Polaris PowerLED Technologies, LLC

Patent Trials and Appeals Board

Sep 15, 2020

IPR2020-00043 (P.T.A.B. Sep. 15, 2020)

Trials@uspto.gov Paper 32
571-272-7822 Date: September 15, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

VIZIO, Inc.,
Petitioner,
v.
Polaris PowerLED Technologies, LLC,
Patent Owner.

IPR2020-00043
Patent 8,223,117 B2

Before PHILLIP J. KAUFFMAN, KALYAN K. DESHPANDE, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.

SZPONDOWSKI, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request for Rehearing
and Denying Institution of Inter Partes Review
35 U.S.C. § 314; 37 C.F.R. § 42.71(d)
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I. INTRODUCTION
VIZIO, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
institution of inter partes review of claims 1, 2, 4–7, 9, 13–16, and 18 of
U.S. Patent 8,223,117 B2 (Ex. 1001, “the ’117 patent”) on ten asserted
grounds:
Ground Claims Challenged 35 U.S.C. § Reference(s)
1 1, 2, 4–7, 9, 15, 16, 18 102 Oki1
2 1, 2, 4–7, 9, 15, 16, 18 103 Oki
3 13 103 Oki, Morris
4 14 103 Oki, Morris, Weindorf2
5 1, 2, 4, 5, 9, 15, 16, 18 102 Toffolo3
6 1, 2, 4, 5, 9, 15, 16, 18 103 Toffolo
7 6 103 Toffolo, Bruning4
8 13 103 Toffolo and Morris5
9 14 103 Toffolo, Morris, Weindorf
10 7 103 Toffolo, Weindorf

Pet. 5–6.
Petitioner supported its challenges with the Declaration of Dr. Richard
T. Mihran, Ph.D. (Ex. 1010).
Polaris PowerLED Technologies, LLC (“Patent Owner”) filed a
Preliminary Response (Paper 11, “Prelim. Resp.”) to the Petition.
With our authorization (Paper 12), Petitioner filed a Reply to Patent

1 Japanese App. Pub. No. 2003-150291, published May 23, 2003 (English
translation provided as Ex. 1004).
2 U.S. 2002/0118182 A1, published August 29, 2002 (Ex. 1008).
3 U.S. 6,337,675 B1, issued January 8, 2002 (Ex. 1006).
4 U.S. 2002/0070914 A1, published June 13, 2002 (Ex. 1009).
5 U.S. 2003/0112353 A1, published June 19, 2003 (Ex. 1007).
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Owner’s Preliminary Response (Paper 17, “Reply”), and Patent Owner filed
a Sur-Reply (Paper 23, “Sur-Reply”).
In the Decision on Institution (Paper 30, “Decision” or “Inst. Dec.”),
we exercised our discretion under 35 U.S.C. § 314(a) to deny institution of
inter partes review based upon related district court proceedings between the
parties in the Central District of California6 (“the California District Court
proceeding”). Inst. Dec. 6–12.
Petitioner timely filed a Request for Rehearing (Paper 31, “Reh’ing
Req.” or “Request”) seeking rehearing of our Decision.
We have considered Petitioner’s Request for Rehearing and, for the
reasons set forth below, we grant Petitioner’s Request for Rehearing, but we
are not persuaded to change our ultimate conclusion to deny institution of
inter partes review.
II. STANDARD OF REVIEW
A party requesting rehearing bears the burden of showing the decision
should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must
specifically identify all matters the party believes the Board misapprehended
or overlooked, and the place where each matter was previously addressed.”
Id. When rehearing a decision on petition, we review the decision for an
abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs
when a “decision was based on an erroneous conclusion of law or clearly
erroneous factual findings, or . . . a clear error of judgment.” PPG Indus.

6 Polaris PowerLED Technologies, LLC v. VIZIO, Inc., 8:18-cv-01571 (C.D.
Cal.)
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Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed.
Cir. 1988).

III. DISCUSSION OF THE REQUEST FOR REHEARING
On May 4, 2020, we issued our Decision denying institution of inter
partes review based upon: (1) the advanced stage of the California District
Court proceeding; (2) the investment of time and resources by the District
Court and the parties in the California District Court proceeding; (3) overlap
in the invalidity theories that Petitioner is pursuing here and in the California
District Court proceeding; and (4) overlap in the claims challenged in the
California District Court proceeding. Inst. Dec. 6–12. In the Decision, we
did not reach any of the ten substantive grounds for patentability. See
generally Inst. Dec. Rather, the denial of institution was solely based on our
findings under 35 U.S.C. § 314(a). Id.
Petitioner contends that on May 14, 2020, ten days later, the
California District Court issued an order striking essentially all of Patent
Owner’s expert report regarding Petitioner’s infringement of the ’117 patent.
Reh’g Request 1. Subsequently, Patent Owner stipulated to non-
infringement of the ’117 patent and advised Petitioner it was not going to
proceed to trial on the ’117 patent. Id. at 2, 5. Therefore, Petitioner asserts
that the September 2020 trial will not include the ’117 patent. Id.
Petitioner argues that rehearing is warranted because the upcoming
trial in the California District Court proceeding was the sole reason the
Board denied the Petition, and the Board has inherent authority to reconsider
its denial. Id. at 2, 4–5. Petitioner argues this is especially so because the
relevant facts the Board relied upon in its Decision “radically changed” just
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days after the denial of institution. Id. at 5. Petitioner also argues that “the
Board should give substantive consideration to the grounds of non-
patentability presented in the Petition, and should institute trial accordingly.”
Id. at 2.
We need not decide the impact of the change in the status of the
parallel California District Court proceeding because, for the reasons
discussed below, we determine that Petitioner has not demonstrated a
reasonable likelihood it would prevail as to at least one challenged claim.
Accordingly, we deny Petitioner’s Request for Rehearing.
We have authority to determine whether to institute an inter partes
review under 35 U.S.C. §314(a) and 37 C.F.R. §42.4. Institution of an inter
partes review is authorized when “the information presented in the petition .
. . and any 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) (2012); see also 37 C.F.R. § 42.4(a) (2019)
(“The Board institutes the trial on behalf of the Director.”)
For the reasons set forth below, upon considering the arguments and
evidence of record, we are not persuaded to change our ultimate conclusion
to deny institution of inter partes review.7

7 We do not take any position regarding institution of inter partes review
involving similar circumstances, but where the Petition shows a reasonable
likelihood of prevailing on at least one challenged claim.
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IV. BACKGROUND
A. The ’117 Patent (Ex. 1001)
The ’117 patent is titled “Method and Apparatus to Control Display
Brightness with Ambient Light Correction” and generally relates to
“adjusting the brightness level to compensate for changes in ambient
lighting” for “a visual information display system.” Ex. 1001, (54), 1:19–
22. The ’117 patent discloses an embodiment having a fully automated
brightness adjustment mode that takes into account both ambient lighting
conditions and user preference for brightness, as well as an embodiment
allowing the user to switch between an automatic mode and a manual mode,
which only takes into account user preference for brightness. Id. at 1:60–
2:6, 2:17–30, 6:37–41.
In a fully automated mode, the ’117 patent describes a user input, such
as a dimming control, and a light sensor, which detects the ambient light
level and generates a corresponding light sensor output. Id. at 4:45–52, 5:3–
5, 5:15–20, Figs. 1, 2. In one embodiment, a multiplier outputs a combined
signal that is the product of the user input and a scaled light sensor output.
Id. at 5:20–22, Fig. 2. The product is added to a dark level bias, which is
used to maintain the brightness above a predetermined level when the
ambient light level decreases to approximately zero, and adjusted to generate
a brightness control signal for a display driver. Id. at 2:57–60, 4:49–51,
5:22–27, 5:39–41, Fig. 2.
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B. Exemplary Claim
Petitioner challenges claims 1, 2, 4–7, 9, 13–16, and 18 of the ’117
patent. Pet. 1. Among the challenged claims, claims 1 and 15 are
independent. Independent claim 1 is representative:
1. [1preamble] A brightness control circuit with selective
ambient light correction comprising:

[1a] a first input configured to receive a user signal
indicative of a user selectable brightness setting;

[1b] a light sensor configured to sense ambient light and
to output a sensing signal indicative of the ambient light level;

[1c] a multiplier configured to selectively generate a
combined signal based on both the user signal and the sensing
signal; and

[1d] a dark level bias configured to adjust the combined
signal to generate a brightness control signal that is used to
control a brightness level of a visible display such that the
brightness control signal is maintained above a pre-determined
level when the ambient light level decreases to approximately
zero.
Ex. 1001, 12:28–43 (annotations added).
V. ANALYSIS
A. Legal Standard for Anticipation
Anticipation “requires that every element and limitation of the claim
was previously described in a single prior art reference, either expressly or
inherently, so as to place a person of ordinary skill in possession of the
invention.” Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed.
Cir. 2008) (citing Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373,
1379 (Fed. Cir. 2003); Continental Can Co. v. Monsanto Co., 948 F.2d
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1264, 1267–69 (Fed. Cir. 1991)). Whether a reference anticipates is
assessed from the perspective of an ordinarily skilled artisan. See Dayco
Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir.
2003) (“[T]he 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.” (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed.
Cir. 1991))). “[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of the
limitations arranged or combined in the same way as recited in the claim, it
cannot be said to prove prior invention of the thing claimed and, thus, cannot
anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545
F.3d 1359, 1371 (Fed. Cir. 2008).
B. Legal Standard for Obviousness
A patent claim is invalid as obvious if the differences between the
claimed subject matter and the prior art are “such that the subject matter as a
whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.”
See 35 U.S.C. § 103(a). “The ultimate determination of obviousness is a
question of law, but that determination is based on underlying factual
findings.” In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016). The
underlying factual findings include: (1) “the scope and content of the prior
art”; (2) “differences between the prior art and the claims at issue”; (3) “the
level of ordinary skill in the pertinent art”; and (4) the presence of secondary
considerations of nonobviousness such “as commercial success, long felt but
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unsolved needs, failure of others,” and unexpected results. Id. (citing, inter
alia, Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).
“To satisfy its burden of proving obviousness, a petitioner cannot
employ mere conclusory statements. The petitioner must instead articulate
specific reasoning, based on evidence of record, to support the legal
conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
1364, 1380 (Fed. Cir. 2016). Furthermore, in assessing the prior art, the
Board must consider whether a person of ordinary skill would have been
motivated to combine the prior art to achieve the claimed invention.
Nuvasive, 842 F.3d at 1381.
C. Level of Ordinary Skill in the Art
Petitioner asserts a person of ordinary skill in the art “would have at
least a bachelor’s degree in electrical engineering, physics, optics or a
related field, and at least three (3) years of further practical or educational
experience working with analog circuit design, and optical sensors.” Pet. 7
(citing Ex. 1010 ¶¶ 31–36). Patent Owner asserts a person of ordinary skill
in the art “would have at least a bachelor’s degree in electrical engineering,
physics, or computer sciences, and 2–4 years of experience in the field of
visual displays and related technologies.” Prelim. Resp. 1.
We do not discern an appreciable difference in the parties’ respective
definitions of the level of ordinary skill in the art. Both parties contend that
a person of ordinary skill in the art would have had similar education levels
and experience. Further, neither party explains the impact of the level of
skill in the art on the obviousness analysis. See generally Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350,
1355 (Fed. Cir. 2001) (The “level of skill in the art is a prism or lens through
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which a judge, jury, or the Board views the prior art and the claimed
invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir.
1991) (“The importance of resolving the level of ordinary skill in the art lies
in the necessity of maintaining objectivity in the obviousness inquiry.”).
Thus, on this record, we determine it is unnecessary to resolve any perceived
differences in the parties’ definitions of the level of ordinary skill in the art,
as any distinction does not impact our Decision.
We further note that the prior art itself demonstrates the level of skill
in the art at the time of the invention. See Okajima, 261 F.3d at 1355
(explaining that specific findings regarding ordinary skill level are not
required “where the prior art itself reflects an appropriate level and a need
for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid
State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).
D. Claim Interpretation
In inter partes review proceedings, claim terms are given their
ordinary and customary meanings, as would have been understood by a
person of ordinary skill in the art at the time of the invention, having taken
into consideration the language of the claims, the specification, and the
prosecution history of record. Phillips v. AWH Corp., 415 F.3d 1303, 1313
(Fed. Cir. 2005) (en banc); see also id., 1312-16; 83 Fed. Reg. 51, 340-
51,359 (Oct. 11, 2018). At this stage in the proceeding, the Board need only
construe the claims to the extent necessary to determine whether to institute
inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe
terms ‘that are in controversy, and only to the extent necessary to resolve the
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controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
F.3d 795, 803 (Fed. Cir. 1999))).
Petitioner states that in order to “avoid having a dispute over the
proper constructions,” Petitioner is either applying constructions adopted by
the district court in Polaris PowerLED Technologies, LLC v. Samsung
Electronics America, Inc., 2:17-cv-00715 (E.D. Tex.) (“Samsung litigation”)
or constructions that Patent Owner contends are the plain and ordinary
meaning of the terms. Pet. 16. Petitioner states that “the grounds for
invalidity presented here would not change if alternative constructions were
adopted.” Id.
In particular, Petitioner presents the following constructions, as
adopted by the district court in the Samsung litigation:
Claim term District Court Construction
Claim 1:
a multiplier configured to
selectively generate a
combined signal based on
both the user signal and
the sensing signal
a multiplier configured to selectively generate
a combined signal based on both the user
signal and the sensing signal, wherein the
combined signal includes, but is not
necessarily limited to, the product of the user
signal and the sensing signal
Claim 15:
selectively multiplying
the input signal with a
sense signal to generate a
combined signal
selectively multiplying the input signal with a
sense signal to generate a combined signal,
wherein the sense signal indicates an ambient
light level and wherein the combined signal
includes, but is not necessarily limited to, the
product of the input signal and the sense signal
Claim 6:
an overdrive clamp
circuit coupled to the
brightness control signal
to limit its amplitude to a
predefined range
an overdrive clamp circuit coupled to the
brightness control signal to limit the absolute
value of the brightness control signal’s
amplitude to be less than a predefined level

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Ex. 1022, pp. 21, 28–29.
Petitioner states that it agrees with Patent Owner that “selectively”
means “on a selective basis,” and that “based on” is not “limited to only the
direct multiplication of the user signal and the sensing signal,” but should
“allow other mathematical functions, like those described in the preferred
embodiments, that have additional terms.” Pet. 17–19; Ex. 1014, p. 12; Ex.
1019, pp. 7–8. Petitioner does not contest Patent Owner’s contention that
“configured to” in the “multiplier” limitation of claim 1 means “actually
programmed with hardware or software to.” Pet. 18.
Petitioner also provides the following additional constructions:
Claim term District Court
Construction
(Samsung litigation)
Patent Owner
Claim 1:
a dark level bias
configured to adjust the
combined signal
Plain and ordinary
meaning
a dark level bias (i.e.,
a value) configured to
adjust the combined
signal
Claim 15:
adjusting the combined
signal with a dark level
bias
Plain and ordinary
meaning
adjusting the
combined signal with
a dark level bias (i.e.,
a value)

Id. at 19.
Patent Owner does not dispute or disagree with Petitioner’s proposed
constructions. Rather, Patent Owner merely states that two district courts
have construed the ’117 patent (i.e., the Samsung litigation and the
California District Court proceeding), and provides the constructions for the
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multiplying limitations from the Samsung litigation (set forth above), and
the following constructions from the California District Court proceeding.8
Claim term District Court Construction
(California District Court
proceeding)
Claim 1:
a multiplier configured to
selectively generate a combined
signal based on both the user
signal and the sensing signal
a multiplier actually programmed or
implemented with hardware or software
to selectively generate a combined
signal based on both the user signal and
the sensing signal
Claim 1:
a dark level bias configured to
adjust the combined signal to
generate a brightness control
signal that is used to control a
brightness level of a visible
display
a dark level bias actually programmed
or implemented with hardware or
software to adjust the combined signal
to generate a brightness control signal
that is used to control a brightness level
of a visible display
Claims 1 and 15:
a dark level bias
a value that causes a deviation from the
combined signal, where the value is a
voltage value of an electrical signal or
value of a software variable
Claims 1 and 15:
approximately zero
zero or a level close enough to zero that
a light sensor would measure zero or a
corresponding sensing signal would
round to zero
Claim 1:
a first input configured to
receive a user signal indicative
of a user selectable brightness
setting
first input actually programmed or
implemented with hardware or software
to receive a user signal indicative of a
user selectable brightness setting

8 The claim construction order in the California District Court proceeding is
dated November 26, 2019, after the accorded filing date of the Petition. Ex.
3002.
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Prelim. Resp. 2–3; Ex. 3002, pp. 34–35; Ex. 3003, pp. 7–8. Patent Owner
proposes that the Board adopt the foregoing constructions. Prelim. Resp. 3.
Additionally, Patent Owner proposes that the preamble to claim 1 should be
adopted as limiting, as in the California District Court proceeding. Id.
(citing Ex. 3002, p. 27, n. 10).
A petition for inter partes review must “[p]rovide a statement of the
precise relief requested for each claim challenged,” which “statement must
identify . . . [h]ow the challenged claim is to be construed.” 37 C.F.R.
§ 42.104(b)(3). The Trial Practice Guide9 states that “[i]f a petitioner
believes that a claim term requires an express construction, the petitioner
must include a statement identifying a proposed construction of the
particular term and where the intrinsic and/or extrinsic evidence supports
that meaning. On the other hand, a petitioner may include a statement that
the claim terms require no express construction.” TPG at 44.
The Petition sets forth alternative claim constructions for “a dark level
bias configured to adjust the combined signal” and “adjusting the combined
signal with a dark level bias,” without requesting any construction in
particular, providing any explanation of the evidence allegedly supporting
the alternative constructions, or even explaining the difference between the
two constructions. Although our determination whether to institute does not
depend on the construction of these “dark level bias” terms, Petitioner’s lack
of discussion and explanation around the construction of these terms

9 Consolidated Trial Practice Guide (Nov. 2019), available at:
https://www.uspto.gov/TrialPracticeGuideConsolidated (hereafter “Trial
Practice Guide” or “TPG”).
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contributes to our finding that the Petition lacks the requisite particularity to
institute review, as will be explained further below.
Other than as discussed below, we determine that it is unnecessary to
expressly construe any claim terms at this time to resolve the disputed issues
before us. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355,
1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent
necessary to resolve the controversy.’”) We address below only those terms
that are relevant to our analysis.
E. Ground 1 - Anticipation Based on Oki
Petitioner contends claims 1, 2, 4–7, 9, 15, 16, and 18 are anticipated
by Oki. Pet. 28–42. In support, Petitioner cites the Declaration of Richard
T. Mihran, Ph.D. Ex. 1010.
1. Oki (Ex. 1004)10
Oki was published on May 23, 2003. Ex. 1004, (43). Oki is titled
“Mobile terminal screen display control method and device” and generally
relates to controlling a display screen of a mobile terminal “so as to adapt to
the display characteristics of the terminal, the mental and physical
characteristics of the user, and the use environment.” Id. (54), (57).
Different display modes use different settings for “the character size, the
illumination, and the speed of display,” and in particular, “an illuminance

10 Patent Owner argues that Oki is not prior art to claims 1, 2, 6, 7, and 13–
16 of the ’117 patent. Prelim. Resp. 16–41. Patent Owner also presents
several arguments under 35 U.S.C. §§ 312 and 315 pertaining to Petitioner’s
submission and service of Oki and Oki’s translation. Id. at 3–9, 15–16.
Patent Owner also argues institution should be denied under 35 U.S.C.
§ 325(d). Id. at 13–15. Given that we deny institution for the reasons
herein, we need not address these additional arguments.
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sensor is mounted to the mobile terminal . . . and the screen illuminance is
automatically adjusted. Id. (57).
In an embodiment, a “display controller” includes a “central
processing unit 1,” as well as
a glare adjuster 10 that adjusts the luminance value, a display
unit 3 that displays a screen on a liquid-crystal panel . . . , a
display control unit 4 that controls the display to the display
unit 3, and a photodiode 9 that has the function of sensing and
outputting as an electrical signal the brightness surrounding the
display unit 3.

Id. ¶ 26.
Figure 5 of Oki, reproduced below, shows the “display controller”
embodiment that includes “glare adjuster 10.”

Figure 5 depicts a “display controller” according to an embodiment of
Oki, including display unit 3, display control unit 4, central processing unit
1, photodiode 9, and glare adjustor 10.
In operation, a user can input a “maximum used luminance value” and
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a “minimum used luminance value” into the “glare adjuster 10 to suit the
user’s own vision characteristics.” Id. ¶ 27. The “glare adjuster 10” then
calculates a display screen luminance value based on the output value of the
“photodiode 9” and the maximum and minimum used luminance values
input by the user. See id. ¶¶ 28–29. Specifically, “glare adjuster 10”
calculates a luminance value “y” according to the equation “y = (b – a) x +
a,” where “a” is the “minimum used luminance value,” “b” is the “maximum
used luminance value,” and “x” is the photodiode output value. Id. ¶ 29.
“Display control unit 4” then changes the luminance of “display unit 3”
based on luminance value “y.” Id.
Figure 6 of Oki, reproduced below, shows a graph of the luminance
value as a function of the photodiode output value, for given minimum and
maximum used luminance values.

Figure 6 depicts a graph of the luminance value as a function of the
photodiode output value.
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2. Analysis
Petitioner identifies the disclosures in Oki that Petitioner asserts
disclose each limitation of independent claims 1 and 15. See Pet. 28–37.
For each claim limitation, Petitioner provides a color coded summary table
with columns representing the claim limitation/element of the ’117 patent
and the asserted components in Oki corresponding to each listed claim
limitation/element. Id. Petitioner’s summary table for limitation 1[a] is
reproduced below:

Pet. 30. Petitioner also states:
According to Oki, the display controller may receive user input
to adjust various brightness settings of the display controller. Ex.
1004, [0027]; Mihran, ¶184. The first input includes “the
numerical keys of the mobile terminal” or any input device
“other than the numerical keys of the mobile terminal” that can
be used to input the maximum used luminance value and the
minimum used luminance value, one or both of which is the user
signal (claim 1), which is referred to as the user input signal in
claim 15. Id. “This luminance setting [i.e., the user [input]
signal] may be made and input to the glare adjuster 10.” Id. The
maximum and/or minimum used luminance values are user
inputs indicative of a user selectable brightness setting of the
display. Id., Ex. 1004, [0030].
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Id.
Petitioner’s summary table for limitation 1[d] is reproduced below:

Pet. 33. Petitioner also states:
Oki discloses these limitations as shown, at least in part, by the
equation 𝑦𝑦 = (𝑏𝑏 − 𝑎𝑎) + 𝑎𝑎 that defines the brightness control signal,
which is illustrated below in FIG. 6 (with added annotations).
Mihran, ¶¶202-215. The minimum used luminance value, a,
adjusts the combined signal (i.e., the product of (𝑏𝑏 − 𝑎𝑎) and x), to
generate the display screen luminance value, y. Ex. 1004, [0029];
Mihran, ¶205. The display control unit 4 changes the brightness
of the display unit 3, based on the luminance value y. Id. Oki
discloses that the minimum used luminance value, a, is added to
the combined signal, and ensures that the display screen
luminance value, y, is not zero, but is maintained at a
predetermined value even in low-light conditions. Oki, [0029];
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Mihran, ¶207. In other words, the minimum used luminance
value, a, is a “dark level bias.” Mihran, ¶215.

Pet. 33–34.
Patent Owner argues, among other things, that Petitioner has not
sufficiently shown that Oki discloses limitations [1a] and [1d] because:
(1) Petitioner improperly alleges that Oki’s minimum used luminance value
“a” is both a “user [input] signal” and a “dark level bias”; and (2) the
maximum and minimum used luminance values are not “user [input]
signals.” Prelim. Resp. 48–52, 58–61. Specifically, Patent Owner argues
that “minimum used luminance value ‘a’ cannot be both the ‘dark level bias’
and the ‘user [input] signal’ because they are two different limitations.” Id.
at 58–61. Patent Owner points to certain portions of and Figures in the
Specification of the ’117 patent, as well as dependent claim 3, to support its
arguments that the “dark level bias” and the “user [input] signal” are two
different, mutually exclusive elements. Id.
On the record before us, we determine that Petitioner has not shown a
reasonable likelihood of prevailing in demonstrating that Oki discloses
limitations 1[a] and 1[d], and, accordingly, has not shown a reasonable
likelihood it will prevail in demonstrating that Oki anticipates claim 1. We
agree with Patent Owner that Petitioner improperly relies on Oki’s minimum
used luminance value “a” as disclosing two separate claim limitations.
“Where a claim lists elements separately, ‘the clear implication of the claim
language’ is that those elements are ‘distinct component[s]’ of the patented
invention.” Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d
1249, 1254 (Fed. Cir. 2010) (alteration in original) (quoting Gaus v. Conair
Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)); HTC Corp. v. Cellular
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Commc’n. Equip. LLC, 701 F. App’x. 978, 982 (Fed. Cir. 2017) (“The
separate naming of two structures in the claim strongly implies that the
named entities are not one and the same structure.”).
Claims 1 and 15 recite the “user [input] signal” and the “dark level
bias” as separate and distinct elements of the claimed “brightness control
circuit” and method. Claim 1 recites “a first input configured to receive a
user signal indicative of a user selectable brightness setting,” with “a
multiplier configured to selectively generate a combined signal based on
both the user signal and the sensing signal,” and “a dark level bias
configured to adjust the combined signal to generate a brightness control
signal . . .” Ex. 1001, 12:30–43. Claim 15 recites similar limitations in
method form. Id. at 13:36–14:9. In other words, the dark level bias adjusts
a combined signal that is generated based on the user signal and the sensing
signal.
The Specification of the ’117 patent supports that the “user (input)
signal” is a distinct, separately identifiable element from the “dark level
bias.” For example, as Patent Owner explains, the equations accompanying
Figures 4, 8, and 9 of the Specification show these as separate elements. See
Prelim. Resp. 59–61. Patent Owner provides an annotated version of Figure
4 and its accompanying equation, set forth below:
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Id. at 59–60. Figure 4 depicts a schematic diagram of one embodiment of a
brightness control circuit with a multiplier circuit to combine a light sensor
output with a user adjustable PWN logic signal. Ex. 1001, 4:23–25. Patent
Owner’s annotated version of the equations of Figure 4 highlight the user
signal in red, the dark level bias in green, and the sensing signal in blue.
Prelim. Resp. 60. In reference to Figure 4 and its equations, the
Specification explains:
The term “dutycycle” corresponds to the duty cycle of the user
adjustable PWM logic signal. The term “VCC” corresponds to
the logic high output from the input buffer circuit 410. The
term “ISRC” corresponds to the sensor current signal. The first
major term within the brackets corresponds to a scaled dark
bias level of the brightness control signal in total ambient
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darkness. The second major term within the brackets
introduces the effect of the visible light sensor 402. The
network of resistors 412,420 416, 418 helps to provide the dark
bias level and to scale the product of the sensor current signal
and the user adjustable PWM logic signal.

Ex. 1001, at 7:24–35 (emphasis added).
Patent Owner provides similar support and annotations for Figures 8
and 9, which likewise support that the “user [input] signal” and “dark level
bias” are different. Prelim. Resp. 60–61.
Similarly, Figures 1 and 2 distinguish between the user input
(DIMMING CONTROL) and the dark level bias. Figure 2 is depicted
below:

Figure 2 depicts an embodiment of a brightness control circuit with
ambient light correction. The Specification explains:
FIG. 2 is a block diagram of another embodiment of a
brightness control circuit with ambient light correction. A light
sensor output (LIGHT SENSOR) is adjusted by a scalar circuit
(k2) 102 and then provided to a multiplier circuit 106. A user
input (DIMMING CONTROL) is also provided to the multiplier
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circuit 106. The multiplier circuit 106 outputs a signal that is
the product of the user input and Scaled light sensor output. A
Summing circuit 104 adds the product to a dark level bias
(DARKLEVEL BIAS) that has been adjusted by scalar circuit
(k1) 100. An output of the summing circuit 104 is adjusted by
scalar circuit (k3) 108 to generate a bright ness control signal
(BRIGHTNESS CONTROL) for a display driver 112.

Ex. 1001, 5:15–27 (emphasis added). The Specification goes on to state that
“In FIG. 2, the scaled dark level bias is added to the output of the multiplier
circuit 106 to provide the predefined level of brightness in this case. This
feature may be desired to prevent a user from using the brightness control
circuit to turn off a visual information display system.” Ex. 1001, 5:38–43
(emphasis added).
The Specification does not indicate that the “user [input] signal” and
the “dark level bias” may be the same thing. In addition, Petitioner does not
offer evidence or argument suggesting that the general presumption that
these different terms have different meanings would not apply to the claim
terms “user [input] signal” and “dark level bias.” Even the proposed
constructions Petitioner submits use differing terminology for the “dark level
bias” and “user [input] signal.” See Pet. 17–19.
Dependent claim 3, which recites “wherein the multiplier multiplies a
sum of the user signal and the sensing signal by the dark level bias to
generate an output signal corresponding to the brightness control signal,”
likewise supports that the user signal and dark level bias are different. Ex.
1001, 12:48–51. Further, with reference to Figure 3, which Petitioner relies
upon (Pet. 35), the ’117 patent states “[t]he brightness control signal near
zero lux is a function of a dark bias level and also depends on the user
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setting.” Ex. 1001, 6:10–12. In other words, dark level bias and user setting
(or input) are different.
Thus, we determine that the claim language, figures, and written
description of the ’117 patent demonstrate that the “user (input) signal” and
“dark level bias” are separate components. Petitioner has not provided any
explanation or argument as to why these separate claim elements can be
satisfied by the same component in Oki. Therefore, Petitioner has not
provided sufficient explanation or argument as to its reliance on Oki’s
minimum variable use luminance “a” as disclosing two separate and distinct
claim elements, i.e., the user (input) signal and the dark level bias.
Moreover, in so relying, Petitioner’s contentions lack sufficient
explanation and consistency in other ways. For example, in connection with
limitation [1a], Petitioner asserts that Oki’s minimum used luminance value
and maximum used luminance values are “user [input] signals.” Pet. 30.
For the “dark level bias,” Petitioner presents two alternative claim
constructions – one construction that the “dark level bias” has its plain and
ordinary meaning, and a second construction that clarifies that the “dark
level bias” is “i.e., a value.” See id. at 19; see also infra. Petitioner asserts
that its grounds for invalidity would not change under these alternative
constructions. Id. at 16. However, Petitioner’s contentions as to this claim
limitation do not mention these alternative constructions. Nor does
Petitioner explain how the minimum used luminance value “a” may both be
a signal (“user [input] signal”) and a value (“dark level bias”). Petitioner
provides no explanation or discussion of values vs. signals.
We also agree with Patent Owner that another shortcoming of this
ground is that Petitioner does not sufficiently explain why Oki’s minimum
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used luminance value and maximum used luminance value disclose “user
[input] signals.” See Prelim. Resp. 51–52. Dr. Mihran’s testimony states
that “the maximum used luminance value and the minimum used luminance
value, one or both of which are the user signal of claim 1, and the user input
signal of claim 15.” Ex. 1010 ¶ 184. This testimony is not sufficiently
supported on this record. Telemac Cellular Corp. v. Topp Telecom, Inc.,
247 F.3d 1316, 1329 (Fed. Cir. 2001) (holding that conclusory statements
offered by experts are not evidence). Oki describes that the “maximum used
luminance value is a value at which the user does not sense glare,” and the
“minimum used luminance value is a value at which the user does not sense
glare when the mobile terminal is used when it is dark outside.” Ex. 1004
¶ 27. Oki describes that these values are “input” or “selected by the user”
and “set in the glare adjustor.” Ex. 1004 ¶¶ 26, 27. Nowhere does Oki
describe, or does Petitioner provide sufficient explanation, that these values
are “signals.”
Petitioner thus fails to meet the burden required to support institution
of inter partes review of independent claims 1 and 15, and, for the same
reasons, dependent claims 2, 4–7, 9, 16, and 18 based on anticipation by
Oki. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir.
2016) (quoting 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions
to identify “with particularity . . . the evidence that supports the grounds for
the challenge to each claim”) (internal quotations omitted)); cf. Intelligent
Bio-Systems, 821 F.3d at 1369 (quoting 35 U.S.C. § 312(a)(3)) (addressing
“the requirement that the initial petition identify ‘with particularity’ the
‘evidence that supports the grounds for the challenge to each claim’”).
Accordingly, Petitioner fails to demonstrate a reasonable likelihood that it
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would prevail on this ground of unpatentability.
F. Ground 2 - Obviousness Based on Oki
Petitioner also asserts that claims 1, 2, 4–7, 9, 15, 16, and 18 are
unpatentable as obvious under 35 U.S.C. § 103 by Oki. Pet. 5. Petitioner
relies on Oki as in the anticipation ground. Id. Petitioner asserts that Oki
discloses each of the limitations in independent claims 1 and 15. See id. at
28 (“the preamble is disclosed by Oki), 30 (“Oki discloses these limitations
[in limitation [1a] and [15a]]), 31 (“Oki discloses [limitation [1b] and
[15b]],” “Oki discloses these limitations [in limitation [1c] and [15c]]”), 33
(“Oki discloses these limitations as shown [in limitation [1d] and [15d]]”),
37 (“Thus, Oki discloses all of the limitations in claims 1 and 15”)).
Similarly, Petitioner asserts that Oki discloses each of the limitations in
dependent claims 2, 4–7, 9, 16, and 18. Id. at 37–42.
Patent Owner asserts that Petitioner provides no substantive analysis
of obviousness for Ground 2. Prelim. Resp. 65. Specifically, Patent Owner
argues that the Petition contains no analysis of (1) how Oki is modified to
meet the claim limitations; (2) why one of ordinary skill in the art would
modify Oki to meet the claim limitations; (3) whether there would be a
reasonable expectation of success in modifying Oki; and (4) differences
between the claims and Oki. Id.
We agree with Patent Owner. As an initial matter, this ground suffers
from the same shortcomings as Ground 1. In addition, short of generally
asserting the grounds, and stating that “claims 1, 2, 4–7, 9, 15, 16, and 18 of
the ’117 patent is anticipated and/or rendered obvious by the disclosure in
Oki,” the Petition contains no actual obviousness arguments or analysis for
any of claims 1, 2, 4–7, 9, 15, 16, and 18.
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The petition must identify with particularity each claim challenged,
the grounds on which the challenge to each claim is based, and the evidence
that supports the grounds for the challenge to each claim. 35 U.S.C.
§ 312(a)(3); see also 37 C.F.R. § 42.22(a) (content of petitions); 37 C.F.R.
42.104 (content of petition). Petitioner’s conclusory statements, without
more, are irreparably lacking in detail. Petitioner does not provide any
analysis to support the assertion of obviousness over Oki. In fact, Petitioner
instead asserts that Oki discloses all of the limitations in each of claims 1, 2,
4–7, 9, 15, 16, and 18, so it is unclear what modification, if any, is required
to Oki, or even the basis of Petitioner’s obviousness grounds. E.g., Pet. 28–
33. Petitioner does not clearly point out the differences between the claimed
invention and Oki. Nor does Petitioner explain why a person of ordinary
skill in the art would have found the claimed subject matter obvious in spite
of those differences. Petitioner has not provided sufficient reasoning or facts
on which to base a conclusion that a person of ordinary skill in the art would
have found it obvious, in light of Oki’s disclosure, to modify Oki to meet the
claim limitations.
Accordingly, Petitioner fails to demonstrate a reasonable likelihood
that it would prevail on this ground of unpatentability.
G. Ground 5 - Anticipation Based on Toffolo
Petitioner contends claims 1, 2, 4, 5, 9, 15, 16, and 18 are anticipated
by Toffolo. Pet. 46–59. In support, Petitioner cites the Declaration of
Richard T. Mihran, Ph.D. Ex. 1010.
1. Toffolo (Ex. 1006)
Toffolo issued on January 8, 2002. Ex. 1006, (45). Toffolo is titled
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“Display System With Automatic and Manual Brightness Control” and
generally relates to “[a] display system provid[ing] automatic and manual
brightness control.” Id. (54), (57). Specifically, a “brightness controller”
varies the luminance of a display between minimum and maximum
luminance values, based on sensed ambient light. Id. at 1:21–40.
In an embodiment, “display system 20” includes “automatic input
circuit 30” with “first user input device 32,” “second user input device 34,”
and “photo sensor 36 for sensing the level of ambient light, or ‘illuminance,’
near the display 22.” Id. at 1:58–2:4.
Figure 1 of Toffolo, reproduced below, shows “display system 20.”

Figure 1 depicts “display system 20” for controlling the brightness of
“display 22” in an embodiment of Toffolo, including “first input device 32,”
“second input device 34,” “photosensor 36,” and “display 22”.
In operation, the “first user input device 32” is used to select a point
“A” corresponding to “the illuminance at which display 22 displays its
maximum luminance.” Id. at 2:30–34. The “second user input device 34”
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is used to select at point “B” corresponding to “the luminance of the display
22 which is displayed at the minimum illuminance detectable.” Id. at 2:38–
40. Toffolo explains that
When the photosensor 36 detects that the level of ambient light
is below point B, the display 22 is displayed at a minimum
luminance level, which is selected by the second user input
device 34. When the photosensor 36 detects that the ambient
light level is at or above that indicated at point A, as selected by
user input device 32, the display 22 is displayed at a maximum
luminance level, which is preferably the maximum luminance
level that can be displayed by the display 22. When the
photosensor 36 detects that ambient light level is between
points A and B, the display 22 is displayed as a function of the
illuminance between the light levels indicated at points A and
B.

Id. at 2:49–61.
Figure 2 of Toffolo, reproduced below, shows how the display
luminance of the “display 22” varies based on sensed illuminance for
selected values of “A” and “B.” See id. at 2:14–28.

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Figure 2 depicts a graph showing the relationship between luminance
of “display 22” on the y-axis and illuminance as sensed by “photo sensor
36” on the x-axis.
2. Analysis
Petitioner has identified the disclosures in Toffolo that Petitioner
asserts disclose each limitation of independent claims 1 and 15. See Pet. 46–
55. For each claim limitation, Petitioner provides a color coded summary
table with columns representing the claim limitation/element of the ’117
patent and the asserted components in Toffolo corresponding to each listed
limitation/element. Id. Petitioner’s summary table for limitation 1[c] is
reproduced below:

Pet. 49. For disclosure of the combined signal, Petitioner relies on analysis
from Dr. Mihran. Pet. 49–55; see Ex. 1010 ¶¶ 275–300. Dr. Mihran relies
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on an annotated Figure 2 of Toffolo, depicted below:

Pet. 52 (citing Ex. 1010 ¶¶ 279–280). Figure 2 of Toffolo depicts a graph
showing operation of the display, with Display Luminance on the y-axis and
Ambient Illuminance on the x-axis, and points A and B showing maximum
and minimum illuminance, respectively. Ex. 1006, 1:50–51, 2:18–24.
Figure 2 shows that “the display luminance of the display 22 increases with
illuminance between points A and B.” Id. at 2:16–18. Figure 2 further
shows that “when points A and B are selectively varied, for example, to
points A1 and B1, the function of the display luminance and illuminance
between points A1 and B1, are altered accordingly, such that the luminance
of the display 22 is a continuous function.” Id. at 2:43–47.
Petitioner annotates Figure 2 to indicate x and y axes and coordinate
values corresponding to points A/A1 and B/B1, for example, xB, xA, and xA1.
Pet. 52. According to Petitioner, annotated Figure 2 of Toffolo, depicts
ambient illuminance value at xB is the ambient illuminance where the sensor
signal output of the photodetector is effectively zero. Id. Petitioner asserts
that because the display illuminance between x=0 and xB is the same, Figure
2 may be redrawn to show the Display Luminance as a function of the
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normalized photosensor signal that is indicative of Ambient Illuminance,
rather than Ambient Illuminance itself. Id. at 52–53. In this depiction,
Petitioner asserts that the x-value corresponding to point B – xB – is zero.
Id. at 53. Petitioner’s redrawn and annotated Figure 2 is depicted below:

Id. Redrawn Figure 2 essentially shifts the graph left toward the y-axis, so
that xB = 0. Petitioner asserts:
A POSA would have further understood that the general
equation of the solid line between points A (xA, A) and B (xB,
B) depicted in the figure above is:

y = [(A-B)/xA]x + B,

where y = display luminance, B = minimum luminance value
(indicative of a first component of a user selectable brightness
setting), the point A (xA, A) = condition for maximum
luminance value (indicative of a second component of a user
selectable brightness setting); xB=0, and x = sensing signal
(indicative of ambient light level). Mihran, ¶284. As can be
observed from equation y = [(A-B)/xA]x + B, the user signal
portion (A - B)/xA is multiplied by x, which is the photosensor
signal value. Mihran, ¶290. The result of the multiplication of
(A - B)/xA and x is a combined signal, [(A - B)/xA]x. Id.

Id. at 53–54. Petitioner, therefore, contends:
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The control circuit of Toffolo performs a multiplication
operation, [(AB)/xA]x, to generate a combined signal, which
equals zero under very low ambient light conditions. Mihran,
¶307. The minimum used luminance value defined by B serves
as the dark level bias and ensures that the display screen
luminance value corresponding to y is maintained above zero
even when the photosensor output value, x, is zero. Mihran,
¶¶307-313.

Id. at 54–55.
Patent Owner argues that Petitioner’s theory is unsupported by
Toffolo’s disclosure because: (1) Toffolo does not disclose the equation
advanced by Petitioner, (2) Toffolo has no disclosure of multiplication as
required by the claims, and (3) Petitioner’s theory is contrary to Toffolo’s
disclosure and Figure 2. Prelim. Resp. 72. Specifically, Patent Owner
argues that Toffolo does not disclose that its display controller performs any
multiplication of signals; rather, it merely varies the display luminance based
on the light sensor signal. Id. at 72–73. According to Patent Owner, “the
decision to use maximum or minimum luminance is based only on the value
of the light sensor illuminance signal with no multiplication.” Id. at 74.
Patent Owner also argues that Petitioner does not argue inherency, and
Figure 2 could be generated using lookup tables or other equations involving
constants. Id. at 76. Patent Owner argues that the only software
implementation with a microprocessor disclosed by Toffolo is a lookup
table, and Figure 2 is described as a graph, which does not have a
microprocessor and cannot execute any equations. Id.
On the record before us, we determine that Petitioner has not shown a
reasonable likelihood of prevailing as to this ground. Toffolo does not
disclose using a multiplier to generate a combined signal based on both the
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user signal and the sensing signal. Although Toffolo’s Figure 2 discloses a
graph showing the illumination functionality of its display, neither this
graph, nor any associated description thereof, expressly discloses or
describes equation y = [(A-B)/xA]x + B or multiplication of the user signal
and the photosensor signal. Rather, Petitioner’s contentions are based
entirely on Dr. Mihran’s interpretation of Figure 2. Pet. 49–55 (citing Ex.
1010 ¶¶ 275–314). Moreover, although Dr. Mihran provides testimony as to
how a person of ordinary skill in the art would have understood Figure 2,
(E.g., Ex. 1010 ¶¶ 279, 282, 284, 291), the cited testimony does not offer
sufficient analysis, elaboration or underlying evidence to support his
position that Toffolo discloses multiplying a user signal (or input signal)
with a sensing signal to generate a combined signal. Dr. Mihran’s testimony
based upon disclosure in Toffolo is unpersuasive:
The display controller of Toffolo uses a representation of these
equations (based on the actual user input) to control the
adjustment of the display luminance value, i.e., the display
brightness, as described in the passage below:

In operation, a user selectively alters points A and
B utilizing user input devices 32 and 34,
respectively. When the photosensor 36 detects that
the level of ambient light is below point B, the
display 22 is displayed at a minimum luminance
level, which is selected by the second user input
device 34. When the photosensor 36 detects that
the ambient light level is at or above that indicated
at point A, as selected by user input device 32, the
display 22 is displayed at a maximum luminance
level, which is preferably the maximum luminance
level that can be displayed by the display 22.
When the photosensor 36 detects that ambient light
level is between points A and B, the display 22 is
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displayed as a function of the illuminance between
the light levels indicated at points A and B.

Ex. 1006, 2:48-61.
Mihran ¶ 286. However, there is no indication from the cited passage (or
anywhere else in Toffolo) that Dr. Mihran’s equation or multiplication is
used to control the adjustment of the display luminance, as asserted. To the
contrary, the passage indicates, consistent with other disclosure in Toffolo,
that the luminance of the display is adjusted based on ambient light sensed
by the ambient light sensor, and will fall between minimum luminance level
A and maximum luminance level B, which may be selected by a user. E.g.,
Ex. 1006, Abstr. (“[a] brightness controller varies the luminance of the
display based upon ambient light as sensed by an ambient light sensor . . .
[and] varies the luminance of the display between the minimum luminance
at a minimum illuminance to a maximum luminance at a maximum
illuminance”); 1:28–33 (“[t]he display displays the maximum luminance
when the ambient light sensor senses ambient light greater than or equal to
the maximum illuminance. The display displays the minimum luminance
when the ambient light sensor senses less than or equal to the minimum
illuminance.”) (emphasis added); 2:33–37(“[a]ny illuminance sensed by the
photosensor 36 to be at or above the illuminance level at point A would
cause the display system 20 to display the display 22 at its maximum
luminance”); 2:49–53 (“[w]hen the photosensor 36 detects that the level of
ambient light is below point B, the display 22 is displayed at a minimum
luminance level, which is selected by the second user input device 34.”); see
generally id. 2:14–61.
In other words, there is no indication that Toffolo generates a
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combined signal by multiplying the photosensor signal and a user signal. As
there are no express teachings of the “multiplier to selectively generate a
combined signal based on both the user signal and the sensing signal” or
“selectively multiplying the user input signal with the sense signal to
generate a combined signal” limitations of independent claims 1 and 15,
Petitioner would have to show that the claimed limitations are inherent in
Toffolo. However, neither Petitioner, nor its expert, Dr. Mihran, asserts that
the limitations are inherent in Toffolo.
Accordingly, Petitioner fails to demonstrate a reasonable likelihood
that it would prevail on this ground of unpatentability.11
H. Ground 6 - Obviousness Based on Toffolo
Petitioner also asserts that claims 1, 2, 4, 5, 9, 15, 16, and 18 are
unpatentable as obvious under 35 U.S.C. § 103 by Toffolo. Pet. 46.
For each of the limitations in independent claims 1 and 15, Petitioner
asserts that Toffolo discloses each of the limitations in independent claims 1
and 15. See id. (“the preamble is disclosed by Toffolo), 47 (“Toffolo
discloses these limitations [in limitation [1a] and [15a]]”), 48 (“Toffolo
discloses [limitation [1b] and [15b]]”), 112 (“Toffolo discloses these
limitations [in limitation [1c], [1d], [15c], and [15d]]”). Similarly, Petitioner
asserts that Toffolo discloses each of the limitations in dependent claims 2,
4, 5, 9, 16, and 18. Id. at 55–59.

11 We also note that, similar to Ground 1, Petitioner relies on Toffolo’s
“minimum luminance value B” to teach both the “user [input] signal” and
the “dark bias level.” See Pet. 49–50. For the same reasons as discussed
above with respect to Ground 1, we find Petitioner has not supported such
reliance with sufficient explanation and argument.
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Patent Owner asserts that Petitioner provides no substantive analysis
of obviousness for Ground 6. Prelim. Resp. 65. Specifically, Patent Owner
argues that the Petition contains no analysis of (1) how Toffolo is modified
to meet the claim limitations; (2) why one of ordinary skill in the art would
modify Toffolo to meet the claim limitations; (3) whether there would be a
reasonable expectation of success in modifying Toffolo; and (4) differences
between the claims and Toffolo. Id.
Our analysis here parallels that of Ground 2 above. Specifically,
Petitioner does not correct the deficiencies of the anticipation ground. Nor
does Petitioner provide analysis to support the assertion of obviousness over
Toffolo. Rather, Petitioner generally asserts the grounds and states that
“[t]he alleged invention recited in claims 1–2, 4–5, 9, 15–16, and 18 of the
’117 patent is anticipated and/or rendered obvious in view of the disclosure
Toffolo,” but provides no actual obviousness arguments or analysis for
claims 1–2, 4–5, 9, 15, 16, and 18.
Accordingly, Petitioner fails to demonstrate a reasonable likelihood
that it would prevail on this ground of unpatentability.
I. Grounds 3, 4, and 7–10
In light of our findings as to independent claims 1 and 15 under
Grounds 1, 2, 5, and 6, we, likewise find Petitioner has failed to demonstrate
a reasonable likelihood that it would prevail on Grounds 3, 4, and 7–10,
which address dependent claims 6, 7, 13, and 14.
VI. CONCLUSION
For the foregoing reasons, we determine Petitioner has not
demonstrated a reasonable likelihood that it would prevail in establishing the
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unpatentability of claims 1, 2, 4–7, 9, 13–16, and 18 of the ’117 patent based
on the grounds asserted in the Petition. We do not institute an inter partes
review of the challenged claims on the ground set forth in the Petition.
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that inter partes review is not instituted for any claim of
the ’117 patent.

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PETITIONER:

Jason Croft
John Gadd
MASCHOFF BRENNAN
jcroft@mabr.com
jgadd@mabr.com

PATENT OWNER:

Russell Tonkovich
FEINBERG DAY KRAMER ALBERTI
LIM TONKOVICH & BELLOLI LLP
rtonkovich@feinday.com

Bridget A. Smith
Lowenstein & Weatherwax LLP
smith@lowensteinweatherwax.com