• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution denied
  PTAB · Oct 8, 2025 · IPR2025-00701 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–14 were obvious over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “Institution of an inter partes review is authorized by statute 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) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’138 patent. Accordingly, for the reasons that follow, we decline to institute an inter partes review of claims 1–14 of the ’138 patent.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner states that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary to find the claims unpatentable.” Pet. 6. Patent Owner does not address claim construction. See generally Prelim. Resp. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. 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 controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  • Skill levelSkill level petitioner adoptedOther

    “a Ph.D. or master’s degree in electrical engineering, physics, materials science, or a related field, and at least one year or four years, respectively, of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent. Pet. 8 (citing Ex. 1024 ¶¶ 25–29). Petitioner contends that less work experience can be compensated for by a higher level of experience and vice versa. Id. (citing Ex. 1024 ¶ 25). Petitioner also asserts that the proposed level of skill would be the same under any of the United States, Japanese, or PCT application dates. Id. at 8–9 (citing Ex. 1024 ¶¶ 24–25). Patent Owner does not challenge Petitioner’s proposed level of qualifications for one of ordinary skill in the art. Prelim. Resp. 20. At this stage of the proceeding, we adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’138 patent and the asserted prior art of record.” slip op. at 7

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “As discussed above, Petitioner relies upon Parkin, and its layers 115 and 175, as the claimed first and second ferromagnetic material layers, respectively. See Pet. 10, 16. Petitioner admits that these layers are 8 In the Petition, Petitioner refers to the lower electrode “ferromagnetic layer 110’ as discussed in Claim 1[a]” in the discussion of limitation 1[d]. Pet. 18. Petitioner’s reference to “layer 110’” appears to be in error because the Petition’s discussion for limitation 1[a] refers to layer 115 of Parkin, as does Dr. Bokor’s testimony related to limitations 1[a] and 1[d]. Pet. 10; Ex. 1024 ¶¶ 109, 136. amorphous, but contends that, as Parkin discloses, these layers may be annealed. Id. at 17. Petitioner, however, refers to Parkin’s disclosure that only “a portion of the storage layer 175” is crystallized after annealing. Id. at 17–18 (citing Ex. 1062, 18:51–55) (emphasis added). Petitioner also relies upon Parkin’s “thin crystalline ferromagnetic layer” that is crystallized to teach limitation 1[d]. Id. at 18 (citing Ex. 1062, 18:55–59; Ex. 1024 ¶¶ 131–132) (emphasis added). Dr. Bokor additionally testifies that it is “Parkin’s ‘thin crystalline ferromagnetic layer’ of CoFeB” that meets the “entirely crystallized” requirement of limitation 1[d]. Ex. 1024 ¶ 132. Parkin, however, states that a thin crystalline ferromagnetic layer is formed, but “the bulk of storage layer 175 remains amorphous.” Ex. 1062, 18:55–60 (emphasis added). Petitioner fails to reconcile how its assertions that the first and second ferromagnetic layers, which are mapped to the totality of layers of 115 and 175, meet the limitation that the first and second ferromagnetic layers are each “entirely crystallized” when Petitioner relies only a thin layer, that is, a portion, of the 115 and 175 layers for the teaching that the respective layers are entirely crystallized. Put another way, Petitioner’s mapping is inconsistent: Petitioner relies upon the full depth of certain “layers” of Parkin for the teaching of the ferromagnetic layers, but then only relies upon thin portion of that depth for the assertion that the “layers” are entirely crystallized.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,367,138
• Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Institution denied
  PTAB · Apr 25, 2025 · IPR2024-01462 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “experience working on the development of materials or components for electronic devices such as batteries.” Pet. 2. Petitioner further contends that “[a]dditional education, such as a graduate degree, could compensate for less work experience, and additional work experience could compensate for less formal education.” Id. Patent Owner states that, “[f]or purposes of this Preliminary Response, Patent Owner applies Petitioner’s level of skill for a person of ordinary skill in the art.” Prelim. Resp. 4. For purposes of this Decision, we adopt Petitioner’s undisputed proposed definition because it appears to be consistent with the cited prior art and the disclosure of the ’014 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (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))).” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). in this proceeding.” Pet. 3. Patent Owner contends that “[t]he Board need not construe any term in order to determine that institution should be denied.” Prelim. Resp. 4. Based on the record before us, we determine that no claim term requires express construction for purposes of this Decision. See Realtime Data, 912 F.3d at 1375.” slip op. at 8

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “For these reasons, we are not persuaded that Petitioner sufficiently establishes that a POSITA would have been motivated to modify Hanafusa in light of Dobashi with a reasonable expectation of success as Petitioner contends. Accordingly, we determine that Petitioner fails to demonstrate a reasonable likelihood of prevailing in its assertion that the subject matter of claim 1, and claims 4 and 8 that depend therefrom, would have been obvious over the combined teachings of Hanafusa and Dobashi.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Petitioner also focuses on Hanafusa’s teaching that all known methods can be used to make a rough surface low-profile, and Dobashi’s teaching that RSm can be used as an indicator for judgment of the surface, to support its contention that a POSITA would have been motivated to apply Dobashi’s RSm to further achieve Hanafusa’s purpose, without explaining how and why that would be the case. In particular, neither Petitioner nor Dr. Josefowicz adequately explain why a POSITA looking for ways to make Hanafusa’s surface roughness low-profile would look to methods to achieve as the period of waviness, RSm can also be used as an indicator for judgment of the surface.” Ex. 1005, 2:66–3:1, 6:23–26. Dobashi explains that waviness is “an indicator for determining whether the fine pattern forming performance is good or bad,” and “[t]he surface has small waviness and is smooth when RSm is large, and the surface has large waviness and is rough when RSm is small.” Id. at 3:1–3, 6:27–29. Dobashi also teaches that surface roughness Rzjis is used as a low-profile indicator. Ex. 1005, 2:66– 3:1. Dobashi, therefore, teaches that RSm is an indicator of surface waviness, which Dobashi explains is different than surface roughness. Id. at 2:66–3:3, 6:23–29. Given these teachings in Dobashi, neither Petitioner nor Dr. Josefowicz sufficiently explains how or why a POSITA would have been motivated to implement Dobashi’s RSm values to make Hanafusa’s surface roughness low-profile. See Pet. 10–12; Ex. 1003 ¶¶ 46–52.” slip op. at 14

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 11,346,014
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution denied
  PTAB · Mar 14, 2025 · IPR2024-01449 · APJ Justin T Arbes · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 and 2 were unpatentable under any of the four asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “inter partes review unless the information in the petition and 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.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 29 (citing Ex. 1024 ¶ 25). Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 17. Based on the record presented, including our review of the ’463 patent and the types of problems and solutions described in the ’463 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “C. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary.” Pet. 25–26. Patent Owner does not propose interpretations of any claim terms in its Preliminary Response. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted) (emphasis added)).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Further, because Bowen’s disclosed barrier height is outside the claimed range, Petitioner relies on Soukup’s purported teaching of a barrier height of “about 0.33 eV” and contends that a person of ordinary skill in the art would have been motivated to “achieve” that barrier height for the MgO barrier of Bowen’s device. Id. at 34–36. The data that Petitioner relies on from Soukup for the “about 0.33 eV” barrier height, though, was determined using the slope of an Arrhenius plot, not Simmons’ formula. Ex. 1028, 3229 (Abstract), 3231–33, Table I. In Soukup, apparent barrier heights for the samples were determined using (1) the slope of an Arrhenius plot, and (2) the zero-field intercept of the straight line logI versus V1/2 plot. Id. at 3229 (Abstract), 3230–32, Fig. 3, Table I. Reproduced below is Table I of Soukup, as annotated by Patent Owner (Prelim. Resp. 39): Annotated Table I of Soukup includes the results of analyses of sample test data, with the column highlighted in yellow showing the barrier heights obtained by a zero-field intercept method and the column highlighted in blue showing barrier heights obtained from the slope of an Arrhenius plot. See Ex. 1028, 3233; Prelim. Resp. 38–39. Dr. Bokor testifies that “Soukup disclosed that Simmons’ formula was used to approximate tunnel barrier height” and “[o]ne of skill would have understood the ‘height and the bias dependence of the insulator potential-energy barrier’ [referenced in Soukup] included the tunnel barrier height.” Ex. 1024 ¶¶ 145–147 (quoting Ex. 1028, 3229; citing Ex. 1024 ¶¶ 45–49). We do not find this testimony persuasive. Although Soukup refers to “Simmons’ model” and the Simmons 1963 paper in its “Introduction,” it does not teach any calculation using Simmons’ formula to obtain a barrier height within the claimed range. See Ex. 1028, 3229, 3236 n.1; Prelim. Resp. 63. Soukup plainly recognizes that there are methods of calculating barrier height other than Simmons’ formula, and discusses at length its calculations using two such methods: the Arrhenius plot method and the zero-field intercept method. See, e.g., Ex. 1028, 3229 (Abstract) (“These results . . . indicate a potential barrier height of about 0.72 eV when determined from the zero-field intercept of the straight line logI vs V1/2 plot and about 0.33 eV when obtained from an Arrhenius plot.”), 3232–33. Petitioner does not address whether the 0.33 eV barrier height it relies on from Soukup (determined using the Arrhenius plot method) would still be within the claimed range if calculated using Simmons’ formula. See Prelim. Resp. 63. Nor does Petitioner rely on any values from Soukup’s disclosure that would be used as the variables in Simmons’ formula—Petitioner relies solely on Bowen. See Pet. 39–42. Thus, Petitioner’s argument that Bowen and Soukup teach a barrier height within the claimed range, obtained using equation (1), is not persuasive. See id. at 34–42.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,123,463
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution denied
  PTAB · Mar 13, 2025 · IPR2024-01384 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Institution of an inter partes review is authorized by statute 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) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’403 patent. Accordingly, for the reasons that follow, we decline to institute an inter partes review of claims 1–8 of the ’403 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had a “Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent.” Pet. 29 (citing Ex. 1024 ¶ 25). Patent Owner “does not challenge Petitioner’s POSA [person of ordinary skill in the art] definition.” Prelim. Resp. 17. In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we adopt the assessment offered by Petitioner, as it is consistent with the ’403 patent and the asserted prior art.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner “submits the claim terms should be given their plain and ordinary meaning and no claim construction is necessary to find the claims unpatentable.” Pet. 26. Patent Owner does not address claim construction in its Preliminary Response. See generally Prelim. Resp. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. 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 controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Importantly, Soukup indicates a different relationship between the amount of oxygen vacancy defects in the barrier layer and the barrier height, depending on which method is used. Specifically, Soukup explicitly found that “[t]he apparent barrier height determined from the zero-field intercept went up for increasing oxygen pressure [(i.e., less oxygen vacancy defects)] and the barrier height determined from the Arrhenius plot went down.” Ex. 1028, 3229 (Abstract) (emphasis added).15 That disclosure is reflected in Table I, where Soukup shows the results for three fabricated samples with increasing oxygen pressure during MgO deposition. Id. at 3233. Patent Owner provides another annotated version of Table I below (Prelim. Resp. 45): 15 Soukup’s conclusion appears to refer to the trend of the respective increasing or decreasing barrier heights values under the two different mathematical analyses methods. Annotated Table I above shows (in red) that the barrier height decreases as oxygen vacancies increase (i.e., as the oxygen pressure admitted during MgO deposition, shown in the PO2 column, decreases) using the zero-field intercept method, and shows (in blue) that the barrier height increases as oxygen vacancies increase (i.e., as the oxygen pressure admitted during MgO deposition decreases) using the Arrhenius plot method. Prelim. Resp. 45. In other words, Petitioner’s alleged inverse relationship is present for the zero-field intercept method, but not for the Arrhenius plot method. See id.; Pet. 37–38. “The barrier height cannot both increase and decrease with more oxygen vacancy defects,” and Petitioner does not attempt to reconcile or explain Soukup’s disparate teachings. See Prelim. Resp. 45 (emphasis omitted). We agree with Patent Owner that Petitioner is inconsistent in relying on one method as allegedly teaching a barrier height within the claimed range, while at the same time relying on the other method for a motivation under its obviousness theory. Prelim. Resp. 45–49. If a person of ordinary skill in the art would have understood that the Arrhenius plot method was the appropriate method for determining barrier height, as Petitioner argues in asserting that Soukup teaches a barrier height of 0.33 eV, that person would have understood that “the barrier height increases as oxygen vacancies increase” (in blue above), and Petitioner’s obviousness theory of adding oxygen vacancies to lower Bowen’s barrier height is incorrect. See id. at 47. If, however, a person of ordinary skill in the art would have looked to the zero-field intercept method, that person “would have understood that all of Soukup’s tested samples . . . had barrier heights” (in yellow above) “above the claimed range of 0.2–0.5 eV.” See id. at 48. Petitioner cannot have it both ways. Based on the record before us, Petitioner has not shown sufficiently” slip op. at 23

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,884,403
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution denied
  PTAB · Mar 13, 2025 · IPR2024-01385 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4 would have been obvious over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Institution of an inter partes review is authorized by statute 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) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’263 patent. Accordingly, for the reasons that follow, we decline to institute an inter partes review of claims 1–4 of the ’263 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art at the time of the ’263 patent would have had a “Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent.” Pet. 29 (citing Ex. 1024 ¶ 25).” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. 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 controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7

  • BurdenNot shown unpatentable

    “As discussed above, Petitioner fails to explain why one of ordinary skill in the art would have selected the barrier height value it relies upon. And given the disparity of Soukup’s barrier tunnel values under the different methods of analyses, the reference is, at best, ambiguous as to which values are accurately representative of barrier height. Additionally, the evidence supports that the apparent barrier height value that Petitioner relies upon (“about 0.33 eV”) will be a different higher value, so the actual value of the barrier height is uncertain. Accordingly, we do not find that Petitioner has met its burden to sufficiently demonstrate that a person of ordinary skill in the art would have understood Soukup to teach or suggest the claimed range of limitation 1[e] in that there is insufficient evidence presented that supports that the selected Soukup barrier height value represents an accurate value.” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,319,263
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution denied
  PTAB · Mar 13, 2025 · IPR2024-01386 · APJ Monica S Ullagaddi · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–6 were unpatentable on any asserted obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the parties’ arguments and the evidence of record, we determine that, for the reasons discussed herein, Petitioner does not demonstrate a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. We thus decline to institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Pet. 28–29 (citing Ex. 1024 ¶ 25). Petitioner further states that “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa” and that “[t]his level of ordinary skill would be the same if the relevant time period were around the March 12, 2004 or October 28, 2004 Japanese priority applications, or the March 10, 2005 PCT filing date.” Id. at 29 (citing Ex. 1024 ¶¶ 24–25). Patent Owner states that “[f]or purposes of this Preliminary Patent Owner Response only, Patent Owner does not challenge Petitioner’s POSA [person of ordinary skill in the art] definition because the Petition fails even if Petitioner’s POSA definition is adopted.” Prelim. Resp. 20 (citing Pet. 28–29). To resolve the institution question, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “claims using the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. See 37 C.F.R. § 42.100(b). Petitioner states that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary to find the claims unpatentable.” Pet. 25. Patent Owner does not directly” slip op. at 7

  • BurdenNot shown unpatentable

    “Thus, the cited teachings of Sunai support Patent Owner’s position that, even if adding boron into a ferromagnetic layer of CoFe results in a higher TMR as taught by Sunai, the addition suppresses crystallization. As to the issue of the teaching of the BCC structure of the alloy, not only does Petitioner’s challenge applying Bowen and Sunai fail to demonstrate a teaching or even a suggestion of a CoFeB alloy with a BCC cited by Petitioner does not either. Only one of Petitioner’s cited pieces of underlying evidence refers to a BCC lattice structure, Parkin, but Parkin’s BCC structure is disclosed with respect to a CoFe layer, and not a CoFeB layer. Ex. 1062, 18:55–59 (“The simple cubic crystalline MgO layer thus provides a template for the formation of a thin crystalline ferromagnetic layer which has the bcc structure of CoFe and is oriented in the same (100) direction as the MgO layer.” (emphasis added)).” slip op. at 12

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,608,198
• Motorola Mobility LLC v. Largan Precision Co., Ltd.Institution denied
  PTAB · Oct 28, 2024 · IPR2024-00688 · APJ Jon M Jurgovan · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 would have been obvious over the asserted grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We determine, on the record before us, that Petitioner does not have a likelihood of success of showing that the “prolonged” etching process that Petitioner proposes to arrive at the structure of limitation 1.6 to be “unusually simple” nor is “the technology particularly straightforward.” CN182’s etching process uses an alkali (sodium bicarbonate) solution with a concentration from 5% to 35% at a temperature of 35 to 55°C stirred for a period of 3 to 5 hours in an ultrasonic generator with power of 300 to 500 watts. Ex. 1004 ¶¶ 7–12. This is done in CN182 to create a matte structure on the inner surface of the body composed of plastic material (polyethylene terephthalate (PET)) between two antistatic coatings comprised of carbon powder layers. See, e.g., Ex. 1004 ¶¶ 5–6. Petitioner does not indicate how much time beyond CN182’s stated range of 3 to 5 hours would be required for the “prolonged” etching process it proposes to achieve a minimum depth of 2.0 μm relative to the outer carbon powder layer, nor whether a POSITA would have considered the prolonged time to be practically viable. Petitioner also does not explain what the reaction is, what its etch rate is, whether its effect would be diminished or exhausted as reactants are consumed or affected by other substances present, or whether other variables, such as the alkali concentration, temperature, or power and frequency of the ultrasonic generator, would need to be changed and how much over the course of the “prolonged” etching process.” slip op. at 30

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner states as follows: The person of ordinary skill in the art in November 2016 (“POSITA” or “POSA”) would have held a bachelor’s degree in physics, optical sciences, or a closely related field, and approximately three years’ experience in optical system design, including stray light suppression. More education would compensate for less work experience and vice versa. POSITAs understood the fundamentals of stray light suppression. Pet. 35–36 (citing Ex. 1008, 587:18–20, 167, 595:32–33, xiii:24–26; Ex. 1003 ¶¶ 31–37). Petitioner further asserts that various texts in the record reflect the knowledge of a POSITA. Id. at 36 (citing Exs. 1007–1010). Petitioner alleges that a POSITA could be part of a team that includes a lens designer and a stray light specialist. Id. (citing Ex. 1007, 120; Ex. 1003 ¶¶ 33, 36, 38–41). Patent Owner states that Patent Owner “does not dispute Motorola’s articulation of the level of skill in the art in November 2016.” Prelim. Resp. 12–13 (citing Pet. 35–36). For this Decision, we adopt Petitioner’s undisputed proposal for the level of ordinary skill in the art as consistent with the evidence of record, including the ’660 patent and the prior art references on which Petitioner relies. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 9

  • Expert testimonyPetitioner expert discountedOther

    “Patent Owner correctly argues that the evidence does not show that Petitioner’s declarant, Dr. Milster, has expertise in etching of plastic materials such as PET which CN182 discloses for use as the inner substrate layer. Prelim. Resp. 15 (citing Ex. 1003 ¶¶ 31–37). Dr. Milster states that he has “education, knowledge, skills, and experience in the fields of optics and lens design.” Ex. 1003 ¶ 29. This statement does not provide any evidence of expertise in etching plastic materials. Nor does he indicate that he has any expertise in this field in his curriculum vitae. Ex. 1003, Appendix A. Consequently, on this record, Dr. Milster’s testimony on the subject of etching plastic materials is entitled to little or no weight.” slip op. at 33

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner proposes that the plain and ordinary meaning of the claim terms applies, and does not propose any specific construction for any claim term. Pet. 36. Patent Owner agrees with Petitioner’s statement regarding claim construction, i.e., that the plain and ordinary meaning applies and no express construction is required. Prelim. Resp. 12 (citing Pet. 36–37; Ex. 1003 ¶¶ 82–87). As Petitioner and Patent Owner do not dispute the meaning of any claim term, we decline to expressly construe any claim term, and instead apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b). See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 10

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,997,660
• Honeywell International Inc. v. DSM IP Assets B.V.Institution denied
  PTAB · Aug 21, 2024 · IPR2024-00493 · APJ Erica A Franklin · IPR · Institution

  The Board denied institution because Honeywell did not show a reasonable likelihood that claims 1–9 were unpatentable over any of its three obviousness combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Accordingly, we determine that Petitioner has not shown a reasonable likelihood of prevailing in its obviousness challenge of independent claim 1 or dependent claims 2–9 over the combination of Simmelink and Section 73.1015.” slip op. at 23

  • Skill levelOther

    “PHOSITA) at the time of the ’532 patent “would have had at least a Bachelor’s degree in the field of chemistry, chemical engineering, polymer chemistry, or materials science and at least three years of relevant work experience in the field of high strength fibers.” Pet. 8 (citing Ex. 1003 ¶ 18). Petitioner adds that individuals with different educational backgrounds could still be of ordinary skill in the art if they have “additional experience [that] compensates for a deficit in their education and experience stated above.” Id. According to Patent Owner, a person or ordinary skill in the art, would have (i) a bachelor’s degree in chemistry, polymer chemistry, materials science, chemical engineering, or biomedical engineering and (ii) three years of experience in designing and manufacturing gel-spun UHMWPE yarns. At this level of skill, a PHOSITA would have a detailed understanding of the information provided in the Technology Background, Section II, supra, including (i) the differences between linear HDPE and UHMWPE, (ii) the history underlying Section 73.1015 and the early failures of the 1960s-era blue, melt-extruded polyethylene sutures, (iii) why the molecular orientation of polyethylene molecules leads to strong yarns in the special case of gel-spun UHMWPE, and (iv) the challenges associated with coloring gel-spun UHMWPE yarns, especially for end-use medical applications. Prelim. Resp. 33–34. We note that the parties’ proposed definitions are largely similar, except that Patent Owner additionally recognizes a Bachelor’s degree in biomedical engineering and requires experience in designing and manufacturing gel-spun UHMWPE yarns. In any event, we do not need to the same under either proposed definition.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “a skilled artisan would have understood that the “gel spinning” process recited in the claims requires the use of a solvent during the spinning process. Indeed, the Specification describes this term, as follows: Gel spinning is understood to include at least the steps of spinning filaments from a solution of ultra-high molecular weight polyethylene in a spin solvent; cooling the filament obtained to form a gel filament removing at least partly the spin solvent from the gel filament; removing at least partly the spin solvent from the gel filament; and drawing the filament in at least one drawing step before during or after removing spin solvent. Ex. 1001, 2:31–37. We recognize the inventor’s lexicography as dispositive with respect to the meaning of the term “gel spinning.” See Phillips v. AWHCorp., 415 F.3d 1303, 1316 (Fed. Cir. 2005); SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343–44 (Fed. Cir.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner

    “Claim 1 describes gel spinning as the manner by which the filaments comprised in the claimed colored multi-filament yarn are obtained. This, on its face, is a product-by-process claim element because it describes the filament structure being obtained in a particular way, i.e., by gel spinning. See Kamstrup A/S v. Axioma Metering UAB, 43 F.4th 1374, 1382 (Fed. Cir. 2022) (agreeing with the Board that “cast in one piece” is a product-by-process claim element as it describes the structure being cast “in a particular way”). For this element to be limiting, it must impart “structural and functional differences” that distinguish the claimed product from the prior art. See Amgen Inc. v. F. Hoffman-La Roche Ltd, 580 F.3d 1340, 1365–67 (Fed. Cir. 2009). Patent Owner argues persuasively that gel spinning imparts structural and functional differences to the claimed product because the process “creates overlap between polyethylene molecules within the UHMWPE filaments that maximizes the intermolecular Van der Waals interactions, resulting in highly crystalline filaments with high tensile strength.” Prelim. Resp. 38, 22 (citing Ex. 1014, 62–66). According to Patent Owner, “the structure of the gel spun UHMWPE is substantially different from other types of UHMWPE such as compression-molded and ram-extruded UHMWPE used to make joint replacements and other orthopedic implants.” Id. at 38.” slip op. at 9

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,280,532
• Nespresso USA, Inc. v. K-Fee System GmbHInstitution denied
  PTAB · Jun 10, 2024 · IPR2024-00239 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 would have been obvious over either asserted combination.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing with respect to any of claims 1–20 of the ’094 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “The express language of the claim, however, does not support using the “central axis” as the measuring point for determining if one object is laterally offset from another. For example, the term “central axis” is not used in the relevant claim phrase and the dictionary definitions of “lateral” relied upon by Petitioner and Mr. Jobin to show the ordinary meaning of the claim term do not suggest that the “central axis” is the reference point for determining whether a first object is “laterally offset” from a second object. As such, we determine that the claim language supports Patent Owner’s construction requiring that the “groove” be “off to the side” of the entire mandrel, and not merely the “central axis” of the mandrel. Prelim. Resp. 54. We must also resolve whether the entire groove is required to be laterally offset from the chamfered mandrel, or only a portion of it. On this point, the claims do not use the term “portion,” but rather specify that the “groove” is “laterally offset from the chamfered mandrel.” Ex. 1001, 14:4– 5, 15:19–20. This suggests that the entire “groove” must be offset from the “chamfered mandrel.”” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “That argument, however, does not explain why it would have been obvious to laterally offset the groove of Yoakim from the chamfered mandrel. Rather, as demonstrated by Mr. Jobin’s testimony, this argument relates to the general use of a sealing member in a groove, to the extent it was ultimately determined that such a configuration is not expressly disclosed in Yoakim. Id.; Ex. 1003 ¶ 296 (“It would have been obvious to one skilled in the art to position a sealing member in a groove to solidify the between counter-force portion 161 and engaging portion 157 in Figure 35 of Yoakim is more appropriately identified as the claimed “groove.” Prelim. Resp. 60–61. We need not resolve this issue, however, as Petitioner does not persuasively demonstrate that either potential “groove” is “laterally offset” from the chamfered mandrel. placement of the seal and improve its sealing stability and strength. Furthermore, it would have been obvious to one skilled in the art to utilize a groove and seal configuration in the brewing head . . . .”) (emphasis added). Even if we interpret the recited portion of the Petition as an argument for placing the groove entirely to the side of the mandrel in Yoakim, the Petition does not persuasively explain why one of ordinary skill in the art would have sought to do so. In Figure 35 of Yoakim, the seal and groove, as well as an elastic loading means, act as a valve means to control the level of pressure exerted in the capsule and “optimize interaction of water and the ground coffee particles to obtain a good extraction of the coffee and aroma compounds.” Ex. 1004 ¶¶ 370–372, 382, 396–398, 434–436, 445; Ex. 1003 ¶¶ 286–290; Pet. 63. These are the same beneficial properties relied upon by Petitioner to support the proposed combination, and Petitioner does not persuasively explain why one of ordinary skill in the art would have modified Yoakim in order to achieve results that are already obtained in the identified embodiment. Pet. 63. In view of the foregoing, we determine that Petitioner does not demonstrate a reasonable likelihood that claims 1 and 12 would have been obvious over the combined disclosures of Yoakim, Jarisch 929, and Rossi.” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,542,094
• Mahle Behr Charleston Inc. v. Frank Amidio CatalanoOther
  PTAB · May 24, 2024 · IPR2023-00861 · APJ Christopher M Kaiser · IPR · Remand

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under any asserted ground.

  RulingsRemand decision

  • RemandOther

    “Accordingly, the Director instructed us to “determine whether Petitioner has demonstrated that Figure 1 of Godefroy ‘is clear on its face’ or would have reasonably suggested the placement of Godefroy’s sacrificial anode ‘within 10 inches’ of the hot liquid inlet.” Id. at 9. “In making this determination,” the Director instructed us to “consider whether the expert testimony provides sufficient ‘technical detail, explanation, or statements supporting why the expert determines that the feature in question was required or would have been obvious based on the prior art disclosure.’” Id. In addition, although the Director’s decision “is limited to [our] application of Hockerson to the grounds in the Petition involving Godefroy,” the Director instructed us also to “consider what effect, if any, this decision has on the other asserted grounds.” Id. Finally, the Director instructed us to “set forth [our] interpretation” of “the limitation ‘within 10 inches of a hot liquid inlet to the radiator.’” Id. at 8 n.4.” slip op. at 4

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “original decision, the Director’s decision, and the evidence currently of record, we determine that Petitioner has not shown a reasonable likelihood that it will prevail in showing that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of any challenged claim based on any ground asserted in the Petition. IV. ORDER For the reasons given, it is: ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is denied, and no inter partes review is instituted.” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “evidence. The challenged claims require that a sacrificial anode be placed within a certain distance—10 inches—of the hot liquid inlet, and, because the inlet has some non-zero size, it might be possible for an anode to be within that distance from some parts, but not from all parts, of the inlet. Accordingly, specifying the center axis of the inlet as the point from which to measure the distance to the anode improves on the plain words of the claim in terms of achieving the claim’s objective of placing the anode within a specified distance of the inlet. Moreover, when discussing the distance from the inlet to the anode, the specification of the ’494 patent uses the language “within 10 inches in any direction of the center axis of the inlet connection.” Ex. 1001, 7:61–64. Thus, the intrinsic evidence supports adopting Petitioner’s claim construction. Petitioner’s declarant, Dr. Medlin, relies on Petitioner’s proposed construction. See, e.g., Ex. 1004 ¶¶ 20 (noting that the construction “within 10 inches of the center axis of [a] hot liquid inlet” “ha[s] been adopted by Petitioner”), 96 (“the sacrificial anodes contained in each of the turbulators 2 would be placed within 10 inches of a center axis of a hot liquid inlet to the radiator of Tomosada”), 144 (“A POSITA would understand from Figure 1 that the sacrificial anode 14 is within 10 inches of a center axis of a hot liquid inlet”), 267 (“These teachings would further motivate a POSITA to located the sacrificial anode 12 within 10 inches of a center axis of the hot liquid inlet.”). This support for Petitioner’s proposed construction provides further reason for us to adopt it. Because it is supported by the intrinsic evidence of record, because Patent Owner proposes no alternative construction, and because Petitioner’s expert supports it, we adopt the construction of “within 10 inches of a hot liquid inlet to the radiator” that Petitioner proposes. Thus, we construe this term as “within 10 inches of the center axis of a hot liquid inlet to the radiator.” In other words, when discussing the distance between a hot liquid inlet and a sacrificial anode, we interpret “hot liquid inlet” as “center axis of the hot liquid inlet.”” slip op. at 5

  • BurdenNot shown unpatentable

    “Inherency may be relied upon in arguing either anticipation or obviousness. Schering, 339 F.3d at 1377 (applying inherency in an anticipation context); Par Pharma. Inc. v. TWI Pharma., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014) (applying inherency in an obviousness context). In both cases, however, “[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). Instead, “the limitation at issue necessarily must be present, or the natural result of the combination of elements expressly disclosed by the prior art.” Par Pharma., 773 F.3d at 1195–96. Here, Petitioner has not shown sufficiently that, in Godefroy, the sacrificial anode necessarily is placed within 10 inches of the center axis of the hot liquid inlet. Dr. Medlin testifies that Figure 1 of Godefroy shows that “an entirety . . . or at least a significant portion of the sacrificial anode 14, is within 10 inches of a center axis of the inlet.” Ex. 1004 ¶ 144. But we cannot say that Figure 1 of Godefroy is clear on its face, or reasonably suggests, that this is necessarily the case. There are no dimensions shown on Figure 1, so it is unclear from the figure what the diameter of pipe 12 is. If that diameter is larger than 20 inches, then it simply is untrue that “sacrificial anode 14 is . . . necessarily placed within 10 inches of a center axis of a hot liquid inlet to the radiator,” as Dr. Medlin testifies. Id. ¶ 361. As noted above, neither Petitioner nor Dr. Medlin relies on the hot liquid inlet of Godefroy having any particular diameter, and Godefroy is silent as to the diameter of its inlet. Pet. 69–70; Ex. 1004 ¶¶ 144, 359–361, 381–382, 406–408; Ex. 1008, 1–15. Moreover, as Patent Owner notes, there is a wide range of sizes of radiators, including automobile radiators, available. Prelim. Resp. 3–5; Exs. 2001–2003. In the absence of any testimony or other evidence that tends to show that radiator inlet pipes necessarily have diameters less than 20 inches, Petitioner has not shown sufficiently that the diameter of Godefroy’s inlet pipe is small enough to ensure that any portion of the anode necessarily is within 10 inches of the center axis of the inlet.” slip op. at 11

  Claim constructioncites Phillips

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.