ams AG v. 511 Innovations Inc

1. Case Identification

• Case #: IPR2016-01819
• Patent #: 6,915,955
• Filed: September 14, 2016
• Petitioner(s): ams AG, ams-Taos USA Inc., Samsung Electronics America, Inc., and Samsung Electronics Co. Ltd.
• Patent Owner(s): JJL Technologies LLC and 511 Innovations, Inc.
• Challenged Claims: 1, 5, 7, 10-11, and 18-19

2. Patent Overview

• Title: Apparatus and Method for Measuring Spectral Characteristics of an Object
• Brief Description: The ’955 patent describes an apparatus for determining optical characteristics of an object, such as the color of teeth. The system uses a probe with light receivers (e.g., fiber optics) to capture reflected light, spectral sensors to measure the light intensity across different spectral bands, and a processor to analyze the intensity data.

3. Grounds for Unpatentability

Ground 1: Anticipation over Jung - Claims 1, 5, 7, 10, and 18 are anticipated by Jung

• Prior Art Relied Upon: Jung (Patent 5,745,229).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner first argued that the ’955 patent’s claim to a 1996 priority date was defective due to a broken priority chain, making its effective filing date March 13, 2000. Because Jung issued as a patent in 1998, it qualifies as prior art under 35 U.S.C. §102(b). Petitioner asserted that Jung anticipates the challenged claims because the disclosure of the ’955 patent is substantially identical to that of Jung, including identical figures and descriptions. Jung allegedly discloses every limitation of claim 1: an apparatus for measuring spectral characteristics comprising light receivers (optical fibers), spectral sensors (photodiode arrays with filters) that measure light intensity in predetermined spectral bands, and a processor. The processor in Jung receives intensity data and determines a data value of "at least two bits" by using an 8-bit counter to measure the frequency of the sensor outputs, which is proportional to light intensity.
  • Key Aspects: Petitioner’s argument for this ground is contingent on establishing a later effective filing date for the ’955 patent, thereby making Jung, an earlier patent from the same inventor, eligible as prior art.

Ground 2: Obviousness over Farrar and Hassler - Claims 1, 11, and 19 are obvious over Farrar in view of Hassler

• Prior Art Relied Upon: Farrar (Patent 4,653,905) and Hassler (Patent 5,149,963).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Farrar discloses a fiber optic range finder that meets most limitations of claim 1. Farrar’s system measures reflected light intensity using photodetectors (spectral sensors) coupled with narrowband optical filters (predetermined spectral bands) and uses a microprocessor to calculate distance based on the intensity data. While Farrar does not explicitly state the bit depth of its analog-to-digital (A/D) converters, it discloses a digital display capable of showing results with three decimal digits, which implies a required resolution of at least 1,000 distinct values (i.e., 10 bits). Hassler, an analogous fiber optic position sensor, explicitly discloses using an A/D converter that generates 10-bit digital values from photodiode measurements.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Farrar with Hassler to improve the precision of Farrar’s system. A POSITA would have been motivated to implement the A/D converters in Farrar with the 10-bit resolution taught by Hassler to fully utilize the three-decimal-digit precision of Farrar's display and achieve a more accurate measurement.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination, as it involved incorporating a well-understood, higher-resolution A/D converter into an existing sensor system to achieve the predictable result of enhanced digital precision.

Ground 3: Obviousness over Mills - Claim 1 is obvious over Mills

• Prior Art Relied Upon: Mills (Patent 4,515,275).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Mills, which describes an optical scanning system for sorting fruit by color, renders claim 1 obvious. Mills discloses an apparatus with all the required elements: light receivers that capture reflected light from fruit, spectral sensors (diodes with color filters) that measure light intensity in predetermined spectral bands, and a processor (microcomputer) that receives the corresponding data. Critically, Mills explicitly teaches the "at least two bits" limitation by disclosing that its A/D converters convert the analog sensor output into an "8-bit digital byte of data" (256 possible values).
  • Motivation to Combine: As this is a single-reference obviousness challenge, the motivation is found within Mills itself, which combines these elements to create a functional system for color-based fruit sorting.
  • Expectation of Success: The teachings of Mills describe an integrated, functional system, demonstrating that a POSITA would expect the claimed combination of elements to work for its intended purpose.

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 5, 7, 10-11, and 18-19 of the ’955 patent as unpatentable.