- Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Oct 7, 2025 · IPR2024-01462 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Solus’s rehearing request, leaving institution denied for claims 1–8 because the petition did not adequately show motivation to combine Hanafusa and Dobashi.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“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 Dobashi’s RSm values. Dobashi teaches that because RSm “can be adopted 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 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 4
§ 103 obviousnessPatents in suitUS 11,346,014 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Oct 7, 2025 · IPR2024-01461 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show that claims 1–10 were likely obvious over the asserted combinations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re 1 US 2013/0108922 A1, published May 2, 2013 (Ex. 1004, “Shinozaki”). 2 G. Khatibi, Temperature Dependent Elastic and Thermal Properties of Thin Copper Foils, Copper; Proceedings of the International Conference Copper ’06 (2006) (Ex. 1006, “Khatibi”). 3 Korean Patent Pub. No. 10-2012-0003485, published Jan. 10, 2012 (Ex. 1013; Ex. 1014 (English translation), “Toshio”). 4 US 2013/0108887 A1, published May 2, 2013 (Ex. 1012, “Kim”). 5 Griesi, M.B., Characterization of Electrodeposited Copper Foil Surface Roughness for Accurate Conductor Power Loss Modeling (2014) (Master’s Thesis, University of South Carolina) (Ex. 1015, “Griesi”). rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable
“For example, Dr. Randall does not provide adequate explanation or objective evidence to support his opinion that Khatibi’s use of a laser speckle based dilatometer instead of the claimed thermomechanical analyzer “is unlikely to significantly impact the CTE[6] value” because “variations in equipment and a heating speed of 5° C/min would not significantly alter the results.” Ex. 1003 ¶ 58. In particular, Dr. Randall neither explains what constitutes a “significant” impact on CTE, nor provides objective evidence to support his contention that equipment variations and heating differences would not “significantly alter” the resulting measurements. And although Dr. Randall opines that “the heating rate (5°C per minute) is typical for certain devices” such as a thermomechanical analyzer or dilatometer, and “[t]ypically, these devices use temperature ramp rates between 2°C and 20°C per minutes, so the ‘5° C./min’ recited in [1d] is common and should not drastically affect the measurement results,” Dr. Randall fails to point us to any evidence showing that these temperatures are “typical” or that the claimed heating rate is “common.” Id. ¶ 59 (emphases added).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner, however, does not adequately explain why a POSITA would have been motivated to modify Kim’s copper foil surface to have a Pc value of 19.2 as reported in Griesi. In particular, neither Petitioner nor Dr. Randall points us to, nor do we discern, any teaching in Griesi that a peak count of 19.2 provides any particular benefits or properties that would have lead a POSITA to modify Kim’s copper foil surface as Petitioner proposes. Instead, Petitioner’s arguments that a POSITA would have been motivated to modify Kim’s copper foil surface with Griesi’s peak count patent itself. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (stating that the fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”). It was Petitioner’s burden to establish that the combined teachings Kim and Griesi disclose limitation [1g] as proposed. We are not persuaded that we misapprehended Petitioner’s argument when we determined that Petitioner did not meet that burden.” slip op. at 8
- BurdenDecided for patent owner
“It was Petitioner’s burden to establish the Khatibi, alone or in combination with Shinozaki, Toshio, and Kim, discloses limitation [1d]. We concluded that Petitioner failed to meet that burden for the reasons explained in our Decision. We are not persuaded that we overlooked or misapprehended Khatibi’s disclosures, or Petitioner’s evidence and explanation thereof, in doing so.7” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 10,811,689 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Sep 15, 2025 · IPR2025-00005 · APJ John G New · IPR · Rehearing
Denied Solus’s rehearing request; the Board maintained its denial of institution because the petition did not show a reasonable likelihood of prevailing on the challenged claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“[O]f the 44 specimens tested by Ye, as revealed in Ye’s Table II, only a single specimen, specimen 15, meets the required TC ratios recited in challenged claim 1 of the ’541 patent. Furthermore, none of the references cited by Petitioner teach, or even remotely suggest, the four requisite TC ratios recited by challenged claim 1. We find Petitioner’s argument that a person of ordinary skill in the art would have been motivated to exclusively select Ye’s sample 15, out of the remaining 43, to which to apply the teachings of Hara and Otsuka concerning the requisite tensile strength and weight deviation ranges in the hope of arriving at the claimed invention, is implausible. Indeed, only the ’541 patent, among all of the evidence of record, that actually mentions the required texture coefficient ratios recited in challenged claim 1. Petitioner provides no convincing argument as to why a skilled artisan would have selected sample 15 for combination with Hara and Otsuka.” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“At the heart of this flaw is Petitioner’s argument, and Dr. Josefowicz’s opinion, that it would have been conventional in the art at the time of filing to vary the electrolyte concentration, electrolysis plating parameters, temperature, and the use of organic and inorganic additives, in order to obtain a copper foil with tensile strength and elongation values falling within the claimed ranges as these ranges were well known, at least since 1974. Ex. 1003 ¶ 63. This statement is largely unsupported by evidence of record, with the sole exception of Table 2 of Lowenheim, which, as Patent Owner points out, provides tensile strengths well outside the claimed range. Petitioner provides insufficient guidance as to how a person of ordinary skill in the art would have known which parameters to vary, or how to vary them, to provide the foil of Hirose with a tensile strength or weight deviation within the claimed range. Dr. Josefowicz’s statement that this would result from routine optimization, and was “conventional” may or may not be true, but it is insufficiently supported by evidence of record to be persuasive.” slip op. at 6
§ 103 obviousnessPatents in suitUS 9,457,541 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Sep 15, 2025 · IPR2025-00005 · APJ John G New · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show a reasonable likelihood of prevailing on claims 1-4.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“In summary, we again conclude that Petitioner has failed to provide sufficient evidence to demonstrate that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the cited prior art references, in combination with Dr. Josefowicz’s relatively unsupported testimony concerning a skilled artisan’s ability to optimize various constituents and conditions, to arrive at the claimed invention. Petitioner has not pointed to any argument or unconsidered evidence of record that is sufficient to show that, in reaching its conclusion, the Board abused its discretion by basing its Decision on an erroneous interpretation of law, a factual finding not supported by substantial evidence, or an unreasonable judgment in weighing relevant factors. Arnold, 362 F.3d at 1340.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“teaches the tensile strengths of various types of copper-electroplated steel electrical cable wire of different properties, including high strength, hardness, low electrical resistivity, near zero strength, good leveling, and thermal stability, some of which fall within the claimed range of tensile strength of 30 to 40 kgf/mm2. Lowenheim, 196, Table II. However, none of these categories correspond to those copper foil properties recited in the claims, and Dr. Josefowicz’s testimony provides little guidance as to how a person of ordinary skill in the art would have known how to optimize the recited properties, and particularly so in combination with the teachings of Hirose and the other cited prior art references. Furthermore, as we noted in our Decision:” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“At the heart of this flaw is Petitioner’s argument, and Dr. Josefowicz’s opinion, that it would have been conventional in the art at the time of filing to vary the electrolyte concentration, electrolysis plating parameters, temperature, and the use of organic and inorganic additives, in order to obtain a copper foil with tensile strength and elongation values falling within the claimed ranges as these ranges were well known, at least since 1974. Ex. 1003 ¶ 63. This statement is largely unsupported by evidence of record, with the sole exception of Table 2 of Lowenheim, which, as Patent Owner points out, provides tensile strengths well outside the claimed range. Petitioner provides insufficient guidance as to how a person of ordinary skill in the art would have known which parameters to vary, or how to vary them, to provide the foil of Hirose with a tensile strength or weight deviation within the claimed range. Dr. Josefowicz’s statement that this would result from routine optimization, and was “conventional” may or may not be true, but it is insufficiently supported by evidence of record to be persuasive. Id. (emphasis added) (footnote omitted).” slip op. at 6
§ 103 obviousnessPatents in suitUS 9,457,541 - Micron Technology, Inc. v. Yangtze Memory Technologies Co., Ltd.Institution deniedPTAB · Aug 8, 2025 · IPR2025-00244 · APJ Kimberly Mcgraw · IPR · Institution
The Board denied institution because the petition did not sufficiently show that Costa disclosed or suggested claim 11.H’s required arrangement, and the dependent claims did not cure that deficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In view of these deficiencies, the Petition fails to identify the proposed grounds for review with particularity as required by 35 U.S.C. § 312(a)(3) with respect to the limitations of independent claim [11.H]. Petitioner presents no arguments or evidence with respect to the dependent claims challenged under this ground that would remedy the defects noted above with respect to independent claim 11. See generally Pet. Thus, Petitioner has failed to demonstrate a reasonable likelihood that the subject matter of claims 11, 12, or 14–19 would have been obvious over Costa.” slip op. at 23
- BurdenDenied
“3. Analysis A petition is required to identify “with particularity[ ] the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge.” 35 U.S.C. § 312(a)(3). The “petition . . . must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). 37 C.F.R. § 42.22(a)(2). Our rules require that a petition include fully developed arguments. See 37 C.F.R. § 42.22(a)(2) (the “petition . . . must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). The petition must include both an adequate explanation of how the claims should be construed as well as how the construed claims are unpatentable over the asserted prior art. 37 C.F.R. § 42.104(b)(3), (b)(4). Additionally, the “petition must specify where each element of the claim is found in the prior art.” 37 C.F.R. § 42.104(b)(4). A petition should also “explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.” ActiveVideo Networks, Inc. v. Verizon Comm'ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012). Thus, based on our rules, we only consider fully developed arguments set forth in the petition.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANot reached
“arguments. See, e.g., id. at 34–35 (arguing that “on” does not require overlap in the Z direction but “includes both objects that are merely touching (in any dimension) and objects that are in proximity to each other but not touching” (citing Ex. 1078, 1; Ex. 1001, 8:3–12)); see also id. at 36–38 (arguing that if “on” is construed to mean “directly on or on with an intermediate feature or layer therebetween,” then Costa’s second stacked layer 232, 242 and third channel structure (173) are “directly on” each other, because their edges are directly touching each other). The Petition, however, does not clearly present any of the claim construction arguments set forth in the Opposition Brief. See Paper 22 (not clearly identifying where the Petition provides the proposed claim construction); see generally Pet.; see also Pet. 33, 43, 56 (arguing “on” does not require “directly on” and permits intermediate layers but not presenting any of the other claim construction arguments set forth in the Opposition Brief). Nor did the Petition provide any particularized argument as to how Costa discloses or suggests a second stacked layer disposed on the third channel structure applying any of the claim constructions proposed in the Opposition Brief. See generally Pet. (presenting no argument that Costa’s second stacked layer 232, 242 is “on” semiconduction portion layer 173 (the asserted third channel structure) because they touch each other as shown above in Petitioner’s annotation of Costa Figure 21A). We will not consider any arguments not sufficiently set forth in the Petition. See 37 C.F.R. § 42.104(b)(3) (“the petition must set forth . . . [h]ow the challenged claim is to be construed”); 37 C.F.R. § 42.104(b)(4) (“the petition must set forth . . . [h]ow the construed claim is unpatentable”).” slip op. at 19
- Parallel petitionsNot reached
“Because we determine that Petitioner did not show a reasonable likelihood that it would prevail on the merits, we do not address Patent Owner’s parallel petitions argument.” slip op. at 23
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,886,291 - Micron Technology, Inc. v. Yangtze Memory Technologies Co., Ltd.Institution deniedPTAB · Aug 8, 2025 · IPR2025-00245 · APJ Michael T Cygan · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that claims 11, 13, and 15–17 would have been obvious over Costa or Costa and Oh.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“§ 42.4(a), we may only institute an inter partes review 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); see also 37 C.F.R. § 42.108(c). Based upon our review of the present record, Petitioner has not sufficiently shown a reasonable likelihood it will prevail with respect to at least one of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that none of the claims require express construction and the claims should receive their plain and ordinary meaning. Pet. 23. Patent Owner argues that no claim construction is necessary for the institution determination, and that the Petition “still fails if the claim term ‘on’ receives its plain and ordinary meaning -- e.g., physically in contact with or directly on top of with intervening objects therebetween.” Prelim. Resp. 20 (citing Ex. 2006 ¶ 66). Although Patent Owner argues that Petitioner has construed “on” as including indirectly on; i.e., where there is no physical contact, the Petition addressed now-disclaimed claim 18, and the Petition does not advance any construction for the remaining claims. See id. at 16–17 (citing Pet. 92; Ex. 1003 ¶ 258). Consequently, we determine that no construction is required to resolve the issues for institution.” slip op. at 7
- Skill levelSkill level petitioner adoptedOther
“we consider the level of ordinary skill at the time of filing. 35 U.S.C. § 103; see also Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (discussing pre- AIA obviousness). Petitioner contends that a person of ordinary skill in the art (“POSITA”) would have had “a bachelor’s degree in electrical engineering or a similar discipline, along with 2–3 years of professional experience working with (e.g., researching, designing, or teaching) monolithic 3D structures and NAND memory devices, or an equivalent level of skill, knowledge, and experience (e.g., an advanced degree may replace 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. The earliest claimed priority date for the ’241 patent is after the effective date of the applicable AIA amendment. See Ex. 1001, (63). Thus, we refer to the AIA version of 35 U.S.C. § 103. 2 Costa, US 2018/001282771 (filed Feb. 28, 2017, published June 28, 2018) (Ex. 1005, “Costa”). 3 Oh, US 2017/0154892 A1 (filed June 10, 2016, published June 1, 2017) (Ex. 1006, “Oh”). some of the professional experience). Pet. 23–24. Petitioner also asserts that a POSITA “would have been aware of and generally knowledgeable about 3D NAND’s structure, how it is manufactured, and its component parts.” Id. (citing Ex. 1003 ¶¶ 36–40). Patent Owner does not take a position on the level of ordinary skill in the art. Prelim. Resp. 11; see also Ex. 2006 ¶ 34 (applying Petitioner’s definition of a POSITA to the opinions set forth in the declaration but reserving the right to opine to an alternative level of a POSITA). At this stage of the proceeding, we adopt Petitioner’s definition of a POSITA as it appears consistent with the level of ordinary skill in the art that is reflected by the prior art of record.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that the Petition fails to sufficiently show that Costa teaches a “second stacked layer disposed on the third channel structure” as required by apparatus claim element [11.E]. The Petition asserts that Costa’s second alternating stack 232, 242 is formed “on the top surface of joint-level material layers.” Pet. 64. However, Costa refers to the term “joint-level material layers” as representing layers 175–177, not the asserted third channel structure 173. Ex. 1005 ¶¶ 166, 178, 184–85; see Ex. 2006 ¶ 77. Thus, under Petitioner’s characterization, which is consistent with Costa, Costa’s second alternating stack is not formed on the third channel structure, but instead, “on the top surface of the joint level material layers” that surround the third channel structure. Because Petitioner has not explained how a second alternating stack on the surface of the joint material layers teaches a second alternating stack disposed on the third channel structure, Petitioner has not met its obviousness burden for limitation [11.E].” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,482,532 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Institution deniedPTAB · May 19, 2025 · IPR2025-00005 · APJ John G New · IPR · Institution
The Board denied institution on all grounds, finding no reasonable likelihood that claims 1–4 were obvious because Petitioner did not show a reasonable expectation of success in combining the cited references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Analysis The burden of proving the unpatentability of the challenged claims rests with (and is borne at all times by) Petitioner. 35 U.S.C. §§ 314(a), 316(e); see also In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016). To satisfy this burden, Petitioner must “articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness”; “mere conclusory statements” will not suffice. Magnum Tools, 829 F.3d at 1380. Indeed, “[i]t is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)). Furthermore, “[a]n obviousness determination requires finding that a person of ordinary skill in the art would have been motivated to combine or modify the teachings in the prior art and would have had a reasonable expectation of success in doing so.” See Regents of the Univ. of Cal. v. Broad Inst., Inc., 903 F.3d 1286, 1291 (Fed. Cir. 2018). We have consistently denied institution of inter partes review in cases in which the petitioner fails to meet its burden of demonstrating a reasonable likelihood of success at trial with respect to the latter requirement. See NJOY, LLC v. JUUL Labs., Inc., IPR2024-00536, Paper 17 (PTAB Aug. 12, 2024) (denying institution where petitioner did not show a reasonable expectation of success in combining the asserted references); see also Honeywell Int’l Inc. v. DSM IP Assets, B.V., IPR2024-00493, Paper 7 (PTAB Aug. 21, 2024). We conclude that, in this instance, Petitioner fails to meet its burden of showing that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the references.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“As an initial matter, we note that, of the 44 specimens tested by Ye, as revealed in Ye’s Table II, only a single specimen, specimen 15, meets the required TC ratios recited in challenged claim 1 of the ’541 patent. Furthermore, none of the references cited by Petitioner teach, or even remotely suggest, the four requisite TC ratios recited by challenged claim 1. We find Petitioner’s argument that a person of ordinary skill in the art would have been motivated to exclusively select Ye’s sample 15, out of the remaining 43, to which to apply the teachings of Hara and Otsuka concerning the requisite tensile strength and weight deviation ranges in the hope of arriving at the claimed invention, is implausible. Indeed, only the ’541 patent, among all of the evidence of record, that actually mentions the required texture coefficient ratios recited in challenged claim 1. Petitioner provides no convincing argument as to why a skilled artisan would have selected sample 15 for combination with Hara and Otsuka. Rather, Petitioner’s argument appears to be based upon impermissible hindsight reconstruction. However: Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395 (C.C.P.A. 1971). Accordingly, Petitioner’s failure to suggest a reason as to why a person of ordinary skill in the art would have been motivated to select that single specimen, without knowledge of the specific TC ratios disclosed by the ’541 patent argues against Petitioner’s contention that the claims are obvious.” slip op. at 47
- PTAB / AIA Trials › Discretionary denialNot reached
“Discretionary Denial of Institution under 35 U.S.C. §§ 314(a) and 325(d) Because we deny institution of inter partes review on the merits, we do not reach the parties’ arguments in this respect.” slip op. at 58
§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,457,541 - Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.Institution deniedPTAB · May 8, 2025 · IPR2025-00035 · APJ Michael T Cygan · IPR · Institution
The Board denied institution because Micron did not show a reasonable likelihood that claims 1–5, 8–13, or 15 were obvious over either asserted reference combination.
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) (2023). 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 . . . 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 given below, on this record, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of challenged claims 1–5, 8–13, and 15 of the ’604 patent. Accordingly, we do not institute an inter partes review of the ’604 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree that Petitioner has not shown that a person having ordinary skill in the art at the critical time would have been motivated to replace the wordlines in the staircase region with dielectric material if the result is that one of the memory cell arrays becomes unavailable. Petitioner relies upon two usable arrays for its combination, emphasizing Thimmegowda as desirably enabling “a single conductive contact (e.g., 334a) to bidirectionally drive memory cells in the memory arrays on either side of the bridge”; i.e., both the left and right memory cell blocks. Pet. 26 (citing Ex. 1003 ¶¶ 81– 83; Ex. 1005, 9:49–51; 7:61–64), 41 (stating that in the combination, “there Similarly, Thimmegowda emphasizes that the purpose of its bridge is to connect first and second blocks, which desirably replaces prior connection methods that consumed silicon real estate and interfered with the goal of shrinking the sizes or increasing the densities of memory arrays. Ex. 1005, 1:11–25, 3:20–28; Ex. 1003 ¶¶ 79–80 (“allowing a single staircase to access both memory arrays”), 83 (“a stairstep electrically couples to a respective gate layer (wordline) in both of the blocks on the right and left”). Dr. Banerjee also underscores the importance of using both arrays, stating that the combination relies on “Thimmegowda’s bridge and array architecture (to drive two memory arrays with one wordline via)” as part of the reasonable expectation of success in such a combination Ex. 1003 ¶¶ 102, 113. Petitioner and Dr. Banerjee rely upon the motivation of reducing punch-through, because punch-through causes “yield loss”; i.e., loss of the usability of the wordlines connected by the punch-through. Ex. 1003 ¶ 103; Pet. 35. However, such advantage is premised on retaining both arrays, and neither Petitioner nor Dr. Banerjee explains how the advantages of reducing punch-through should be weighed against a disadvantage of losing access to one of the two arrays. Nor do Petitioner and Dr. Banerjee discuss how the advantages of metal gate replacement should be weighed against losing access to one of the two arrays.4 Patent Owner’s declarant, Dr. Giapis, attests to the undesirability of such a combination, in which one array 4 Additionally, the claims of the ’604 patent do not require a metal conductor portion; Petitioner does not explain why gate replacement to a metal conductor from a polysilicon conductor, described as used in Lee’s “memory device at large,” (Pet. 40) is a benefit associated with Lee’s finger teaching relevant to the claims. Ex. 2007 ¶¶ 50–54. We agree with Patent Owner that the advantage of preventing individual wordlines from becoming unusable because of punchthrough would be outweighed by the loss of half of the wordlines if one of the memory arrays were to become unavailable because its connections were removed.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“III. DISCRETION UNDER 35 U.S.C. § 314(a) Patent Owner argues that the Board should exercise its discretion to deny institution under 35 U.S.C. § 314(a) based on the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (Mar. 20, 2020) additional briefing. Papers 12, 14. Because we determine that Petitioner has not shown a reasonable likelihood of success on the merits of its obviousness contentions, we need not resolve whether Fintiv would require discretionary denial of the Petition.6” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“at the critical time “would have had a bachelor of science degree in electrical engineering or a similar discipline, along with 2-3 years of professional experience working with (e.g., researching, designing, or teaching) 2 We apply AIA 35 U.S.C. § 103 to the ’604 patent because it was filed after, and never claimed the benefit of an effective filing date before, March 16, 2013. Ex. 1001, codes (22), (63); Pet. 6. 3 Neither party presents evidence or arguments regarding objective evidence of non-obviousness. Pet. 89; Prelim. Resp. level of skill, knowledge, and experience (e.g., an advanced degree may replace some of the professional experience).” Pet. 34 (citing Ex. 1003 ¶¶ 40–43). Petitioner further asserts that a POSITA “would have been aware of and generally knowledgeable about 3D NAND’s structure, its component parts, how it operates, and how it is controlled.” Id. Patent Owner does not provide any such assessment in its Preliminary Response. Prelim. Resp. 10. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’604 patent and the prior art of record.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,450,604 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Institution deniedPTAB · 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 · KSRPatents in suitUS 11,346,014 - PTAB · Apr 25, 2025 · IPR2024-00793 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Micron’s rehearing requests, finding no misapprehension or overlooked matter in its denial of institution based on the failure to show the challenged claims obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner’s own formulations of the grounds based on either Seo or Nam in combination with Choi posit the alternative theories that either Seo or Nam alone disclose Limitation [1.D], or the combination of either Seo or Nam with Choi teaches this limitation. Although Petitioner did not invoke inherency by name for the theories based on Seo or Nam alone, this is, in effect, the nature of Petitioner’s assertions, namely, voltage differentials in Seo and Nam would inherently remove fast charges. For example, with respect to Seo, Petitioner argues that “Seo teaches having a higher voltage on unselected WLs (e.g., adjacent WLs to the selected WL) during the first time period,” and “the ’342 patent recognizes [that] this voltage differential removes fast charges.” Pet. 35–36 (citing Ex. 1001, 12:24–34; Ex. 1003 ¶¶ 129–131) (emphasis omitted); see also id. at 82–83 (relying on the ’342 patent to support the contention that Nam teaches Limitation [1.D] because Nam “teaches having a higher voltage on unselected WLs (including WLs adjacent to the selected WL) relative to the selected WL during the first time period” (citing Ex. 1001, 12:24–34) (emphasis omitted)). Petitioner does not argue that Seo and Nam expressly disclose removing fast charges or sufficiently explain how a POSITA would have understood that the procedures used in Seo and Nam would have removed fast charges; instead, Petitioner effectively argues that removing fast charges is the inherent result of applying the voltage differential. See, e.g., Pet. 36 (stating Seo would have been understood to disclose “performing its read operation on chargetrap memories, which removes fast charges”).” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner’s reliance on Choi does not cure the deficiencies set forth above. Petitioner asserts that “Choi explains the primary mechanism and unwanted impact of fast-charge loss on verification,” which provides the motivation “to use Seo’s and Nam’s methods to achieve fast charge removal to improve verification.” Req. 7 n.1. But again, Petitioner does not sufficiently explain how a POSITA, looking at Choi, would have understood that either Seo’s or Nam’s techniques result in fast charge removal. In other words, even if Choi teaches the impact of fast-charge loss on verification, Petitioner fails to sufficiently show that a POSITA would have understood that either Seo or Nam teach or suggest fast charge removal. It was Petitioner’s burden to establish that Seo and Nam, alone or in combination with Choi, disclose Limitation [1.D]. We are not persuaded that we misapprehended the nature of Petitioner’s argument when we determined that Petitioner did not meet that burden.” slip op. at 7
- BurdenDecided for patent owner
“It was Petitioner’s burden to establish that Seo and Nam, alone or in combination with Choi, disclose Limitation [1.D]. We are not persuaded that we misapprehended the nature of Petitioner’s argument when we determined that Petitioner did not meet that burden.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner’s reliance on Choi does not cure the deficiencies set forth above. Petitioner asserts that “Choi explains the primary mechanism and unwanted impact of fast-charge loss on verification,” which provides the motivation “to use Seo’s and Nam’s methods to achieve fast charge removal to improve verification.” Req. 7 n.1. But again, Petitioner does not sufficiently explain how a POSITA, looking at Choi, would have understood that either Seo’s or Nam’s techniques result in fast charge removal. In other words, even if Choi teaches the impact of fast-charge loss on verification, Petitioner fails to sufficiently show that a POSITA would have understood that either Seo or Nam teach or suggest fast charge removal.” slip op. at 7
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,600,342
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.