• Aurobindo Pharma USA, Inc.No claims unpatentable
  PTAB · Dec 28, 2018 · IPR2017-01648 · APJ Devon Zastrow Newman · IPR · Final written decision

  Claims 1–25 were not shown unpatentable over Timmins and Cheng because Petitioner did not establish that the combination would have targeted the claimed mean Tmax range.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “In the Patent Owner Response, Patent Owner acknowledged the Board’s characterization of the knowledge of an ordinarily skilled artisan as consistent with the proposals of both parties (PO Resp. 12–13), and neither party further addressed the proper level of ordinary skill in the art or disagreed with our characterization from the Institution Decision. See PO Resp., Reply. Our determination regarding the patentability of the challenged claims does not turn on the differences between the parties’ definitions. We adopt Petitioner’s assessment, but note that our conclusions would be the same under Patent Owner’s assessment. C. Testimony of Dr. Akhlaghi” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We agree with Petitioner that Dr. Akhlaghi’s qualifications and deposition testimony, when read in context, indicate that Dr. Akhlaghi is sufficiently experienced to opine on the knowledge of one of skill in the art at the time of the ’866 patent. As noted in the August 13, 2018 update to our Trial Practice Guide: An expert witness must be qualified as an expert by knowledge, skill, experience, training, or education to testify in the form of an opinion. Fed. R. Evid. 702. There is, however, no requirement of a perfect match between the expert’s experience and the relevant field. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). 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.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008). See Notice of Update to Office Patent Trial Practice Guide, 83 Fed. Reg. 156, (Aug. 13, 2018) (text of update available at https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Pr actice_Guide.pdf). In addition, we are well able to consider the value of an expert opinion and afford it appropriate weight. Perreira v. Secretary of the Dept. of HHS, 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”) D. Claim Interpretation” slip op. at 9

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

    “Tmax” In our Institution Decision, we noted that the term “Tmax” appears in each of the challenged claims, and that both parties agreed that Tmax should be construed as stated in the Specification: “the time period which elapses after administration of the dosage form at which the plasma concentration of the drug attains the highest plasma concentration of drug attained within the dosing interval (i.e., about 24 hours).” Inst. Dec. 7 (citing Pet. 24; Prelim Resp. 18; Ex. 1001, col. 7, ll. 49–53). We concluded that the proposed definition was consistent with the Specification and defined the claim term with reasonable clarity, deliberateness, and precision, and we adopted the parties’ construction. Neither party addressed the issue of construction of Tmax in further briefing, but the parties disagree about how Dr. Akhlaghi applied the definition in her testimony. See, eg., Pet. Reply 9–10. For purposes of analyzing the patentability of the challenged claims, we continue to interpret the term as “the time period which elapses after administration of the dosage form at which the plasma concentration of the drug attains the highest plasma concentration of drug attained within the dosing interval (i.e., about 24 hours),” because that definition is consistent with the Specification, and because the parties themselves agreed to the definition of Tmax. Inst. Dec. 7. E. Overview of the Prior Art slip op. at 11

  • BurdenNot shown unpatentable

    “Based on our review of the record, we determine that Petitioner has not shown sufficiently that combining the teachings of Timmins and Cheng as Petitioner contends would have resulted in a dosage form that provides a mean Tmax of metformin from 5.5 to 7.5 hours after administration.” slip op. at 19

  Patent outcomesUS 6,866,866 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,866,866
• Samsung Electronics Co., Ltd. v. Promos Technologies, Inc.All claims unpatentable
  PTAB · Nov 28, 2018 · IPR2017-01416 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–3, 14–16, 22, and 28–36 are unpatentable: claim 22 is anticipated by Ito; the other claims are obvious over the stated combinations.

  RulingsFinal written decision

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

    “We agree with Petitioner. Although Patent Owner cites to the testimony of its declarant, Mr. Brahmbhatt, we do not find persuasive his testimony that the “claim element requiring the bias voltage to be ‘arbitrarily close to the ground voltage’ is not met by the Ito design which unintentionally, uncontrollably, and undesirably (per Ito) rises above – VTHP.” The intent, control, and desirability of the detector’s function in Ito is irrelevant to anticipation. See State Contracting & Eng’ g Corp. v. Condotte America, Inc., 346 F.3d 1057, 1068 (Fed. Cir. 2003) (A reference may be directed to an entirely different problem than the one addressed by the inventor and still be anticipatory); Celeritas Technologies Ltd. v. Rockwell Intern. Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (Prior art that teaches away from the claimed invention can anticipate the claims based on what it discloses). Based on the disclosed function of the detector circuit in Ito, we determine that it meets the limitations recited in claim 22.” slip op. at 17

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

    “We agree with Petitioner. We determine that Petitioner, in the Petition, explained that one of ordinary skill in the art would have understood that the trip point would be substantially insensitive to variations in VDD based on the parameters set in Baker. See Pet. 31–32. The Petitioner and Dr. Baker provide a reasoned explanation for why the subject limitation, i.e., a “trip point which is substantially insensitive to power supply variations,” is disclosed and suggested by Baker, and why one would have been motivated to configure the inverter in Park to have a stable trip point, per Baker. Id. Further, we reaffirm our determination that one of ordinary skill in the art would have been motivated to configure Park’s circuit to have its trip point be substantially insensitive to power supply voltage variations, in keeping with Park’s overall objective of “constantly maintaining a back bias voltage with respect to the variation of an external voltage.” Dec. on Inst. 21–22 (citing Pet. 32; Ex. 1007, 3:45–57; Ex. 1002 ¶ 110).” slip op. at 29

  • Skill levelSkill level board ownOther

    “bachelor’s degree in electrical engineering or a similar field, and at least two to three years of experience in integrated circuit design.” Pet. 5–6 (citing Ex. 1002 ¶ 20). Patent Owner does not address the level of ordinary skill in its Patent Owner Response, but its declarant, Mr. Brahmbhatt, indicates that he has adopted and applied Petitioner’s level of ordinary skill in the art for purposes of his testimony. See Ex. 2001 ¶ 23. Based on the current record, we are concerned that Petitioner’s articulation contains no upper bounds, i.e., “at least a bachelor’s degree,” such that the level of ordinary skill proposed by Petitioner is not sufficiently specific. As such, we adopt the definition provided by Petitioner with minor variations: “a person having ordinary skill in the relevant art at the time of invention is a person with a Bachelor’s of Science degree in electrical engineering or a similar field, and two to three years of experience in integrated circuit design.” Additionally, we determine that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 12

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

    “September 24, 2018, i.e., during the pendency of the instituted proceeding” and contends that the challenged claims should be construed under the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Pet. 10. We agree and determine that the instant patent expired on that date. Under the Phillips standard, claim terms are given their ordinary and customary meanings, as would be understood by a person of ordinary skill in the art, having taken into consideration the language of the claims, the specification, and the prosecution history of record. In the Decision on Institution, we acknowledged that Petitioner did not propose an express construction for any claim terms. Dec. on Inst. 12 (citing Pet. 11). In its Response, Patent Owner likewise does not propose explicit claim constructions for any claim terms, and its declarant, Mr. Brahmbhatt, indicates that he has assumed “that the claim terms have their ordinary customary meaning and that there are no specific constructions that I am to apply.” See PO Resp.; Ex. 2001 ¶ 24. As such, we determine that no claim terms require express construction and we apply the ordinary and customary meanings for all claim terms, as would have been understood by a person of ordinary skill in the art. slip op. at 12

  Patent outcomesUS 6,172,554 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 6,172,554
• Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentable
  PTAB · Nov 6, 2018 · IPR2017-01149 · APJ Karl D Easthom · IPR · Final written decision

  Claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 are unpatentable as obvious over Young ’801, Young ’121, Strubbe, and the respective additional reference in each trial.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “observations from that deposition or seek authorization to file a sur-reply. In view of these circumstances, we deny Patent Owner’s Motion to Exclude.” slip op. at 126

  Patent outcomesUS 6,418,556 unpatentable
  Nonecites Phillips
  Patents in suitUS 6,418,556
• Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentable
  PTAB · Nov 6, 2018 · IPR2017-01150 · APJ Karl D Easthom · IPR · Final written decision

  Claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 are unpatentable as obvious over Young ’801, Young ’121, Strubbe, and Moro, Reiter, or Remillard.

  RulingsFinal written decision

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

    “III. CONCLUSION For the foregoing reasons, Petitioner has shown, by a preponderance of the evidence, that the subject matter of claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 would have been obvious over the combination of Young ’801, Young ’121, Strubbe, and either Moro (48Pet.), Reiter (49Pet.), or Remillard (50Pet.).” slip op. at 126

  • ExcludeMotion to exclude, deniedDenied

    “12. Motion to Exclude Patent Owner moves to exclude paragraphs 8, 24, 27–30, 32 and 38 of” slip op. at 123

  Patent outcomesUS 6,418,556 unpatentable
  § 103 obviousnesscites Phillips
  Patents in suitUS 6,418,556
• Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentable
  PTAB · Nov 6, 2018 · IPR2017-01148 · APJ Karl D Easthom · IPR · Final written decision

  Claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 are unpatentable as obvious over the stated combinations in each of the three trials.

  RulingsFinal written decision

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

    “of the evidence, that the subject matter of claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 would have been obvious over the combination of Young ’801, Young ’121, Strubbe, and either Moro (48Pet.), Reiter (49Pet.), or Remillard (50Pet.). IV. ORDER ORDERED that 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 of U.S. Patent No. 6,418,556 B1 are unpatentable as a result of each trial as a separate matter, IPR2017-01148, IPR2017-01149, and IPR2017-01150;” slip op. at 126

  • ExcludeMotion to exclude, deniedDenied

    “observations from that deposition or seek authorization to file a sur-reply. In view of these circumstances, we deny Patent Owner’s Motion to Exclude.” slip op. at 126

  Patent outcomesUS 6,418,556 unpatentable
  § 103 obviousnesscites Phillips
  Patents in suitUS 6,418,556
• Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentable
  PTAB · Nov 6, 2018 · IPR2017-01151 · APJ Karl D Easthom · IPR · Final written decision

  Claims 23 and 25–27 are unpatentable as obvious over Young ’801, Young ’121, Strubbe, and any one of Moro, Reiter, or Remillard.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “would not have interpreted Young ’801’s system as restricted to a single page limited to time slots ranging from 11:00 am to 12:30 pm as depicted in Figure 6 of Young ’801. See Ex. 1720 ¶ 24 (describing Dr. Bovik’s restricted view of Young ’801 as unreasonable). This restricted reading of Young ’801 unreasonably constrains the use of the guide to 1.5 hours, something the Petitions do not do, contrary to Patent Owner’s arguments that the Reply shifts to new theories. See Rep. Opp. Mot. Exc. 2–5. To elaborate and address Patent Owner’s arguments and Dr. Bovik’s testimony, Mr. Wechselberger responds with a citation documenting well-known cursor navigation aspects of the same concept involved in spreadsheets (Ex. 1722) and elaborates about minimal program guide layout or format changes that go hand-in-hand with the Petitions’ assertions of guide size reduction. See Ex. 1720 ¶ 24; Opp. Mot. Exc. 9–11 (discussing Ex. 1720 ¶¶ 36–37, 129– 131, 136–137, 158), 11 (noting Dr. Bovik stated in his deposition “a user would have been ‘confined to the visible screen’”) (citing Ex. 1721, 56:16– 23, 108:25–109:8, 116:17–117:2; Ex. 2706 ¶¶ 51–52). In summary, the Petition cites to portions of Young ’801 that describe the page mode and generally advance the theory of moving a cursor across, upward, and to the right to obtain consecutively displayed and successive portions of schedule information, citing portions that describe new pages and cursor jumps. Petitioner did not create a new theory about how the page guide operates but responded to Patent Owner’s arguments. Patent Owner chose not to avail itself of the opportunity to depose Dr. Wechselberger about his second declaration and thereafter file observations from that deposition or seek authorization to file a sur-reply. In view of these circumstances, we deny Patent Owner’s Motion to Exclude.” slip op. at 92

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “materially similar description of a person of ordinary skill in the art. See PO Resp. 14–15 (citing Ex. 2706 ¶¶ 1–19). During the Oral Hearing, Patent Owner indicated any differences between Petitioner’s and Patent Owner’s descriptions do not create a dispositive issue. See Tr. 66:11–18. On this record, Petitioner’s description comports with the level of ordinary skill implied by the prior art references discussed further below. Accordingly, we adopt it.” slip op. at 38

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

    “8. Young ’801, Young ’121, Strubbe, and Moro Petitioner persuasively shows that claims 23 and 25–27 the” slip op. at 47

  Patent outcomesUS 6,418,556 unpatentable
  § 103 obviousness
  Patents in suitUS 6,418,556
• Technical Consumer Products, Inc. / Nicor Inc. et al. v. Lighting Science Group Corp.Some claims unpatentable
  PTAB · Oct 31, 2018 · IPR2017-01280 · APJ John A Hudalla · IPR · Final written decision

  Claims 1–3, 5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 are unpatentable under § 103; claims 3 and 4 were not shown unpatentable over Zhang, Soderman, and Silescent.

  RulingsFinal written decision

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

    “(collectively, “Lead Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of U.S. Patent No. 8,967,844 B2 (Ex. 1001, “the ’844 patent”) pursuant to 35 U.S.C. §§ 311–319. Patent Owner, Lighting Science Group Corp. (“Patent Owner”), did not file a Preliminary Response to the Petition. We determined that the information presented in the Petition established that there was a reasonable likelihood that Lead Petitioner would prevail in challenging claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of the ’844 patent under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we instituted this proceeding on November 1, 2017, as to claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of the ’844 patent. Paper 10 (“Dec. on Inst.”).” slip op. at 2

  • Skill levelSkill level board ownDecided for patent owner

    “The parties’ definitions of the level of skill differ in minor respects, including the number of years of experience and whether or not a 5 Patent Owner has not put forth any evidence or argument related to secondary considerations of nonobviousness. background in chemical engineering should be included. At his deposition, Dr. Bretschneider testified that he included a degree in chemical engineering in his definition because that degree confers expertise in heat transfer. Ex. 1023, 37:14–22. We find this testimony persuasive. Regarding the difference in years of experience, both declarants agree that three years of experience is appropriate. For these reasons, we define the person of ordinary skill in the art as having a bachelor’s degree in electrical engineering, mechanical engineering, chemical engineering, physics, or a related field and three years of experience in designing LED lighting products or fixtures. We are satisfied that this definition comports with the qualifications a person would have needed to understand and implement the teachings of the ’844 patent and the prior art of record.” slip op. at 12

  • Expert testimonyPatent owner expert creditedDecided for patent owner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “We agree with Petitioner (Pet. Reply 8–9), however, that an ordinarily skilled artisan would not have read Chou as narrowly as Patent Owner contends. Not only does Chou state that its fixture “may be configured to be installed into a recessed can housing having other geometries,” but also “recessed housings . . . developed with different geometries.” Ex. 1012, 3:65–4:7 (emphasis added). In light of this express teaching in Chou, we do not agree that Chou’s teachings are confined to 5- and 6-inch can lights, or even can lights in general. Junction boxes represent another geometry that can serve as a recessed housing for an LED light fixture. See Ex. 1023, 30:17–31:7 (Dr. Bretschneider testifying that, by 2009, LED light fixtures attached to junction boxes were known with “certain parts” inside the box). In addition, the fact that certain figures of Chou might depict a junction box external to a can light does not mean that junction boxes are excluded from the universe of “recessed housings” contemplated in the quotation above. In addition, Patent Owner contends Petitioner has provided no reason or motivation to combine Wegner with Chou. PO Resp. 10–11. Patent Owner also contends an ordinarily skilled artisan would not have combined Wegner with Chou because Wegner pertains to a light with a tall reflector, which must be installed in a can light fixture (and not a junction box). Id. at 11–12 (citing Ex. 2001 ¶¶ 74–75, 133–137). Yet Petitioner only cites Wegner for its teaching of removing an Edison base from an LED light fixture to facilitate direct wiring, and not for anything to do with reflectors. Pet. 24 (citing Ex. 1002 ¶ 53; Ex. 1016, 11:3–32). As such, Patent Owner’s arguments regarding Wegner’s light reflectors amounts to a bodily incorporation argument, which is not the test for obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.”). We are persuaded that, based on Wegner, an ordinarily skilled artisan would have known to remove the Edison base of Chou’s fixture regardless of the type of reflector and housing used in Wegner’s fixture. See Ex. 1002 ¶ 53. Regarding motivation, Petitioner posits a market-based rationale, namely, that an ordinarily skilled artisan would have been motivated to make a version of Chou’s luminaire to fit nominally sized junction boxes to serve the new construction market. Pet. 25 (citing Ex. 1002 ¶ 54). Dr. Coleman testifies that the Edison base would have been removed to make Chou’s luminaire work in a junction box. Ex. 1002 ¶ 53. We are persuaded that an ordinarily skilled artisan wanting to modify Chou for use in junction boxes would have known to make this modification.” slip op. at 19

  Patent outcomesUS 8,967,844 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,967,844
• Samsung Electronics Co., Ltd. v. Promos Technologies, Inc.All claims unpatentable
  PTAB · Oct 22, 2018 · IPR2017-01412 · APJ Jameson Lee · IPR · Final written decision

  Claims 10 and 11 are unpatentable as obvious over Donnelly and Iwamoto; claims 13 and 15 are unpatentable as anticipated by Jefferson.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “Level of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art at the time of the alleged invention of the ’507 patent “would have had at least a bachelor’s degree in electrical engineering or a similar field, and at least two to three years of experience in integrated circuit design. (Ex. 1002, ¶¶ 18– 19.)” Pet. 5 (footnote omitted). Patent Owner has not expressed what constitutes the level of ordinary skill in the art. We find Petitioner’s proposal vague insofar as it includes the qualifier “at least” to describe the level of education and the amount of working experience. This qualifier results in ranges that are too broad to provide a meaningful indication of what knowledge and skills would have been possessed by one of ordinary skill in the art. We adopt the level of skill in the art proposed by Petitioner, as we credit the testimony of Petitioner’s declarant in that regard (Ex. 1002 ¶ 18), but eliminate the qualifier “at least” to eliminate vagueness. C.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Petitioner asserts that while Donnelly explains the functionality and general operation of its up/down counter, it does not provide any structural detail of the internal components of the counter, that Iwamoto discloses a shift register in a delay locked loop that has the same functionality as the up/down counter of Donnelly in a delay locked loop, and that Iwamoto discloses the structure of the shift register. Pet. 38. These assertions are supported by the testimony of Dr. Baker. Ex. 1002 ¶ 108. We credit Dr. Baker’s testimony and give it substantial weight. Petitioner explains that one of ordinary skill in the art would have looked to Iwamoto for the implementation details regarding a circuit having the functionality of Donnelly’s up/down counter to realize a functional implementation of a delay locked loop incorporating the functionality disclosed in Donnelly. Pet. 38. That assertion also is supported by the testimony of Dr. Baker. Ex. 1002 ¶ 109. Petitioner explains Therefore, just as the state (count value) of the up/down counter 620 in figure 5 of Donnelly selects the tap used to provide the output signal from the delay block 500, the state (location of the HIGH value) of the shift register 4 in figure 17 of Iwamoto selects the tap used to provide the output from the delay line 2. (Ex. 1002, ¶ 117.) Similarly, the phase detector 610 instructs the up/down counter 620 in figure 5 of Donnelly to count up or down based on the phase comparison it performs, while the phase comparator 610 in figure 17 of Iwamoto instructs the shift register 4 to shift UP or DOWN based on its phase comparison. (Id.) The change of state for both references as a result of the up/down indication form the respective phase comparisons by one increment. (Id.) Pet. 42–43. The explanation is supported by the testimony of Dr. Baker. Ex. 1002 ¶ 117. We credit Dr. Baker’s testimony and give it substantial weight.” slip op. at 42

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

    “The words of the claim are clear in not specifying which signal leads or lags, and there is no express disavowal by Patent Owner, either in the Specification or in the prosecution history, as will be explained below. We must not rewrite the claim to add the requirement proposed by Patent Owner. The Specification of the ’507 patent describes, When the second phase detector 30 determines that CKF [feedback clock signal] is more than 180◦ behind CKI [input clock signal], the second phase detector 30 controls switch 28 to be at position (2). The inverted buffered clock signal is thus selected, so that the input clock signal CKI is reversed by 180◦[.] Through the inversion, the phase difference needing to be compensated by the delay line 16' is made less than 180◦ and within the normal operation capabilities of the phase adjusting loop formed by phase detector 12, shift register 14', and delay line 16'. Ex. 1001, 3:7–15.10 The above-quoted description constitutes an affirmative disclosure of one embodiment, and not a disavowal of anything that is different. Elsewhere in the Specification, there also is no clear language of disavowal.” slip op. at 17

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner

    “We disagree that for “according to the determining step” to have any meaning, Patent Owner’s proposed claim construction must be adopted. Rather, we find substantial meaning in “according to the determining step” without adding the non-inverted clock signal and the inverted clock signal as potential sources to the switch as proposed by Patent Owner. A different switch position is selected depending on the outcome of the determining step. We do not find that reading to be without meaning. As for the “inventive concept” and “fundamental purpose” assertions of Patent Owner, they go about the claim interpretation process in a reverse manner, by starting with the patent disclosure first, and then ensuring, are added to the claims under the name of claim interpretation. That is inappropriate. We must respect the language of the claims. It is a “bedrock principle” of patent law that “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Innova, 381 F.3d at 1115; see also Vitronics, 90 F.3d at 1582 (“we look to the words of the claims themselves . . . to define the scope of the patented invention”); Markman, 52 F.3d at 980 (“The written description part of the specification itself does not delimit the right to exclude. That is the function and purpose of claims.”). Phillips, 415 F.3d at 1312. “We do not read limitations from the specification into claims; we do not redefine words. Only the patentee can do that.” Thorner, 669 F.3d at 1366–67. The Federal Circuit has explained,” slip op. at 23

  Patent outcomesUS 6,069,507 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,069,507
• Samsung Electronics Co., Ltd. v. Promos Technologies, Inc.All claims unpatentable
  PTAB · Oct 22, 2018 · IPR2017-01413 · APJ Jameson Lee · IPR · Final written decision

  Claims 10, 11, 13, and 15 are unpatentable as anticipated by Kim because Kim discloses each limitation of the challenged claims.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDisclaimer not foundDecided for petitioner

    “The words of the claim are clear in not specifying which signal leads or lags, and there is no express disavowal by Patent Owner, either in the Specification or in the prosecution history, as will be explained below. We must not rewrite the claim to add the requirement proposed by Patent Owner.” slip op. at 16

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

    “We disagree that for “according to the determining step” to have any meaning, Patent Owner’s proposed claim construction must be adopted. Rather, we find substantial meaning in “according to the determining step” without adding the non-inverted clock signal and the inverted clock signal as potential sources to the switch as proposed by Patent Owner. A different switch position is selected depending on the outcome of the determining step. We do not find that reading to be without meaning.” slip op. at 22

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

    “Pet. 26–28. The explanation is supported by the testimony of Dr. Baker. Ex. 1002 ¶¶ 72–73. We credit Dr. Baker’s testimony and give it substantial weight. Notwithstanding Patent Owner’s arguments to the contrary, discussed below, we are persuaded by Petitioner’s showings, summarized above, that Kim discloses “maintaining the phase difference between the input clock signal and the feedback clock signal within approximately 180◦.”” slip op. at 34

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “understand the term.” Ex. 2002 ¶ 28. We do not credit that testimony, because Mr. Gervasi does not adequately explain why the plain claim language of “selecting a switch position according to the determining step” should be read restrictively to require a selection between non-inverted and inverted input cock signals. As discussed above, it is claims which define the scope of an invention, not the Specification.” slip op. at 28

  Patent outcomesUS 6,069,507 unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 6,069,507
• Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentable
  PTAB · Oct 16, 2018 · IPR2017-01049 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–18 are unpatentable: claims 1, 3–10, and 12–18 as obvious over Sato and Humpleman; claims 2 and 11 as obvious over those references and Lawler.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedOther

    “of Sato’s Figures 1 and 2 to achieve the same functions described in relation to Figure 17. See Tyco Healthcare Grp. LP v. Ethicon Endo-Surgery, Inc., 774 F.3d 968, 978 (Fed. Cir. 2014) (“[O]ne of ordinary skill is also one of ‘ordinary creativity’ that knows how to combine familiar prior art elements to achieve the same functions.”); Boston Sci. Scimed, 554 F.3d at 991 (“Combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.”). Accordingly, we agree with Dr. Tjaden that a person of ordinary skill in the art would have looked to Sato’s Figures 1 and 2 for a teaching as to how the system illustrated in Sato’s Figure 17 controls electronic devices, such as a VTR for scheduling program recordings. Ex. 1152 ¶¶ 27, 28.” slip op. at 46

  • Skill levelOther

    “2. Level of Skill in the Art There is evidence in the record before us that enables us to determine” slip op. at 22

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

    “III. CONCLUSIONS Comcast has demonstrated by a preponderance of the evidence that (1) claims 1, 3–10, and 12–18 are unpatentable under § 103(a) over the combined teachings of Sato and Humpleman; and (2) claims 2 and 11 are unpatentable under § 103(a) over the combined teachings of Sato, Humpleman, and Lawler. Comcast, however, has not demonstrated by a preponderance of the evidence that (1) claims 1, 3–10, and 12–18 are unpatentable under § 103(a) over the combined teachings of Woo, Mizuno, and Rzeszewski; and (2) claims 2 and 11 are unpatentable under § 103(a) over the combined teachings of Woo, Mizuno, Rzeszewski, and Lawler.” slip op. at 86

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

    “E. Obviousness Over the Combined Teachings of Woo, Mizuno, Rzeszewski, and Lawler Comcast also contends that claims 2 and 11 of the ’413 Patent are unpatentable under § 103(a) over the combined teachings of Woo, Mizuno, Rzeszewski, and Lawler. Pet. 71–72. This ground relies upon Comcast’s argument that it would have been obvious to one of ordinary skill in the art to automate Woo’s manual call-in scheduling process by using Mizuno’s remote access guide web pages. Id. at 47–48 (citing Ex. 1102 ¶¶ 197–199). Because we determine that Comcast does not provide sufficient reasoning for combining the teachings of Woo and Mizuno, Comcast has not demonstrated a reasonable likelihood that it would prevail on its assertion that the subject matter of dependent claims 2 and 11 would have been obvious over the combined teachings of Woo, Mizuno, Rzeszewski, and Lawler.” slip op. at 85

  Patent outcomesUS 8,578,413 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,578,413

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