- Shenzhen Xinzexing E-Commerce Co., Ltd. v. Shenzhen Carku Technology Co., Ltd.All claims unpatentablePTAB · Jul 24, 2025 · IPR2024-00222 · APJ Garth D Baer · IPR · Final written decision
Claims 1–3, 6–23, and 25–33 are unpatentable, including as anticipated by Chen and as obvious over the Chen and Inskeep combinations.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“have at least a Bachelor’s Degree in Electrical Engineering and at least two years of experience in the field of electrical engineering and specifically power supply management such as battery charging system design.” PO Resp. 31. Petitioner presents a similar formulation. Pet. 10. Although we do not discern any meaningful distinction between the parties’ formulations, we adopt Patent Owner’s description of a person of ordinary skill as it is consistent with the prior art and challenged patent’s specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“a first current through one or more output ports of the at least one output port in a first operating mode,” and “is configured to output a second current capable of starting a vehicle engine through the pair of output terminals in a second operating mode.” Ex. 1001, 8:25–34. Claim 21 has similar first and second operating-mode limitations. Id. at 9:40–46. Patent Owner proposes that “[t]he proper construction for ‘first operating mode’ is ‘an operating mode of the portable backup charger wherein the battery pack is configured to output a first current through one or more output ports of the at least one output port, and outputting a second current capable of starting a vehicle engine through the pair of output terminals is inhibited.’” PO Resp. 25. Similarly, Patent Owner argues “[t]he proper construction for ‘second operating mode’ is ‘an operating mode of the portable backup charger wherein the battery pack is configured to output a second current capable of starting a vehicle engine through the pair of output terminals, and outputting a first current through one or more output ports of the at least one output port is inhibited.’” Id. at 27. Patent Owner asserts that claim differentiation supports its construction because dependent claim 3 recites “a third operating mode for outputting the first current and the second current simultaneously,” and “if the battery pack could output the first current and the second current simultaneously in the first operating mode, then there would be no difference between the claimed first operating mode and the claimed third operating mode.” Id. at 26. We disagree with Patent Owner’s constructions because, as Petitioner explains, they wrongly import current-inhibiting limitations beyond the plain language in the claim. Pet. Reply 1. Nothing in the at-issue language addresses inhibiting current. In addition, the claimed first and third operating modes are still distinct without importing additional limitations because outputting just the first current is sufficient for the first operating mode, but not for the third. In other words, whereas the third operating mode requires simultaneity, the first and second merely permit it. Thus, claim differentiation does not support Patent Owner’s construction. Last, although Patent Owner asserts that its construction “is consistent with the specification,” nothing in the cited passages describes inhibiting current. Prelim. Resp. 26 (citing Ex. 1001, 4:30–33, 5:30–33, 5:58–62). Instead, the specification characterizes the modes solely by what the portable charger “can output,” not what is inhibited. Ex. 1001, 4:30–33, 5:30–33, 5:58–62. Thus, we decline to read the first and second operating modes to require the current-inhibiting features that Patent Owner asserts.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner argues the two current paths are not different because Chen’s Figure 1 shows they overlap between the lithium battery and the output control circuit and “only diverge when making the connection to the output control circuit.” PO Resp. 32. We disagree. First, Patent Owner’s argument is based on a claim construction for “different” current paths that we do not adopt for the reasons above. In addition, we agree with Petitioner that Chen shows the claimed different current paths even under Patent Owner’s construction. Pet. Reply 8–12. Specifically, as Petitioner explains, a skilled artisan would recognize that Chen’s physical circuits are depicted in Figures 4–7, rather than in Chen’s Figure 1, which is merely a “block diagram of the principle of present invention.” Id. at 9; Ex. 1006 ¶ 15. Unlike Figure 1, Chen’s Figures 5, 6, and 7 show current paths between the battery and USB outputs, and between the battery and DC multi-gear output, that do not overlap with the high current path shown in Chen’s Figure 4. Pet. 9–12. Based on Petitioner’s analysis and for the reasons above, we agree with Petitioner that Chen teaches the claimed “pair of output terminals coupled to the battery pack and having a current path to the battery pack different from that of the at least one output port to the battery pack.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Patent Owner asserts one skilled in the art would not have added White’s fuse to Chen because doing so was “unnecessary” given Chen’s built-in relay K1 that already provides protection. PO Resp. 42–43. We disagree because, as Petitioner notes, “the Petition cited ample evidence that both layers of over current prevention provide improved safety and protection to the battery.” Pet. Reply 17 (citing Pet. 31–33); see also, e.g., Pet. 31 (describing “advantageously reduc[ing] the likelihood of damage”), id. at 32 (describing “the additional benefit of a safety fuse along a jumper cable to promptly cut off current in the event of a short circuit” and “more simplified maintenance and repair”). Given Petitioner’s unrebutted rationale, Petitioner has articulated sufficient reasoning with rational underpinning to support the legal conclusion that adding White’s fuse and polarity-protection connector to Chen’s power-supply system would have been obvious to one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Other than the arguments addressed above, Patent Owner does not additionally challenge Petitioner’s obviousness showing based on Chen and White. We have reviewed Petitioner’s arguments and evidence and, based on that analysis, we find Petitioner has shown by a preponderance of the evidence that claims 1, 2, 6–9, 11–14, 16–22, 25–28, and 30–33 would have been obvious over Chen and White.” slip op. at 15
Patent outcomesUS 9,643,506 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,643,506 - Eden Park Illumination, Inc. / Larson Electronics LLC et al. v. S. Edward NeisterAll claims unpatentablePTAB · Sep 17, 2024 · IPR2023-00695 · APJ Julia Heaney · IPR · Final written decision
Claims 1–5 and 7–18 are unpatentable as obvious over Eckhardt and Sosnin.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in an engineering discipline such as biological, chemical, environmental, electrical, mechanical, and/or systems engineering, or an equivalent degree such as one in physics or similar subject matter.” Pet. 16 (citing Ex. 1003 ¶ 21). Petitioner further argues that “[s]uch a person would also have two to three years of work or research experience with UV disinfection technology and/or systems and would be familiar with the fundamentals of UV excimer lamps” but, “less education could be compensated by more experience and vice versa.” Id. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’951 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’951 patent and the” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“art references advanced in this Petition” but “[b]eyond these arguments, the challenged claims require no express construction to evaluate their patentability.” Pet. 16–17. After considering the arguments and information Petitioner presents, we determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner demonstrates by a preponderance of the evidence that a person of ordinary skill in the art would have had reasons to combine Eckhardt’s teaching of narrow spectrum UV light in the range of 220 to 310 nm to disinfect skin (Ex. 1004 ¶¶ 31, 69–70), with Sosnin’s teaching of a KrCl excimer lamp having a narrow band UV emission at 222 nm to kill bacteria (Ex. 1005, 320). In particular, Petitioner shows that a person of ordinary skill in the art would have wanted to obtain the benefits of Eckhardt’s teaching of disinfecting skin using any light source capable of sterilization or disinfection and would therefore have considered Eckhardt’s suggestion of using narrow spectrum UV light in combination with Sosnin’s disclosure of using germicidal excimer lamps within the range of wavelengths taught by Eckhardt. See KSR, 550 U.S. at 417 (stating that the “mere application of a known technique to a piece of prior art ready for the improvement” suggests obviousness). The teachings of both Eckhardt and Sosnin support Petitioner’s combination. In particular, both references teach using UV lamps with narrow bands or monochromatic emissions to sterilize surfaces. Eckhardt teaches “light source 7 may be any light source that emits light capable of sterilization or disinfection” and may be a UV light source such as a lamp that “may emit narrow spectrum light (e.g., a line spectrum) or broad spectrum light” including UVA, UVB, and UVC light. Ex. 1004 ¶ 31. Eckhardt also teaches flash light source 7a generates a flash sufficient for sterilization or disinfection and may be a xenon flash lamp having a wavelength in the range of 220 to 310 nm. Id. ¶¶ 43, 70. Additionally, Eckhardt teaches “[t]he sterilization/disinfection units previously described are designed to have a beneficial effect when used on bare skin.” Id. ¶ 69. Sosnin teaches using excimer lamps for sterilization and specifically discloses a KrCl lamp which generates photons having wavelengths of 222 nm. Ex. 1005, 320. We find that Eckhardt would have led a person of ordinary skill to consider using a 222 nm excimer lamp because that wavelength falls within the range of UV light (220–310 nm) suggested by Eckhardt, and the range known to provide disinfection. Ex. 1004 ¶ 70; Ex. 1005, 320 (describing “the high rate of bactericidal effect of excilamps”). We find that Eckhardt also supports Petitioner’s contention that it was within the knowledge of a person of ordinary skill in the art to use UV light in the range of 254 nm for disinfection, even though that wavelength presented safety concerns. Ex. 1004 ¶¶ 54, 56; see Pet. 25.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Based on the evidence before us, we determine that Petitioner has shown by a preponderance of evidence that the combination of Eckhardt and Sosnin discloses claim limitation [1A]. We find that Eckhardt’s disclosure of a lamp emitting sterilizing light in the range of 220 to 310 nm (Ex. 1004 ¶¶ 31, 43, 70), combined with Sosnin’s disclosure of irradiation of E. coli with a KrCl excimer lamp generating a 222 nm wavelength (Ex. 1005, 320, Fig. 3), which correspond to peak absorption wavelengths of DNA or RNA (Ex. 1003 ¶¶ 116–118), discloses limitation [1A]. [1B] Petitioner contends that the Eckhardt-Sosnin combination teaches “directing the photons to a substance or surface to be disinfected, whereby the photons are generated to destroy a plurality of chemical bonds within the proteins, DNA, or RNA of the microorganism,” as recited in limitation [1B]. Pet. 30. According to Petitioner, Eckhardt discloses directing light towards wound 1 and surrounding skin 3. Id. (citing Ex. 1003 ¶ 120; Ex. 1004 ¶¶ 31–32). Petitioner contends Sosnin teaches the photons destroy a plurality of chemical bonds within the DNA or RNA of the microorganism because it discloses using 222 nm radiation, “which intrinsically destroys proteins and the chemical bonds in the proteins associated with the DNA or RNA of the microorganism.” Id. (citing Ex. 1003 ¶ 121; Ex. 1005, 319– 321). Based on the evidence before us, we determine that Petitioner has shown by a preponderance of evidence that the combination of Eckhardt and Sosnin discloses claim limitation [1B]. We find that Eckhardt’s disclosure of directing sterilizing light in the range of 220 to 310 nm toward a surface to be disinfected (Ex. 1004 ¶¶ 31–33, 43, 70), combined with Sosnin’s disclosure of bacterial survival curves resulting from irradiation of E. coli with KrCl excimer lamps (Ex. 1005, 320, Fig. 3), discloses claim limitation [1B]. [1C] Petitioner contends that the combination of Eckhardt and Sosnin” slip op. at 16
Patent outcomesUS 11,246,951 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,246,951 - The Noco Company, Inc. v. Pilot, Inc.All claims unpatentablePTAB · Jun 11, 2024 · IPR2023-00167 · APJ Julia Heaney · IPR · Final written decision
Claims 1–24 are unpatentable; the Board finds the asserted § 103 grounds proven for each claim and dismisses the collateral-estoppel motion as moot.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “preponderance of the evidence” standard for proving unpatentability. slip op. at 11
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“A patentee is entitled to a presumption of nexus “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, 944 F.3d at 1373 (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). “[I]f the marketed product embodies the claimed features, and is coextensive with them, then a nexus is presumed and the burden shifts to the party asserting obviousness to present evidence to rebut the presumed nexus.” Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). Coextensive “mean[s] that the product ‘is the invention disclosed and claimed’. . . . A product is ‘essentially the claimed invention when, for example, the unclaimed features amount to nothing more than additional insignificant features.’” Campbell Soup Co. v. Gamon Plus, Inc., 10 F.4th 1268, 1276–77 (Fed. Cir. 2021) (emphasis and citation omitted).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Having considered the evidence and arguments, we determine that the preponderance of the evidence favors Petitioner. Petitioner demonstrates that a person of ordinary skill would have had a reason to modify Richardson’s jump starter with Lai’s overcharge-protection circuit. Pet. 69. In particular, Petitioner shows that in order to protect against dangerous overcharging conditions in Richardson’s jump starter, a person of ordinary skill would have replaced diode 35 in Richardson with a switched overcharge-protection circuit, as taught by Lai, with the predictable result of cutting off recharging of jump starter batteries 22 from vehicle battery 28 in the event an over voltage protection threshold is crossed. See Ex. 1003 ¶ 174. Patent Owner’s argument that Richardson teaches away is not persuasive. Richardson’s teaching of recharging techniques supports the combination with Lai, rather than teaches away, because a system such as Richardson’s that permits recharging would have a need for safety protection and excessive recharging prevention. Further, claim 11 does not require preventing recharging in every situation, but rather only prevents recharging of “a normal voltage of the battery.” Ex. 1001, 6:11–12. In any event, Richardson does not criticize, discredit or discourage investigation into preventing recharging. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits, or otherwise discourages the solution claimed).” slip op. at 35
Patent outcomesUS 11,235,673 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,235,673 - Micron Technology, Inc. v. Katana Silicon Technologies LLCAll claims unpatentablePTAB · May 13, 2024 · IPR2023-00071 · APJ Julia Heaney · IPR · Final written decision
Claims 3–5, 8, 11, 20–22, 27–29, 31, and 33 are unpatentable as obvious over the stated combinations of prior art and skilled-artisan knowledge.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“On the fully developed record, we find that Petitioner’s construction, “a layer that adheres,” is more strongly supported by the evidence than Patent Owner’s construction, “a pre-formed layer that is adhered.” Our analysis begins with the claim language. The term “adhesion layer” appears in each of the ’806 patent’s independent claims, which include both method and device claims. See, e.g., Ex. 1001, 13:44–63 (claim 1 directed to a “semiconductor device”); id. at 17:58–18:17 (claim 30 directed to a “method of manufacturing a semiconductor device”). Claim 1 recites “a first semiconductor chip having a first adhesion layer adhered to its back surface” and “a second semiconductor chip having a second adhesion layer adhered to its back surface.” Id. at 13:49–51, 13:54–56 (emphasis added). Claim 30 recites the steps of “forming a first insulating adhesion layer on a back surface of a first wafer” and “forming a second insulating adhesion layer on a back surface of a second wafer.” Id. at 17:60–62, 18:3–5 (emphases added). In the absence of contrary evidence, we must assume that the term “adhesion layer” has the same meaning in all claims of the ’806 patent. In re Varma, 816 F.3d 1352, 1363 (Fed. Cir. 2016) (“the principle that the same phrase in different claims of the same patent should have the same meaning is a strong one, overcome only if ‘it is clear’ that the same phrase has different meanings in different claims,” quoting Fin Control Sys. Pty, Ltd. v. OAM, Inc., 265 F.3d 1311, 1318 (Fed. Cir. 2001)). The language of claim 30 and similarly worded claims of the ’806 patent suggests strongly that an “adhesion layer” may be formed in situ on the back surface of a wafer and need not be pre-formed, as argued by Patent Owner. The testimony of Patent Owner’s expert, Mr. Elenius, supports this interpretation. See Ex. 2014 ¶¶ 43, 50 (testifying that a person of ordinary skill in the art “would recognize that there are multiple methods of forming an ‘adhesion layer’ on the back surface of the semiconductor chip” and that “[p]astes and other adhesives, adhesive agents, adhesive layers or other material that are dispensed onto a substrate or chip back are formed into a layer over time as they harden through curing” (emphasis added)). Thus, the language of claims 30 and 31 does not support Patent Owner’s construction that the “adhesion layer” must be a pre-formed layer that is adhered. Cf. PO Resp. 22–25 (arguing for that construction).” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Citing testimony from Dr. Suhling, Petitioner asserts that a person of ordinary skill in the art at the priority date of the ’806 patent would have had i) a bachelor-level degree in electrical engineering, mechanical engineering, material science, or a related subject and five or more years of experience working in the field of semiconductor packaging; ii) a Master’s-level degree in mechanical engineering, electrical engineering, material science, or a related field, and at least 1-3 years of experience in the design/development of semiconductor packages; or iii) a Ph.D.- level degree in mechanical engineering, material science, electrical engineering, or a related field, and at least some experience in the area of semiconductor packaging. Pet. 17–18 (citing Ex. 1002 ¶¶ 28–32). Petitioner further states that “[a]dditional education may substitute for professional experience, and significant work experience may substitute for formal education.” Pet. 18. Patent Owner’s declarant, Mr. Elenius, states that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical, mechanical or materials engineering and two to three years of experience in the design or development of semiconductor manufacturing, or the equivalent.” Ex. 2014 ¶ 32. Mr. Elenius further states that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. For purposes of this Decision, we find no meaningful differences” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“3. Reasons to Combine Petitioner contends that it would have been obvious for a person of ordinary skill in the art to combine Ball’s teachings of stacking chips with Mostafazadeh’s process for applying adhesive to create individual chips with adhesive backsides. Pet. 28–29. Petitioner contends that a person of ordinary skill would have been motivated to combine the teachings of Ball and Mostafazadeh for several reasons, including to provide a more efficient manufacturing process for multichip modules and to simplify the stacking process. Pet. 28–31. Patent Owner argues that a person of ordinary skill would not have been motivated to combine Mostafazadeh with Ball because there would have been no reasonable expectation of success and the combination would not have resulted in a functioning semiconductor device. PO Resp. 39. Patent Owner asserts that Petitioner’s combination of Ball and Mostafazadeh would fail for multiple reasons and that Mostafazadeh does not describe multi-chip stacked mounting. Id. at 39–52. Having considered the evidence and arguments, we determine that the preponderance of the evidence favors Petitioner. Petitioner demonstrates persuasively that a person of ordinary skill in the art would have had reasons to combine Ball’s stacked multichip module with Mostafazadeh’s process for applying adhesive at the wafer stage and then dicing to create individual chips with adhesive backsides. Pet. 28–31. In particular, Petitioner shows that a person of ordinary skill in the art would have considered Mostafazadeh’s teaching of applying the adhesive to a wafer surface and then subsequently dicing the wafer in order to provide a more efficient manufacturing process for multichip modules and to simplify Ball’s process of stacking chips. Id.; see KSR, 550 U.S. at 417 (stating that the “mere application of a known technique to a piece of prior art ready for the improvement” suggests obviousness). The teachings of both Ball and Mostafazadeh support Petitioner’s combination. Ball teaches a stacked multichip module using flip-chip and wire bond interconnections, where a lower chip is flip-chip connected to a substrate using metal bumps, and an upper chip is wire bond connected to the substrate. Ex. 1005, Abstract, 3:42–64, 4:58–59, 5:3–12, 5:18–20, 5:23– 27, Fig. 1. Ball teaches that the upper chip is attached to the lower chip in a back-to-back arrangement with a layer of adhesive applied over a back side of the lower chip. Id. Mostafazadeh teaches a method for applying integrated circuit dies to support surfaces. Ex. 1003, Abstract. In Mostafazadeh’s method, an adhesive coating is formed on a surface of a semiconductor wafer, the adhesive coating is dried, and the semiconductor wafer is diced to form integrated circuit dies, each having an adhesive layer on its mounting surface, i.e., its back surface. Id. at 3:5–11, 5:20–25, 7:9–11, 7:29–8:2, Fig. 2 (steps 104–110). A selected die is then attached to an associated support surface by placing the adhesive layer of the selected die in contact with the associated support surface. Id. at 3:11–13, 8:10–12, Fig. 2 (steps 112–118).” slip op. at 33
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“After considering the parties’ arguments and evidence, we determine that Petitioner meets its burden of proof for claim element [3d]. Our finding is supported by Figure 1 of Ball, which depicts a second chip mounted to a first chip in a back-to-back arrangement. Ex. 1002 ¶ 158; Ex. 1005, Fig. 1. More particularly, Ball’s Figure 1 shows that back side 32 of upper die 12 (the claimed “second semiconductor chip”) is mounted to back side 30 of lower die 14 (the claimed “first semiconductor chip”) by adhesion layer 28. Ex. 1005, 5:18–20. Relying on Dr. Suhling’s testimony, Petitioner shows persuasively that “a circuit is formed on the front surface 34 of upper die 12 . . . , as evidenced by bonding pads 36 and wires 38 connecting the upper die’s circuitry to the wiring layer on substrate 16.” Pet. 41; Ex. 1002 ¶ 159. We credit Dr. Suhling’s unrebutted testimony that, “[b]ecause the circuitry is on the front side of upper die 12, a [person of ordinary skill in the art] would know that the back surface adhesive layer is ‘where a circuit is not formed.’” Ex. 1002 ¶ 159. Patent Owner argues that, to meet claim elements [3b] and [3d], “a reference must show that an adhesion layer extends to cover the entire back surface of the second semiconductor chip where a circuit is not formed.” PO Resp. 30. We find no support in the claim language or other intrinsic evidence for Patent Owner’s argument. In our view, the phrase “back surface where a circuit is not formed” identifies the back side of the chip as opposed to the front side, where a circuit is formed. Ex. 1001, 14:26–27 (claim element [3d]). Our interpretation is supported by the claim language as a whole. Claim element [3b], for example, recites “a first semiconductor chip having a circuit forming on its front surface and an adhesion layer adhered to its back surface.” Id. at 14:17–19 (emphasis added). In this” slip op. at 47
Patent outcomesUS RE38,806 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR - Micron Technology, Inc. v. Katana Silicon Technologies LLCAll claims unpatentablePTAB · May 13, 2024 · IPR2023-00072 · APJ Julia Heaney · IPR · Final written decision
Claims 1, 2, 6, 7, 9, 10, 12–19, 23–26, 30, and 32 are unpatentable as obvious over the asserted combinations of prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although the proposals for the level of skill in the art by the parties’ declarants have differences in wording, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Nevertheless, based on our review of the ’806 patent, the types of problems and solutions described in the ’806 patent, and cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionGranted
“On the fully developed record, we find that Petitioner’s construction, “a layer that adheres,” is more strongly supported by the evidence than Patent Owner’s construction, “a pre-formed layer that is adhered.”” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner shows persuasively that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Mostafazadeh with Ball and Fogal. Pet. 32–33. The evidence discussed above concerning reasons to combine supports a reasonable expectation of success. We are also persuaded by Dr. Suhling’s testimony that the “combination of Ball, Fogal, and Mostafazadeh would require no modification of the multichip modules in Ball and Fogal: rather Mostafazadeh merely explains in more detail methods known in the art for creating chips with adhesive surfaces.” Ex. 1002 ¶ 239; see also id. ¶¶ 62– 69 (describing prior art methods for applying adhesive to the backside of a wafer). For the foregoing reasons, we find that Petitioner has demonstrated that a person of ordinary skill in the art would have had a reasonable expectation of successfully combining Ball, Fogal, and Mostafazadeh.” slip op. at 46
- ExcludeOther
“We do not discuss or cite any of these exhibits in this Decision, or rely on any of them in reaching our determination that all of the challenged claims are unpatentable. Because their presence in the record would not affect our analysis in this Decision, we dismiss as moot Petitioner’s motion with respect to these exhibits.” slip op. at 72
Patent outcomesUS RE38,806 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR - Micron Technology, Inc. v. Katana Silicon Technologies LLCAll claims unpatentablePTAB · May 13, 2024 · IPR2023-00073 · APJ Sheldon M Mcgee · IPR · Final written decision
Claims 1–15 are unpatentable under §103: the Board found the asserted combinations taught the limitations, with motivation to combine and a reasonable expectation of success.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The claim language, “forming” an “adhesion layer on a back surface,” suggests strongly that an “adhesion layer” may be formed in situ on the back surface of a wafer. The testimony of Patent Owner’s expert, Mr. Elenius, supports this interpretation. See Ex. 2014 ¶¶ 43, 50 (testifying that a person of ordinary skill in the art “would recognize that there are multiple methods of forming an ‘adhesion layer’ on the back surface of the semiconductor chip” and that “[p]astes and other adhesives, adhesive agents, adhesive layers or other material that are dispensed onto a substrate or chip back are formed into a layer over time as they harden through curing” (emphasis added)). Thus, the language of the claims of the ʼ879 patent does not support Patent Owner’s construction that the “adhesion layer” must be a preformed layer that is adhered. Cf. PO Resp. 21–23 (arguing for that construction).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Nevertheless, based on our review of the ’879 patent, the types of problems and solutions described in the ’879 patent, and cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 13
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Mostafazadeh, could overflow.” PO Resp. 41, 42 (citing Ex. 2014 ¶ 121). According to Patent Owner, the downward pressure during mounting “could cause adhesive to squeeze out.” Id. at 41. We find that Patent Owner’s argument and the corresponding testimony of Mr. Elenius are speculative and do not outweigh Petitioner’s evidence of obviousness. The overflow issue was recognized and addressed by Mostafazadeh. Contrary to Patent Owner’s argument, Mostafazadeh provides explicitly that its adhesive layer “covers an entire mounting surface 190 of the selected integrated circuit dies 182 and does not extend beyond a boundary of the mounting surface 190.” Ex. 1003, 10:6–9 (emphasis added). Additionally, Mostafazadeh teaches that when “the adhesive layer is rolled on, it is exactly the same size as the mounting surface and is quite even. Thus, when the die is attached to its supporting surface the adhesive does not extend beyond the mounting surface of the die.” Id. at 9:15–18. Further, Mostafazadeh teaches that its process avoids the adhesive jutting around the edges of the die. Id. at 2:26–28. These teachings support that a person of ordinary skill in the art would have had a reasonable expectation of successfully applying Mostafazadeh’s die attachment method to Ball’s multichip device while avoiding adhesive overflow. Next, Patent Owner argues that Petitioner’s combination would fail” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“preponderance of the evidence favors Petitioner. Petitioner demonstrates persuasively that a person of ordinary skill in the art would have had reasons to combine Ball’s stacked multichip module using flip-chip and wire bond connections with Mostafazadeh’s process for applying adhesive to create individual chips with adhesive backsides. Pet. 25–28. In particular, Petitioner shows that a person of ordinary skill in the art would have considered Mostafazadeh’s teaching of applying the adhesive to a wafer surface and then subsequently dicing the wafer in order to provide a more efficient manufacturing process for multichip modules and to simplify Ball’s process of stacking chips. Id.; see KSR, 550 U.S. at 417 (stating that the “mere application of a known technique to a piece of prior art ready for the improvement” suggests obviousness). The teachings of both Ball and Mostafazadeh support Petitioner’s” slip op. at 33
Patent outcomesUS 6,352,879 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,352,879 - The Noco Company, Inc. v. Pilot, Inc.All claims unpatentablePTAB · Feb 6, 2024 · IPR2022-01417 · APJ Jeffrey W Abraham · IPR · Final written decision
Claims 1–27 are unpatentable: claims 1, 2, 5–12 and 13, 14, 17–19, 22–24, 27 are anticipated; the remaining claims are obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a Bachelor’s Degree in a relevant engineering discipline such as electrical engineering and at least two years of relevant experience in the design and/or development of automotive electrical systems, or a Masters or more advanced degree in a relevant engineering discipline such as electrical engineering.” Pet. 6–7 (citing Ex. 1003 ¶ 46). Patent Owner does not challenge Petitioner’s definition or offer its own. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’236 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’236 patent and the prior art. 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 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “[a]ll of the claim terms are given their plain meaning, as understood by the [person of ordinary skill in the art], unless indicated otherwise.” Pet. 9. After considering the arguments and information Petitioner presents, we determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“with Petitioner that the ’236 patent is not entitled to the 2014 priority date of the original application, or any date earlier than April 21, 2021, which is the filing date of the ’236 patent. Whether the Specification complies with the written description requirement calls for a comparison of the scope of the claim with the scope of the description to determine whether the inventor has demonstrated possession of the claimed invention. See Ariad, 598 F.3d 1336 at 1353; Power Oasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). The independent claims of the ’236 patent each require (1) a load detection sensor “configured to detect presence of a vehicle battery” and (2) a reverse polarity sensor “configured to detect polarity of a vehicle battery.” Ex. 1001, 5:16–27 (claim 1), 6:7–22 (claim 13), 6:65–7:13 (claim 18), 8:1– 15 (claim 23). The Specification of the ’236 patent does not expressly disclose both a load detection sensor and reverse polarity sensor configured to perform the recited functions. Instead, the Specification identifies a single circuit, the “automatic detection module,” that “can automatically detect[] whether the load is detected” and “whether the electrode is connected with the automobile storage battery reversely.” Ex. 1001, 2:51–54. We are persuaded by Petitioner’s arguments that the disclosure of a single circuit capable of performing two functions does not demonstrate the inventors had possession of an invention that requires two separate sensors configured to perform separate functions as recited in the claims. See Ariad, 598 F.3d 1336 at 1352 (“[A] description that merely renders the invention obvious does not satisfy the [written description] requirement.”); Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (holding that “the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue,” but that “one skilled in the art, reading the original disclosure, must immediately discern the limitation at issue in the claims”); cf. PIN/NIP, Inc. v. Platte Chem. Co., 304 F.3d 1235, 1248 (Fed. Cir. 2002) (finding a claim for a method involving sequential application of two chemicals was invalid for lack of adequate written description where the specification indicated that the invention was a method of applying a “composition” containing the two chemicals). For all of the foregoing reasons, we agree with Petitioner that the Specification of the ’236 patent does not provide adequate written description support for distinct “load detection” and “reverse polarity” sensors, and, therefore, the challenged claims are not entitled to a priority date earlier than April 21, 2021, the filing date of the ʼ236 patent.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“demonstrating that Nook-015 discloses the limitations in claim 1. After reviewing the undisputed evidence and arguments Petitioner presents in the Petition regarding claim 1, we agree, for the reasons stated by Petitioner and supported by Dr. Wood’s testimony, that Nook-015 discloses an internal power supply, output port, load detection sensor, reverse polarity sensor, power switch, and microcontroller, all connected and configured as claim 1 requires. Ex. 1004, 3:17–26, 3:67–4:2, 4:20–38, 5:35–37, 5:50–54, 8:4–37; Ex. 1003 ¶¶ 78–79; Pet. 25–29. b. Claims 2 and 5–12 Claims 2 and 5–12 depend directly or indirectly from claim 1. Petitioner directs us to portions of Nook-015 that disclose the additional limitations in these claims. Pet. 29–33. Patent Owner does not dispute Petitioner’s arguments or evidence regarding these dependent claims. For the reasons stated by Petitioner and supported by Dr. Wood’s testimony, we agree that Nook-015 discloses the limitations recited in these claims, as discussed below.” slip op. at 20
Patent outcomesUS 11,104,236 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,104,236 - The Noco Company, Inc. v. Pilot, Inc.All claims unpatentablePTAB · Jan 19, 2024 · IPR2022-01237 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–24 are unpatentable under § 103 as obvious over the asserted combinations of Krieger, Richardson, Baxter, Tracey, and Lai.
RulingsFinal written decision- Adverse judgmentDenied
“Having considered the parties’ respective arguments as to whether adverse judgment should be entered against Patent Owner under 37 C.F.R. § 42.73(b) based on an abandonment of the contest by Patent Owner, we have decided not to enter adverse judgment against Patent Owner. In light of Patent Owner’s statement regarding the Petition’s merits and Patent Owner’s statement that it does not request adverse judgment, we do not view Patent Owner’s actions as an abandonment of the contest. See Apple Inc. v. Zipit Wireless, Inc., IPR2021-01124, Paper 14 (Dec. 21, 2022) (vacating entry of adverse judgment after determining that it was not sufficiently clear that the patent owner intended to abandon the contest) (precedential); Order Resp. 2–4.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention would have had “at least a Bachelor’s Degree in a relevant engineering discipline such as electrical engineering and at least two years of relevant experience in the design and/or development of automotive electrical systems, or a Masters or more advanced degree in a relevant engineering discipline such as electrical engineering.” Pet. 5. Dr. Wood’s testimony supports Petitioner’s assertion. See Ex. 1003 ¶ 45. We adopt Petitioner’s description of an ordinarily skilled artisan as consistent with the ’077 patent and the asserted prior art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “preponderance of the evidence” standard for proving unpatentability. slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Conclusion About Obviousness for Claim 1 For the reasons discussed above, Krieger teaches the invention covered by claim 1. See supra §§ III.D.2(a)–(g). Hence, Petitioner has shown by a preponderance of the evidence that claim 1 is unpatentable under § 103 as obvious over Krieger.” slip op. at 27
Patent outcomesUS 11,124,077 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,124,077 - 3M Company v. Bay Materials, LLCAll claims unpatentablePTAB · Jan 16, 2024 · IPR2022-01215 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1–4, 7, 11–14, 16, 18, and 31 are unpatentable as anticipated by Yu; claims 1–4, 7, and 31 are also anticipated by Stewart.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties disagree about the appropriate definition of the ordinarily skilled artisan and, in particular, whether that artisan would have had experience or familiarity with the “processing of thermoformable polymer sheets” to form “orthodontic and dental appliances.” Resp. 16 (citing Ex. 2008 ¶ 14); see Pet. 14–15 n.1 (disagreeing with that proposition). Patent Owner’s definition is supported by the plain wording of challenged claim 18, which recites a dental appliance. Resp. 16 (citing Pet. 14 n.1); Ex. 1001, 26:50–52. The ’263 patent, moreover, includes an “extensive discussion of dental appliances and the unexpectedly good properties of dental aligners” thermoformed from polymeric sheets. Resp. 16; Ex. 1001, 1:20–47, 4:57–5:10, 5:26–6:6, 6:39–43, 10:25–51, 11:30–48, 12:22–24, 13:25–29, 21:1–6, 24:2–3, 24:30–57; see id. at 15:23– 38 (describing the thermoforming process for making dental appliances).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“about 60A to about 85D” when employed as the two soft outer layers in an unclaimed and disfavored soft-hard-soft layer composition (id. ¶ 109) does not convey, with reasonable clarity, that the inventors had possession of the inventive hard-soft-hard layer composition in which the single soft, inner layer also is within that same hardness range (id. ¶ 110). Critically, when discussing the soft, inner layer of the inventive hard-soft-hard layer composition, the ’176 application nowhere indicates that the soft inner layer must have “a hardness of from about 60A to about 85D.” Id. ¶ 109 (discussing a prior art embodiment); see id. ¶¶ 7, 33–35, 109–110. Even if the hardness limitation of the challenged claims would have been obvious from the relied-upon disclosure in the ’176 application (id. ¶ 109), as a matter of law, that circumstance is insufficient to establish a filing date through that application. “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (quotations omitted); see Pet. 21 (quoting that controlling precedent). Each of Patent Owner’s countervailing arguments is unpersuasive because, at best, Patent Owner attempts to show that it would have been obvious to import––from the description of the soft outer layers in an unclaimed and disfavored soft-hard-soft embodiment––a limitation not expressly imposed on the soft inner layer in the inventive hard-soft-hard embodiment. Ex. 2001 ¶ 109; Resp. 35–42. A showing of obviousness is not enough under the controlling precedent cited by Petitioner. PowerOasis, 522 F.3d at 1306.” slip op. at 9
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
“about 60A to about 85D” when employed as the two soft outer layers in an unclaimed and disfavored soft-hard-soft layer composition (id. ¶ 109) does not convey, with reasonable clarity, that the inventors had possession of the inventive hard-soft-hard layer composition in which the single soft, inner layer also is within that same hardness range (id. ¶ 110). Critically, when discussing the soft, inner layer of the inventive hard-soft-hard layer composition, the ’176 application nowhere indicates that the soft inner layer must have “a hardness of from about 60A to about 85D.” Id. ¶ 109 (discussing a prior art embodiment); see id. ¶¶ 7, 33–35, 109–110. Even if the hardness limitation of the challenged claims would have been obvious from the relied-upon disclosure in the ’176 application (id. ¶ 109), as a matter of law, that circumstance is insufficient to establish a filing date through that application. “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (quotations omitted); see Pet. 21 (quoting that controlling precedent). Each of Patent Owner’s countervailing arguments is unpersuasive because, at best, Patent Owner attempts to show that it would have been obvious to import––from the description of the soft outer layers in an unclaimed and disfavored soft-hard-soft embodiment––a limitation not expressly imposed on the soft inner layer in the inventive hard-soft-hard embodiment. Ex. 2001 ¶ 109; Resp. 35–42. A showing of obviousness is not enough under the controlling precedent cited by Petitioner. PowerOasis, 522 F.3d at 1306.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“For the above reasons, we determine that the challenged claims are not entitled to the benefit of the filing date of the ’176 application because the application does not indicate that the inventors had possession of the hardness limitation of the claimed invention. See Reply 7–13 (Petitioner’s arguments on this issue). On the full trial record, we find that the earliest effective filing date to which the challenged claims are entitled is December 18, 2019, the filing date of the ’256 application from which the ’263 patent issued. Ex. 1001, codes (21), (22). Every challenged claim recites, or inherits via dependence, the hardness limitation “of from about 60A to about 85D” for the inner elastomeric layers of the inventive hard-soft-hard multilayer composition. Ex. 1001, 25:2–9 (independent claim 1), 26:1–8 (independent claim 11), 27:49–51 (independent claim 31). In view of our determination that the earliest effective filing date to which the challenged claims are entitled is December 18, 2019, we agree with Petitioner that Yu (Example 1) and Stewart (Example 2) qualify as prior art against the challenged claims. Pet. 43–49 (Petitioner’s persuasive arguments and evidence on point).” slip op. at 13
Patent outcomesUS 10,870,263 unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites GrahamPatents in suitUS 10,870,263 - Eden Park Illumination, Inc. / Larson Electronics LLC et al. v. S. Edward NeisterAll claims unpatentablePTAB · Nov 14, 2023 · IPR2022-00381 · APJ Julia Heaney · IPR · Final written decision
Claims 1–10 and 12–18 are unpatentable as obvious; the revised contingent motion to amend is denied because proposed claims 19–25 lack written description support.
RulingsFinal written decision- Skill levelOther
“1. Principles of Law In an inter partes review, the petitioner bears the ultimate burden of persuasion to show unpatentability, which never shifts to the patent owner. Dynamic Drinkware LLC v. National Graphics, Inc., 800 F.3d 1375, 1379– 1380 (Fed. Cir. 2015). “However, when a patent owner attempts to antedate an asserted prior art reference, the patent owner takes on a temporary burden of production.” Medtronic, Inc. v. Teleflex Innovations S.À.R.L., 68 F.4th 1298, 1303 (Fed. Cir. 2023) (citing Dynamic Drinkware, 800 F.3d at 1378– 79)). “Once that burden is met, the burden shifts back to the petitioner.” Id. “[A] patent’s claims are not entitled to an earlier priority date because the patentee claims priority. . . . Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120,” including a written description in the earlier-filed application that satisfies § 112. In re NTP, Inc., 654 F.3d 1268, 1276–77 (Fed. Cir. 2011) (citations omitted)); see also Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 870–71 (Fed. Cir. 2010). “[T]he hallmark of written description is disclosure,” and “the test [for satisfaction of the written description requirement] requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The written description “must ‘clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed,’” and “reasonably” convey to those skilled in the art “that the inventor had possession of the claimed subject matter as of the filing date.” Id. (alteration in original). Stated another way, “one skilled in the art, reading the original disclosure, must immediately discern the limitation at issue in the claims.” Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). To provide sufficient written description support, “[a] ‘disclosure” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“3. Reason to Combine Petitioner contends it would have been obvious to a person of ordinary skill in the art to combine (1) Eckhardt’s method of disinfecting skin using any light source that emits light capable of sterilization or disinfection, with (2) Sosnin’s KrCl or XeBr light sources, which generate photons having a wavelength of 222 nm and 282 nm, respectively. Pet. 21– 22 (citing Ex. 1003 ¶¶ 40, 81; Ex. 1004 ¶¶ 31, 69; Ex. 1005, 1547). Petitioner contends a person of ordinary skill would have been motivated to combine the teachings of Eckhardt and Sosnin for several reasons: (1) Eckhardt’s teaching of using any light source capable of sterilization or disinfection, and specifically “narrow spectrum light (e.g., a line spectrum)” would have suggested to a person of ordinary skill in the art to incorporate other well-known germicidal UV light sources like Sosnin’s, and both references teach that their light sources kill bacteria; (2) a person of ordinary skill would have implemented Eckhardt’s high-level disclosure of using UV- C light to disinfect skin with Sosnin’s 222 nm excimer lamp because Sosnin’s lamp’s wavelength is within the range of 220 to 310 nm suggested by Eckhardt; (3) the effectiveness and relative safety of directing UV-C light of 222 nm on bare skin for disinfection was already understood by persons of ordinary skill in the art, even though there was general caution against exposing skin to excessive UV radiation. Pet. 22–24 (citing Ex. 1003 ¶¶ 40, 81–92; Ex. 1004 ¶¶ 5, 31, 69, 70; Ex. 1005, 1545–47; Ex. 1011 ¶¶ 28, 40; Ex. 1013 ¶ 8; Ex. 1015, 2:22–67; Ex. 1016, 2:23–26; Ex. 1017, 58).” slip op. at 25
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
“with our analysis of the effective filing date of original claims 12–18 that Patent Owner does not meet its burden to demonstrate the inventor’s possession in the ’626 provisional of generating photons of at least two single line wavelengths. Having considered the additional disclosures of the ’626 provisional Patent Owner points to in its RMTA (see RMTA 9), we find that none of these disclosures describe using both 222 nm and 254 nm single line wavelengths. See Ex. 1008 ¶¶ 8, 12, 27, claim 9; Ex. 2047, 6–9. For example, the recitation of “apparatus that consists of a NUV source, ESP, ozone generator, mercury lamps, and humidifier with controls as defined in claims 3–8 and any combination therein” in claim 9 of the ’626 provisional generally identifies various sources that may be used, but would not have indicated to a person of ordinary skill that the inventor had possession of generating single line wavelengths of 222 nm and 254 nm. Mr. Lawal’s testimony supports this finding. Ex. 1053 ¶¶ 1–12. Accordingly, we determine that Patent Owner does not meet its burden to demonstrate written description support for generating photons of at least two single line wavelengths, in claims 19–25 of its RMTA.19 Because Patent Owner has not satisfied the statutory and regulatory prohibition against introducing new matter in the revised proposed substitute claims, we deny the RMTA as to claims 19–25. 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii). Accordingly, we need not reach the patentability challenges Petitioner raises with regard to claims 19–25.” slip op. at 77
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteOther
“19 We also determine that claim 19 does not particularly point out and distinctly claim the invention sought to be patented, as required by 35 U.S.C. § 112(b), because “the microorganisms” in element [19B] lacks antecedent basis.” slip op. at 78
Patent outcomesUS 9,700,642 unpatentable§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,700,642
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.