Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc. v. Maxell, Ltd.

The Director granted Patent Owner's requests for Director Review and reversed the Final Written Decisions as to claim 15 of the '241 patent and claim 21 of the '590 patent. Agreeing with the panel dissent, the Director found that Petitioner did not show the required demodulation through OFDM, because the Petition's contentions for these claims did not address OFDM demodulation and its general contentions about the communication standard relied at least in part on a 3GPP-Specification that is not prior art. The Director therefore held that unpatentability was not shown by a preponderance of the evidence. A petition must itself support each limitation with prior art that qualifies. Once the Board found that the cited 3GPP-Specification version was not publicly available, the majority could not fill the gap with other trial evidence about what the standard encompasses. Practitioners should make sure every claim element, including those in dependent claims, is mapped to qualifying prior art in the petition. Decision under review: the Board's Final Written Decisions (Paper 47) in IPR2024-00906 and IPR2024-00907. The issue was dependent claim 15 of the '241 patent and claim 21 of the '590 patent, both of which require demodulating through OFDM. Patent Owner argued, as the dissent did, that once the Board found the asserted 3GPP-Specification version was not publicly available, the Petition's grounds lacked support for showing that the asserted prior art discloses OFDM demodulation. Petitioner responded that the Board properly relied on other evidence developed during trial. The majority had found that the communication standard encompasses OFDM-based technologies sufficient to render the dependent claims unpatentable under all grounds. The dissent found that Petitioner's contentions for these claims do not address OFDM demodulation and that its general contentions about the standard rely, at least in part, on the 3GPP-Specification, which is not prior art. The Director agreed with the dissent and adopted its reasons. The Director applied the dissent's deficiency to all asserted grounds, even though the dissent addressed only certain grounds. The reason given is that the Petition's showings for claim 15 and claim 21 are the same for every ground, with later grounds referring back to or incorporating the Ground 1 analysis. Order: Director Review granted; the Final Written Decisions are reversed as to claim 15 of the '241 patent and claim 21 of the '590 patent; and Petitioner has not shown unpatentability of those claims by a preponderance of the evidence. KEY QUOTE: "I agree with the dissenting opinion that Petitioner has not shown the required demodulation through OFDM." (Paper 51, p. 3)