• Netflix, Inc. v. Gotv Streaming, LLCSome claims unpatentable
  PTAB · Nov 5, 2024 · IPR2023-00758 · APJ Steven M Amundson · IPR · Final written decision

  Claims 1–3, 5–10, 12–14, and 16–21 are unpatentable as obvious over Hariki and Harris; claims 4, 11, 15, and 22–33 were not shown unpatentable.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMixed

    “in the browser,” e.g., content resulting from HTML files received from the web server. Ex. 2029, 68:15–18. Accordingly, an ordinarily skilled artisan “would have understood that customizing” the “application program environment or display and sound aspects of the device” using a UI content package “would mean that the converted resources (i.e., ‘custom configuration’) of the UI content package were applicable to all HTML files received from the web server and displayed” by the web browser program. Ex. 1002 ¶ 159; see Ex. 1005 ¶¶ 19, 24, 42.” slip op. at 105

  • ExcludeMotion to exclude, deniedDenied

    “FURTHER ORDERED that Petitioner’s motion to exclude evidence (Paper 30) is dismissed as moot; and” slip op. at 134

  Patent outcomesUS 8,478,245 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,478,245
• Netflix, Inc. v. Gotv Streaming, LLCSome claims unpatentable
  PTAB · Nov 5, 2024 · IPR2023-00757 · APJ Steven M Amundson · IPR · Final written decision

  Claims 1, 2, 4–10, and 12–16 are unpatentable as obvious over Hariki and Harris; claims 3, 11, and 17–20 were not shown unpatentable.

  RulingsFinal written decision

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for patent owner

    “Alleged Objective Indicia of Nonobviousness (i) General Principles Before reaching a conclusion about obviousness, we consider evidence concerning objective indicia of nonobviousness. See Apple, 839 F.3d at 1048. For such evidence to have substantial weight, the patentee “must establish a nexus between the evidence and the merits of the claimed invention.” ClassCo, 838 F.3d at 1220. “[T]here is no nexus unless the evidence presented is ‘reasonably commensurate with the scope of the claims.’” Id. (quoting Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)). The patentee “bears the burden of showing that a nexus exists.” WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). A rebuttable presumption of nexus arises “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). Whether a rebuttable presumption of nexus arises “turns on the nature of the claims and the specific facts.” Teva Pharms. Int’l GmbH v. Eli Lilly & Co., 8 F.4th 1349, 1362 (Fed. Cir. 2021). The presumption analysis should consider the unclaimed features in the product tied to the objective evidence to assess their significance and impact on the correspondence between the patented invention and the product. Quanergy Sys., Inc. v. Velodyne Lidar USA, Inc., 24 F.4th 1406, 1418 (Fed. Cir. 2022). When, “for example, the patented invention is only a small component of the product tied to the objective evidence,” and thus the product is not coextensive with the patented invention, “there is no presumption of nexus.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1333 (Fed. Cir. 2019). Absent a presumption of nexus, the patentee may prove nexus by showing that the objective evidence resulted directly from “the unique characteristics of the claimed invention.” Fox Factory, 944 F.3d at 1373–74; see In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). For example, “[a] prima facie case of nexus is generally made out when the patentee shows both that there is commercial success, and that the thing (product or method) that is commercially successful is the invention disclosed and claimed in the patent.” Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Circ. 1988).” slip op. at 113

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMixed

    “Conclusion About Obviousness/Nonobviousness For the reasons discussed above, the combined disclosures in Hariki” slip op. at 119

  • ExcludeMotion to exclude, deniedNot reached

    “In our analyses above, we do not rely on any of Exhibits 2023 to 2027. See, e.g., supra §§ III.C.2–III.C.4. Hence, we dismiss Petitioner’s motion to exclude evidence as moot. See, e.g., Volkswagen Grp. of Am., Inc. v. Spero, IPR2023-00335, Paper 40 at 24 (PTAB July 15, 2024) (dismissing motion to exclude evidence as moot).” slip op. at 135

  Patent outcomesUS 8,989,715 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,989,715
• Zoho Corporation / Zoho Corporation PVT., Ltd. v. Meetrix IP, LLCSome claims unpatentable
  PTAB · Jul 16, 2024 · IPR2023-00379 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 9–16 are unpatentable as obvious over Drell, Knappe, and Elliott; claims 17–20 were not shown unpatentable because the petition did not establish the separately recited mixers in claims 17 and 18.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We agree with Petitioner. Although Patent Owner proposes an alternative level of ordinary skill in the art, Patent Owner does not explain how it impacts Petitioner’s contentions or Patent Owner’s arguments in opposition. Indeed, at the hearing, Patent Owner’s counsel stated “I can’t point to a material difference that would change the outcome of this.” Tr. 49:10–15. Therefore, it appears that neither party contends that the differences in their proposals affects the outcome of this proceeding. Nothing in the full record persuades us that our preliminary finding in the Institution Decision, adopting Petitioner’s proposal, was incorrect. See Paper 6, 9. Therefore, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with the ’525 patent’s specification and the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 9

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

    “We agree with Petitioner that no claim construction is necessary for purposes of this Decision. That is, Patent Owner does not argue, and we do 5 Petitioner was not a party to this district court litigation. See Tr. 8:21–23 (Petitioner’s counsel stating “[w]e were not involved, Zoho was not involved in that claim construction process that resulted in the construction from the Western District of Texas.”). not discern, that any claim terms are in controversy on the current record.6 See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundMixed

    “We are persuaded that the combination of Drell and Knappe teaches limitation [9.6]. Patent Owner’s arguments improperly address Drell and Knappe individually, rather than the combination of Drell and Knappe on which Petitioner relies. See Soft Gel Techs., Inc. v. Jarrow Formulas, Inc., 864 F.3d 1334, 1341 (Fed. Cir. 2017) (attacking a reference individually does not show non-obviousness where petitioner’s ground is premised on the combination of references); Reply 7. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [9.6], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.9 See PO Resp. 18–19. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues.” slip op. at 31

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “combination of references); Reply 7. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [9.6], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.9 See PO Resp. 18–19. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues.” slip op. at 32

  Patent outcomesUS 9,094,525 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,094,525
• Apple Inc. v. Aire Technology LimitedSome claims unpatentable
  PTAB · Dec 15, 2023 · IPR2022-01136 · APJ Brian J Mcnamara · IPR · Final written decision

  Claim 15 is unpatentable as obvious over Tobergte and Cole; claims 1–3 and 8–11 were not shown unpatentable because the references did not disclose claim 1’s search-signal limitation.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Even a small amount of power that may be consumed by incorporating Cole into Tobergte likely exceeds the power consumed by Tobergte’s configuration in which the computer and oscillator are disconnected from power. Nevertheless, neither party provides a specific power consumption analysis. On this issue, we weigh Dr. Phinney’s testimony over Patent Owner’s attorney arguments and determine that Patent Owner has not sufficiently supported its contention that Cole teaches away from Tobergte on this basis. We determine that a person of ordinary skill would have had reason to combine the teachings of Tobergte with those of Cole to provide a system that detects the presence of data carriers automatically without the need for the user to activate the data carrier with a switch.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Tobergte’s computer 38 and oscillator 34 are disconnected from energy source 40. Pet. Reply 14–15. Petitioner acknowledges that Tobergte improves upon prior art systems, in which the fixed station emits the high frequency magnetic field continuously, by emitting the high frequency magnetic field “only upon awakening from a low power rest state.” Petitioner points to the testimony of Dr. Phinney concluding that Cole’s presence detector is at a power level too low to fully power the data carrier, but sufficient to allow the data carrier to change the impedance of the field. Id. at 21 (citing Ex. 1003, Phinney Decl. ¶ 53, commenting on Ex. 1006, 6:1–8 cited by Patent Owner); id. at 2 (citing Ex. 1005, 1:21–35). Even a small amount of power that may be consumed by incorporating Cole into Tobergte likely exceeds the power consumed by Tobergte’s configuration in which the computer and oscillator are disconnected from power. Nevertheless, neither party provides a specific power consumption analysis. On this issue, we weigh Dr. Phinney’s testimony over Patent Owner’s attorney arguments and determine that Patent Owner has not sufficiently supported its contention that Cole teaches away from Tobergte on this basis. We determine that a person of ordinary skill would have had reason to combine the teachings of Tobergte with those of Cole to provide a system that detects the presence of data carriers automatically without the need for the user to activate the data carrier with a switch.” slip op. at 16

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

    “sufficient for the data carrier to switch to passive mode. Id. at 6:1−5. When the data carrier is switched into passive mode, the data carrier’s supply device generates the operating voltage for the electric circuit from the received high frequency energy. Id. at 6:5–9. Claim 1 of Tobergte does not suggest that the fixed station performs any search function. Instead, Tobergte’s fixed station receives both energy and data from the data carrier for the brief period that the data carrier is in the active mode. There is no indication that Tobergte’s fixed station is emitting signals to search for the data carrier. Instead, Tobergte claims a system in which the data carrier that “wakes up” the fixed station is then powered by the energy of the high frequency field transmitted by the fixed station. None of Tobergte’s other claims explicitly recites a search limitation. In other words, Tobergte describes and claims changing a conventional data carrier that transmits data only when interrogated (id. at 3:48−52) into a data carrier that begins transmitting energy and data first, when activated by a user (id. at 3:55−58, 3:65−67).” slip op. at 25

  • Expert testimonyPetitioner expert creditedOther

    “Even a small amount of power that may be consumed by incorporating Cole into Tobergte likely exceeds the power consumed by Tobergte’s configuration in which the computer and oscillator are disconnected from power. Nevertheless, neither party provides a specific power consumption analysis. On this issue, we weigh Dr. Phinney’s testimony over Patent Owner’s attorney arguments and determine that Patent Owner has not sufficiently supported its contention that Cole teaches away from Tobergte on this basis. We determine that a person of ordinary skill would have had reason to combine the teachings of Tobergte with those of Cole to provide a system that detects the presence of data carriers automatically without the need for the user to activate the data carrier with a switch.” slip op. at 16

  Patent outcomesUS 8,174,360 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,174,360
• Keysight Technologies, Inc. v. Centripetal Networks, Inc.Some claims unpatentable
  PTAB · Dec 15, 2023 · IPR2022-01097 · APJ Aaron W Moore · IPR · Final written decision

  Claims 1–3, 5–13, and 15–20 are unpatentable as obvious; claims 4 and 14 were not shown unpatentable because Sourcefire did not disclose the claimed responsive updating of an existing packet flow log entry.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not address this issue, and neither side argues that it might affect the patentability analysis or otherwise change the outcome. Thus, as 2 Sourcefire 3D System User Guide, Ver. 4.10, Mar. 16, 2011 (Ex. 1004). 3 U.S. Patent App. Pub. No. 2015/0207809 A1 (Ex. 1029). we did at institution, we apply Petitioner’s description of an ordinarily skilled artisan, as we find it consistent with the ’917 patent and the asserted prior art. B.” slip op. at 11

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

    “1. Threat Identifier and Threat Indicator Patent Owner identifies two terms that were construed in the ITC investigation involving the ’917 patent based on constructions agreed upon by the parties. PO Resp. 9. First, the parties in the ITC investigation agreed that “threat identifier” means “information that identifies one or more network threats.” Id. at 11 (citing Ex. 2004, 3). Second, the parties further agreed that “threat indicator” means “information that indicates a resource associated with a network threat,” “[f]or example, network addresses, ports, FQDNs, URLs, URIs, the type of threat, geographic information, anonymous proxies, actors, or the like.” Id. at 11–12 (citing Ex. 2004, 3). Patent Owner asserts that these constructions should be used in this proceeding. Id. at 12. Petitioner does not dispute these constructions, and we adopt them.4” slip op. at 12

  • ExcludeMotion to exclude, grantedGranted

    “Before we get to claim construction, we exclude Ex. 2018 as untimely because Patent Owner had the testimony before it filed the Response and was plainly aware of it, as it was alluded to in the Response. See PO Resp. 10; Mot. to Exclude Opp. 2 (admitting that the trial finished before the Response was filed and that Patent Owner filed other testimony excerpts with the Response). However, the exclusion is of little consequence because we find that the testimony would be devoid of probative value. Dr. Rubin is not a fact witness and has not been offered as an expert in this case. Patent Owner cites the testimony in an effort to show that Petitioner is taking inconsistent positions, but we fail to see how Petitioner’s conduct bears on the meaning of “flow” in the ’917 patent.” slip op. at 14

  • Expert testimonyDecided for petitioner

    “Before we get to claim construction, we exclude Ex. 2018 as untimely because Patent Owner had the testimony before it filed the Response and was plainly aware of it, as it was alluded to in the Response. See PO Resp. 10; Mot. to Exclude Opp. 2 (admitting that the trial finished before the Response was filed and that Patent Owner filed other testimony excerpts with the Response). However, the exclusion is of little consequence because we find that the testimony would be devoid of probative value. Dr. Rubin is not a fact witness and has not been offered as an expert in this case. Patent Owner cites the testimony in an effort to show that Petitioner is taking inconsistent positions, but we fail to see how Petitioner’s conduct bears on the meaning of “flow” in the ’917 patent.” slip op. at 14

  Patent outcomesUS 10,193,917 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,193,917
• Apple Inc. v. Omni Medsci, Inc.Some claims unpatentable
  PTAB · Aug 3, 2022 · IPR2021-00453 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1, 2, 7, and 15–23 are unpatentable under the asserted obviousness grounds; claims 3–6 and 8–14 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenMixed

    “evidence, we conclude that Petitioner has demonstrated by a preponderance of the evidence that challenged claims 1, 2, 7, and 15–23 are unpatentable and that Petitioner has not demonstrated challenged claims 3–6 and 8–14 to be unpatentable.” slip op. at 2

  • Skill levelOther

    “7 The level of ordinary skill in this case is discussed in the Decision to Institute and is uncontested. Dec. to Inst. 7–8.” slip op. at 11

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

    “Specification concerning the terms “identify” and “detect” involve actions not recited in the claims does not change the fact that these different claim terms are presumed to have different meanings. The dictionary definitions of “detect” and “identify” are different. The use of the term “identify” in claims 3 and 8 and the use of a different term, i.e., “detect,” in claim 16 indicates that the claims 3 and 8 mean something different from claim 16. Petitioner has not rebutted the presumption that different claim terms have matter. See SimpleAir, Inc. v. Sony Ericsson Mobile Commc’ns AB, 820 F.3d 419, 431 (Fed. Cir. 2016). Therefore, we decline to adopt Petitioner’s proposal to construe the terms “identify an object” and “detect an object” to have the same meaning. Instead, we construe these terms consistent with the dictionary definitions of “identify” and “detect,” i.e., we construe “to identify an object” to mean “to recognize or establish an object as being a particular thing,” and we construe “to detect an object” to mean “to discover or notice the existence or presence of something.” We address the specific implications of these constructions in our discussion of claims 3, 8, and 16.” slip op. at 9

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

    “Specification concerning the terms “identify” and “detect” involve actions not recited in the claims does not change the fact that these different claim terms are presumed to have different meanings. The dictionary definitions of “detect” and “identify” are different. The use of the term “identify” in claims 3 and 8 and the use of a different term, i.e., “detect,” in claim 16 indicates that the claims 3 and 8 mean something different from claim 16. Petitioner has not rebutted the presumption that different claim terms have matter. See SimpleAir, Inc. v. Sony Ericsson Mobile Commc’ns AB, 820 F.3d 419, 431 (Fed. Cir. 2016). Therefore, we decline to adopt Petitioner’s proposal to construe the terms “identify an object” and “detect an object” to have the same meaning. Instead, we construe these terms consistent with the dictionary definitions of “identify” and “detect,” i.e., we construe “to identify an object” to mean “to recognize or establish an object as being a particular thing,” and we construe “to detect an object” to mean “to discover or notice the existence or presence of something.” We address the specific implications of these constructions in our discussion of claims 3, 8, and 16.” slip op. at 9

  Patent outcomesUS 10,517,484 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,517,484
• Samsung Electronics Co., Ltd. v. Acorn Semi, LLCSome claims unpatentable
  PTAB · Feb 9, 2022 · IPR2020-01207 · APJ John R Kenny · IPR · Final written decision

  Claims 1–6, 8–10, 15, and 16 are unpatentable as anticipated by Grupp ’483; claims 11, 12, and 14 were not shown unpatentable because Grupp ’483 is not prior art to them.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “We agree with Patent Owner. “[A p]etitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” Consolidated Trial Practice Guide5 73; see also 37 C.F.R. § 42.23(b). Here, Petitioner’s breadth challenge to the written description support for the genus of “the metal oxide of the interface layer comprises an oxide of 5 Consolidated Office Trial Practice Guide (Nov. 2019), available at https://www.uspto.gov/about-us/news-updates/consolidated-trial-practice-guide-november-2019. titanium” recited in claims 6, 8, 10, 11, and 14–16, was part of Petitioner’s prima facie case, which could have, and should have, been presented with the Petition. Thus, Petitioner could not properly wait until its Reply to specifically challenge the description support for the breadth of that class in the pre-2011 priority applications. See Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016); Ariosa Diagnostics v. Verinata Heath, Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015). Accordingly, we will not consider the breadth challenge to a metal oxide comprising an oxide of titanium that Petitioner presented for the first time in its Reply. As for the breadth challenge presented in the Petition—that the pre- 2011 priority applications do not describe the breadth of the class of metal oxides, that challenge is inapplicable here because claims 11, 12, and 14 narrow the recited class to comprising an oxide of titanium, which is a far narrower class. Dr. Schubert provides examples of numerous metal oxides that do not comprise oxides of titanium. Ex. 1022, Schubert Decl. ¶ 94 (hafnium oxide and zirconium oxide); Ex. 1053, Schubert Reply Decl. ¶¶ 18, 19 (see the compounds identified in that paragraph beyond titanium dioxide), 20. Petitioner does not dispute that the pre-2011 priority applications disclose a species within the scope of the recited genus. Pet. 18–22. To the contrary, Petitioner relies on one of the pre-2011 priority applications (Grupp ’483) as disclosing a species (with TiO2) as proof that claims 11, 12, and 14 are anticipated. See id. at 40–44. Thus, we determine that Petitioner has not proven that the pre-2011 priority applications fail to describe the genus of the metal oxide of the interface layer comprises an oxide of titanium. Therefore, Petitioner has not proven that Patent Owner is not entitled to the benefit of the pre-2011 priority applications for claims 11, 12, and 14 due to a lack of written description support. Accordingly, Petitioner has not proven that Grupp ’483 is prior art for those claims.” slip op. at 27

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedPriority date awardedMixed

    “2. Analysis We agree with Petitioner that the pre-2011 priority applications do not describe the recited genus. To support a claim to a genus, a specification must disclose “either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010) (en banc). Here, the recited genus is an interface layer comprising a metal oxide. Ex. 1001, 18:45–52. It is undisputed that the only species the pre- 2011 priority applications disclose is TiO2, as set forth in the following passage: Two other properties of the dielectric deserve mention. First is the property of the height of the barrier compared to the semiconductor conduction band (for electrons). In making the barrier thinner than a silicide barrier, the tradeoff may be a higher tunnel barrier (e.g., 2 eV for nitride, compared with about half the gap of 0.6 eV for silicide). Spacer layers may be used with lower barriers (e.g., TiO2 has a barrier of less than 1 eV). Nevertheless, even with the higher barrier to electrons, the present inventors have determined that the resistance can still be one hundred times lower than a contact to silicon with a silicide barrier. Id. at 18:1–11 (emphasis added). The pre-2011 priority applications incorporate by reference U.S.” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “As set forth below, we find that Petitioner has proven that Grupp ’483 anticipates claims 1–6, 8–10, 15, and 16. a. Claim 1 Petitioner argues that Grupp ’483 discloses an electrical junction, citing Grupp 483’s disclosure that “the present invention provides an electrical junction.” Pet. 27 (citing Ex. 1021, Grupp ’483, 3:44–47). Petitioner further argues that Grupp ’483 discloses a region in a semiconductor substrate by describing a source or drain of a transistor. Id. at 28 (citing Ex. 1022, Schubert Decl. ¶ 110). According to Petitioner, Grupp ’483 discloses a metal electrical contact to said region by describing “an electrical device in which an interface layer is disposed between and in contact with a metal and a semiconductor.” Id. (quoting Ex. 1021, Grupp ’483, 4:21–23) (emphasis omitted). Petitioner asserts that Grupp ’483 discloses “said region being electrically connected to said metal electrical contact through said interface layer” by describing “the present invention provides an electrical device in which an interface layer is disposed between and in contact with a metal and a semiconductor and is configured to depin the Fermi level of the semiconductor while still permitting current flow between the metal and the semiconductor . . . .” Id. at 29 (quoting Ex. 1021, Grupp ’483, 4:21–26) (emphasis omitted). Petitioner further argues that Grupp ’483 discloses “said interface layer comprising a metal oxide and a semiconductor oxide” by describing an interface layer that includes (1) a passivation layer, which can be a semiconductor oxide; and (2) a separation layer, which can be titanium dioxide, a metal oxide. Pet. 29 (citing Ex. 1022, Schubert Decl. ¶ 114). Petitioner further asserts that Grupp ’483 discloses “being in contact with said region in the semiconductor substrate and said metal electrical contact” by describing “an interface layer is disposed between and in contact with a metal and a semiconductor.” Id. (quoting Ex. 1021, Grupp ’483, 4:21–23) (emphasis omitted). After reviewing Petitioner’s arguments and evidence, we find that Petitioner has proven that Grupp ’483 anticipates claim 1.” slip op. at 40

  • ExcludeOther

    “We dismiss Patent Owner’s Motion to Exclude as moot in light of our determination regarding Petitioner’s written description challenge to Patent Owner’s benefit of its pre-2011 priority applications for claims 11, 12, and 14. In particular, Petitioner relies on the testimony at issue to support its belated challenge to the breadth of written description support in the pre- 2011 priority applications for the class of comprising an oxide of titanium that is recited by those claims. Reply Br. 7–12. Because we decided not to consider that belated challenge (see Section III.A.1.b above), the Motion to Exclude is moot.” slip op. at 47

  Patent outcomesUS 10,090,395 mixed
  § 102 anticipationcites Phillips
  Patents in suitUS 10,090,395
• Samsung Electronics Co., Ltd. v. Acorn Semi, LLCSome claims unpatentable
  PTAB · Feb 9, 2022 · IPR2020-01282 · APJ John R Kenny · IPR · Final written decision

  Claims 1–5 and 8–10 are unpatentable: claims 1–3 and 8–10 are anticipated by Goodnick, and claims 4 and 5 are obvious. The other challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The Patent Owner Preliminary Response did not comment on the level of ordinary skill in the art. In our Institution Decision, we were persuaded that Petitioner’s description of the level of ordinary skill is appropriate for the subject matter of the ’395 patent and applied it in that Decision. Inst. Dec. 9–10. The Patent Owner Response does not comment on the level of ordinary skill in the art. See generally PO Resp. Thus, we apply the description of the level of ordinary skill set forth in the Petition in this Decision. Ex. 1126, Schubert Decl. ¶ 66.” slip op. at 10

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

    “Petitioner’s proposed construction by providing the following definition for the phrase “depinning the Fermi level”: By depinning the Fermi level, the present inventors mean a condition wherein all, or substantially all, dangling bonds that may otherwise be present at the semiconductor surface have been terminated, and the effect of MIGS has been overcome, or at least reduced, by displacing the semiconductor a sufficient distance from the metal. Ex. 1101, 3:36–41. In view of this definition in the Specification and the parties’ agreement in pre-institution briefing, we construed the phrase “depin a Fermi level of the metal electrical contact in the vicinity of the junction” as “passivate the semiconductor surface and reduce the effects of metal-induced gap states in the semiconductor” in our Institution Decision. Patent Owner has not requested that we modify that construction. See generally PO Resp. Thus, we maintain it.” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for petitioner

    “C. An Interface Layer Comprising a Metal Oxide and a Semiconductor Oxide In its Preliminary Response, Patent Owner argued that, in the related litigation, Petitioner and Patent Owner agreed to construe the phrase an “interface layer comprising a metal oxide and a semiconductor oxide” as “said interface layer comprising a layer of a metal oxide and a distinct layer of a semiconductor oxide.” Prelim. Resp. 35 (citing Ex. 2009). Patent Owner asserted that the district court adopted that construction. Id. (citing Ex. 2053, 27). In our Institution Decision, we found that the record supported Patent Owner’s arguments. Inst. Dec. 13 (citing Ex. 2009; Ex. 2053, 27). Further, in our Institution Decision, we noted that no party argued that we should construe the phrase differently than the district court. Id. Thus, we construed “an interface layer comprising a metal oxide and a semiconductor oxide” as “said interface layer comprising a layer of a metal oxide and a distinct layer of a semiconductor oxide.” Id. No party has requested that we modify this construction. See generally PO Resp., Pet. Reply. Thus, we maintain it.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Taken in context, we agree with Dr. Schubert that an ordinarily skilled artisan would have understood Goodnick to refer to Al2O3 as a distinct layer. Ex. 1126, Schubert Decl. ¶ 85; Ex. 1173, Schubert Reply Decl. ¶ 86. Referring to Fig. 8(a), Goodnick states that in an unheated sample with an air grown oxide “[i]t appears that Si has diffused into the Al and collected at the Al2O3-Al interface at the surface. No buildup of Al2O3 is seen at the Al- Si interface.” Ex. 1121, 5. Noting that Fig. 8(b) is a profile of an unheated sample with 30Å of SiO2 at the interface, Goodnick states “[i]n contrast to the air exposed sample, an Al2O3 layer exists at the Al-SiO2-Si interface.” Id. Petitioner notes that, on cross-examination, Dr. Goodnick acknowledged (i) that the Al metal layer would diffuse into the SiO2 interface layer and reduce the portion of the SiO2 layer nearest the Al layer to Al2O3, (ii) that once the Al2O3 layer forms, it would be difficult for aluminum atoms to diffuse through the Al2O3 layer to continue reaction with the SiO2 layer, and (iii) because the reaction is self-limiting, a portion of the original SiO2 layer would remain once the reaction forming the Al2O3 layer stopped. Pet. Reply 6–7 (citing Ex. 1168, Goodnick Tr. 55:5–25, 57:19– 58:8, 59:24–60:7, 81:4–8). In view of, inter alia, Dr. Goodnick’s cross- examination testimony, we are persuaded by Dr. Schubert’s testimony that an ordinarily skilled artisan would have understood that distinct layers of Al2O3 and SiO2 are formed. Ex. 1173, Schubert Reply Decl. ¶¶ 85–98.” slip op. at 25

  Patent outcomesUS 10,090,395 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,090,395
• Samsung Electronics Co., Ltd. v. Acorn Semi, LLCSome claims unpatentable
  PTAB · Jan 12, 2022 · IPR2020-01279 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–3 and 13 are unpatentable as anticipated by Goodnick; claim 4 is unpatentable as obvious over Goodnick and Jammy. The other challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for petitioner

    “resistivity” and “specific contact resistance” to be interchangeable. Dec. to Inst. 12. Neither party disagrees with this construction, and we apply the same construction for purposes of the Decision.” slip op. at 8

  • Expert testimonyMotion to exclude, deniedDenied

    “Although Patent Owner contends Dr. Goodnick’s declaration did not open the door for general questioning about metal oxides (PO Opp. 2–3), we agree with Petitioner that the proper scope of cross examination includes Dr. Goodnick’s understanding of what constitutes a distinct layer. A primary issue raised by Patent Owner against Petitioner’s challenge that Goodnick anticipates is that, notwithstanding its use of the term layer, Goodnick does not teach distinct layers that are required by the claim. See Section VI.B. One of those layers is a metal oxide layer (Ex. 1101, claim 1), in particular a titanium oxide layer (claim 6). In view of Dr. Goodnick’s checkerboard analogy in his declaration, it was proper for Petitioner to question Dr. Goodnick about the extent of materials in the checkerboard. Both parties argue there may be implications of Dr. Goodnick’s testimony for purposes of infringement litigation. See Pet. Opp. 4–6; PO Reply 3–4. We do not address those implications. The issue before us is whether Goodnick would have taught or suggested to a person of ordinary skill the limitations of the claims, which the parties agree include distinct layers of metal oxide and other semiconductor oxide. See Section VI.B. As Dr. Goodnick testified that his article did not teach such distinct layers, it was proper for Petitioner to explore Dr. Goodnick’s views concerning the composition of a layer during cross examination. In consideration of the above, Patent Owner’s motion to exclude the Goodnick Metal Oxide testimony is denied.” slip op. at 48

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Taken in context, we agree that a person of ordinary skill would have understood Goodnick to refer to Al2O3 as a distinct layer. Referring to Fig. 8(a), Goodnick states that in an unheated sample with an air grown oxide “[i]t appears that Si has diffused into the Al and collected at the Al2O3- Al interface at the surface. No buildup of Al2O3 is seen at the Al-Si interface.” Ex. 1116, 953. Noting that Fig. 8(b) is a profile of an unheated sample with 30Å of SiO2 at the interface, Goodnick states “[i]n contrast to the air exposed sample, an Al2O3 layer exists at the Al-SiO2-Si interface.” Id. Petitioner notes that, on cross examination, Dr. Goodnick acknowledged (i) that the Al metal layer would diffuse into the SiO2 interface layer and reduce the portion of the SiO2 layer nearest the Al layer to Al2O3, (ii) that once the Al2O3 layer forms, it would be difficult for aluminum atoms to diffuse through the Al2O3 layer to continue reaction with the SiO2 layer, and (iii) because the reaction is self-limiting, a portion of the original SiO2 layer would remain once the reaction forming the Al2O3 layer stopped. Pet. Reply 5–6 (citing Ex. 1168, Goodnick Tr. 55:5–25, 57:19– 58:8, 59:24–60:7). In view of, inter alia, Dr. Goodnick’s cross examination testimony, we are persuaded by Dr. Schubert’s testimony that a person of ordinary skill would have understood that distinct layers of Al2O3 and SiO2 are formed. Ex. 1173 ¶¶ 85–98.” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable

    “that “the semiconductor region comprises an n-typed doped source or drain of a transistor.” Acknowledging that Goodnick “does not expressly disclose that its n-doped silicon semiconductor region ‘comprises an n-type source or drain of a transistor,’” Petitioner cites Jammy as disclosing this feature. Pet. 27. According to Petitioner, a person of ordinary skill would have combined the teachings of Goodnick and Jammy because Goodnick describes contact metallization processes for semiconductor devices and Jammy describes a semiconductor device. Id. at 28. Patent Owner asserts that Petitioner’s challenge to claim 4 based on the combined teachings of Goodnick and Jammy fails because it is premised on Goodnick teaching a stratified layer of Al2O3 distinct from SiO2. PO Resp. 60. As discussed above, we find that a person of ordinary skill would have understood Goodnick to disclose this feature. See Section VI.B. In consideration of the above, we find that Petitioner has demonstrated by a preponderance of the evidence that a person of ordinary skill would have had reason to combine the teachings of Goodnick and Jammy and that the combined teachings of Goodnick and Jammy would have suggested the limitations of claim 4 to a person of ordinary skill in the art.” slip op. at 24

  Patent outcomesUS 9,905,691 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,905,691
• Samsung Electronics Co., Ltd. v. Acorn Semi, LLCSome claims unpatentable
  PTAB · Jan 12, 2022 · IPR2020-01206 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–4, 13, 20, 22, and 25 were held unpatentable as anticipated by Grupp ’483; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedPriority date awardedMixed

    “mental steps that an ordinarily skilled artisan theoretically might have taken after reviewing the minimal disclosure in the ’423 patent. The ’423 patent does not discuss any properties of metal oxides (other than the lower barrier of the metal oxide TiO2) or design considerations concerning the selection of particular oxides to use in the claimed structure, particularly in the context of MIGS separation. Dr. Kuhn cites very little, if any, evidence to support her testimony regarding the knowledge of an ordinarily skilled artisan. Thus, we do not credit this analysis as showing that an ordinarily skilled artisan would have found that the inventors of the pre-2011 priority applications possessed the recited genus. See Ariad, 593 F.3d at 1352 (a description that merely renders the invention obvious does not satisfy the written description requirement); Power Oasis Inc. v. T-Mobile USA, 522 F.3d 1299, 1306 (Fed. Cir. 2008) (“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.”) (quoting In re Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002), quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997)); Martin v. Mayer, 823 F.2d 500, 505 (Fed. Cir. 1987) (holding that the written description requirement is “not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure . . . . Rather, it is a question whether the application necessarily discloses that particular device”) (emphasis in original).” slip op. at 22

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner. A petitioner “may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” Consolidated Trial Practice Guide 734; see also 37 C.F.R. § 42.23(b). Here, 4 Consolidated Office Trial Practice Guide (Nov. 2019), available at https://www.uspto.gov/about-us/news-updates/consolidated-trial-practice-guide-november-2019. Petitioner’s breadth challenge to the written description support for the genus of “the metal oxide of the interface layer comprises an oxide of titanium” recited in claims 6, 8, 10, 11, and 14–16 was part of Petitioner’s prima facie case, which could have, and should have, been presented with the Petition. Thus, Petitioner could not properly wait until its Reply to specifically challenge the description support for the breadth of that class in the pre-2011 priority applications. See Ariosa Diagnostics v. Verinata Heath, Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016); Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019). Accordingly, we will not consider the breadth challenge to oxides of titanium that Petitioner presented for the first time in its Reply.” slip op. at 25

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Petitioner’s expert, Dr. Schubert, identifies a large number of metal oxides and multiple metal oxides that is expanded by multiple equilibrium species and notes that the metal oxide genus would be even further expanded to include non-equilibrium species. Ex. 1047, Schubert Decl. 2 ¶¶ 18–22. Dr. Schubert further emphasizes the significant variation in physical and chemical properties of such metal oxides. Id. at ¶¶ 27–51. Much of Dr. Kuhn’s analysis is premised on her assessment of the mental steps that an ordinarily skilled artisan theoretically might have taken after reviewing the minimal disclosure in the ’423 patent. The ’423 patent does not discuss any properties of metal oxides (other than the lower barrier of the metal oxide TiO2) or design considerations concerning the selection of particular oxides to use in the claimed structure, particularly in the context of MIGS separation. Dr. Kuhn cites very little, if any, evidence to support her testimony regarding the knowledge of an ordinarily skilled artisan. Thus, we do not credit this analysis as showing that an ordinarily skilled artisan would have found that the inventors of the pre-2011 priority applications possessed the recited genus. See Ariad, 593 F.3d at 1352 (a description that merely renders the invention obvious does not satisfy the written description requirement); Power Oasis Inc. v. T-Mobile USA, 522 F.3d 1299, 1306 (Fed. Cir. 2008) (“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.”) (quoting In re Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002), quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997)); Martin v. Mayer, 823 F.2d 500, 505 (Fed. Cir. 1987) (holding that the written description requirement is “not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure . . . . Rather, it is a question whether the application necessarily discloses that particular device”) (emphasis in original).” slip op. at 21

  • ExcludeOther

    “Patent Owner’s Motion to Exclude is moot in light of our determination regarding Petitioner’s written description challenge to Patent Owner’s benefit of its pre-2011 priority applications for claims 6, 8, 10–12, 15–19, 26–29. In particular, Petitioner relies on the testimony at issue to support its belated challenge to the breadth of written description support in the pre-2011 priority applications for the oxide of titanium class recited by those claims. Pet. Reply7–12. Because we decided not to consider that belated challenge (see Section III.E.1.b), the Motion to Exclude is moot.” slip op. at 47

  Patent outcomesUS 9,905,691 mixed
  § 102 anticipation
  Patents in suitUS 9,905,691

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.