• Inductev Inc. v. Witricity CorporationAll claims unpatentable
  PTAB · Dec 20, 2022 · IPR2021-01166 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–23 are unpatentable: claims 1, 5–8, 15, and 19–22 are anticipated by O’Brien, and claims 1–23 are obvious over O’Brien and Haaster.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (“POSA”) “at the relevant time (around 2008) would have had at least a bachelor’s 5 Ex. 1024 was served, but not filed in this proceeding. Opp. Mot. to Exclude v. degree in electrical engineering (or equivalent) and at least two years’ industry experience, or equivalent research”; “[a]lternatively, a POSA could substitute directly relevant additional education for experience, e.g., an advanced degree relating to electrical engineering (or equivalent), with at least one year of industry experience.” Pet. 8 (citing Allen Decl. ¶¶ 31–34). Patent Owner does not dispute the level of ordinary skill in the art. See generally PO Resp. We adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the specification of the ’935 patent and asserted prior art of record.” slip op. at 10

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

    “Petitioner asserts that “prior art relied on in this Petition discloses the subject matter of the challenged claims under any reasonable construction, including their plain meaning” and “submits that no terms need to be construed to find the asserted claims unpatentable under the grounds set forth herein.” Pet. 9. Patent Owner does not submit any claim construction for any term. See generally PO Resp. We do not discern a dispute between the parties regarding any claim limitations, nor do we discern the need to expressly construe any claim limitations to resolve the controversy before us. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner

    “Frequency Power Transmission System for Wireless Systems and Devices.” Ex. 1007, Title. Petitioner asserts that O’Brien “was publicly available more than one year prior to the ’935 patent’s filing date” as “O’Brien was completed and approved by faculty members at the University of Dresden on March 11, 2006” and the “‘Machine-Readable Cataloging’ (MARC) record for O’Brien demonstrates that O’Brien was received, cataloged, and indexed by the Verbundzentrale Des Gemeinsamen Bibliotheksverbundes as of March 2, 2007.” Pet. 10–11 (citing Ex. 1005 ¶¶ 38, 40–43). Patent Owner does not challenge Petitioner’s assertions regarding O’Brien’s public accessibility. See generally PO Resp.6 Because Petitioner has shown, by a preponderance of the evidence, public accessibility of O’Brien through the MARC record and the library indexing as of March 2, 2007, as discussed above, and there is no evidence to the contrary, we find that O’Brien was publicly available more than one year prior to the filing date of the 6 We note here, however, Patent Owner’s contention that Petitioner has not properly authenticated O’Brien. Mot. Exclude 1. We address the issue of authentication below in connection with our denial of Patent Owner’s Motion to Exclude. See Section IV. ’935 patent (December 28, 2009), and thus qualifies as prior art under 35 U.S.C. § 102(b).” slip op. at 12

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

    “As stated in our Decision on Institution, although we agree with Patent Owner’s explanation of how O’Brien describes source coils and tuning circuits in discrete chapters of the reference, the Petition explains sufficiently that the Tuneable Resonant Circuit is inexorably linked to the source coils and that the circuits are thus tuned to resonance. Dec. on Inst. 20. The arguments presented by Patent Owner do not persuade us otherwise. See Sur-reply 3−4 (arguing that O’Brien’s disclosure of tuning circuits is distinct from its disclosure of coils and, therefore, Petitioner’s discussion of one does not imply the other). As explained above, despite the Petition’s prominent reliance on the source-side Tuneable Resonant Circuit, highlighted in purple in Figure 5-1, Petitioner also relies on the discussions in Chapter 6 that describe the characteristics of the tuning circuits and Chapter 7 that describe source coils and the resonant circuits as “Source side systems.” Pet. 18−20. Accordingly, and as previously noticed in our Decision on Institution, the Petition gives sufficient notice that O’Brien’s source coils are part of the “source resonator.” Dec. on Inst. 20. Therefore, we are not persuaded by Patent Owner’s arguments that the Petition fails to show that O’Brien discloses the claimed “source resonator.” For the same reason, we are not persuaded that Petitioner’s Reply represents a new theory as compared with the position taken in the Petition. Consequently, Petitioner has shown that the “source resonator optionally coupled to an energy source” of claim 1 is taught by O’Brien’s source side system where the tunable resonant circuit (including the source coils) is coupled to the power source. Pet. 18−20; Ex. 1007, Figs. 5−1 (depicting the coupling to the power source), 6−1 (depicting the source side power conversion part of the system with tuning circuits in three different axes in an omni-directional system); 112−112 (Chapter 6 – describing the power converter of the source side and stating that the “power rating of the source side converter is primarily determined by the losses in the source coils for operation at resonance”); 114−115 (Chapter 6 – describing resonant circuit parameters where the source and receiver sides are tuned to a resonant frequency and form a transformer); 139−140 (Chapter 7 – describing “Source side systems,” the source coils operating characteristics, and three resonators connected to three independent power supplies); Allen Decl. ¶¶ 76−78.” slip op. at 23

  Patent outcomesUS 8,304,935 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,304,935
• Matsing, Inc. v. All.Space Networks Ltd. F/K/A Isotropic Systems, Ltd.Instituted
  PTAB · Dec 14, 2022 · IPR2022-01108 · APJ Karl D Easthom · IPR · Institution

  The Board instituted IPR of claims 1–19, finding a reasonable likelihood that Matsing would show them unpatentable as obvious over the asserted grounds.

  RulingsInstitution decision

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

    “review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of claims 1–19 of the ’947 patent.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “Even if Patent Owner is correct that Demetriadou is cumulative of Mateo-Segura and assuming that the Office considered the latter because it is listed on an IDS, Petitioner shows the Office erred in a manner material to the patentability of the challenged claims. Petitioner shows that, during prosecution, “the Applicant amended claim 1 to include 1) ‘a plurality of non-spherical lenses,’ and 2) ‘a selector connected to each of said plurality of feed elements of said plurality of lens sets.’” Pet. 11 (citing Ex. 1010, 2). As Petitioner argues, “[c]ritically, the examiner failed to consider whether these limitations would have been obvious over Matitsine-860 in view of other material prior art available to a person of ordinary skill in the art.” Id. Regarding the “non-spherical lenses” limitation of claim 1, as discussed above, Petitioner shows that Matitsine-860 discloses non-spherical lenses, and Patent Owner does not dispute this showing on this preliminary record. See Pet. 18 (citing Ex. 1002, 4:55–85); Prelim. Resp. 18–23. In addition, Petitioner shows that Demetriadou teaches a “slim lens” or “‘discus’ shaped lens,” produced “by ‘squeezing’ or ‘slimming’ [a] spherical lens.” Id. (quoting Ex. 1003, Abstract, 19927). Petitioner also provides reasons supported by factual underpinnings to combine Demetriadou’s teachings with those of Matitsine-860, as discussed above. See Advanced Bionics, Paper 6 at 9–11 & n.10 (reasoning that Becton Dickinson factor (f), “additional evidence and facts presented in the petition,” and Becton Dickinson factor (e), the extent the Petition shows error, inform the material error inquiry). Therefore, even if Demetriadou is cumulative of Mateo- Segura, Petitioner shows that the Office overlooked or misapprehended any alleged cumulative teachings as represented by the non-spherical lenses as described in Matitsine-860 and Demetriadou, thereby satisfying the second part of the two-part framework of Advanced Bionics. With respect to the “selector” limitation of claim 1, even if Patent Owner is correct that Collier “discloses switching or throwing different switches 34 to shape a pattern,” this, without more, does not show that Ebling is cumulative to Collier. See Prelim. Resp. 14 (citing Ex. 2004, 7:35–42). Although Patent Owner’s characterization of Collier appears correct as indicated above (supra note 9), Ebling teaches a switch to select from multiple feeds arranged around each lens to form a radiation pattern, a feature that the applicant argued is a patentable feature over Matitsine during prosecution. See Ex. 1010, 5 (arguing that “Matitsine does not teach a selector in communication with the plurality of feed elements of each lens, as required by amended claim 1” (emphasis added)); Pet. 14, 22; Ex. 1004, code (57), 6:27–33, Fig. 1. Therefore, Ebling is not cumulative of Collier under the first part of the two-part framework of Advanced Bionics. For the foregoing reasons, we decline to exercise our discretion under” slip op. at 28

  • Skill levelSkill level petitioner adoptedOther

    “II. OBVIOUSNESS ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts the following: A person of ordinary skill in the art (“POSITA”) is a hypothetical person who is presumed to be aware of all relevant prior art. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). At the time that the patent application for the ‘947 Patent was filed, a POSITA would have had an understanding of basic antenna theory as it applies specifically to wireless communication antennas, and to further have a basic understanding of the wide variations of antenna types that have been developed over the past 50 years. Pet. 16. Patent Owner adopts “Petitioner’s proposed definition” “[f]or purposes of th[e] Preliminary Response.” Prelim. Resp. 6. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’947 patent and the asserted prior art.” slip op. at 6

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

    “Based on the preliminary record, Patent Owner’s arguments do not undermine Petitioner’s showing. The arguments are not commensurate in scope with the claims, because the claims do not require “improved angular ranges.” See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many of appellant's arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). In addition, Patent Owner does not explain how its disclosed or claimed “nonspherical lenses” have different properties than the Demetriadou’s nonspherical lenses. Also, Patent Owner generally appears to conflate directivity with a wider steering angle. See Prelim. Resp. 19–20. For example, Patent Owner relies on Figures 5 and 6 of Demetriadou, but those figures merely demonstrate the high directivity of the disclosed antennas with “slim Lunenberg” lenses. See Ex. 1003, Figs. 5, 6. Demetriadou states that the most significant advantage of the slim Luneburg lens as discussed above is its steering properties. The steerable behaviour of the slim lens was examined by moving the patch antenna along the y-axis by a distance c (defined in Fig. 3(a)). It was found that the lens steered the main lobe, while it maintained high values for the directivity and low side-lobes. Ex. 1003, 19932. In other words, the steerable high directivity of Demetriadou is an advantage, not a problem, contrary to Patent Owner’s arguments. Matitsine-860 confirms that a narrow beam is advantageous, because it essentially provides more gain in a given direction: “The spherical lens allows the output RF signal to narrow so that the resultant beam can travel a farther distance.” Ex. 1002, 5:34–35. Matitsine-860 also confirms that its system “uses an array of spherical” slip op. at 16

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,553,947
• Honeywell International, Inc. / Sierra Wireless, Inc. et al. v. 3g Licensing S.A.All claims unpatentable
  PTAB · Dec 6, 2022 · IPR2021-00906 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–4, 6, 8, 9, 12, 33–36, 38, 40, 41, 44, 56, 57, 62, and 63 are unpatentable; substitute claims 66–85 are allowed because unpatentability over the asserted prior art was not shown.

  RulingsFinal written decision

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

    “evidence that any of Patent Owner’s proposed substitute claims 66–85 in the Revised Motion to Amend Claims are unpatentable over prior art. Patent Owner, on the other hand, has proved that its proposed substitute claims 66– 1 Petitioner entity Dell, Inc. was terminated from this proceeding on January 11, 2022. Paper 23. Petitioner entities ZTE Corporation and ZTE (USA) Inc. were terminated from this proceeding on October 20, 2021. Paper 17. Petitioner entity Cradlepoint Inc. was terminated from this proceeding on November 7, 2022. Paper 72. Accordingly, Patent Owner’s Revised Motion to Amend Claims is granted. A.” slip op. at 2

  • Strike new argumentNew argument consideredDenied

    “For the foregoing reasons, Patent Owner’s Motion to Strike is denied.” slip op. at 91

  • ExcludeMotion to exclude, deniedDenied

    “prejudicial to Petitioner because they all post-date the priority date of the ’388 patent. Paper 59, 3–4. However, as we explained above, these documents need not have pre-dated the critical date of the ’388 patent. It is not necessary that one with ordinary skill in the art would have had access to them prior to June 1, 2004, or July 20, 2004. Petitioner has not shown the alleged prejudice. Additionally, our consideration of these documents did not result in a favorable conclusion for Patent Owner, either on the matter of Patent Owner’s proposed claim construction or on the matter of Patent Owner’s alleged satisfaction of a long-felt need.” slip op. at 97

  Patent outcomesUS 7,580,388 unpatentable
  Nonecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 7,580,388
• Darfon Electronics Corp. v. Michael ShipmanInstitution denied
  PTAB · Dec 2, 2022 · IPR2022-01008 · APJ Debra K Stephens · IPR · Institution

  The Board denied institution under § 325(d), finding the asserted art cumulative of art previously presented to the Office and no material Office error shown.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “In evaluating arguments under § 325(d), we use [a] two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner slip op. at 10

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

    “(a) THRESHOLD.—The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition (35 U.S.C. § 314(a)). Petitioner challenges claims 1–20 as unpatentable under 35 U.S.C. § 103 in twelve grounds of unpatentability (Pet. 7). Generally, Patent Owner contends that the Petition should be denied as to all challenged claims (see Prelim. Resp.). We do not reach whether Petitioner has shown a reasonable likelihood of prevailing on at least one claim. For reasons discussed below, we discretionarily deny the Petition under 35 U.S.C. § 325(d).” slip op. at 2

  Discretionary denial
  Patents in suitUS 10,942,581
• Microsoft Corporation v. D3d Technologies, Inc.All claims unpatentable
  PTAB · Nov 28, 2022 · IPR2021-00878 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1–9 and 11–21 are unpatentable as obvious over Acosta and Tomoda, with additional references applied to certain dependent claims.

  RulingsFinal written decision

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art the time of” slip op. at 9

  • BurdenFwd all claims unpatentableUnpatentable

    “of Acosta, Tomoda, and Zhou teaches all recitations of the claims because Petitioner’s arguments are consistent with and supported by the evidence of record. Also, we are persuaded that Petitioner has offered articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have combined the teachings of Acosta, Tomoda, and Zhou in the manner recited in claims 20 and 21. We find that Petitioner’s showing is not undermined by Patent Owner’s arguments and evidence. After consideration of the arguments and the evidence of record based on the complete record now before us, Petitioner has proved, by a preponderance of the evidence, that claims 20 and 21 would have been obvious over Acosta, Tomoda, and Zhou. III. CONCLUSION12 Petitioner has proved by a preponderance of the evidence that claims 1–9 and 11–21 of the ’691 patent are unpatentable. The outcome for the challenged claims is set forth in the table below. In summary:” slip op. at 117

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

    “3. Independent Claim 1 a) Reasoning to Combine Petitioner argues in light of Tomoda’s teaching of obtaining original” slip op. at 36

  Patent outcomesUS 9,980,691 unpatentable
  § 103 obviousnesscites Phillips
  Patents in suitUS 9,980,691
• Momentum Dynamics Corporation v. Auckland Uniservices LimitedAll claims unpatentable
  PTAB · Nov 22, 2022 · IPR2021-01116 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1–13 are unpatentable as obvious over Nakao and Beart; the Board did not reach the Hui-910 grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the testimony of Dr. Mark G. Allen, Petitioner offers an assessment as to the level of ordinary skill in the art and the general knowledge of a person of ordinary skill (“POSA”) at the time of the ’955 patent. Pet. 6 (citing Ex. 1003 ¶¶ 31–34). For example, Dr. Allen states that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering (or equivalent) and at least two years’ industry experience or equivalent research” and that relevant additional education could be substituted for experience, “e.g., an advanced degree in electrical engineering (or equivalent) with at least one year of industry experience.” Ex. 1003 ¶ 33. Patent Owner neither disputes Petitioner’s assessment nor proposes an alternate assessment. We adopt Petitioner’s definition of the level of skill, except that we delete the phrase “at least” to avoid including ambiguity in the definition of the level of skill.” slip op. at 6

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

    “In our Institution Decision, we preliminarily determined that “a shield member comprising a backplate” “may include additional components other than the claimed backplate, but additional components are not required.” Dec. 13. Based on the full trial record, however, we need not construe this term because the parties only dispute whether Hui-910 discloses the “shield member comprising a backplate.” PO Resp. 14–15; Reply 11. And we do not reach the Hui-910-based grounds because, for reasons explained below, the ground based on Nakao and Beart is dispositive of all the challenged claims. Thus, we do not construe this term.” slip op. at 7

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

    “After considering Patent Owner’s arguments, which we address below, we agree with Petitioner that one of ordinary skill in the art would have combined Beart with Nakao in the manner proposed. For instance, we find Petitioner’s arguments compelling that adding Beart’s flux shield to Nakao’s wireless system would have increased coupling between the transmitting pad and the receiving pad, and protected surrounding components, objects, and people from stray magnetic flux. Id. at 53–57 (citing, e.g., Ex. 1003 ¶¶ 188–193). We find that one of ordinary skill in the art would have made this modification because, according to Dr. Allen’s unrebutted testimony, increasing transmit-receive coupling would have reduced the problem of nearby metal (such as from a vehicle chassis) reducing power transfer efficiency due to “the ferrous materials provid[ing] a low reluctance path that ‘suck[s]’ flux away from the power transfer system.” Ex. 1003 ¶¶ 189–90. And we further find that one of ordinary skill in the art would have made this modification because Dr. Allen persuasively testifies that “coupling between the transmitting and receiving pads would be improved, and less drive current would be necessary to generate the same amount of power at the receiving pad.” Id. ¶ 192. Moreover, we also find that Dr. Allen persuasively testifies that “when flux interacts with nearby metal components, . . . there are ‘core losses, for example via hysteresis and/or eddy current loss’ in those objects, and those eddy currents may heat up and potentially damage those objects.” Id. ¶ 193 (quoting Ex. 1006, 2:11–27; citing Ex. 1017, 21). We also find compelling his testimony that “stray flux could also interfere with medical devices like pacemakers in a passenger of the vehicle being charged, detonation of electro-explosive devices, and fires caused by sparks from induced fields.” Id. (citing Ex. 1022, 514–15). As such, we also agree with Dr. Allen’s testimony that “a POSA would [have] understood that stray magnetic fields can pose a safety hazard to people as well.” Id. ¶ 194 (citing Ex. 1017, 23–24, 27, 155–60). Accordingly, we find that Petitioner’s arguments for the combination are well-supported by unrebutted record evidence. Thus, even in light of Patent Owner’s arguments, which we address below, we determine that Petitioner has persuasively shown that one of ordinary skill in the art would have combined Beart with Nakao as proposed.” slip op. at 17

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

    “Petitioner persuades us that one of ordinary skill in the art would have combined Beart with Nakao in the manner proposed. Petitioner’s arguments have a rational basis in the evidence of record, supported by the unrebutted testimony of Dr. Allen. In particular, as we explained above, we are persuaded by Dr. Allen’s unrebutted testimony that sidewalls on the receiver side can reduce splay, protect components, and protect people in the vicinity. See Ex. 1003 ¶¶ 148–59, 193–98; Reply 21–23. Patent Owner’s attorney argument, in contrast, does not undermine Petitioner’s showing. Patent Owner’s argument assumes that Beart’s shield sidewalls would be immediately near Nakao’s noncontact coupler. PO Resp. 36–41. But Patent Owner overlooks that the proposed combination relies on sidewalls spaced some distance away from Nakao’s pads, as shown in the figure above. See Reply 22–23. We also agree with Petitioner that even if some of Nakao’s side surface coupling would be blocked by the combination’s proposed sidewall shielding, the advantages of combining would have outweighed the reduction of “some of the side surface coupling.” Reply 23–24; PO Resp. 40. “A given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Allied Erecting and Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (citation omitted). We find that Dr. Allen’s unrebutted testimony regarding the improved coupling and safety advantages, discussed above, outweighs Patent Owner’s speculative disadvantage of reducing “some” side surface coupling. See Ex. 1003 ¶¶ 196, 214; PO Resp. 40.” slip op. at 25

  Patent outcomesUS 9,767,955 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 9,767,955
• Momentum Dynamics Corporation v. Witricity CorporationSome claims unpatentable
  PTAB · Nov 22, 2022 · IPR2021-01167 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1, 9, 10, 12, 13, 18, 36, 37, 43, 44, and 49 are unpatentable; claims 46–48, 50, and 51 were not shown unpatentable, chiefly because the asserted art lacked the construed configurable bridge structure.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that [a] person of ordinary skill in the art (“POSA”) at the time of the purported invention would have had a Bachelor’s degree in electrical engineering or an equivalent field, and at least two years’ industry experience, or equivalent research. Alternatively, a POSA could substitute directly relevant additional education for experience, e.g., an advanced degree relating to the design of circuits using inductive coupling, or an advance degree in electrical engineering or an equivalent field with at least one year of industry experience. Pet. 10 (citing Ex. 1003 ¶¶ 8–12). Patent Owner does not address the level of skill in the art. We are persuaded that Petitioner’s proposal is consistent with the problems and solutions addressed by the ’581 patent and prior art of record. We adopt Petitioner’s definition of the level of skill, except that we delete the phrase “at least” to avoid ambiguity.” slip op. at 10

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Turning to our analysis, we first note that means-plus-function claiming occurs when a claim term is drafted in a manner that invokes 35 U.S.C. § 112, para. 6, which states: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.6 Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015). “[T]he use of the word ‘means’ in a claim element creates a rebuttable presumption that § 112, para. 6 applies.” Id. (citing Personalized Media 6 See supra, n.2 (explaining that the pre-AIA version of § 112 applies). Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703–04 (Fed. Cir. 1998)). That presumption is not rebutted here. Neither party disputes that 35 U.S.C. § 112, paragraph 6 applies to all of the “means” terms recited in the ’581 patent claims. Pet. 11–16; PO Resp. 7–15, 34–35. “Construing a means-plus-function claim term is a two-step process. The court must first identify the claimed function. . . . Then, the court must determine what structure, if any, disclosed in the specification corresponds to the claimed function.” Williamson, 792 F.3d at 1351 (citing Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012)). “Structure disclosed in the specification qualifies as ‘corresponding structure’ if the intrinsic evidence clearly links or associates that structure to the function recited in the claim.” Id. at 1352 (citing B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)).” slip op. at 13

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for patent owner

    “We agree with Petitioner that the claimed function in the “means for converting” limitation is “converting a power from a power supply system to a power at an operating frequency for transfer of wireless energy.” Pet. 11. But we disagree with Petitioner that the corresponding structure is “an oscillator with amplifier; the half-bridge inverter in Figure 19A below; or the full-bridge inverter in Figure 19B.” See id. For the reasons below, we identify the disclosed structure corresponding to the “means for converting” limitation to be “a bridge circuit configurable between a full-bridge mode and a half-bridge mode, as shown in Figures 19A and 19B, and equivalents thereof.”” slip op. at 14

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

    “generally given their plain and ordinary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). For lexicography, “[e]ven when guidance is not provided in explicit definitional format, the specification may define claim terms by implication such that the meaning may be found in or ascertained by a reading of the patent documents.” In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1150 (Fed. Cir. 2012) (quoting Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004)). For example, “a patent’s repeated and consistent description of a claim term may inform its construction.” Groove Digital, Inc. v. United Bank, 825 Fed. App’x 852 (Fed. Cir. 2020) (nonprecedential) (citing Abbott, 696 F.3d at 1150). For disavowal to be applicable, “the specification must contain expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Cont’l Circuits, 915 F.3d at 797 (quotations and citations omitted).” slip op. at 26

  Patent outcomesUS 8,884,581 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,884,581
• TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentable
  PTAB · Nov 21, 2022 · IPR2022-00245 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 2–4 are unpatentable as obvious over Lam, Enz, and Tayloe; claims 2 and 3 are also unpatentable as obvious over Tayloe and the TI Datasheet.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Neither party contends that the difference in their proposals affects the outcome of this proceeding and we do not find that it does. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 12

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

    “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner, 669 F.3d at 1366 (citing CCS Fitness, 288 F.3d at 1366). “It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to redefine the term.” Id. (citing Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed. Cir. 2009)). That is precisely what the patentees did in the above-passage. Specifically, we find that they clearly set forth a definition that is different than the plain and ordinary meaning and, in so doing, clearly expressed an intent to redefine the term. That the patentees intended to redefine the term “storage module” is clearly expressed by the use of “as used herein”16 and “refers to” in the above-passage and is consistent with the patentees’ use of these same phrases when defining other terminology in the ’551 patent, as discussed above. slip op. at 18

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

    “Generally . . . the preamble does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). A term in the preamble is a limitation only if it “recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” TomTom, 790 F.3d at 1323. We agree with Petitioners that “wireless modem apparatus,” as recited in the preambles of claims 2 and 3, is not limiting. In particular, “wireless modem apparatus” does not provide antecedent basis for any term subsequently recited in claims 2–4; it does not provide any essential structure because the body of the claim recites a structurally complete invention; and it is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner’s argument that the preamble is limiting because it makes clear that the input signal is input to a wireless modem apparatus is unavailing because the body of claims 2 and 3 expressly recite, as the first element, “a receiver for frequency down-converting an input signal.” See Ex. 1001, 60:48–49 (claim 2), 61:2–3 (claim 3). And, Patent Owner’s arguments make clear that its attempt to read “wireless modem apparatus” as limiting is solely for the purpose of arguing that claims 2–4 require a transmitter, which is a structural element that is not recited in the claims. See, e.g., PO Resp. 72 (arguing that Tayloe does not disclose a transmitter), 79 (raising the same arguments directed to Lam). When the patentees intended to limit a claim to a transmitter, they expressly recited a transmitter in the body of the claim. See, e.g., Ex. 1001, 61:25–57 (Claim 6 recites “[a] wireless modem apparatus, comprising,” and expressly recites “a receiver” and “a transmitter” in the body of the claim.). Accordingly, for each of these reasons, we find that “wireless modem apparatus” recited in the preambles of claims 2 and 3 is not limiting. slip op. at 23

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

    “On the full record before us, none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of these additional terms. Accordingly, we need not construe them expressly to resolve the present disputes between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 24

  Patent outcomesUS 7,110,444 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,110,444
• TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentable
  PTAB · Nov 21, 2022 · IPR2021-00990 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 2–4 are unpatentable under §103: claims 2–3 over Tayloe and the TI Datasheet, and claims 2–4 over Lam, Enz, and Tayloe.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s option (a) is substantially the same as Petitioners’ proposal—both require a bachelor’s degree in the same or a related subject and two additional years of related work experience. Patent Owner’s option (b) adds an additional option based on work experience in lieu of a formal degree. Neither party contends that the difference in their proposals affects the outcome of this proceeding and we do not find that it does. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 12

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

    “The terms storage module and storage capacitance, as used herein, are distinguishable from the terms holding module and holding capacitance, respectively. Holding modules and holding capacitances, as used above, identify systems that store negligible amounts of energy from an under-sampled input EM signal with the intent of “holding” a voltage value. Storage modules and storage capacitances, on the other hand, refer to systems that store non-negligible amounts of energy from an input EM signal. Ex. 2029, 66:59–67 (emphases added); see Ex. 2016, 39–40 (discussing Patent Owner’s prior arguments to construe “storage module” in IPR2014- 00948). When defining certain terms in a section titled “General Terminology,” the ’551 patent repeatedly uses the phrase “when used herein” in combination with the phrase “refer(s) to.” See, e.g., Ex. 2029, 13:56–15:27 (mentioning a term followed by “when used herein,” followed by “refers to,” followed by a definition). For example, the ’551 patent states, “[t]he term digital signal, when used herein, refers to a signal that changes between discrete states, as contrasted to a signal that is continuous.” Id. at 15:7–9. As shown, the ’551 patent defines “digital signal” by stating “when used herein” followed by “refers to.” And, the same sentence also provides a comparison between “digital signal” and a signal that is continuous. Even though the passage describing “storage module” is not listed under the “General Terminology” section of the ’551 patent, the passage provides the same indications that the patentees clearly and unambiguously intended to define the term “storage module” by stating “as used herein” and “refer to”—hallmarks that the patentees were providing a lexicographic definition of the term. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 679 (Fed. Cir. 2015) (“An applicant’s use of the phrase ‘refers to’ generally indicates an intention to define a term.”) (citing In re Imes, 778 F.3d 1250, 1252–53 (Fed. Cir. 2015); Microsoft Corp. v. Int’l Trade Comm’n, 731 F.3d 1354, 1360 (Fed. Cir. 2013); Linear Tech. Corp. v. Int’l Trade Comm’n, 566 F.3d 1049, 1054 (Fed. Cir. 2009)). Additionally, as with the term “digital signal,” the above-passage provides a comparison between “storage module” and “holding module” and uses the definitions of the terms to compare and contrast them. “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner, 669 F.3d at 1366 (citing CCS Fitness, 288 F.3d at 1366). “It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to redefine the term.” Id. (citing Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed. Cir. 2009)). That is precisely what the patentees did in the above-passage. Specifically, we find that they clearly set forth a definition that is different than the plain and ordinary meaning and, in so doing, clearly expressed an intent to redefine the term. That the patentees intended to redefine the term “storage module” is clearly expressed by the use of “as used herein”16 and “refers to” in the above-passage and is consistent with the patentees’ use of these same phrases when defining other terminology in the ’551 patent, as discussed above.” slip op. at 17

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

    “Generally . . . the preamble does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). A term in the preamble is a limitation only if it “recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” TomTom, 790 F.3d at 1323. We agree with Petitioners that “wireless modem apparatus,” as recited in the preambles of claims 2 and 3, is not limiting. In particular, “wireless modem apparatus” does not provide antecedent basis for any term subsequently recited in claims 2–4; it does not provide any essential structure because the body of the claim recites a structurally complete invention; and it is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner’s argument that the preamble is limiting because it makes clear that the input signal is input to a wireless modem apparatus is unavailing because the body of claims 2 and 3 expressly recite, as the first element, “a receiver for frequency down-converting an input signal.” See Ex. 1001, 60:48–49 (claim 2), 61:2–3 (claim 3). And, Patent Owner’s arguments make clear that its attempt to read “wireless modem apparatus” as limiting is solely for the purpose of arguing that claims 2–4 require a transmitter, which is a structural element that is not recited in the claims. See, e.g., PO Resp. 72 (arguing that Tayloe does not disclose a transmitter), 79 (raising the same arguments directed to Lam). When the patentees intended to limit a claim to a transmitter, they expressly recited a transmitter in the body of the claim. See, e.g., Ex. 1001, 61:25–57 (Claim 6 recites “[a] wireless modem apparatus, comprising,” and expressly recites “a receiver” and “a transmitter” in the body of the claim.). Accordingly, for each of these reasons, we find that “wireless modem apparatus” recited in the preambles of claims 2 and 3 is not limiting. slip op. at 23

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

    “Additional Terms Petitioners propose that we construe the following three terms: “frequency down-conversion module,” “subtractor module,” and “under-samples.” Pet. 15–18. Patent Owner responds to Petitioners’ constructions for “frequency down-conversion module” and “subtractor module.” PO Resp. 39–41. On the full record before us, none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of these additional terms. Accordingly, we need not construe them expressly to resolve the present disputes between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 24

  Patent outcomesUS 7,110,444 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,110,444
• TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentable
  PTAB · Nov 17, 2022 · IPR2022-00246 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1, 12–15, and 17–20 are unpatentable as obvious over the prior-art combinations; the Board did not reach the alternative grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’835 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 13

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

    “preamble of claim 1, is not limiting. In particular, “cable modem” does not provide antecedent basis for any term subsequently recited in claim 1, it does not provide any essential structure because the body of the claim recites a structurally complete invention, and “cable modem” is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner fails to raise any arguments on these issues to the contrary. Accordingly, for each of these reasons, we find that “cable modem” is not limiting.” slip op. at 24

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

    “the construction of “frequency translation module,” but that is inapposite because none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of this term. Accordingly, we need not construe it expressly to resolve the present dispute between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 26

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

    “differently than the Federal Circuit in ParkerVision. Accordingly, because this specific issue of what amounts to “non-negligible amounts of energy” was already decided by the Federal Circuit, we construe this term to mean “energy in amounts that are distinguishable from noise.”30” slip op. at 55

  Patent outcomesUS 7,292,835 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,292,835

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.