lithium plating on the surface of the electrode. Ex. 1005 ¶¶ 6, 8. We agree with Petitioner that this disclosure would lead one of ordinary skill in the art to design a battery with a higher capacity in the negative electrode active material than the positive electrode active material. Pet. 11–12.” slip op. at 14

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

    “We also disagree that Sakamoto teaches away from elevated voltages or from increasing the amount of lithium in circulation. See PO Resp. 29. Contrary to Patent Owner’s arguments, Sakamoto provides no general teaching against using a charge cut-off voltage above 4.2 V, or against increasing the level of lithium in circulation. Nor does Sakamoto “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather, Sakamoto warns against setting the reversible capacities of the positive and negative electrode substantially equal as this may result in excess lithium plating on the surface of the electrode. Ex. 1005 ¶¶ 6, 8. We agree with Petitioner that this disclosure would lead one of ordinary skill in the art to design a battery with a higher capacity in the negative electrode active material than the positive electrode active material. Pet. 11–12.” slip op. at 15

  Patent outcomesUS 7,749,641 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,749,641
• Samsung Electronics Co., Ltd. / Apple Inc. v. RJ Technology LLCSome claims unpatentable
  PTAB · Jan 17, 2025 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 2–4 and 6–18 are unpatentable as obvious over Abe and Guyomard, with claims 9–10 also obvious over Iwaizono; claims 1 and 5 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years of experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. (citing Ex. 1002 ¶¶ 50–51). Patent Owner “does not dispute Petitioner’s level of ordinary skill.” PO Resp. 17. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the disclosures of the ’641 patent and the prior art of record.” slip op. at 9

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

    “We also agree with Patent Owner that the charge cut-off voltage is not necessarily the applied voltage during charging. PO Resp. 20. Rather, depending on the charging protocol used and when in the charging cycle the voltage is applied, the applied voltage could be higher than the battery voltage. Ex. 2013; Ex. 2006 ¶ 91. For example, as discussed in more detail below with respect to the Uemura grounds, when fast charging using constant current is used and the charging rate is not slow, the applied voltage will be higher than the battery voltage when the constant current charging phase is stopped. Ex. 2006 ¶ 91; Ex. 2013. Likewise, during constant current/constant voltage charging, the applied voltage approximates the battery voltage only when the battery is nearly completely charged. Ex. 2013; Ex. 2006 ¶ 91. Thus, the applied voltage may be, but is not necessarily, the charge cut-off voltage. In view of the foregoing, we construe “charge cut-off voltage” in claims 1 and 5 as “the maximum value to which the battery is configured to be charged.” PO Resp. 18; Ex. 2008, 217:6–11; Pet. Reply 5. Contrary to Patent Owner’s arguments, however, we do not understand the phrase “configured to be charged” to necessarily represent a single voltage for the battery that is determined based on the structure and chemistry of the battery. Pet. Reply 4–5. Rather, the charge cut-off voltage is a selected potential, or voltage, of the battery or cell at the end of charging that is controlled by a circuit or device, such as a charger or control circuit within the battery. Ex. 1001, 9:50–55; Ex. 1048, 2, 7–8; Ex. 1008, 3:9–13. And, for the reasons discussed herein, the charge cut-off voltage may be, but is not necessarily, the same as the applied voltage during charging. PO Resp. 20.” slip op. at 15

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

    “charge cut-off voltage “greater than 4.2 V but less than 5.8 V” and calculating a specific or theoretic capacity “with a charge cut-off voltage limited to 4.2” (claim 1) or “with a charge cut-off voltage set at 4.2 V” (claim 5). Ex. 1001, 16:56–61, 17:6–11. Although the parties dispute the precise scope of these claim terms, the parties agree that the first use of “charge cut-off voltage” in claims 1 and 5 refers to the potential of the battery as a whole (between the cathode and the anode), and not a half-cell voltage using lithium metal as a counter electrode.10 Tr. 17:1–3 (agreeing 10 With respect to the phrase “as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V,” the parties in fact appear to be in that the first use of “charge cut-off voltage” in claim 5 refers to a full-cell voltage); Sur-reply 5; PO Resp. 22. We need not further construe the claims to resolve the disputes between the parties. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 16

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Given Mr. Juzkow’s unambiguous testimony that Uemura uses constant current charging that would stop when the applied voltage reached 11 The chart is reproduced from SAFT, Charging your lithium-ion batteries: 5 expert tips for a longer lifespan, (https://www.saft.com/energizing-iot/charging-your-lithium-ion-batteries-5-expert-tips-longerlifespan#:~: text=When%20the%20battery%20provides%20current,This%20restore s%20the%20battery's%20capacity). 4.3 V, as well as Dr. Yao’s persuasive testimony that Uemura’s constant charging rate is not slow, we credit the testimony of Dr. Yao that one of ordinary skill in the art would have understood that the internal voltage to which the battery of Uemura was charged is less than 4.3 V. Ex. 2006 ¶ 119. In particular, Dr. Yao persuasively testifies that one of ordinary skill in the art would have believed that the charge cut-off voltage was no more than 4.2 V, and most likely equal to “about 4 V.” Id. ¶¶ 119–122.” slip op. at 21

  Patent outcomesUS 7,749,641 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,749,641
• Samsung Electronics Co., Ltd. / Apple Inc. v. RJ Technology LLCSome claims unpatentable
  PTAB · Jan 17, 2025 · IPR2023-01183 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 2–4 and 6–18 are unpatentable as obvious over Abe and Guyomard, with claims 9 and 10 also obvious over Iwaizono; claims 1 and 5 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years of experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. (citing Ex. 1002 ¶¶ 50–51). Patent Owner “does not dispute Petitioner’s level of ordinary skill.” PO Resp. 17. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the disclosures of the ’641 patent and the prior art of record.” slip op. at 9

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

    “constructions. First, we agree with Petitioner that the ’641 patent indicates that the charge cut-off voltage selected for a particular battery need not be a fixed property of the battery or something that is set by the design and chemistry of the battery. Consistent with this conclusion, the ’641 patent discloses that a “charging device controls the charge cut-off voltage of the single lithium-ion cell within a range from 4.3 V to 5.8 V.” Ex. 1001, 9:50– 55. This strongly suggests that the charge cut-off voltage is controlled by the charger and is not necessarily an inherent property of the battery. Patent Owner contends that this is merely an unclaimed embodiment, but the relevant disclosure states that the charging device for the “present invention” may be any type of device “with the proviso that said charging device controls the charge cut-off voltage.” Id. at 9:50–53.” slip op. at 12

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

    “charge cut-off voltage “greater than 4.2 V but less than 5.8 V” and calculating a specific or theoretic capacity “with a charge cut-off voltage limited to 4.2” (claim 1) or “with a charge cut-off voltage set at 4.2 V” (claim 5). Ex. 1001, 16:56–61, 17:6–11. Although the parties dispute the precise scope of these claim terms, the parties agree that the first use of “charge cut-off voltage” in claims 1 and 5 refers to the potential of the battery as a whole (between the cathode and the anode), and not a half-cell voltage using lithium metal as a counter electrode.10 Tr. 17:1–3 (agreeing 10 With respect to the phrase “as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V,” the parties in fact appear to be in that the first use of “charge cut-off voltage” in claim 5 refers to a full-cell voltage); Sur-reply 5; PO Resp. 22. We need not further construe the claims to resolve the disputes between the parties. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 16

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Given Mr. Juzkow’s unambiguous testimony that Uemura uses constant current charging that would stop when the applied voltage reached 11 The chart is reproduced from SAFT, Charging your lithium-ion batteries: 5 expert tips for a longer lifespan, (https://www.saft.com/energizing-iot/charging-your-lithium-ion-batteries-5-expert-tips-longerlifespan#:~: text=When%20the%20battery%20provides%20current,This%20restore s%20the%20battery's%20capacity). 4.3 V, as well as Dr. Yao’s persuasive testimony that Uemura’s constant charging rate is not slow, we credit the testimony of Dr. Yao that one of ordinary skill in the art would have understood that the internal voltage to which the battery of Uemura was charged is less than 4.3 V. Ex. 2006 ¶ 119. In particular, Dr. Yao persuasively testifies that one of ordinary skill in the art would have believed that the charge cut-off voltage was no more than 4.2 V, and most likely equal to “about 4 V.” Id. ¶¶ 119–122. Petitioner argues that because the battery of Uemura is charged “to” a maximum voltage of 4.3 V, Uemura discloses the claimed charge cut-off voltage under either Petitioner’s or Patent Owner’s construction of the term. Pet. Reply 11–12 (citing Ex. 1009 ¶ 81; Ex. 1044 ¶¶ 56–59). This argument is not persuasive because Mr. Juzkow unambiguously testified that charging in Uemura stopped when the applied voltage reached 4.3 V, and Uemura discloses that the battery was charged “at” a voltage ranging from 4.3 V to 2.0 V, not “to” such a voltage. Ex. 1009 ¶ 81; Ex. 2008, 113:2–13; Ex. 2006 ¶ 119 n.64; Sur-reply 9. In view of the foregoing, we determine that Petitioner has not demonstrated by a preponderance of the evidence that Uemura anticipates independent claims 1 and 5 of the ’641 patent.” slip op. at 21

  Patent outcomesUS 7,749,641 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,749,641
• Chongqing Yanmei Technology Co., Ltd. v. Terves, LLCSome claims unpatentable
  PTAB · Aug 27, 2024 · IPR2023-00521 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 19–61, 63–77, and 79 are unpatentable as anticipated by Doud; claims 78, 80, and 81 are not shown unpatentable. The contingent motion to amend is granted in part and denied in part.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have at least a Ph.D. in chemistry, metallurgy, or material science or material engineering” or, in the alternative, “would have a Bachelor of Science or Master of Science degree in one of these disciplines plus experience involving the use and design of dissolvable metal alloys for use in creating tools and other downhole parts for well drilling or completion activities.” Pet. 13–14. Patent Owner does not oppose Petitioner’s contentions regarding the level of ordinary skill in the art. PO Resp. 12 n.4. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the ordinarily skilled artisan as it is consistent with the prior art of record.” slip op. at 7

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

    “With respect to claim 19, Petitioner proposes constructions for the terms “in situ precipitate” and “a plurality of particles of said in situ precipitate having a size of no more than 50 µm.” Pet. 11–12. With respect to claims 76–81, Petitioner proposes a construction for the term “wherein said additive material includes one or more metal materials selected from the group consisting of 0.1–35 wt. % copper, 0.1–24.5 wt. % nickel and 0.1–20 wt. % cobalt.” Id. at 13. Patent Owner contends no claims require construction for purposes of this Decision. PO Resp. 12 n.4, 17–18; Mot. 16–17. Upon review of the prior art of record, we determine that no claim terms require express construction for purposes of this Final Written Decision. See 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 8

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateWritten description adequateMixed

    “Ex. 2027, 20:25–21:5 (emphasis added). The disclosure that the “magnesium composite” of “[t]he present invention” “includes at least 50 wt% magnesium” is unambiguous and constitutes strong evidence that the inventors were not in possession of a magnesium composite with less than 50 wt. % magnesium, or additive concentrations above 50 wt. %. See SciMed Life Systems, Inc. v. Advanced Cardiovasular Systems, Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) (noting that a description of the “present invention” as having a particular structure “is strong evidence that the claims should not be read to encompass the opposite structure”). Consistent with this conclusion, the original claims of the ’295 application all limited the additive material in the composite to 0.05 wt %–45 wt %. Ex. 2027, 26:1– 13, 29:9–15. Likewise, in each example where copper, nickel, or cobalt additives are used in the range recited in the proposed substitute claims, the magnesium composite is “over 50 wt% magnesium,” and any claims that do not require this range of magnesium are limited to an additive range of “about 0.05 wt%–45 wt% of said mixture.”8 Ex. 2027, 6:13–7:4, 7:16–19, 8 Written description support is considered from the view point of the ordinarily skilled artisan. Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Patent Owner, bearing the burden to show written description support in any priority application for which it seeks the benefit of its filing date, provides no testimony from an ordinarily skilled artisan regarding written description support in the ’295 application, or any evidence to show what such an artisan would conclude from the express disclosures of the ’295 application. Lectrosonics, Paper 15 at 7; In re NTP, 654 F.3d 1268, 1276 (Fed. Cir. 2011) (noting that “a patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority . . . Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120”). Where there is any ambiguity in the disclosures of the ’295 application, the absence of supporting testimony tends to cut against 26:2–31:2; see Ex. 1005 ¶¶ 12, 13, 18, 19, 16–21, 26, 28, claims 16–21, 26– 28. In view of the foregoing, we are not persuaded that Patent Owner has demonstrated that the inventors of the priority applications were in possession of a magnesium cast composite that included less than 50 wt. % magnesium, or greater than 50 wt. % additives. As proposed substitute claim 104 encompasses a magnesium cast composite with up to 90 wt. % additives, and therefore as little as 10 wt. % magnesium, Patent Owner has not demonstrated that the full scope of this claim finds written description support in any application prior to the ’915 application, filed on October 12, 2018.” slip op. at 17

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteIndefiniteMixed

    “The definiteness requirement of § 112(a) is satisfied when “a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable clarity.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014); see 37 C.F.R. § 42.100(b) (changing the claim construction standard used to review a claim proposed in a motion to amend from the broadest reasonable construction to the “same construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b)”). Proposed substitute claim 104 generically requires “in situ precipitate” and also a specific type of in situ precipitate: “in situ galvanically-active intermetallic precipitate.” Mot. Appendix A. Although this claim would have best been clarified by Patent Owner after seeking preliminary guidance on its Motion to Amend, upon review of the written description, claims, and figures of the ’740 patent, as well as Patent Owner’s clarification in its Reply to the Opposition, we agree with Patent Owner that one of ordinary skill in the art would have understood that the “in situ galvanically-active intermetallic precipitate” is merely a more complete description of the “in situ precipitate” mentioned earlier in the sentence. Mot. Reply 4. As such, we do not find that this part of proposed substitute claim renders claim 104 indefinite.” slip op. at 22

  Patent outcomesUS 10,689,740 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham · Nautilus
  Patents in suitUS 10,689,740
• Gce Gas Control Equipment Inc. v. Vbox, Inc.Some claims unpatentable
  PTAB · Jun 18, 2024 · IPR2023-00326 · APJ Jane E Inglese · IPR · Final written decision

  Claims 12–14 and 16 are unpatentable under § 103 over Deane alone and Deane, Dubois, and Berntson; claims 1–11 and 15 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “III. ANALYSIS A. Level of Ordinary Skill in the Art The level of ordinary skill in the art at the time of the invention is a factual determination that provides a primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Based on Petitioner’s contention, which Patent Owner does not dispute, we find that a person of ordinary skill in the art would have had a bachelor’s degree in mechanical engineering, chemical engineering, or a related field, and two years of experience in the research, design, or development of POCs and related hardware, software, and firmware. Compare Pet. 21, with Resp. 11. Our finding is supported by Dr. Knaebel’s testimony. Ex. 1003 ¶¶ 226–228. The level of ordinary skill in the art, as defined above, appears consistent with the disclosures of the asserted prior art and the written description of the invention provided in the ’614 patent.” slip op. at 8

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Deane thus teaches that adsorbent housing 602 and adsorbent bed columns 508a, 508b—the asserted separation cartridge—are part of an apparatus that rests on a support surface such as a table or floor. Based on Deane’s disclosure, we find persuasive Patent Owner’s contention, and Patent Owner’s witness’s opinion, that Deane’s housing 602/adsorbent bed columns 508a, 508b (separation cartridge) cannot be removed from the receptacle by movement of the separation cartridge vertically downward. Resp. 37–38; Ex. 2001 ¶¶ 118–131. Neither Petitioner nor Petitioner’s witness, Dr. Knaebel, points to any evidence of record showing that one of ordinary skill in the art would have understood that Deane’s housing 602/adsorbent bed columns 508a, 508b (separation cartridge) could be removed from manifold 512 (receptacle) by moving housing 602/adsorbent bed columns 508a, 508b (separation cartridge) downward when the apparatus is resting on a table or floor, as taught by Deane. Pet. 42–43; Ex. 1078 ¶¶ 121–161. Petitioner fails to show that Deane’s housing 602/adsorbent bed columns 508a, 508b (separation cartridge) could be removed from the receptacle by movement of the separation cartridge in the downward (second) direction, as required by the removal direction limitation of claim 1. Petitioner, therefore, does not establish unpatentability under its axial movement theory.” slip op. at 26

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

    “Giving effect to “by movement relative to the receptacle,” when interpreting this phrase in combination with “a separation cartridge selectively removable from a receptacle,” requires that the separation cartridge is removable from the receptacle by movement of the separation cartridge itself. Interpreting the removal direction limitation to encompass a stationary separation cartridge, as Petitioner proposes, would render “by movement relative to the receptacle” superfluous. Specifically, Petitioner’s interpretation of “relative movement” does not accord weight to the recitation “movement relative to the receptacle,” which requires something other than the receptacle—the separation cartridge—to move in order for movement to occur with reference to or in comparison with the receptacle. Petitioner’s interpretation of “relative movement” as permitting removal of the separation cartridge from the receptacle when the separation cartridge remains stationary, is inconsistent with the plain language of removal direction limitation as a whole. The plain language of the removal direction limitation indicates that the separation cartridge must be removable from the receptacle by movement of the separation cartridge in a specified (first) direction. Claim 1 defines the first direction as a direction opposite the (second) direction in which the inlet and outlet are oriented. The plain language of the removal direction limitation, therefore, requires that the separation cartridge is removable from a receptacle by movement of the separation cartridge in comparison to the receptacle in a direction opposite the direction in which the separation cartridge’s inlet and outlet are oriented.” slip op. at 15

  • Strike new argumentNew argument disregardedDecided for patent owner

    “(a) Untimely new theory of unpatentability We agree with Patent Owner (Sur-Reply 4) that Petitioner’s relative movement theory is an impermissible new theory of unpatentability improperly presented for the first time in the Reply. Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1008–09 (Fed. Cir. 2023) (A petitioner may not raise in a reply “‘an entirely new theory of prima facie obviousness absent from the petition,’ even if the new theory is responsive to the patent owner’s response or the Board’s institution decision.”) (quoting Wasica Finance GmbH v. Continental Automotive Systems, Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017); see also Henny Penny Corp. v. Frymaster LLC, 938 F. 3d 1324, 1330–31 (Fed. Cir. 2019) (“We conclude that the Board did not abuse its discretion in . . . disregarding its [petitioner’s] new theory first raised in reply.”). Petitioner does not present the relative movement theory in the Petition, and instead presents it for the first time in the Reply. Pet. 42–43. Far from fairly meeting any argument introduced by Patent Owner in the Response, this new theory unfairly changes the thrust of the challenge.” slip op. at 27

  Patent outcomesUS 11,389,614 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,389,614
• Dynaenergetics Europe GmbH / Dynaenergetics US, Inc. v. SWM International, LLCSome claims unpatentable
  PTAB · Feb 5, 2024 · IPR2022-01372 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 3, 7, 24–26, 29, 30, and 34–36 are unpatentable as anticipated by Yonghong and Hardesty; claims 4 and 16 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (“POSITA”) would have had “a Bachelor of Science in mechanical or electrical engineering and 2–5 years of experience designing perforating gun systems.” Pet. 25. According to Petitioner, “[t]he individual should be familiar with prior art methods of using gravity to orient the shaped charges in a rotatable charge tube.” Id. Petitioner further contends that “[p]ersons with different degrees may also have ordinary skill in the art, and increased education or experience could compensate for shortcomings in other areas.” Id. (citing Ex. 1003 ¶ 51). Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art. PO Resp. 7–8. We apply Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the level of skill in the art at the time of the invention as reflected in the Specification of the ’762 Patent and the asserted prior art.” slip op. at 8

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

    “In the Institution Decision, we agreed with Patent Owner’s proposed construction for the term “collar.” Inst. Dec. 10. Because Patent Owner’s proposed construction is undisputed and supported by the ’762 Patent’s description of “outer collar 24” as having “annular side wall 62” (Ex. 1001, 7:59–63, Fig. 3), we construe a “collar” as “an annular or ring-shaped structure.”” slip op. at 10

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

    “We are persuaded by Petitioner’s contention that Yonghong discloses a “collar,” as recited in the claims. Petitioner identifies Yonghong’s bushing 4 as the recited “collar.” Pet. 30–31. As discussed below, the evidence shows that bushing 4 is annular or ring-shaped, as set forth in our claim construction.” slip op. at 14

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “expert, Dr. Rodgers, who provided a 3-D CAD (three-dimensional computer aided design) model based on Yonghong’s disclosure. Ex. 1003 ¶ 38. Dr. Rodgers’ 3-D CAD model shows an annular or ring-shaped structure corresponding to Yonghong’s bushing 4. Id. At his deposition, Dr. Rodgers explained that Yonghong Figure 1 shows some parts as “half model cuts,” other parts as “a quarter cut-away,” and still other parts in “full circumference,” i.e., “[t]hey’re not cut at all.” Ex. 2008, 37:11–20. The gun carrier is shown as a half cut, and the bushing 4 is shown as a quarter-cut. Id. at 57:24–58:11, 65:3–12. Referring to bushing 4 in Yonghong Figure 1, Dr. Rodgers explained that “[a] person of ordinary skill looks at that and understands it’s a quarter-cut model, and that’s one continuous part, a ring that wraps around the bearing.” Id. at 65:13–22; see also 60:17–24 (“A bushing or a collar slides around the outside of the bearing, or another way to say it is the bearing fits within that bushing or collar to mount it in the carrier.”). According to Dr. Rodgers, there is no need for the text of Yonghong to include this description “because a person of ordinary skill looks at this v[e]ry standard drawing and understands what it is.” Id. at 60:25–61:2.” slip op. at 15

  Patent outcomesUS 11,078,762 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,078,762
• Western Digital Technologies, Inc. / Kioxia Corporation et al. v. Viasat, Inc.Some claims unpatentable
  PTAB · Nov 20, 2023 · IPR2023-00408 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1, 4, 8, 15, 17, and 19 are unpatentable as anticipated by Wu; claim 2 was not shown unpatentable under the Jo-Wu or Jo-Wan obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties’ articulations of the level of ordinary skill in the art are similar, and we adopt parts of each party’s description of a POSITA’s education and experience. We agree with Patent Owner that computer engineering is a relevant field of study. PO Resp. 3. Our finding is supported by the ’700 Patent, which describes systems, devices, methods, and software for forward error correction for a flash memory system, which may be integrated with a computer, server, or other computing device. Ex. 1001, 3:23–30. We adopt Patent Owner’s proposal regarding the length of a POSITA’s practical experience—two years—rather than four years, as proposed by Petitioner. Neither Petitioner nor Dr. Dolecek assert that two years of practical experience would have been insufficient to acquire POSITA’s experience would have been limited to “hardware implementation.” PO Resp. 3. Our finding is supported by the ’700 Patent, which states that “embodiments may be implemented by hardware, software, firmware, middleware, microcode, hardware description languages, or any combination thereof.” Ex. 1001, 10:26–28. Petitioner’s assertion that a POSITA needs to have experience in “error correction coding (‘ECC’) systems (which include forward error correction or ‘FEC’systems)” (Pet. 19; Ex. 1003 ¶ 25) is consistent with the ’700 Patent, which discloses methods, systems, and devices for forward error correction for flash memory. Ex. 1001, code (57); see also Ex. 1003 ¶¶ 57, 66 (explaining that error correction coding (“ECC”) includes forward error correction (“FEC”)). For these reasons, we find that a POSITA would have had a bachelor of science degree in electrical engineering, computer engineering, or computer science or a related field, and two years of experience designing, developing, or researching error correction coding systems, which include forward error correction systems.” slip op. at 9

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

    “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Neither party seeks express constructions of any claim terms. See Pet. 20; see generally PO Resp. We do not need to provide an express construction for any claim terms for purposes of resolving the controversy before us. slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We find that Dr. Dolecek’s testimony about Wu’s Figure 8 and a “plurality of data streams” is more credible than Dr. Bagherzadeh’s testimony on this topic. Dr. Bagherzadeh testifies that Wu’s scrambler “does not split, copy, or otherwise ‘generate a plurality of partially decoded data streams.’” Id. ¶¶ 100, 108. But that testimony fails to take into account what the depiction of multiple double-sided arrows in Wu’s Figure 8 would have meant to a POSITA, as Dr. Dolecek testifies. Ex. 1003 ¶ 86 (reproducing Wu’s Figure 8 with double-headed arrows between ECC engines 822-0 to 822-M and scrambler 103 shaded yellow to identify a “plurality of partially decoded data streams”). The evidence does not support Dr. Bagherzadeh’s opinion that Wu’s Figure 8 is “incompatible” with Wu’s description and “there’s no way to generate a plurality of data streams from the Scrambler to the ECC Engines.” Ex. 2023 ¶ 109. As Dr. Dolecek explained below, when viewed through the eyes of a POSITA, Wu discloses that the scrambler can generate a plurality of data streams.” slip op. at 18

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

    “arrows between scrambler 103 and ECC Engines 822-0 to 822-M in Wu’s Figure 8 is sufficient to disclose the generation of a plurality of data streams, as claimed. Pet. 36–37; Pet. Reply 2–6. As between Petitioner’s position that the multiple arrows in Wu’s Figure 8 represent multiple data streams (Pet. 36–37; Pet. Reply 2–3), and Patent Owner’s position that “those arrows are not meant to be taken literally as literal data streams” (Tr. 35:16–17), we find that Petitioner’s position is more reasonable, consistent with the legal standard for anticipation, and amply supported in the record. “In an anticipation analysis, the dispositive question is whether a skilled artisan would ‘reasonably understand or infer’ from a prior art reference that every claim limitation is disclosed in that single reference.” Acoustic Tech., Inc. v. Itron Networked Sols., Inc., 949 F.3d 1366, 1373 (Fed. Cir. 2020) (citing Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003)). “Expert testimony may shed light on what a skilled artisan would reasonably understand or infer from a prior art reference.” Id. (citing Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1345 (Fed. Cir. 2018)).” slip op. at 17

  Patent outcomesUS 8,615,700 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,615,700
• Western Digital Technologies, Inc. / Kioxia Corporation et al. v. Viasat, Inc.Some claims unpatentable
  PTAB · Nov 20, 2023 · IPR2022-01126 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1, 4, 8, 15, 17, and 19 are unpatentable as anticipated by Wu; claim 2 was not shown unpatentable under the asserted obviousness grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “1 Kioxia Corporation and Kioxia America, Inc. filed a petition and a motion for joinder in IPR2023-00408 and have been joined as petitioners to this proceeding. INTRODUCTION A. Background and Summary Western Digital Technologies, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) seeking an inter partes review of claims 1, 2, 4, 8, 15, 17, and 19 (the “challenged claims”) of U.S. Patent No. 8,615,700 B2 (Ex. 1001, “the ’700 Patent”). Viasat, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 12 (“Prelim. Resp.”). We instituted an inter partes review. Paper 13 (“Institution Decision” or “Inst. Dec.”). Kioxia Corporation and Kioxia America, Inc. (collectively, “Kioxia”) filed a substantively identical petition, and we granted institution and joined Kioxia as a petitioner to this proceeding. Paper 25 (copy of Paper 9 from IPR2023-00408).” slip op. at 1

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties’ articulations of the level of ordinary skill in the art are similar, and we adopt parts of each party’s description of a POSITA’s education and experience. We agree with Patent Owner that computer engineering is a relevant field of study. PO Resp. 3. Our finding is supported by the ’700 Patent, which describes systems, devices, methods, and software for forward error correction for a flash memory system, which may be integrated with a computer, server, or other computing device. Ex. 1001, 3:23–30. We adopt Patent Owner’s proposal regarding the length of a POSITA’s practical experience—two years—rather than four years, as proposed by Petitioner. Neither Petitioner nor Dr. Dolecek assert that two years of practical experience would have been insufficient to acquire POSITA’s experience would have been limited to “hardware implementation.” PO Resp. 3. Our finding is supported by the ’700 Patent, which states that “embodiments may be implemented by hardware, software, firmware, middleware, microcode, hardware description languages, or any combination thereof.” Ex. 1001, 10:26–28. Petitioner’s assertion that a POSITA needs to have experience in “error correction coding (‘ECC’) systems (which include forward error correction or ‘FEC’systems)” (Pet. 19; Ex. 1003 ¶ 25) is consistent with the ’700 Patent, which discloses methods, systems, and devices for forward error correction for flash memory. Ex. 1001, code (57); see also Ex. 1003 ¶¶ 57, 66 (explaining that error correction coding (“ECC”) includes forward error correction (“FEC”)). For these reasons, we find that a POSITA would have had a bachelor of science degree in electrical engineering, computer engineering, or computer science or a related field, and two years of experience designing, developing, or researching error correction coding systems, which include forward error correction systems.” slip op. at 9

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

    “arrows between scrambler 103 and ECC Engines 822-0 to 822-M in Wu’s Figure 8 is sufficient to disclose the generation of a plurality of data streams, as claimed. Pet. 36–37; Pet. Reply 2–6. As between Petitioner’s position that the multiple arrows in Wu’s Figure 8 represent multiple data streams (Pet. 36–37; Pet. Reply 2–3), and Patent Owner’s position that “those arrows are not meant to be taken literally as literal data streams” (Tr. 35:16–17), we find that Petitioner’s position is more reasonable, consistent with the legal standard for anticipation, and amply supported in the record. “In an anticipation analysis, the dispositive question is whether a skilled artisan would ‘reasonably understand or infer’ from a prior art reference that every claim limitation is disclosed in that single reference.” Acoustic Tech., Inc. v. Itron Networked Sols., Inc., 949 F.3d 1366, 1373 (Fed. Cir. 2020) (citing Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003)). “Expert testimony may shed light on what a skilled artisan would reasonably understand or infer from a prior art reference.” Id. (citing Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1345 (Fed. Cir. 2018)).” slip op. at 17

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We find that Dr. Dolecek’s testimony about Wu’s Figure 8 and a “plurality of data streams” is more credible than Dr. Bagherzadeh’s testimony on this topic. Dr. Bagherzadeh testifies that Wu’s scrambler “does not split, copy, or otherwise ‘generate a plurality of partially decoded data streams.’” Id. ¶¶ 100, 108. But that testimony fails to take into account what the depiction of multiple double-sided arrows in Wu’s Figure 8 would have meant to a POSITA, as Dr. Dolecek testifies. Ex. 1003 ¶ 86 (reproducing Wu’s Figure 8 with double-headed arrows between ECC engines 822-0 to 822-M and scrambler 103 shaded yellow to identify a “plurality of partially decoded data streams”). The evidence does not support Dr. Bagherzadeh’s opinion that Wu’s Figure 8 is “incompatible” with Wu’s description and “there’s no way to generate a plurality of data streams from the Scrambler to the ECC Engines.” Ex. 2023 ¶ 109. As Dr. Dolecek explained below, when viewed through the eyes of a POSITA, Wu discloses that the scrambler can generate a plurality of data streams. After quoting from Dr. Dolecek’s deposition testimony (Ex. 2023 ¶ 107 (quoting Ex. 2024, 32:15–22)), Dr. Bagherzadeh asserts that “Dr. Dolecek does not explain how she believes the intra-channel operation of the Scrambler on the ‘one long data stream’ it receives could generate a account Dr. Dolecek’s testimony in response to follow-up questions from Patent Owner. Q So you have found the plurality of data streams in the three arrows of Figure 8 going from the scrambler to the ECC engines? A Yes. . . . Q And how exactly, in your understanding as a person of skill, does the scrambler generate that plurality? . . . THE WITNESS: . . . So the person of ordinary skill in the art would understand that these are multiple arrows here indicated explicitly to suggest parallel operations of the ECC engines. And for them to have parallel operations, a person of ordinary skill in the art would assume that they are receiving inputs at the same time, and the scrambler would, for example, do that by sending descrambled data to different engines at a time, one at a time. . . . Q So how does the scrambler’s function of intrachannel rearrangement generate multiple data streams? . . . THE WITNESS: Once it’s descrambled on a per-block basis, it simply sends that block to a given engine, ECC engine. . . . Q Can the scrambler send out multiple data streams in parallel at the same time? A If it’s designed like that, yes. Ex. 2024, 32:24–34:7 (objections and witness’s false start omitted). Q So describe for me how in Figure 8 that would work for your analysis where the scrambler receiving the data from the multiplexer would then generate the plurality of partially decoded data streams. A Right. Figure 8. So if it receives a long string of data that has already been processed by the 104 unit, it would perform intra- -- intrachannel, if you will, intrablock disarrangement of data. And then it could” slip op. at 18

  Patent outcomesUS 8,615,700 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,615,700
• Sensor Electronic Technology, Inc. v. Lite-On Technology CorporationSome claims unpatentable
  PTAB · Jun 26, 2023 · IPR2022-00395 · APJ Jean R Homere · IPR · Final written decision

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

  RulingsFinal written decision

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

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

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

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

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

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

  Patent outcomesUS 10,916,685 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham · Nautilus
  Patents in suitUS 10,916,685

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.