Samsung Electronics Co. Ltd et al. 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 once the 3GPP-Specification version was not prior art, the Petition's contentions did not show the required demodulation through OFDM, so unpatentability was not shown by a preponderance of the evidence. A petition's mapping must itself show each claim limitation with prior art. Evidence developed at trial cannot fill a gap left when a cited reference is held not to be prior art, and the Director may adopt a panel dissent as the basis for reversal. Decision under review: the Final Written Decisions (Paper 47 in each proceeding) found claim 15 of the '241 patent and claim 21 of the '590 patent unpatentable. Both claims require demodulating through OFDM. Patent Owner argued, following the dissents, that once the Board found the 3GPP-Specification version not publicly available, the Petition lacked support showing the prior art discloses OFDM demodulation. Petitioner responded that the Board properly relied on other evidence developed during trial to find the claims unpatentable. The Director agreed with the dissent that the Petition's contentions do not address OFDM demodulation and rely at least in part on the 3GPP-Specification, which is not prior art. The deficiency applies to all grounds because the Petition's showings for these claims are the same across grounds. Order: Director Review granted; the Final Written Decisions are reversed as to claim 15 and claim 21; 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 50, p. 3)