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`Trials@uspto.gov
`
` Paper 9
`571-272-7822
`
`Date: January 28, 2021
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`INTEL CORPORATION,
`Petitioner,
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2020-01302
`Patent 7,539,474 B2
`____________
`
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
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`
`I.
`
`INTRODUCTION
`
`Background
`
`Intel Corporation (“Petitioner”) filed a Petition (Paper 3, “Pet.”)
`requesting institution of inter partes review of claims 1, 3, 4, 7, and 9–12
`(“the Challenged Claims”) of U.S. Patent No. 7,539,474 B2 (Ex. 1001, “the
`’474 patent”). ParkerVision, Inc. (“Patent Owner”) filed a Preliminary
`Response (Paper 8, “Prelim. Resp.”).
`An inter partes review may be instituted only if “the information
`presented in the petition . . . and any [preliminary] response . . . 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)
`(2018). For the reasons given below, Petitioner has established a reasonable
`likelihood that it would prevail in showing the unpatentability of at least one
`of the challenged claims of the ’474 patent. Accordingly, we institute an
`inter partes review of claims 1, 3, 4, 7, and 9–12 of the ’474 patent on all
`grounds raised in the Petition.
`
`Related Proceedings
`
`Petitioner and Patent Owner identify the following related matter:
`
`ParkerVision, Inc. v. Intel Corp., No. 6:20-cv-108-ADA (W.D. Tex.) (“the
`related litigation”). Pet. 10; Paper 7 (Patent Owner’s Mandatory Notices), 2.
`In addition, Petitioner filed a petition challenging several claims of U.S.
`Patent No. 7,110,444 B1, which is related to the ’474 patent, in IPR2020-
`01265. Pet. 10.
`
`2
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`
`Real Parties in Interest
`
`Petitioner identifies Intel Corporation as the real party in interest.
`Pet. 10. Patent Owner identifies ParkerVision, Inc. as the real party in
`interest. Paper 7, 2.
`
`
`
`The Asserted Grounds of Unpatentability and Declaration
`Evidence
`Petitioner challenges the patentability of claims 1, 3, 4, 7, and 9–12 of
`the ’474 patent on the following grounds:
`Reference(s)/Basis
`Claim(s) Challenged
`35 U.S.C. §1
`Larson2
`1, 3, 4, 9–11
`102(b)
`Larson, Butler3
`1, 3, 4, 7, 9–11
`103(a)
`Arpaia4
`12
`102(e)
`Pet. 12. Petitioner supports its challenge with a Declaration by Vivek
`Subramanian, Ph.D. (Ex. 1002, “the Subramanian Declaration”), a
`Declaration by Sylvia D. Hall-Ellis, Ph.D. (Ex. 1021), and a Declaration by
`Christopher Ernst (Ex. 1022).
`
`The ’474 Patent
`
`The ’474 patent is directed to “[m]ethods, systems, and apparatuses
`for down-converting an electromagnetic (EM) signal by aliasing the EM
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. §§ 102 and 103 that became effective on March 16, 2013.
`Because the ’474 patent has an effective filing date before March 16, 2013,
`we apply the pre-AIA versions of the statutory bases for unpatentability.
`2 RF and Microwave Circuit Design for Wireless Communications
`(Lawrence E. Larson, ed., Artech House Publishers 1996) (Ex. 1005,
`“Larson”).
`3 U.S. Patent No. 4,603,436, issued July 29, 1986 (Ex. 1006, “Butler”).
`4 U.S. Patent No. 6,192,225 B1, issued Feb. 20, 2001 (Ex. 1007, “Arpaia”).
`
`3
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`signal, and applications thereof.” Ex. 1001, code (57). More particularly,
`the ’474 patent relates to “receivers implemented using universal frequency
`translation (UFT) modules. . . ., [which] perform frequency translation
`operations.” Id. at 10:15–19.
`Figure 1B is reproduced below:
`
`
`Figure 1B of the ’474 patent is a “detailed diagram of a universal frequency
`translation (UFT) module.” Ex. 1001, 3:24–26. The ’474 patent explains
`that UFT module 103 “includes a switch 106 controlled by a control
`signal 108.” Id. at 10:58–60. The UFT module “operates to generate an
`output signal from an input signal, where the frequency of the output signal
`differs from the frequency of the input signal.” Id. at 10:48–51.
`
`4
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`
`Figure 1C is reproduced below:
`
`
`Figure 1C of the ’474 patent “illustrates a UFT module used in a universal
`frequency down-conversion (UFD) module.” Ex. 1001, 3:27–29. The
`’474 patent states, “[i]n this capacity, the UFT module 115 frequency down-
`converts an input signal to an output signal.” Id. at 11:7–9.
`Figure 41 is reproduced below:
`
`
`Figure 41 of the ’474 patent illustrates “single channel receiver 4100,
`corresponding to either the I or Q channel of I/Q modulation receiver 2500.”
`
`5
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`Ex. 1001, 84:54–57; see id. at 4:53–54 (similarly describing Figure 41). The
`’474 patent explains, “[s]ingle channel receiver 4100 can down-convert an
`input RF [(radio frequency)] signal 4106 modulated according to AM, PM,
`FM, and other modulation schemes.” Id. at 84:57–59.
`Figure 25 is reproduced below:
`
`
`Figure 25 of the ’474 patent illustrates I/Q modulation receiver 2500.
`Ex. 1001, 4:41–42, 77:23–24. I/Q modulation receiver 2500 comprises four
`UFD modules 2502, 2506, 2510, and 2514; four filters 2504, 2508, 2512,
`and 2516 (the first three of which are described as “optional”); optional low
`noise amplifier (LNA) 2518; two differential amplifiers 2520 and 2522; and
`
`6
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`antenna 2572. Id. at 77:28–34. The ’474 patent explains, “I/Q modulation
`receiver 2500 receives, down-converts, and demodulates a[n] I/Q modulated
`RF input signal 2582 to an I baseband output signal 2584, and a Q baseband
`output signal 2586.” Id. at 77:35–38.
`
`Illustrative Claims
`
`Claims 1 and 12, the independent claims challenged in this
`proceeding, are illustrative of the claimed subject matter and reproduced
`below with Petitioner’s bracketing added for reference:
`1.
`[1P] An apparatus for down-converting an input signal,
`comprising:
`[1A] a first frequency down-conversion module that
`receives an input signal, wherein the first frequency down-
`conversion module down-converts the input signal according to
`a first control signal and outputs a first down-converted signal;
`[1B] a second frequency down-conversion module that
`receives the input signal, wherein the second frequency down-
`conversion module down-converts the input signal according to
`a second control signal and outputs a second down-converted
`signal; and
`[1C] a combining module that combines the second
`down-converted signal with the first down-converted signal and
`outputs a single channel down-converted signal;
`[1D] wherein the first frequency down-conversion
`module comprises a first switch and a first storage element,
`wherein the first switch is coupled to the first storage element at
`a first node and coupled to a first reference potential; and
`[1E] wherein the second frequency down-conversion
`module comprises a second switch and a second storage
`element, wherein the second switch is coupled to the second
`storage element at a second node and coupled to a second
`reference potential.
`Ex. 1001, 85:41–64.
`
`7
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`[12P] A method of down-converting an electromagnetic
`12.
`signal, comprising the steps of:
`[12A] (1) receiving an input signal;
`[12B] (2) frequency down-converting the input signal to
`a first down-converted signal;
`[12C] (3) frequency down-converting the input signal to
`a second down-converted signal;
`[12D] (4) combining the second down-converted signal
`with the first down-converted signal to form a first output
`signal;
`[12E] (5) frequency down-converting the input signal to
`a third down-converted signal;
`[12F] (6) frequency down-converting the input signal to a
`fourth down-converted signal; and
`[12G] (7) combining the fourth down-converted signal
`with the third down-converted signal to form a second output
`signal;
`[12H] wherein the input signal comprises an in-
`phase/quadrature-phase (I/Q) modulated signal, and
`[12I] wherein step (2) comprises the step of:
`(A) frequency down-converting the input signal to a
`noninverted I-phase signal portion of the I/Q modulated signal;
`[12J] wherein step (3) comprises the step of:
`(A) frequency down-converting the input signal to an
`inverted I-phase signal portion of the I/Q modulated signal;
`[12K] wherein step (5) comprises the step of:
`(A) frequency down-converting the input signal to a
`noninverted Q-phase signal portion of the I/Q modulated signal;
`and
`
`[12L] wherein step (6) comprises the step of:
`(A) frequency down-converting the input signal to an
`inverted Q-phase signal portion of the I/Q modulated signal.
`Id. at 86:51–87:18.
`
`8
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`
`Level of Ordinary Skill in the Art
`
`Petitioner, supported by Dr. Subramanian’s testimony, proposes that a
`person of ordinary skill in the art at the time of the invention would have had
`“at least the equivalent of 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.” Pet. 39 (citing Ex. 1002 ¶ 26). Petitioner explains that “[l]ess work
`experience may be compensated by a higher level of education, such as a
`master’s degree, and vice versa.” Id. (citing Ex. 1002 ¶ 26).
`Patent Owner does not express a position on the level of ordinary skill
`in the art in the Preliminary Response. See generally Prelim. Resp.
`At this stage of the proceeding, we find Petitioner’s proposal
`consistent with the level of ordinary skill in the art reflected by the
`’474 patent and the prior art of record, see Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
`1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt
`Petitioner’s unopposed position as to the level of ordinary skill in the art for
`purposes of institution.
`
`II.
`CLAIM CONSTRUCTION
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). See 37 C.F.R. §(cid:3031)42.100(b) (2020). The
`claim construction standard includes construing claims in accordance with
`the ordinary and customary meaning of such claims as understood by one of
`ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing
`claims in accordance with their ordinary and customary meaning, we take
`
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`into account the specification and prosecution history. Phillips, 415 F.3d at
`1315–17.
`Additionally, only terms that are in controversy need to be construed,
`and these need be construed only to the extent necessary to resolve the
`controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of
`an inter partes review).
`At this preliminary stage, we need not construe expressly any claim
`terms because none are in dispute. See Vivid Techs., 200 F.3d at 803.
`
`III. ANALYSIS
`35 U.S.C. § 314(a)
`
`Under 35 U.S.C. § 314(a), the Director has discretion to deny
`institution. In determining whether to exercise that discretion on behalf of
`the Director, we are guided by the Board’s precedential decision in NHK
`Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB
`Sept. 12, 2018) (precedential).
`In NHK, the Board found that the “advanced state of the district court
`proceeding” was a “factor that weighs in favor of denying” the petition
`under § 314(a). NHK, Paper 8 at 20. The Board determined that
`“[i]nstitution of an inter partes review under these circumstances would not
`be consistent with ‘an objective of the AIA . . . to provide an effective and
`efficient alternative to district court litigation.’” Id. (citing Gen. Plastic
`
`10
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`Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16–17
`(PTAB Sept. 6, 2017) (precedential as to § II.B.4.i)).
`“[T]he Board’s cases addressing earlier trial dates as a basis for denial
`under NHK have sought to balance considerations such as system efficiency,
`fairness, and patent quality.” Apple Inc. v. Fintiv Inc., IPR2020-00019,
`Paper 11 at 5 (PTAB Mar. 20, 2020) (precedential) (collecting cases). Fintiv
`sets forth six non-exclusive factors for determining “whether efficiency,
`fairness, and the merits support the exercise of authority to deny institution
`in view of an earlier trial date in the parallel proceeding.” Id. at 6. These
`factors consider:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
`Id.
`
`We discuss the parties’ arguments in the context of considering the
`above factors. In evaluating the factors, we take a holistic view of whether
`efficiency and integrity of the system are best served by denying or
`instituting review. Id.
`
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` Whether the Court Granted a Stay or Evidence Exists
`That One May Be Granted If a Proceeding Is Instituted
`On the present record, neither party has produced evidence that a stay
`has been requested by either party or considered by the district court in the
`related litigation.5 See Pet. 97–100; Prelim. Resp. 4–7. Thus, this factor
`does not weigh in favor of or against exercising our discretion to deny
`institution.
`
`
`
`Proximity of the Court’s Trial Date to the Board’s
`Projected Statutory Deadline for a Final Written
`Decision
`The current scheduling order governing the related litigation indicates
`a trial date of February 7, 2022. Ex. 2003 (“Amended Scheduling Order”),
`3; see Pet. 99 (referring to February 7, 2022); Prelim. Resp. 7. The projected
`statutory deadline for a final written decision is prior to the trial date. Thus,
`this factor weighs against exercising our discretion to deny institution.
`
`
`
`Investment in the Parallel Proceeding by the Court and
`the Parties
`The Amended Scheduling Order reflects that a Markman hearing was
`scheduled for January 22, 2021, and that fact discovery opens on January 29,
`2021. Ex. 2003, 2. Petitioner asserts this schedule reflects that the related
`litigation is in its preliminary stage and the court has not yet issued any
`substantive orders related to the ’474 patent. Pet. 99. Patent Owner
`contends this schedule reflects that the parties and the court have invested
`
`
`5 Patent Owner notes that Petitioner filed petitions challenging claims of
`only two of the twelve patents asserted by Patent Owner in the related
`litigation. Prelim. Resp. 5.
`
`12
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`significant resources in the related litigation, including preparing claim
`construction briefing. Prelim. Resp. 8–11.
`The “investment factor is related to the trial date factor, in that more
`work completed by the parties and court in the parallel proceeding tends to
`support the arguments that the parallel proceeding is more advanced, a stay
`may be less likely, and instituting would lead to duplicative costs.” Fintiv,
`Paper 11 at 10. Here, the related litigation is at a very early stage. The only
`substantive briefing submitted by the parties in the related litigation is their
`claim construction briefs. See Ex. 2003, 2. And, as relevant to the claims at
`issue here, the dispute involves only three terms recited in claim 1.6 Paper 5
`(“Petitioner’s Supplemental Notice Regarding Claim Construction”), 1–2.
`For the first two terms, Petitioner proposes an express construction, while
`Patent Owner proposes plain and ordinary meaning; and, for the third term,
`the parties’ proposed constructions are very similar. Id. Additionally,
`Petitioner acted diligently and without much delay to file the Petition on
`September 2, 2020 (see Paper 4 (“Notice of Filing Date Accorded to Petition
`and Time for Filing Patent Owner Preliminary Response”), 1), which is just
`over two months after service of Patent Owner’s preliminary infringement
`contentions (see Ex. 1025 (“ParkerVision, Inc.’s Disclosure of Preliminary
`
`
`6 The three terms are “frequency down-conversion module,” “the . . . switch
`is coupled to the . . . storage element at a . . . node and coupled to a . . .
`reference potential,” and “storage element.” Paper 5, 1–2.
`
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`Infringement Contentions,” dated June 26, 2020)).7 Pet. 98. On these facts,
`we find that the related litigation is at a very early stage and the investment
`by the court and the parties therein is relatively minimal. Thus, this factor
`weighs strongly against exercising our discretion to deny institution.
`
`
`
`Overlap Between Issues Raised in the Petition and in the
`Parallel Proceeding
`Patent Owner contends that, although there are twelve patents at issue
`in the related litigation, there are significant issues in common between this
`proceeding and the related litigation as it pertains to the ’474 patent. Prelim.
`Resp. 12. Specifically, Patent Owner asserts Petitioner relies upon the same
`primary references to challenge claims of the ’474 patent in the related
`litigation as asserted in the Petition, and Petitioner’s Preliminary Invalidity
`Contentions incorporate, by reference, the entirety of the Petition. Id. at 13
`(citing Ex. 2006 (excerpts of Defendant Intel Corporation’s Preliminary
`Invalidity Contentions)).
`Petitioner contends this proceeding will not duplicate the related
`litigation because the claims at issue do not overlap completely. Pet. 100.
`Patent Owner asserts claims 1, 6, 10, and 11 in the related litigation, whereas
`Petitioner challenges claims 1, 3, 4, 7, and 9–12 here. Compare Ex. 1025
`(ParkerVision, Inc.’s Disclosure of Preliminary Infringement Contentions),
`2, with Pet. 1. Thus, Petitioner challenges five claims not asserted in the
`
`7 In considering the time period between Patent Owner’s preliminary
`infringement contentions and the filing of the Petition, we are mindful that
`(a) Patent Owner asserted twelve patents in the related litigation, (b) the
`’474 patent is 181 pages in length, and (c) a reasonable amount of time is
`needed to conduct prior art searches, obtain and prepare evidence in support
`of a petition, and prepare a petition. Accordingly, we find that Petitioner
`acted promptly in filing the Petition.
`
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`related litigation (claims 3, 4, 7, 9, and 12) and does not challenge claim 6,
`although it is asserted in the related litigation. Pet. 100. Additionally,
`Petitioner contends it “also expects to assert in the district court litigation
`additional invalidity grounds to those presented in [the] Petition.” Id.
`We find that there is an overlap, to some extent, between the issues
`raised in the Petition and the related litigation. On the one hand, in addition
`to Patent Owner’s representation that Petitioner relies upon the same
`primary references,8 Petitioner incorporates the entirety of the Petition in its
`Preliminary Invalidity Contentions.9 Ex. 2006, 1. On the other hand,
`however, there is a significant difference in the claims at issue in each
`forum. Here, Petitioner includes a challenge to independent method
`claim 12, which is not at issue in the related litigation. Independent claim 12
`raises different issues regarding the application of the art at least because
`(a) the claim is directed to a method whereas the other Challenged Claims
`are directed to apparatuses, and (b) the steps of claim 12 do not appear to
`parallel any of the apparatus claims.10
`
`
`8 The excerpts of Petitioner’s Invalidity Contentions submitted as
`Exhibit 2006 do not appear to include the prior art that forms the basis for
`Petitioner’s assertions in the related litigation (see generally Ex. 2006), but
`Petitioner has not sought leave to clarify the record in this proceeding, e.g.,
`via a preliminary reply.
`9 The potential inclusion of additional grounds of invalidity in the related
`litigation does not detract from the fact that the grounds raised in the Petition
`also are raised in the related litigation.
`10 Notably, Petitioner relies upon Arpaia in challenging claim 12, whereas
`Petitioner relies upon Larson and Butler in challenging claims 1, 3, 4, 7, and
`9–11, thus supporting our view that the steps of claim 12 do not appear to
`parallel any of the other Challenged Claims.
`
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`Additionally, we find it notable that claim 6 is not challenged in the
`Petition, although it is asserted by Patent Owner in the related litigation.
`Despite this difference raising a distinction in the overlap, we find the
`difference raises concerns of inefficiency in that even if we were to
`conclude, after a final written decision, that the Challenged Claims are
`unpatentable, our determination would not resolve the parties’ present
`dispute regarding the ’474 patent because claim 6 would remain for
`disposition by the district court.
`Although this factor includes aspects that weigh in each party’s favor,
`we find that, on balance, this factor weighs slightly in favor of exercising our
`discretion to deny institution.
`
` Whether the Petitioner and the Defendant in the Parallel
`Proceeding Are the Same Party
`Petitioner and Patent Owner are the defendant and plaintiff,
`respectively, in the related litigation. Prelim. Resp. 14. As we explain
`above, however, we are likely to reach the merits before the trial date in the
`district court. Thus, this factor does not weigh in favor of or against
`exercising our discretion to deny institution.
`
`
`
`Other Circumstances that Impact the Board’s Exercise of
`Discretion, Including the Merits
`Petitioner contends that “the merits of this [P]etition alone warrant
`institution.” Pet. 100. In particular, Petitioner relies upon Larson as
`anticipating six of the claims (claims 1, 3, 4, and 9–11). Id. at 12. As
`discussed infra, on the present record, Petitioner identifies where Larson
`discloses each and every element of claims 1, 3, 4, and 9–11. Id. at 39–57;
`see infra § III.C.2.
`
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`Patent Owner’s Preliminary Response does not address the merits of
`the Petition (see Prelim. Resp. 15 n.6 (explaining that the Preliminary
`Response only addresses the discretionary bases for denial of institution)),
`but instead argues that (1) “institution . . . will also give rise to substantial
`duplication of efforts” because the related litigation will continue in parallel,
`and (2) because of the pending decision by the U.S. Supreme Court in the
`appeal of Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir.
`2019), cert. granted sub nom. United States v. Arthrex, Inc., 2020 WL
`6037206 (Oct. 13, 2020), “institution of further [inter partes reviews] is ill
`advised at this time.” Id. at 15.
`On the present record before us, we are persuaded that the merits of
`the Petition appear strong. Although we recognize that the district court
`proceeding may occur in parallel, we find that this factor moderately weighs
`against exercising our discretion to deny institution.11
`
` Weighing the Factors
`As discussed above, the only factor that weighs in favor of exercising
`discretion to deny institution is factor 4, which weighs slightly in favor.
`Factors 1 and 5 are neutral, while factors 2, 3, and 6 weigh against
`exercising discretion. On balance, factor 4 is outweighed by factors 2, 3,
`and 6 on the present record. In particular, the projected statutory deadline of
`a final written decision is prior to the district court’s trial date, the
`
`
`11 Regarding Patent Owner’s argument as to the constitutionality of the
`appointments of the Administrative Patent Judges (see Prelim. Resp. 15–17
`(discussing this issue as part of Fintiv factor six as well as raising it
`separately as a reason to deny institution)), we decline to consider the
`argument because the U.S. Court of Appeals for the Federal Circuit
`addressed this issue in Arthrex.
`
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`investment in the related litigation is relatively minimal, and the merits of
`the Petition appear strong. After weighing all of the factors and taking a
`holistic view of the relevant circumstances of this proceeding, we determine
`that, on balance, the factors favor not exercising discretion to deny
`institution under 35 U.S.C. § 314(a).
`
`
`
`Legal Standards
`Anticipation
`
`“[A] claim is anticipated ‘if each and every limitation is found
`expressly or inherently in a single prior art reference.’” King Pharm., Inc. v.
`Eon Labs., Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas
`Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)).
`Anticipation is a question of fact, In re Gleave, 560 F.3d 1331, 1334–35
`(Fed. Cir. 2009), assessed from the perspective of one of ordinary skill in the
`art, see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368
`(Fed. Cir. 2003) (“the dispositive question regarding anticipation [i]s
`whether one skilled in the art would reasonably understand or infer from the
`[prior art reference’s] teaching that every claim element was disclosed in
`that single reference” (alteration in original) (quotation omitted)).
`
`Obviousness
`
`The U.S. Supreme Court set forth the framework for applying the
`statutory language of 35 U.S.C. § 103(a) in Graham v. John Deere Co. of
`Kansas City, 383 U.S. 1, 17–18 (1966):
`Under § 103[(a)], the scope and content of the prior art are to be
`determined; differences between the prior art and the claims at
`issue are to be ascertained; and the level of ordinary skill in the
`pertinent art resolved. Against this background, the
`obviousness or nonobviousness of the subject matter is
`determined. Such secondary considerations as commercial
`
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`success, long felt but unsolved needs, failure of others, etc.,
`might be utilized to give light to the circumstances surrounding
`the origin of the subject matter sought to be patented.
`As explained by the Supreme Court in KSR International Co. v. Teleflex
`Inc.:
`
`Often, it will be necessary for a court to look to interrelated
`teachings of multiple patents; the effects of demands known to
`the design community or present in the marketplace; and the
`background knowledge possessed by a person having ordinary
`skill in the art, all in order to determine whether there was an
`apparent reason to combine the known elements in the fashion
`claimed by the patent at issue. To facilitate review, this
`analysis should be made explicit.
`550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
`conclusory statements; instead, there must be some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.”)).
`“Whether an ordinarily skilled artisan would have been motivated to
`modify the teachings of a reference is a question of fact.” WBIP, LLC v.
`Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (citations omitted).
`“[W]here a party argues a skilled artisan would have been motivated to
`combine references, it must show the artisan ‘would have had a reasonable
`expectation of success from doing so.’” Arctic Cat Inc. v. Bombardier
`Recreational Prods. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (quoting
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
`Litig., 676 F.3d 1063, 1068–69 (Fed. Cir. 2012)).
`
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`Anticipation by Larson
`
`Petitioner contends that Larson discloses each and every element of
`claims 1, 3, 4, and 9–11. Pet. 39–57.
`
`Larson
`
`Larson “presen