- Tokyo Electron Limited v. Daniel L. FlammInstitution deniedPTAB · Oct 4, 2017 · IPR2017-01072 · APJ Kimberly Mcgraw · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 13–26, 64, and 65 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in the Petition and Preliminary Response, we conclude that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of claims 13–26, 64, and 65. Accordingly, we do not institute an inter partes review on those claims.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Thus, the ordinary meaning of the claim language itself requires predetermining the temperature change (i.e., the change from the selected first substrate holder temperature to the selected second substrate holder temperature) within a specific interval of time (i.e., the time for changing from the selected first substrate holder temperature to the selected second substrate holder temperature), and based on that predetermination, selecting the thermal mass of the substrate holder. A construction that does not require selecting a thermal mass for a particular temperature change and a specified interval of time, as opposed to selecting a thermal mass that can facilitate or allow a temperature change, is not consistent with the plain and ordinary meaning of the claim. We recognize that the thermal mass of a substrate holder is not the only factor that controls the rate of temperature change of the substrate holder. See, e.g., Ex. 1001, 16:60–67 (stating that the “heat exchanger, fluid flow rate, coolant-side fluid temperature, heater power, chuck, etc. should be designed to bring the fluid to a setpoint temperature and bring the temperature of the chuck and wafer to predetermined temperatures within specified time intervals and within specified uniformity limits”). The plain language of the claim, however, still requires that the thermal mass of the substrate holder be selected for a predetermined temperature change within the specific interval of time.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for patent owner
“We do not construe these limitations as requiring the involvement of a heat transfer fluid. “Heat transfer fluid” is not recited in the claims. Although the claims are interpreted in light of the specification, it is improper to read limitations from the specification into the claims. See, e.g., In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see also Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“It is likewise not enough that the only embodiments, or all of the embodiments, contain a particular limitation. We do not read limitations from the specification into claims; we do not redefine words.”). As such, we are not persuaded that that the phrases “substrate holder,” “heat transfer device,” and “selected thermal mass,” as recited in claim 13, should be construed as requiring the involvement of “heat transfer fluid.”” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“3. Remaining Claim Terms For purposes of this Decision, based on the record before us, we determine that none of the remaining claim terms require an explicit construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham - Lam Research Corp. v. Daniel L. FlammInstitution deniedPTAB · Jun 30, 2016 · IPR2016-00468 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Lam did not show a reasonable likelihood that claims 13–26, 64, and 65 would have been obvious over any asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in Flamm’s Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Lam would prevail in challenging any of claims 13–26, 64, and 65 of the ’264 patent as unpatentable under 35 U.S.C. § 103(a). We, therefore, deny the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“temperature change within a short period of time, in conjunction with Moslehi’s RF chuck that has low thermal mass, to teach “the thermal mass of the substrate holder is selected for a predetermined temperature change within a specific interval of time during processing,” as claimed. Id. at 20– 22 (citing Ex. 1002, 6:18–62, 7:19–30; Ex. 1003, 4:45–48, 4:55–57, 10:7–9, 11:58–60; Ex. 1008 ¶¶ 73, 74). Lam also provides a rationale to combine the teachings of Kadomura’s embodiment 1 with those of Moslehi. Id. at 40–42. Flamm raises several arguments in response. First, Flamm contends that, in related Case IPR2015-01759, the Board was not persuaded by Lam’s approach of parsing phrases recited in independent claim 13 that are “interdependent” and addressing those phrases individually. PO Resp. 4 (citing Ex. 2001, 17). Flamm argues that, even though in this case Lam parses “the thermal mass of the substrate holder is selected for a predetermined temperature change within a specific interval of time during processing” into two elements instead of three elements, this should not change the Board’s initial admonishment—namely, “[t]he claim language requires that these phrases are interdependent, and cannot be parsed into separate elements met individually.” Id. at 4 (emphasis added). Second, Flamm contends that Kadomura’s predetermined temperature change and time interval are not interdependent, as is required by independent claim 13. Id. at 5. Instead, Flamm argues that, because Kadomura’s time interval is a function of the time required to exhaust the first gas prior to introducing and stabilizing the second gas, this time interval is divorced completely from the predetermined temperature change. Id. at 5–6. We agree with Flamm that Lam’s analysis improperly breaks the elements of independent claim 13 into small phrases, and then attempts to match disclosures from the prior art to those phrases taken out of context. In particular, we note that independent claim 13 recites that “the thermal mass of the substrate holder is selected for a predetermined temperature change within a specific interval of time during processing.” Ex. 1001, 21:1–3 (emphasis added). This claim language requires that these phrases are interdependent, and cannot be parsed into separate elements met individually. In other words, the thermal mass must be selected in order to undergo a predetermined temperature change within a specific interval of time, e.g., a change of 10°C per minute. Lam’s analysis is deficient, to the extent it separates selecting the thermal mass of the substrate holder from a predetermined temperature change within a specific interval of time and analyzes each separately.” slip op. at 16
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We also do not find Dr. Cecchi’s supporting testimony on this particular issue to be persuasive. Ex. 1008 ¶¶ 73, 74. Dr. Cecchi’s analysis essentially repeats the arguments advanced in the Petition, and also breaks up the elements of the independent claim 13 into separate phrases that are then analyzed out of context. For these reasons, we do not credit his testimony that the combined teachings of Kadomura (embodiment 1) and Moslehi account for “the thermal mass of the substrate holder is selected for a predetermined temperature change within a specific interval of time during processing,” as recited in independent claim 13.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art;3 and (4) when in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze this asserted ground based on obviousness with the principles identified above in mind. 2. Kadomura Overview Kadomura generally relates to a dry etching method used primarily for the production of semiconductor devices and, in particular, to a dry etching method and apparatus that provides compatibility for anisotropic fabrication and high selectivity. Ex. 1002, 1:6–10. According to Kadomura, one objective of the disclosed dry etching method is to apply an etching treatment that includes a plurality of steps to a specimen within the same 3 Relying upon the testimony of Dr. Cecchi, Lam offers an assessment as to the level of skill in the art. Pet. 13–14 (citing Ex. 1008 ¶¶ 27–30). Flamm does not challenge this assessment of the level of skill in the art or propose an alternative. For purposes of this Decision, and to the extent necessary, we accept the assessment offered by Lam and Dr. Cecchi.” slip op. at 13
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham - Midwest Industrial Supply, Inc. v. Soilworks, LLCInstitution deniedPTAB · May 9, 2016 · PGR2016-00004 · APJ Christopher M Kaiser · PGR · Institution
The Board denied institution for claims 1–26 because the petition did not show they were more likely than not unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 324(c); 37 C.F.R. § 42.4(a). The standard for instituting a post-grant review is set forth in 35 U.S.C. § 324(a), which provides that a post-grant review may not be instituted “unless the Director determines . . . it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” After considering the Petition and the Preliminary Response, we determine that Petitioner has not demonstrated that it is more likely than not that at least one of the claims it challenges is unpatentable. Accordingly, we do not institute post-grant review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“alkane with a methyl substituent,” that a “dimethyl-branched alkane” be construed as “an alkane with two methyl substituents,” and that “trimethyl-branched alkane” be construed as “an alkane with three methyl substituents.” Pet. 6. Patent Owner does not oppose these constructions, but, given that the precise construction of these terms does not appear to be important to the resolution of issues presented in the present Decision, we conclude that “methyl-branched alkane,” “dimethyl-branched alkane,” and “trimethyl-branched alkane” need not be construed expressly at this time. 3. “Binder” Petitioner suggests that the term “binder” should be construed. Pet. 5–6. Petitioner does not, however, offer a proposed construction for this term. Id. Given this, and given that the precise construction of “binder” does not appear to be important to the resolution of issues presented in the present Decision, we conclude that “binder” need not be construed expressly at this time.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“We agree with Patent Owner. Petitioner has not directed us to evidence of record sufficient to establish that any of Hawkins ’266, Hawkins ’270, EK35, and EnviroKleen discloses the limitations requiring the acyclic and cyclic compounds in the synthetic fluid to be at least 65 weight percent compounds with carbon chain lengths in the range of C24 to C36. Petitioner’s argument with respect to these limitations is that Hawkins ’266 and Hawkins ’270 disclose the use of DSF-65, that the ’592 patent describes the use of Risella X 420, and that, according to Dr. Fetzer, DSF-65, Risella X 420, EK35, and EnviroKleen all have similar compositions. Pet. 14, 28– 29; Ex. 1002 ¶¶ 33–34. But the ’592 patent does not mandate the use of Risella X 420 in its claimed invention; instead, this product is only one of several commercial products that can be included “[i]n certain embodiments” of the disclosed invention. Ex. 1003, 4:15–21. It does not necessarily follow that Risella X 420, or a similar composition, falls within the scope of any of the claims of the ’592 patent.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“§ 103(a) as obvious over the combination of Hawkins ’266, Hawkins ’270, EK35, and EnviroKleen. Pet. 42–69. Relying on the testimony of Dr. Fetzer, Petitioner explains how these references teach each of the limitations of these claims. Id. Neither Petitioner nor Dr. Fetzer explains why a person of ordinary skill in the art would have combined these references. Id.; Ex. 1002 ¶¶ 35–36. Moreover, Petitioner’s obviousness arguments are identical to Petitioner’s anticipation arguments. Pet. 10–38, 42–69. The only exception is that the Fetzer Declaration includes the following language with 10 Even if we were to assume that compositional similarity to Risella X 420 was indicative of whether a compound fell within the scope of the claims, as Petitioner argues, it is not clear on the present record that the evidence of record is more likely than not to support a finding that the DSF-65, EK35, and EnviroKleen products have compositions similar to that of Risella X 420. Although Petitioner argues that they do, e.g., Pet. 14, and Dr. Fetzer testifies that they do, Ex. 1002 ¶ 33, neither Petitioner nor Dr. Fetzer explains how to interpret the data presented at pages 32–202 of Dr. Fetzer’s Declaration in order to reach this conclusion. respect to obviousness: “even if the claims are found not to be anticipated, all the claims would be obvious in view of [Hawkins ’266, Hawkins ’270, EK35, and EnviroKleen].” Ex. 1002 ¶ 36. This conclusory statement is not sufficient to satisfy Petitioner’s burden under 37 C.F.R. § 42.204(b). As discussed above, at most, Petitioner has demonstrated that the DSF-65 product disclosed in Hawkins ’266 and Hawkins ’270 and the EK35 and EnviroKleen products all have compositions similar to the Risella X 420 described in the Specification of the ’592 patent, without demonstrating that those products have the compositions of the fluids claimed in the ’592 patent. Based on the evidence before us, we cannot conclude that it is more likely than not that Petitioner will be able to demonstrate that Hawkins ’266, Hawkins ’270, EK35, and EnviroKleen render obvious claims 1–26.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 8,968,592 - Qualcomm, Inc. / Qualcomm Atheros, Inc. v. Parkervision, Inc.Institution deniedPTAB · Mar 8, 2016 · IPR2015-01822 · APJ Jason J Chung · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that the information presented in the Petition does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we deny institution of inter partes review of all the challenged claims.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“entitled to claim benefit to the priority date of the ’940 patent—namely, October 21, 1998. See Pet. 11. Specifically, Petitioner contends the challenged claims cannot be entitled to a filing date earlier than April 13, 2000—the filing date of the application that led to the ’372 patent—because, according to the Declaration of Dr. Lawrence E. Larson, none of the earlier filed applications disclose “inversion means” or “‘inverting’ the ‘information signal’” as recited in the challenged claims. Id. (citing Ex. 1023 ¶ 103). Dr. Larson’s testimony merely repeats Petitioner’s assertion and provides no additional explanation or evidence with respect to this issue. Ex. 1023 ¶ 103. Other than “inversion means” or “‘inverting’ the ‘information signal,’” Petitioner does not advance arguments pertaining to other limitations regarding priority. Pet. 11 (citing Ex. 1023 ¶ 103).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner’s combination of Dobrovolny and Krauss results in Petitioner improperly reading one component of Dobrovolny on two different claimed structures. Petitioner does not explain adequately why it would have been obvious to one of ordinary skill in the art to use Dobrovolny in the Q path of Krauss’s IQ modulator.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightTeaching away not foundDecided for patent owner
“Absent a cogent explanation, it appears that Petitioner has engaged in impermissible hindsight reconstruction. See Grain Processing Corp. v. Am.- Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.”’). We, therefore, are not persuaded that Petitioner adequately explains why the limitations at issue in independent claim 99 would have been obvious over the combined teachings of Dobrovolny and Krauss.” slip op. at 17
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 7,039,372 - Qualcomm Inc. / Qualcomm Atheros, Inc. v. Parkervision Inc.Institution deniedPTAB · Mar 8, 2016 · IPR2015-01819 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Qualcomm did not show a reasonable likelihood that claims 88–92 and 107–110 were unpatentable under § 103(a).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in ParkerVision’s Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Qualcomm will prevail in challenging claims 88– 92 and 107–110 of the ’372 patent as unpatentable under 35 U.S.C. § 103(a). We, therefore, deny the Petition.” slip op. at 2
- BurdenDenied
“An invention “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Instead, a determination of unpatentability on a ground of obviousness must include “‘articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The obviousness evaluation “should be made explicit,” and it “can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. We analyze the asserted grounds with the principles identified above in mind.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“On the present record, we are not persuaded that Qualcomm has articulated a sufficient rationale to combine the teachings of Dobrovolny and Maas. We understand Qualcomm to argue that modifying Dobrovolny’s RF mixer to transmit a harmonic frequency instead of the fundamental frequency is nothing more than a design choice. See Pet. 41–42. This argument, by itself, does not explain why modifying Dobrovolny in the manner proposed by Qualcomm would have been obvious. See Cutsforth, Inc. v. MotivePower, Inc., No. 2015-1316, 2016 WL 279984, at *3 (Fed. Cir. Jan. 22, 2016) (non-precedential) (“Merely stating that a particular placement of an element is a design choice does not make it obvious. [There must be] a reason for why a person of ordinary skill in the art would have made the specific design choice.”). Qualcomm does not offer a sufficient or credible explanation as to why one of ordinary skill in the art would have made the specific design choice of transmitting a harmonic frequency instead of the fundamental frequency to Dobrovolny’s RF mixer in order to account for a desired harmonic, as required by independent claim 88. Absent such an explanation, we are not persuaded that Qualcomm adequately explains why independent claim 88 would have been obvious over the combined teachings of Dobrovolny and Maas. We also are not persuaded by the cited testimony of Dr. Larson that purportedly supports Qualcomm’s rationale to combine the teachings of Dobrovolny and Maas because it essentially repeats the arguments advanced by Qualcomm in its Petition. Compare Pet. 41–42, with Ex. 1025 ¶ 174. For instance, Dr. Larson testifies that: [t]o the extent it is unclear whether Dobrovolny discloses that a desired harmonic is included in the multiplicity of harmonics in waveform C, Maas discloses that the choice to transmit at a harmonic frequency instead of the fundamental frequency was a known design alternative that would have been obvious to one of ordinary skill in the art, as I discussed in Section V above. Ex. 1025 ¶ 174. Similar to our analysis above, Dr. Larson does not offer a sufficient or credible explanation as to why one of ordinary skill in the art would have made the specific design choice of transmitting a harmonic frequency instead of a fundamental frequency to Dobrovolny’s RF mixer in order to account for a desired harmonic, as required by independent claim 88. Moreover, we note that “Section V” of Dr. Larson’s Declaration, referred to in the block quote above, spans forty-six (46) pages or sixty-nine (69) paragraphs. See Ex. 1025 ¶¶ 31–100. In essence, Dr. Larson asks that we search the sixty-nine paragraphs of testimony in Section V to unearth support for his conclusory statement in the passage quoted above. This we will not do. If a party or witness wishes for us to consider one portion of a document as supporting statements made in another portion, it must provide citations to those portions with particularity.” slip op. at 15
- Obviousness (§103) › Analogous artAnalogous artDecided for patent owner
“On the present record, we are not persuaded that Qualcomm has articulated a sufficient rationale to combine the teachings of Dobrovolny, Maas, and Thodesen. With respect to Qualcomm’s assertion that the teachings of Dobrovolny and Thodesen are capable of being combined because both of these references teach the same structure and recognize the same problem, this assertion, at best, indicates that Dobrovolny and Thodesen are analogous art to each other. Merely asserting that these prior art references are analogous art to each other, however, does not suffice as an articulated reason with a rational underpinning to combine their respective teachings—more is required to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418. We also are not persuaded by the cited testimony of Dr. Larson that purportedly supports Qualcomm’s rationale to combine the teachings of Dobrovolny and Thodesen because it essentially repeats the arguments advanced by Qualcomm in its Petition. Compare Pet. 42, with Ex. 1025 ¶ 173. For instance, Dr. Larson testifies that: [f]or example, it would have been obvious to a person of ordinary skill in the art to combine Dobrovolny with Thodesen’s summer because both references teach the same architecture of a switch where one input of each switch is coupled to AC ground and [both references] recognize the need to sum the signals generated by the switch . . . . Thus, a person of ordinary skill in the art using Dobrovolny’s circuitry would have been motivated to combine it with any similar device that would sum the voltages of the inputted signals, including the summer disclosed in Thodesen. Ex. 1025 ¶ 173. Similar to our explanation above, simply demonstrating that Dobrovolny and Thodesen are analogous art to each other does not suffice as an articulated reason with a rational underpinning to combine their respective teachings—more is required to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418.” slip op. at 22
§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 7,039,372 - Qualcomm, Inc. / Qualcomm Atheros, Inc. v. Parkervision, Inc.Institution deniedPTAB · Mar 8, 2016 · IPR2015-01825 · APJ Jason J Chung · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that the information presented in the Petition does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we deny institution of inter partes review of all the challenged claims.” slip op. at 2
- Skill levelOther
“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. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An invention “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Instead, a determination of unpatentability on a ground of obviousness must include “‘articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The obviousness evaluation “should be made explicit,” and it “can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. We analyze the asserted grounds with the principles identified above in mind.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 84 U.S.LW. 3218 (U.S. Jan. 15, 2016) (No. 15-446). Under the broadest reasonable interpretation standard, and absent any special definitions, claim terms or phrases are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). In its Petition, Petitioner proposes constructions for the following claim phrases or terms: (1) “inversion means for inverting the [] information signal and outputting a [] inverted information signal” (claims 99 and 100); (2) “gating [a signal]” (claims 99, 100, 126, and 127); (3) “first [second/third/fourth] gating means for gating” (claims 99 and 100); (4) “harmonically rich signal” (claims 99, 100, 126, and 127); (5) “harmonic” (claims 99 and 100); and (6) “summing means” (claims 99 and 100). Pet. 12–18. In response, Patent Owner proposes a construction for each of the claim phrases or terms identified by Petitioner. Prelim. Resp. 11–20. We, however, need not assess the parties’ proposed constructions because they are not necessary to resolve the dispositive issues discussed below. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those claim terms or phrases that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“entitled to claim benefit to the priority date of the ’940 patent—namely, October 21, 1998. See Pet. 11. Specifically, Petitioner contends the challenged claims cannot be entitled to a filing date earlier than April 13, 2000—the filing date of the application that led to the ’372 patent—because, according to the Declaration of Dr. Lawrence E. Larson, none of the earlier filed applications disclose “inversion means” or “‘inverting’ the ‘information signal’” as recited in the challenged claims. Id. (citing Ex. 1025 ¶ 103). Dr. Larson’s testimony merely repeats Petitioner’s assertion and provides no additional explanation or evidence with respect to this issue. Ex. 1025 ¶ 103. Other than “inversion means” or “‘inverting’ the ‘information signal,’” Petitioner does not advance arguments pertaining to other limitations regarding priority. Pet. 11 (citing Ex. 1025 ¶ 103). In response, Patent Owner argues that the specification of the ’940 patent, which is a parent patent to the ’372 patent, describes inverters 3910 and 4010. Prelim. Resp. 3–4 (citing Ex. 1016, 45:25–46:25, Figs. 39 and 40). For convenience, Figures 39A and 40A of the ’940 patent are reproduced below. Figures 39A and 40A of the ’940 patent illustrate inverters 3910 and 4010 inverting, respectively, waveforms 3902 and 4002. On this record before us, we are not persuaded Petitioner has demonstrated facts sufficient to establish a reasonable likelihood that it will prove that the challenged claims of the ’372 patent lack sufficient written description support. Specifically, Petitioner does not explain why the disclosure of inverters 3910 and 4010 would not convey to the person of ordinary skill in the art that the inventors were in possession of “inversion means” at the time the application that led to the ’940 patent was filed. Based on the current record, the challenged claims, therefore, are entitled to claim the benefit of the priority date of the ’940 patent—namely, October 21, 1998.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 7,039,372
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.