• Boe Technology Group Co., Ltd. v. 138 East LCD Advancements LimitedSome claims unpatentable
  PTAB · Dec 1, 2025 · IPR2024-00973 · APJ George R Hoskins · IPR · Final written decision

  Claims 1, 3–7, 9–13, and 15–18 are unpatentable as obvious over Reiner and over Reiner with Takahara; claims 2, 8, and 14 were not shown unpatentable.

  RulingsFinal written decision

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

    “patentability based solely on arguments considered above in the context of claim 4. See, e.g., PO Resp. 42–43, 47–52. Therefore, Patent Owner has waived any other argument. See Inst. Dec. 44; Paper 10, 10. We adopt Petitioner’s arguments concerning these claims having been obvious over Reiner as our own in this Decision. See Pet. 40–44, 50–56, 57–70, 71; Ex. 1003 ¶¶ 134–142, 154–168, 174–221, 227. Accordingly, we conclude a preponderance of the evidence establishes these claims are unpatentable as having been obvious over Reiner.” slip op. at 83

  • Expert testimonyOther
  • Skill levelOther

  Patent outcomesUS 9,184,157 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,184,157
• Luminex International Co., Ltd. / Menard, Inc. v. Signify Holdings B.V.Some claims unpatentable
  PTAB · Aug 13, 2025 · IPR2024-01469 · APJ Steven M Amundson · IPR · Final written decision

  Claims 1–7, 9–15, and 18–20 are unpatentable; claims 8, 16, and 17 are not determined unpatentable under the asserted prior-art grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “G. Analysis 1. REAL PARTY IN INTEREST Based on the record before us and for the reasons explained below, we disagree with Patent Owner that Menard is a “real party in interest” under § 315(b). See Resp. 77–82; Sur-reply 27–28. First, the circumstances here differ materially from the circumstances in Ventex. There, two agreements defined the relationship between Ventex (the petitioner and manufacturer of Heatwave fabric) and Seirus (the alleged real party in interest and purchaser of Heatwave fabric). Ventex, IPR2017- 00651, Paper 152 at 7 & n.8. First, a 2013 Supplier Agreement “prevented Ventex from selling to Seirus competitors” and included an indemnity provision requiring Ventex to indemnify Seirus for losses arising from Ventex’s failure to perform certain obligations. Id. at 7, 14. Second, a 2016 Exclusive Manufacturing Agreement provided that Ventex would manufacture the Heatwave fabric only for Seirus in exchange for Seirus’s payment of an exclusivity fee. Id. at 7. Columbia (the patent owner) accused Seirus products incorporating the Heatwave fabric of infringing the patent at issue, and Columbia served Seirus with a complaint alleging patent infringement in 2014 more than two years before Ventex filed a petition in 2017. Id. at 5, 7. When determining that Seirus was a “real party in interest” under § 315(b), the Board reasoned that “Ventex and Seirus had a specially structured, preexisting, and well established business relationship with one another, including indemnification and exclusivity arrangements.” Ventex, IPR2017-00651, Paper 152 at 10; see id. at 12. Additionally, the Board noted that certain evidence “suggest[ed] that” slip op. at 32

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “G. Analysis 1. REAL PARTY IN INTEREST Based on the record before us and for the reasons explained below, we disagree with Patent Owner that Menard is a “real party in interest” under § 315(b). See Resp. 77–82; Sur-reply 27–28. First, the circumstances here differ materially from the circumstances in Ventex. There, two agreements defined the relationship between Ventex (the petitioner and manufacturer of Heatwave fabric) and Seirus (the alleged real party in interest and purchaser of Heatwave fabric). Ventex, IPR2017- 00651, Paper 152 at 7 & n.8. First, a 2013 Supplier Agreement “prevented Ventex from selling to Seirus competitors” and included an indemnity provision requiring Ventex to indemnify Seirus for losses arising from Ventex’s failure to perform certain obligations. Id. at 7, 14. Second, a 2016 Exclusive Manufacturing Agreement provided that Ventex would manufacture the Heatwave fabric only for Seirus in exchange for Seirus’s payment of an exclusivity fee. Id. at 7. Columbia (the patent owner) accused Seirus products incorporating the Heatwave fabric of infringing the patent at issue, and Columbia served Seirus with a complaint alleging patent infringement in 2014 more than two years before Ventex filed a petition in 2017. Id. at 5, 7. When determining that Seirus was a “real party in interest” under § 315(b), the Board reasoned that “Ventex and Seirus had a specially structured, preexisting, and well established business relationship with one another, including indemnification and exclusivity arrangements.” Ventex, IPR2017-00651, Paper 152 at 10; see id. at 12. Additionally, the Board noted that certain evidence “suggest[ed] that” slip op. at 32

  • Skill levelOther

    “C. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art at the ’336 patent’s effective filing date would have had “a bachelor’s degree in mechanical engineering, electrical engineering, optics, or physics with at least three years of experience working in the design of LED lights or lighting fixtures; a master’s degree in one of the above disciplines with at least two years of experience; or equivalent experience.” Pet. 14 (citing Ex. 1004 ¶¶ 26–29). Dr. Eden’s testimony supports Petitioner’s assertion. See Ex. 1004 ¶¶ 27–28. Patent Owner “adopts for purposes of this proceeding only” Petitioner’s description of an ordinarily skilled artisan. Resp. 10 (citing Pet. 14). We adopt Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’336 patent as” slip op. at 40

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner

    “Alleged Objective Indicia of Nonobviousness (i) General Principles Before reaching a conclusion about obviousness, we consider evidence concerning objective indicia of nonobviousness. See Apple, 839 F.3d at 1048. For such evidence to have substantial weight, “its proponent must establish a nexus between the evidence and the merits of the claimed invention.” ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016); see Ancora Techs., Inc. v. Roku, Inc., 140 F.4th 1351, 1361 (Fed. Cir. 2025) (noting that the Board did not err by requiring “a nexus to the challenged claims as opposed to the patent as a whole”). “[T]here is no nexus unless the evidence presented is ‘reasonably commensurate with the scope of the claims.’” ClassCo, 838 F.3d at 1220 (quoting Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)). The patentee “bears the burden of showing that a nexus exists.” WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). A rebuttable presumption of nexus arises “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). Whether a rebuttable presumption of nexus arises “turns on the nature of the claims and the specific facts.” Teva Pharms. Int’l GmbH v. Eli Lilly & Co., 8 F.4th 1349, 1362 (Fed. Cir. 2021). The presumption analysis should consider the unclaimed features in the product tied to the objective evidence to assess their significance and impact on the correspondence between the patented invention and the product. Quanergy Sys., Inc. v. Velodyne Lidar USA, Inc., 24 F.4th 1406, 1418 (Fed. Cir. 2022). When, “for example, the patented invention is only a small component of the product tied to the objective evidence, there is no presumption of nexus.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1333 (Fed. Cir. 2019). Absent a presumption of nexus, the patentee may prove nexus by” slip op. at 76

  Patent outcomesUS 10,299,336 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,299,336
• 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
• Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentable
  PTAB · Sep 28, 2023 · IPR2022-00847 · APJ Brian D Range · IPR · Final written decision

  Claims 21, 22, 25, 26, 28–30, 32–36, 40, 42–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 are unpatentable over Begemann, Krames, and Allen; claim 41 is …

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s argument is unpersuasive because the Krames declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 21 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52. One requirement of this apparatus is that it comprise “at least one semiconductor chip” (id. at 10:1) where the “at least one semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts.” Id. at EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction of “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as meaning “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 54 (quoting Ex. 1008, 10). Notably, claim 21 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 12

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19

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

    “particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20

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

    “It is unnecessary to construe any other claim terms in this Decision because none of the parties’ disputes turn on the meaning of other claim terms. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 22

  Patent outcomesUS 6,465,961 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,465,961
• Samsung Electronics Co., Ltd. v. Lynk Labs, Inc.Some claims unpatentable
  PTAB · May 5, 2023 · IPR2022-00098 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1, 3, and 4 are unpatentable as obvious over the stated combinations; claim 2 was not shown unpatentable because the driver was not shown configured to receive the rectifier’s forward voltages.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that a person of ordinary skill in the art would have had experience in LED devices. For this reason, we apply Patent Owner’s proposed level of ordinary skill in the art because it comports with the level of skill reflected in the ’149 patent and the prior art of record. However, if we were to apply Petitioner’s proposed level of skill, our Decision would not be affected.” slip op. at 9

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

    “Upon review of the entire record, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “Dr. Ducharme’s testimony that “the spacing of the chips in Zhang would not likely be so close as to create overheating issues” (Ex. 2002 ¶ 111) is unsupported by any disclosure of the actual spacing of Zhang’s chips. Consequently, his testimony that there would be no overheating concerns in Zhang due to the spacing of the chips is entitled to little, if any, weight. Dr. Ducharme further testifies that the components of Zhang’s driver “could easily increase the temperature of the LED 19 chips on the circuit board, which can cause LEDs to generate less illumination, burn out and otherwise adversely affect their performance.” Ex. 2002 ¶ 126. Dr. Ducharme further testifies that “[i]t is well-known that excessive operational temperatures can reduce the illumination provided by the LEDs, can decrease the operational lifetime of the LEDs, and if the temperature is sufficiently high, it can cause LED junction failure and a burnt-out LED.” Id. We agree with this testimony, which as discussed below, is consistent with Salam. Dr. Ducharme’s testimony concerning overheating issues caused by the driver components contradicts Patent Owner’s ’s contention that there would not be “an overheating issue with Zhang’s LED exit sign circuit in Figure 2.1.” PO Resp. 30. Regardless of whether Zhang’s LEDs in Figure 2.1 have a heat problem or not, Salam teaches the advantages of using a heat sink. Salam teaches that a heat sink will result in a higher efficiency of the LEDs and improved life. Ex. 1006, 16:38–43. The Federal Circuit, in DyStar Textilfarben GmBH & Co v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006), stated that “the desire to enhance commercial opportunities by improving a product or process is universal–and even common-sensical . . . the proper question is whether the ordinary artisan possesses the knowledge and skills rendering him capable of combining the prior art references.” Id. at 1368. Dr. Ducharme testified that a person of ordinary skill in the art “would have an understanding of the generation of heat and using a heat sink to remove unwanted heat from electronics and LED lighting devices.” Ex. 1102, 23:18–24:3. Dr. Ducharme’s testimony is consistent with Petitioner’s contention that the combination of Zhang and Salam “would have been a straightforward combination of known components and technologies, according to known methods, to produce the predictable result of reducing/ mitigating heat effects in a circuit.” Pet. 17 (citing Ex. 1002 ¶ 106). Patent Owner next contends it would be extremely burdensome and costly to modify Zhang to add a heat sink layer because “each of the multiple chips mounted and epoxied to Zhang’s circuit board in the exit sign would have to be modified.” PO Resp. 30 (citing Ex. 2002 ¶ 112). Dr. Ducharme’s testimony repeats the Patent Owner Response verbatim and is entitled to little, if any, weight. Ex. 2002 ¶ 112. Nonetheless, this contention is unavailing because it is based on Patent Owner’s bodily incorporation of Zhang and Salam. Patent Owner next contends that a person of ordinary skill in the art” slip op. at 27

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

    “Regardless of whether Zhang’s LEDs in Figure 2.1 have a heat problem or not, Salam teaches the advantages of using a heat sink. Salam teaches that a heat sink will result in a higher efficiency of the LEDs and improved life. Ex. 1006, 16:38–43. The Federal Circuit, in DyStar Textilfarben GmBH & Co v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006), stated that “the desire to enhance commercial opportunities by improving a product or process is universal–and even common-sensical . . . the proper question is whether the ordinary artisan possesses the knowledge and skills rendering him capable of combining the prior art references.” Id. at 1368. Dr. Ducharme testified that a person of ordinary skill in the art “would have an understanding of the generation of heat and using a heat sink to remove unwanted heat from electronics and LED lighting devices.” Ex. 1102, 23:18–24:3. Dr. Ducharme’s testimony is consistent with Petitioner’s contention that the combination of Zhang and Salam “would have been a straightforward combination of known components and technologies, according to known methods, to produce the predictable result of reducing/ mitigating heat effects in a circuit.” Pet. 17 (citing Ex. 1002 ¶ 106).” slip op. at 27

  Patent outcomesUS 10,517,149 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,517,149
• Home Depot USA, Inc. v. Lynk Labs, Inc.Some claims unpatentable
  PTAB · May 5, 2023 · IPR2022-00023 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1 and 4 are unpatentable over the stated § 103 combinations; Petitioner did not show claim 2 unpatentable because it did not explain how the LED array’s forward voltage is received by the driver.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “degree in electrical engineering, or similar technical field, with two years of experience in the field of design and/or development of light-emitting diodes (LEDs) and circuits in the context of lighting control systems.” Pet. 11–12 (citing Ex. 1002 ¶ 34). Petitioner further contends that “[a]n increase in experience could compensate for less education.” Id. at 12. Patent Owner proposes the same level of skill in the art. See PO Resp. 6. We apply the parties’ undisputed level of ordinary skill in the art because it comports with the level of skill reflected in the ’149 patent and the prior art of record.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We credit Dr. Lebby’s testimony over Dr. Ducharme for the following reasons. First, in Deese, power cable 28 is inserted into an opening in rubber housing 21. Ex. 1008, Fig. 2A. [R]ubber housing 21 forms a water-tight seal around the power cable 28.” Id. at 4:63–65. Dr. Ducharme does not explain why Hochstein’s protruding heat sink shell could not similarly be inserted through rubber housing 21 with a water-tight seal. Further, Dr. Lebby relies on the similarity between the structures of Deese and Hochstein. Hochstein uses gasket 45 and weather seal 48 to seal housing 10 with electrical lead 49 and heat sink shell 38 extending therethrough. Ex. 1010, 5: 39–40, 5:63:65, Fig. 8.” slip op. at 47

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

    “Our analysis starts with the claim language. Claim 1 recites “a driver, wherein the driver includes at least one transistor and at least one capacitor” and “the driver is configured to receive an AC voltage from a mains power source and provide a voltage and current to the at least one LED circuit.” Ex. 1001, 23:16–17, 26:22–24. Dr. Ducharme testifies that power is determined by multiplying voltage and current. Ex. 2008 ¶ 63. The language of claim 1, thus, supports Patent Owner’s construction which is also consistent with the dictionary definition offered by Petitioner which also defines “driver” as [a] program, circuit or device used to power or control other programs, circuits or devices.” Ex. 1007, 4 (emphasis added). The Specification provides “the driver providing an AC voltage and current to one or more LED circuits.” Ex. 1001, 3:65–67. Thus, the Specification also provides support for Patent Owner’s construction. For the foregoing reasons, we apply Patent Owner’s proposed construction of “driver” because it is consistent with the language of claim 1 and the description of driver in the Specification. We note that the adjective “LED” prior to circuits or devices in Patent Owner’s construction is not necessary because that it essentially repeats limitation 1.e.” slip op. at 12

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

    “We begin with the claim language itself which is “the package is a heat sinking reflective material.” Ex. 1001, 23:18–19 (emphasis added). In its analysis, Patent Owner parses “heat sinking reflective material” out of context by omitting the italicized language “the package is” preceding “heat sinking reflective material.” PO Resp. 29. The deposition testimony of Dr. Lebby and Dr. Ducharme’s declaration testimony cited by Patent Owner are also out of context. The Specification of the ’149 patent defines “package” as an integrated unit that “in certain applications may preferably include a heat sink, a reflective material, a lens for directing light, phosphor nano-crystals or light changing or enhancing substances.” Ex. 1001, 5:30–33. Because heat sink and reflective material are listed separately in the Specification, this disclosure suggests that, at least in certain embodiments, a package with a heat sink separate from a reflective material would fall within the scope of limitation 1.c. This is further confirmed by comparing the packages illustrated in Figures 25 and 26 of the ’149 patent which are reproduced above. Figure 25 is described as illustrating “heat sinking material 198 . . . integrated into the package 30.” Id. at 17:34–35. Figure 26 is described as illustrating reflector 202 “integrated into the package 30 for optimized light dispersion.” Id. at 17:47–49. As can be seen from a visual comparison of Figures 25 and 26, reflector 202 is separate from heat sinking material 198. Given the disclosure in the ’149 patent of a package with a heat sink” slip op. at 15

  Patent outcomesUS 10,517,149 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,517,149
• Renesas Electronics Corporation / Renesas Electronics America, Inc. v. Lone Star Silicon Innovations, LLCSome claims unpatentable
  PTAB · Mar 25, 2019 · IPR2017-01869 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1, 4–6, 9, and 10 are unpatentable as obvious over Igarashi and Tanaka (1999); claims 2 and 7 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “For purposes of our Institution Decision, we accepted the definition of a POSA provided by Dr. Bottoms. Dec. 10–11 (citing Ex. 2001 ¶ 31). Dr. Bottoms provides a “clarification” of the Board’s description, testifying that “[t]he specific industry experience would require process design experience—which is experience beyond managing fabrication equipment.” Ex. 2011 ¶ 36. Dr. Bottoms’ clarification is consistent with the level of skill reflected by the ’330 patent, which discloses process design options for making a low dielectric constant silicon nitride etch stop. Ex. 1001, 5:66-6:24. Dr. Neikirk testifies that, under Dr. Bottoms’ definition, a POSA has a higher degree of skill than under Dr. Neikirk’s definition, and the Board’s adoption of Dr. Bottoms’ definition would not change his opinions regarding obviousness. Ex. 1028 ¶ 14. We find there is little difference between the declarants’ definitions of a POSA, and the outcome of our patentability determinations would be the same, regardless of which definition we accept. For the sake of clarity, we adopt Dr. Bottoms’ definition of a POSA, including the recent clarification. Ex. 2011 ¶¶ 35, 36. We also rely on the cited prior art references as reflecting the level of ordinary skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedOther

    “After reviewing the qualifications of Dr. Neikirk and Dr. Bottoms, as set forth in each witness’s declaration and curriculum vitae, we find that each of these declarants has sufficient education and experience related to the subject matter of the ’330 patent to testify regarding the perspective of a POSA at the time of the invention. Ex. 1011 ¶¶ 2, 3; Ex. 1012; Ex. 2002; Ex. 2011 ¶¶ 8–20. See Trial Practice Guide Update, 83 Fed. Reg. 39,989 (Aug. 13, 2018), available at https://go.usa.gov/xU7GP (“TPG Update”), 3 (“A person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be ‘qualified in the pertinent art.’” (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008))). D.” slip op. at 12

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

    “In the Institution Decision, we determined that it was not necessary to resolve the parties’ claim construction dispute. Dec. 9–10. Neither party challenges that determination. Petitioner contends that the asserted grounds of unpatentability apply under either party’s construction for the phrase “etch stop layer of silicon nitride.” Pet. 25 n.3. Patent Owner argues that this phrase is not limited to a layer of pure silicon nitride and allows for the presence of dopants and/or impurities. PO Resp. 8–10. Patent Owner does not, however, rely on its proposed claim construction for any patentability argument. In fact, Patent Owner acknowledges that the silicon nitride materials disclosed in the Low-K References satisfy Patent Owner’s proposed construction. PO Resp. 10. Under these circumstances, we agree with Petitioner that we do not need to resolve the parties’ claim construction dispute. Pet. Reply 2. Accordingly, consistent with the Institution Decision, we determine that we do not need to provide an express construction for any claim term for purposes of resolving the controversy. See 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))). B.” slip op. at 10

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

    “copper interconnects need silicon nitride films as an etch stop, but that such films have a high dielectric constant, which causes an undesirable increase in the effective dielectric constant of the interconnect structure and increased parasitic capacitance, as compared with aluminum interconnects. Ex. 1021, 829-1, 829-2; see Pet. 18; Ex. 1011 ¶¶ 92, 93. As Petitioner correctly points out (Pet. 53–54), Tanaka (1999) cites Igarashi as an example of a copper interconnect system that is degraded by parasitic capacitance due to the high permittivity (dielectric constant) of silicon nitride etch stop films. Ex. 1017, 47-1 n.1. Tanaka (1999) discloses a low dielectric constant silicon nitride etch stop film as a solution to the problem of parasitic capacitance in copper damascene interconnect structures, such as Igarashi’s. Id. at 47-1, 47-2 (“New low-k SiN film, with a permittivity of 5.4 . . . should be the solution to realize Cu damascene interconnects . . . .”). Consistent with these express disclosures, Dr. Neikirk persuasively testifies that “Igarashi identifies a need for a low-k dielectric etch stop layer” and “Tanaka (1999) meets this need.” Ex. 1011 ¶ 94; see Pet. 18 (citing Ex. 1011, § VIII.C., which contains paragraph 94 of Dr. Neikirk’s testimony). Accordingly, we find Petitioner has shown by a preponderance of the evidence that a POSA would have been motivated to use the low dielectric constant silicon nitride etch stop film of Tanaka (1999) as the etch stop layer in the interconnect system of Igarashi. Patent Owner disputes whether Petitioner has established a reasonable expectation of success for the combination of Tanaka (1999)’s low dielectric constant silicon nitride etch stop film and Igarashi’s interconnect structure. PO Resp. 65. Although the Petition does not expressly discuss whether one of ordinary skill in the art would have had a reasonable expectation of success in combining Tanaka and Igarashi to arrive at the claimed invention, Petitioner shows a very close relationship between the teachings of Tanaka (1999) and Igarashi. Pet. 12–13, 17–18, 53–62. As discussed above and argued by Petitioner, Tanaka (1999): (1) cites Igarashi as an example of a copper interconnect system that suffers from parasitic capacitance due to the high dielectric constant of silicon nitride etch stop films, and (2) discloses a low dielectric constant silicon nitride etch stop film as a solution to the parasitic capacitance problem exemplified by Igarashi. Pet. 13, 18, 53–54; Ex. 1011 ¶¶ 74–79, 88–94; Ex. 1017, 47-1 & n.1; Ex. 1021, 829-1, 829-2. Petitioner establishes a reasonable expectation of success for the combination of Tanaka (1999) and Igarashi by demonstrating a strong correlation between the problem discussed by Igarashi—the high dielectric constant of silicon nitride films when used as etch stops for copper interconnects—and the solution disclosed by Tanaka (1999)—a low dielectric constant silicon nitride film for use as an etch stop layer in copper damascene interconnect structures. In re Inland Steel Co., 265 F.3d 1354, 1364 (Fed. Cir. 2001) (“[T]he strength of the correlation between the references gives rise to a reasonable expectation of success from combining them.”).” slip op. at 27

  Patent outcomesUS 6,388,330 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,388,330
• Dexcom, Inc. v. Waveform Technologies, Inc.Some claims unpatentable
  PTAB · Sep 12, 2018 · IPR2017-01051 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1, 4–12, and 15–19 were held unpatentable as obvious over Hagiwara; claims 2, 3, 13, and 14 were not shown unpatentable. The motion to amend was granted in part.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “j. Conclusion Regarding Obviousness Based on Hagiwara (Proposed Substitute Claims) We conclude that Petitioner has shown by a preponderance of the evidence that proposed substitute claims 20, 22, 23, and 26–29 are unpatentable as obvious in view of Hagiwara. We conclude that Petitioner has not shown by a preponderance of the evidence that proposed substitute claims 21, 24 and 25 are unpatentable as obvious in view of Hagiwara. 2. Remaining Grounds of Unpatentability Asserted by Petitioner (Proposed Substitute Claims) In view of our determination that Petitioner has shown by a preponderance of the evidence that proposed substitute claims 20, 22, 23, and 26–29 are unpatentable as obvious in view of Hagiwara, we do not reach Petitioner’s remaining grounds of unpatentability as to these claims. Regarding proposed substitute claims 24 and 25, Petitioner’s contentions regarding the Handbook, Wilson, and Say do not remedy the deficiencies in Petitioner’s contentions regarding Hagiwara, as discussed above. Accordingly, we conclude that a preponderance of the evidence does not show that proposed substitute claims 24 and 25 are unpatentable as obvious based on Hagiwara in view of the Handbook, Wilson, or Say. H.” slip op. at 71

  • ExcludeOther

    “As discussed above, we do not reach the Wilson-Based Grounds with respect to claims 1, 4–12, and 15–19 of the ’574 patent. As for claims 2, 3, 13, and 14, we determine that Petitioner has not shown unpatentability based on the Wilson-Based Grounds, even if Exhibit 1037 and the corresponding portions of Petitioner’s Reply (Paper 37) are not excluded, because Petitioner does not offer Exhibit 1037 to cure the deficiency we noted in Wilson. See Section II.F, supra. For this reason, we dismiss as moot Patent Owner’s motion.” slip op. at 72

  • Expert testimonyPetitioner expert discountedPatent owner expert discountedDecided for patent owner

    “sensor would not have been a motivation to combine Hagiwara’s embodiments” because Hagiwara’s catheter prevents damage to the sensor during insertion and because a sensor with a side sensor window creates a greater risk of damage and vascular injury and reduces exposure to blood, as compared with a sensor with an end sensor window. PO Resp. 20–25. We have considered Patent Owner’s arguments, but, for the reasons discussed above, we are persuaded that Petitioner has established a motivation to combine, notwithstanding the conflicting expert testimony regarding the disadvantages of a side sensor window versus an end sensor window. Neither of the expert opinions on this topic is supported by objective facts or data. Ex. 1006 ¶ 155;13 Ex. 2008 ¶¶ 54–57, 87–95; Ex. 2009, 92:8–97:12. For this reason, we give little or no weight to either side’s expert testimony 13 Dr. Vachon cites “WO 01/13102, Vadgama” (Ex. 1006 ¶ 155), however, this reference was not submitted as an exhibit in this proceeding. on this topic. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (nothing in the Federal Rules of Evidence or Federal Circuit jurisprudence requires the fact finder to credit unsupported assertions of an expert witness). As discussed above, however, there is no disagreement that a side sensor window was a known alternative to an end sensor window. Ex. 1006 ¶¶ 73, 155; Tr. 43:22–44:3. That undisputed fact, together with Petitioner’s other evidence, is sufficient to establish a motivation to combine.” slip op. at 42

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art For purposes of our Institution Decision, we accepted the definition of a person of ordinary skill in the art (“POSITA”) provided by Petitioner’s declarant, Dr. Vachon. Dec. 11 (citing Ex. 1006 ¶ 28). That definition is: a person having a bachelor’s degree or the equivalent training or experience in mechanical engineering, bioengineering, or related field and at least three years of experience relating to biosensor research and development, or a master’s degree or the equivalent training or experience in mechanical engineering, bioengineering, or related field, and at least one year of experience relating to biosensor research and development. Id. Patent (https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_ to_amend_11_2017.pdf); Bosch Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017); Bosch Automotive Service Solutions, LLC v. Iancu, Order on Petition for Panel Rehearing, No. 2015-1928 (Fed. Cir. Mar. 15, 2018). Owner’s declarant accepts and applies this definition of a POSITA for purposes of his opinions. Ex. 2008 ¶ 30. Neither party’s declarant indicates that any proffered opinion would change depending on the level of ordinary skill in the art. Therefore, consistent with our Institution Decision, we adopt Dr. Vachon’s definition of a POSITA. Ex. 1006 ¶ 28. We also rely on the cited prior art references as reflecting the level of ordinary skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 20

  Patent outcomesUS 7,529,574 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,529,574
• Alere Inc. v. Rembrandt Diagnostics, LPSome claims unpatentable
  PTAB · Feb 9, 2018 · IPR2016-01502 · APJ Jon B Tornquist · IPR · Final written decision

  Claim 2 is unpatentable as anticipated by MacKay; claims 3–5 were not shown unpatentable over MacKay and Cipkowski.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mkt’g Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett–Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). For example, a preamble may be limiting when the disputed preamble phrase provides antecedent basis for a claim term in the body of a claim, the specification underscores that the additional structure recited in the preamble is important, or when the patentee clearly relied upon the preamble during prosecution to distinguish the claimed invention from the prior art. Id. at 808–09. “Conversely, a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention,’” id. at 808, or where the patentee uses the preamble to give “a descriptive name to the set of limitations in the body of the claim,” IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000) (“The phrase ‘control apparatus’ in the preamble merely gives a descriptive name to the set of limitations in the body of the claim that completely set forth the invention.”). The term “device” is not recited in the body of any claim of the ’019 patent,4 the body of claim 1 recites a structurally complete invention, and the preamble phrase “device for collecting and assaying a sample of biological fluid” specifies the intended use of the invention. Thus, we find the claims of the ’019 patent do not support construing “device” as a limitation. See Catalina Mkt’g, 289 F.3d at 808–09.” slip op. at 8

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

    “device” set forth above requires a single, unitary structure rather than a collection of separate structures that could be used during the test. See id. at 18 (concluding without analysis that the dictionary definition requires a “single, unitary structure”). Indeed, despite the ubiquitous use of the term “device” in patents generally, we are directed to no case in which the term “device,” by itself, was found to require a single, unitary structure. See Manual of Patent Examining Procedure, Section 2106, I (identifying “devices” as one of the four categories of statutory subject matter); Saffran v. Johnson & Johnson, 712 F.3d 549, 565 (Fed. Cir. 2013) (O’Malley concurring in part) (confirming that, in general, the term “device” is generic). Thus, we are not persuaded that the ordinary meaning of the term “device” requires a “single, unitary structure.” See Ex. 1023 ¶ 66 (Dr. Bohannon testifying that the word device, like the words “apparatus” or “system,” is merely a generic term that does not have a specialized meaning in the art and does not require a single, unitary structure). slip op. at 12

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

    “We do not find this argument persuasive. As noted above, we do not construe claim 1 to contain a method step of adding fluid to the container. We construe the first wherein clause of claim 1(c), instead, to require a structure that is capable of allowing liquid to enter the container when the flow control channel is properly disposed therein and is capable of directing this liquid to the sample loading zone of the assay test strip without the liquid having to migrate through an intermediate structure, such as a wicking material. We are persuaded—and Patent Owner does not dispute—that the apparatus of MacKay, as disclosed in Figures 8A–C, has a structure that is capable of achieving both functions. See, e.g., Tr. 26:10–30:20. First, given the open nature of the container, it is evident that liquid may be added to the container when the flow control channel is disposed within the container, and Patent Owner does not assert otherwise. See, e.g., id. Second, even if the fluid present in Figures 8A–C is considered, there is no intermediate structure in the container of MacKay that would prevent additional assay sample fluid from entering the container and being immediately directed to the sample loading zone of the assay test strips.6 Based on the foregoing, we find that MacKay discloses every limitation of claims 1 and 2 of the ’019 patent. Accordingly, Petitioner has demonstrated by a preponderance of the evidence that claim 2 is anticipated by MacKay.” slip op. at 21

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

    “discloses the subject matter of claims 3–5 of the ’019 patent. Pet. 26–30. Petitioner also asserts that one of ordinary skill in the art would have sought to insert the test trip and flow control channel of MacKay in the holder of Cipkowski, in order to prevent “flooding of the test strip as taught in MacKay.” Id. at 29.” slip op. at 23

  Patent outcomesUS 6,548,019 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,548,019

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.