• Jiangsu Favored Nanotechnology Co., Ltd. v. P2i Ltd.All claims unpatentable
  PTAB · Apr 11, 2025 · IPR2024-00380 · APJ Sheldon M Mcgee · IPR · Final written decision

  Claims 1–5, 7, and 9–14 are unpatentable as obvious over Cohen and Legein or Francesch and Legein; Petitioner’s motion to strike is denied as moot.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “The parties agree that a person of ordinary skill in the art in the field of the ’087 patent in June 20154 “would have had at least a bachelor’s degree in a field such as chemistry, physics, or chemical engineering, as well as at least two years of experience with plasma-polymerization techniques.” Pet. 20 (citing Ex. 1002 ¶¶ 22–29); PO Resp. 13 (Patent Owner stating that it “does not dispute this characterization of the level of ordinary skill in the art.”); see also PO Sur-reply 1–2 (noting both parties’ agreement on the education and experience level of the ordinarily skilled artisan).” slip op. at 7

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

    “On the fully developed trial record, we determine that no claims need an express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Because of Patent Owner’s shifting definitions of the education and experience level of the ordinarily skilled artisan, it is unclear on the complete record what precise definition Patent Owner and Dr. Senkevitch are applying when arguing the skilled artisan’s capabilities. PO Resp. 13, 22–27, 31–32, 34–40; PO Sur-reply 1–6, 11–13; Ex. 2007 ¶¶ 30, 31, 33, 34, 37, 40, 52–55, 60, 68, 74, 76, 77, 80–86, 89, 91, 94, 95, 100, 102–105, 108, 110, 111, 113–116, 118–120, 122, 124, 127–134. We, therefore, give Dr. Senkevitch’s testimony regarding the capabilities of a person of ordinary skill in the art minimal weight, which leaves us with Patent Owner’s insufficiently supported arguments regarding the skilled artisan’s capabilities. PO Resp. 13, 22–27, 31–32, 34–40; PO Sur-reply 1–6, 11–13. Moreover, as Petitioner correctly points out, the ʼ087 patent expressly teaches that the precise conditions for forming a protective polymeric coating “will vary depending upon factors such as, without limitation, the nature of the monomer compound, the crosslinking agent, the substrate, as well as the desired properties of the coating” and that such “conditions can be determined using routine methods.” Ex. 1001 15:1–15:5 (emphasis added); Pet. Reply 17. Where the patent itself leaves to the judgment of an ordinarily skilled artisan the assessment of these factors to ascertain suitable conditions for forming the protective coating, we find persuasive Petitioner’s view that it would have been well within the level of ordinary skill to ascertain such suitable conditions.” slip op. at 20

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “We disagree with Patent Owner. Although the claims of the ʼ087 patent recite obtaining the protective cross-linked polymeric coating “by exposing the device or component to a plasma,” the field of endeavor analysis in an analogous art inquiry does not exclusively turn on the claims at issue, but rather takes account of the entirety of a patent’s disclosure. See In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004) (explaining that “the PTO must show adequate support for its findings on the scope of the field of endeavor in the application’s written description and claims” (emphasis added)); In re Mettke, 570 F.3d 1356, 1359 (Fed. Cir. 2009) (rejecting an argument that the field of endeavor was limited to a claimed “Internet terminal” when “the specification describes various communication media, including facsimile machines and email, as related to the invention.”). This is significant here because the ʼ087 patent discloses that “[t]he … invention relates to protective coatings” and specifically “relates to protective coatings for electronic or electrical devices and components thereof, and methods of forming such coatings.” Ex. 1001, 1:14–17. Based on this disclosure, we find that the ʼ087 patent’s field of endeavor relates to “protective coatings for electronic or electrical devices and components thereof” broadly, not just those formed on such devices or components via a plasma polymerization process as asserted by Patent Owner. Id. Although Cohen does not explicitly disclose that its crosslinked polymers constitute a “protective coating,” Cohen does disclose that its “copolymerizable mixture can be cast into films” (Ex. 1004, 2:61–62), that the polymerization can “effected in situ,” and that the polymers may be used in “numerous” electrical applications (id. at 5:17–25). Tr. 8:9–10:2, 27:2– 21; see Pet. Reply 5 (explaining how “Cohen described insulating polymers that could be applied as films and be used to protect substrates including cables and electrical coils.” (citing Ex. 1004, 2:60–63, 5:13–25)). These disclosures suggest strongly that Cohen’s crosslinked polymers––if cast into a film or formed in situ on an electrical device or component––would serve as a protective coating on that electrical device or component, even though Cohen does not expressly refer to its crosslinked polymers ipsis verbis as a “protective coating.” Thus, we find that Cohen is within the field of endeavor of the ʼ087 patent.” slip op. at 15

  Patent outcomesUS 11,041,087 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,041,087
• Innoscience (Zhuhai) Technology Company, Ltd. / Innoscience America, Inc. v. Efficient Power Conversion CorporationAll claims unpatentable
  PTAB · Mar 25, 2025 · IPR2023-01384 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 1–7 are unpatentable as obvious over Yoshida and Saxler; the Board did not reach the alternative grounds.

  RulingsFinal written decision

  • Skill levelOther

    “In light of the record before us, we determine that we do not need to reach a specific finding regarding the level of ordinary skill in the 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 13

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

    “In the Institution Decision, we declined to adopt Petitioner’s proposed construction of the “side surfaces” limitation and determined that it was not necessary to further construe this term because “[t]he parties do not dispute that the language ‘side surfaces extending horizontally’ encompasses a gate material with sloped side surfaces as depicted in Figure 5 of the ’335 patent.” Inst. Dec. 11–16 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); 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.”)). We invited the parties to address this limitation further during the course of this trial, but neither party provided additional evidence or argument regarding the “side surfaces” limitation. Inst. Dec. 16; see generally PO Resp.; Reply; Sur-reply. Accordingly, we maintain our determination from the Institution Decision that we do not need to construe the “side surfaces” limitation. Inst. Dec. 15– 16.” slip op. at 14

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

    “This evidence, particularly the language in the ’335 patent itself, undermines Patent Owner’s argument that “[t]he process for forming gate ledges using separate masks instead of the self-aligned process disclosed in the ’335 patent cannot produce ledges that are ‘substantially symmetric.’” PO Resp. 39 (emphasis added); see also PO Resp. 42–43 (arguing that a gate structure with ledges having substantially equal widths is “not achievable” without using a single photo-mask process). We have considered the evidence presented by Patent Owner and Dr. Schubert in support of Patent Owner’s arguments. PO Resp. 38–43; Ex. 2005 ¶¶ 49–51. We, however, are unable to discern sufficient evidence supporting a conclusion that using separate masks cannot produce ledges that are substantially symmetric, particularly when the ’335 patent suggests otherwise. See Ex. 1001, 4:60– 63 (referring only to the “possibility of misalignment”). Even if, as Patent Owner and Dr. Schubert contend, misalignment “naturally” occurs when using a two-mask process, that does not foreclose the possibility that the” slip op. at 18

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

    “It is well settled that “[a] reference does not teach away . . . if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Furthermore, “teaching that a composition may be optimal or standard does not criticize, discredit, or otherwise discourage” slip op. at 31

  Patent outcomesUS 10,312,335 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,312,335
• Innoscience (Zhuhai) Technology Company, Ltd / Innoscience America, Inc. v. Efficient Power Conversion CorporationAll claims unpatentable
  PTAB · Mar 18, 2025 · IPR2023-01381 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–3 and 7–9 are unpatentable as obvious over Uemoto and Smith; the motion to amend is granted, and proposed substitute claims 13 and 14 are not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In order to determine whether an invention would have been obvious at the time the application was filed, we consider the level of ordinary skill in the pertinent art. Graham, 383 U.S. at 17. In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation omitted). Petitioner contends a person of ordinary skill in the art “would have possessed at least a four-year degree in electrical engineering, chemical engineering, physics, or material science, or a closely related field, and at least two years of experience in semiconductor device design or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies.” Pet. 5–6. Petitioner contends “[a]dditional education could substitute for professional experience and vice versa.” Id. at 6. Patent Owner contends that a person of ordinary skill in the art would have had “at least a four-year degree in electrical engineering, physics, material science, or a closely related field, and three years of professional work experience in the epitaxial growth, design, and fabrication of semiconductor electronic devices, including those of GaN.” PO Resp. 7 (citing Ex. 2009 ¶ 82). Upon review of the evidence of record and the parties’ arguments, we adopt Petitioner’s definition of the person of ordinary skill in the art as it is consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). We note, however, that the conclusions reached in this Decision would be the same under either proposed definition of the ordinarily skilled artisan. See Ex. 2009 ¶ 83 (Dr. Schubert testifying that his opinions would be the same under either proposed definition); Ex. 1033 ¶ 9 (Dr. Shealy testifying that the differences in proposed definitions of the ordinarily skilled artisan “would not change the outcome of the invalidity analysis in any material manner”); PO Resp. 7; Pet. Reply 1.” slip op. at 9

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

    “compensated GaN layer above the barrier layer, and a gate contact above the compensated GaN layer.” Ex. 1001, 5:12–18. Petitioner contends the term “compensated” indicates that the step of compensating the GaN layer has already occurred, such that the term “compensated GaN layer” should be construed as a “‘[d]oped GaN layer formed with a step to passivate its impurities’ which is a ‘product-by-process’ limitation.”5 Pet. 12–14. And, because compensation with hydrogen was the “critical step” distinguishing the claims from the prior art, and because hydrogenation in as-grown III-nitride materials had been well known for over a decade by 2009, Petitioner contends “compensated” “cannot be interpreted as mere hydrogen presence in as-grown material, a well-known property of doped GaN.” Id. at 15. Patent Owner contends “compensated GaN material” should be construed as “a semiconductor GaN gate material in which one type of impurity (for example, donor) cancels the electrical effects of the other type of impurity (for example, acceptor).” PO Resp. 11 (citing Ex. 2009 ¶ 92) (emphasis added). Patent Owner contends this construction is consistent with the IEEE dictionary, which defines “compensated semiconductor” as 5 Given that product-by-process steps in a device claim are not entitled to patentable weight, Petitioner contends “the prior art only need show a material with passivated impurities to show unpatentability, not the step to achieve it.” Pet. 15–16. “[a] semiconductor in which one type of impurity or imperfection (for example, donor) partially cancels the electric effects of the other type of impurity or imperfection (for example, acceptor).” PO Resp. 14 (quoting Ex. 2004). Patent Owner contends its construction is also consistent with the written description of the ’294 patent, which explains that a compensated GaN material is part of the gate and includes a p-type impurity that imparts an electrical effect (i.e., conductivity), as well as a second impurity, e.g., hydrogen, that partially cancels the electrical effect of the p-type impurity, rendering the layer semi-insulating. Id. at 14–15 (citing Ex. 1001, 3:10–13, 3:43–45). On this record, we construe “compensated GaN layer” as “a GaN layer in which one type of impurity (for example, donor) partially cancels the electric effects of the other type of impurity (for example, acceptor).” This is consistent with the disclosures of the ’294 patent, the IEEE dictionary definition, and the construction ultimately adopted by the ITC. Ex. 2004, 3; Ex. 1049, 16–17 (ITC construing “compensated GaN layer” to mean “a GaN layer in which one type of impurity partially cancels the electrical effects of another type of impurity”); Ex. 1001, 3:43–45 (explaining that the compensated GaN layer of the ’294 patent is formed through the “passivation of a p-type impurity using hydrogen”). For the reasons set forth below, however, we decline to construe “compensated GaN layer” as a product-by-process claim term (as asserted by Petitioner), or to limit the compensated GaN layer to a gate material (as asserted by Patent Owner).” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “There are two exceptions to the general rule that we apply the ordinary and customary meaning of a claim term: (1) when a patentee sets out a definition and acts as his own lexicographer, or (2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution. See Thorner, 669 F.3d at 1365. The standards for lexicography and disclaimer, however, are “exacting.” Id. at 1366. There is no argument that the patentees acted as their own lexicographer to redefine the term “compensated GaN layer.” With respect to disavowal, a “patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Thorner, 669 F.3d at 1366 (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)). As noted by Patent Owner, the title of the ’294 patent is, in part, “Compensated Gate MISFET” and much of the discussion of the ’294 patent is of a compensated GaN layer that is directly below the gate contact and above a barrier layer and operates in conjunction with the gate contact to control the on/off state of the transistor. PO Resp. 12–14. We are presented with insufficient argument or evidence to conclude, however, that these disclosures rise to the level of a disclaimer. For example, although the title of the ’294 patent is directed to a “Compensated Gate MISFET,” claim 1 is more broadly directed to “[a] column III Nitride transistor.” Ex. 1001, 5:12, code (54). Nor are we directed to an expression or statement of manifest exclusion in the ’294 patent that would serve to disclaim any “compensated GaN layer” that is not directly below the gate and/or that does not function in concert with the gate electrode to control the on/off state of the transistor. See Thorner, 669 F.3d at 1366. With respect to the stated goals of the invention, as noted by Patent Owner, one of the primary purposes of the compensated GaN layer of the ’294 patent is to reduce gate leakage and gate capacitance. Ex. 1001, 2:13– 19, 3:18–21 (“[U]sing a compensated semiconductor layer 38 leads to low gate leakage during device operation.”). We cannot use the goals of the invention, however, to rewrite the claims or insert terms that are not present. See Thorner, 669 F.3d at 1366. Moreover, the prior art of record indicates that a compensated GaN layer that is below the gate contact and above a barrier layer, but not part of the active gate structure, may also “decrease the leakage current between the gate and the drain.” Ex. 1006 ¶¶ 44 (“Even when a positive bias of 5 V or higher is applied to the gate electrode, no significant gate-leakage current is observed.”), 61. As such, evidence of record suggests that a person of ordinary skill in the art would have understood that one of the primary goals disclosed in the ’294 patent is achieved regardless of whether the compensated GaN layer is part of the gate, or simply in close vicinity to the gate. In view of the foregoing, we are not persuaded that the written description of the ’294 patent indicates that the “compensated GaN layer” must be part of the gate structure.” slip op. at 17

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “To be probative, Patent Owner must prove there is a nexus between the presented evidence and the merits of the claimed invention. See Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). A rebuttable presumption of nexus applies when the “patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco, 851 F.2d at 1392). “That is, presuming nexus is appropriate ‘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.’” Id. (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). If the praise is not limited to the features of the claimed invention, the patent owner may still prove nexus “by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. at 1373–74 (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). Patent Owner contends that the compensated gate of the ’294 patent “was a breakthrough invention and resulted in the first commercially viable enhancement-mode GaN transistor.” PO Resp. 60 (citing Ex. 2009 ¶¶ 192– 193, 197; Ex. 2021). Patent Owner further contends that this achievement required the counter-intuitive use of a compensated gate material in the gate structure, and represented “a technological leap that laid the foundation for viable enhancement-mode GaN transistors.” Id. at 61–62. For this achievement, Patent Owner contends the inventor, Dr. Alex Lidow, received the 2015 SEMI Award. Id. at 60 (citing Ex. 2021). Upon review of Patent Owner’s evidence and the parties’ arguments, we find that Patent Owner’s objective indicia evidence is entitled to little, if any, weight. The evidence of praise relied upon by Patent Owner is not clearly linked to the claimed invention or any particular product having each of the claimed features of the ’294 patent. Ex. 2021. For example, the 2015 SEMI award was provided to Dr. Lidow “for commercialization of GaN power devices.” Id. An article explaining the award indicates that “high cost” previously “limited [the] commercial success” of GaN technologies, but Dr. Lidow was able to overcome these issues, “from resolving packaging limitations to establishing a low-cost supply chain,” “through persistence.” Id. This praise is not demonstrably linked to the claimed invention or any particular device, and does not mention the use of a compensated gate, or any other relevant feature recited in the claims. In view of the foregoing, we determine that Patent Owner’s objective evidence of non-obviousness is entitled to little, if any, weight.” slip op. at 20

  Patent outcomesUS 8,350,294 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 8,350,294
• Amphenol Corp. v. PPC Broadband, Inc.All claims unpatentable
  PTAB · Feb 19, 2025 · IPR2023-01363 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1, 2, and 10–13 are unpatentable as obvious over the stated combinations of Holmberg, Battey, Blankenship, and Cowen.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least 1 year of experience related to communication networks or the equivalent.” Pet. 7. Petitioner further contends that “[a]dditional education could substitute for professional experience or significant experience in the field could substitute for formal education.” Id. at 7–8 (citing Ex. 1003 ¶¶ 29–31). Dr. Eldering agrees that one of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least one year of experience related to communication networks or the equivalent.” Ex. 2001 ¶ 24. According to Dr. Eldering, “[a] person with less relevant practical experience but with additional experience would also qualify.” Id. Patent Owner contends that” slip op. at 9

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

    “Although Patent Owner disagrees with Petitioner’s construction, it contends “the Board need not resolve this claim construction dispute because Petitioner’s proposed grounds 1-5 are all insufficient under either construction.” PO Resp. 19. Upon review of the parties’ arguments and the prior art of record, we determine that no claim terms require express construction for purposes of this decision. 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)). For example, we discuss below in Section III.G why we do not reach the claim construction issue presented by Petitioner.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We find that Holmberg expressly contemplates using its wall box within multi-dwelling units, notes that multi-dwelling wall boxes in the prior art were “typically provided” on every floor, and discloses that the multi-dwelling wall boxes would contain optical couplings for each resident on a given floor. Ex. 1004 ¶¶ 7, 34; Pet. Reply 8–10. In view of these disclosures, we credit the testimony of Dr. Kiaei that one of ordinary skill in the art would have sought to use Holmberg’s wall box in multi-dwelling units and would have seen a need to access the area behind spice tray 230 to connect and disconnect subscribers. Ex. 1003 ¶ 92; Ex. 1033 ¶¶ 7–8. Moreover, even if Holmberg were limited to mid-span locations and distributing drop cables, as opposed to distribution cables for individual subscribers, as asserted by Patent Owner, Patent Owner does not dispute that a technician would still need periodic access to the area behind splice tray 230 in these mid-span devices. Tr. 38:3–39:1 (counsel agreeing that one would need to access the area behind splice tray 230 in Holmberg, albeit in “rare occasions”); Ex. 1003 ¶¶ 90–92; Ex. 1033 ¶¶ 7–8. Thus, whether used in the manner contemplated by Petitioner or Patent Owner, Petitioner persuasively demonstrates that access to the space behind splice tray 230 in Holmberg would be necessary. With access behind splice tray 230 required, Petitioner persuasively demonstrates that one of ordinary skill in the art would have seen a benefit to replacing Holmberg’s fasteners or screws with a hinged connection, such as that disclosed in Battey, to allow easier access to the area behind the splice tray. Pet. 41 (citing Ex. 1005 ¶ 39 (disclosing that a rotatable splice tray or shelf would “provide[] full and convenient access to the splice tray”)). First, Petitioner and Dr. Kiaei persuasively demonstrate that once the fibers of Holmberg are routed from behind splice tray 230 and the distribution cables spooled on this tray, a technician could not reasonably access fiber optic cables stored behind splice tray 230 without releasing or opening splice tray 230. Pet. Reply 14–15 (citing Ex. 1023, 60:20–61:15); Ex. 1033 ¶¶ 31–32. Second, Petitioner persuasively demonstrates that without a hinged connection, the technician would have to either hold the splice tray of Holmberg with one hand while performing the necessary routing and splicing steps, two screws would need to remain in place (essentially replicating a hinge), or the tray would have to be left to dangle, supported only by the routed and spliced fibers. Pet. Reply 19–20.” slip op. at 22

  • Strike new argumentNew argument consideredDecided for petitioner

    “Allegedly New Arguments on Reply Patent Owner contends that Petitioner’s arguments regarding the benefits of a hinged connection when performing the splicing and routing steps should be dismissed or ignored because they were improperly raised for the first time on reply. Sur-reply 19–20. We disagree. The Petition asserts that one of ordinary skill in the art would have sought to add a hinged connection, such as that disclosed in Battey, in Holmberg and would have seen a benefit to so doing. Pet. 40–44. Petitioner did not change its proposed combination or its stated rationale in its Reply. Rather, in response to Patent Owner’s counter-arguments, Petitioner expands upon the benefits of its proposed combination, i.e., the substitution of a hinged connection in place of fasteners. Pet. Reply 15–21. This is permissible, as a reply may properly expand on or extend previously raised arguments relating to the motivation to make the proposed changes to the prior art. See Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1385 (Fed. Cir. 2023) (explaining that the reply arguments properly relied on the same legal ground, the same prior art references, and same legal argument—the motivation to make the proposed changes to the prior art reference).” slip op. at 25

  Patent outcomesUS 9,008,483 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,008,483
• Opticis Co., Ltd. v. Inneos LLCAll claims unpatentable
  PTAB · Jan 29, 2025 · IPR2023-01256 · APJ Terry J Owens · IPR · Final written decision

  Claims 1, 2, 6, 7, and 9 are unpatentable as obvious over Kurita and Lemoff, with the Board declining to reach the remaining grounds.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “We accept the level of ordinary skill in the art stated by Petitioner and agreed with by Patent Owner with the exception of the open-ended language appears consistent with the ’416 patent and the prior art of record.” slip op. at 7

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

    “describe elements that are not affirmatively recited in the claims, and in view of the “bedrock principle of patent law that the claims of a patent define the invention,” we conclude that none of the unrecited limitations identified by Patent Owner are required by the claims. See Thorner v. Sony Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (explaining that the standard for disavowal is “exacting,” and the use of “the present invention” is not necessarily sufficient to meet this standard).” slip op. at 12

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

    “art would not have modified Kurita in view of Lemoff because Lemoff positions the signal emitters near the fiber to emulate WDM without the need for an external optical multiplexer or a similar device and discourages using optical wavelength multiplexers for short distances because the complexity of the design is often cost prohibitive (PO Resp. 47–48), Lemoff does not appear to limit the usefulness of the fiber connector to any particular optical signal transmission distance. Petitioner relies upon Lemoff for a suggestion to combine Lemoff’s fiber connector configuration teachings with Kurita’s multiplexer teachings to enable fibers to be plugged Fig. 2) (Pet 29, 31; Reply 17–18). Regarding Patent Owner’s argument that one of ordinary skill in the art would not have combined Lemoff’s receptacle and ferrule with discrete components in Kurita because the fiber would need to be manually fixed and aligned with or without a ferrule and, therefore, would serve no purpose (PO Resp. 48), Lemoff’s fiber connector appears to fix and align the fiber adequately for wavelength division multiplexing without manual fixation or alignment being required (Ex. 1006, 5:65–6:2, Fig. 2; Reply 18). The challenged claims do not require any greater degree of fixing and alignment than that provided by Lemoff’s fiber connector. Regarding Patent Owner argument that Lemoff’s device is not physically combinable with Kurita’s WDM multiplexer due to Lemoff’s device’s small size (PO Resp. 47–48; Reply 17–18), “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art” (In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Accordingly, we are not persuaded by Patent Owner’s argument.” slip op. at 26

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “stopped single optical fiber because fixing it in place does not passively align it with the optical components (PO Resp. at 35–37) is not persuasive because fixing Kurita’s fiber (40) in place in accord with Lemoff’s teaching regarding the ferrule (255) inserted until being stopped by the receptacle (260) (Ex. 1006, 5:50–6:15, Fig. 2) would align Kurita’s optical array (20), and lens (30)) (Ex. 1004 Fig. 3) passively in the same manner that Lemoff’s ferrule (255), after being inserted until stopped by the receptacle (260), passively aligns the optical fiber (250) with the optical components (optical imaging element 220 and light emitters within emission apertures 120) (Ex. 1006, 5:50–6:15, Fig. 2; Reply 15–16). Regarding Patent Owner’s argument that the light from each of Kurita’s lasers (11) depicted in Figure 3 cannot pass through a separate focusing lens (30) pie shaped sector because the lasers (11) and collimating lenses (21) are arranged linearly rather than being arranged about a circular axis (PO Resp. at 37–42), we do not agree. Claim 1 requires “focusing means having n separate radial sectors on its surface, and each of said n collimated beams passes through a separate one of said n sectors of said focusing means” (Ex. 1001, 5:34–37), claim 2 requires “four lasers and four collimating lenses are each formed in a two-dimensional, two by two array [centered on the focal axis of lens 30], wherein said focusing means is a single focusing lens, and wherein each radial sector is a pie-shaped quadrant” (id. at 5:41–44), and claim 7 requires “focusing means having four separate quadrants on its surface, and each of said four collimated beams passes through a separate one of said quadrants of said focusing means” (id. at 6:35–38). Kurita meets those claim requirements. Kurita’s two by two array (10A) of lasers (11), collimating lens (21) array (20), and focusing lens (30) are shown in Kurita’s Figure 3 (cropped) as follows: The image is a portion of Kurita’s Figure 3 showing Kurita’s laser array, collimating lens array, and focusing lens (30). Relative to a point at the center of the laser array (10A) or the collimating lens array (20), each laser (11) and each collimating lens (21) is in a separate quadrant that can be a quadrant of a circle (pie-shape) on lens 30 (Reply 12– 13, Ex. 1003 ¶¶ 85–91).” slip op. at 23

  Patent outcomesUS 7,198,416 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,198,416
• Nespresso USA, Inc. v. K-Fee System GmbHAll claims unpatentable
  PTAB · Sep 10, 2024 · IPR2023-00502 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–16 are unpatentable as obvious over the combined disclosures of Yoakim, Jarisch, and Rapparini.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “To obtain the benefit of the filing date of an earlier application, Patent Owner bears the burden of producing evidence to establish where each limitation of the challenged claims is disclosed in a single priority application. Studiengesellschaft Kohle, 112 F.3d at 1564; NTP, 654 F.3d at 1276. Petitioner identifies limitations of the challenged claims that are missing from each individual German priority application. Pet. 39–42. Patent Owner responds with no evidence or arguments suggesting that the identified limitations are disclosed in a single application. Resp. 10–12. On this record, no challenged claim is entitled to the benefit of the filing date of any of the three German priority applications; therefore, Jarisch qualifies as prior art under at least 35 U.S.C. § 102(e).” slip op. at 19

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “In other words, even if we accept that Dr. Howle has some experience designing medical devices and components, and that those experiences represent work designing products similar to mechanical beverage systems, Patent Owner fails to direct the Board to evidence sufficient to establish that this experience, in the aggregate, amounts to “at least five years” or involved “experience with sensors for recognizing identifiers.” Dec. 8 (adopting Patent Owner’s own proposed definition of ordinary skill in the art); see Sur-reply 3 (citing Ex. 1066, 34:16–35:9; Ex. 1067, 101:3–12, 102:30– 104:9; Ex. 2017 ¶¶ 3, 4) (failing to establish adequately, if at all, how Dr. Howle’s qualifications include the requisite minimum five-year period of relevant design experience). Accordingly, we determine that Dr. Howle is not qualified to offer expert testimony from the perspective of a person having ordinary skill in the art in this proceeding.12 Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022). The Federal Circuit has made plain that, “[t]o offer expert testimony from the perspective of a skilled artisan in a patent case,” including the issue of patent “validity,” the “witness must at least have ordinary skill in the art.” 12 To be clear, we are not saying that a witness supplying expert opinions must have satisfied the requirements of the level of ordinary skill in the art on or before the priority date of the challenged patent, which Patent Owner seems to understand. See Sur-reply 4–5. Instead, we evaluate whether Dr. Howle had at least the requisite qualifications of a person having ordinary skill in the art by the time he rendered his opinions. Osseo Imaging, LLC v. Planmeca USA, Inc., Appeal No. 2023-1627, slip op. at 7 (Fed. Cir. Sept. 4, 2024) (“[A]n expert can acquire the necessary skill later and develop an understanding of what a person of ordinary skill knew at the time of the invention,” however, where “the expert was not a person of ordinary skill at the time of the invention may well be used during cross-examination to undermine the credibility of the expert.”); see id., slip op. at 5–6 (affirmatively quoting Kyocera). Id. (Board’s emphasis). “Without that skill, the witness’[s] opinions are neither relevant nor reliable.” Id. at 1377. “‘Admitting testimony from a person . . . with no skill in the pertinent art serves only to cause mischief and confuse the factfinder.’” That testimony would ‘amount[ ] to nothing more than advocacy from the witness stand.’” Id. (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)). Alternatively, even if we accept that Dr. Howle possesses “at least five years” of relevant design experience, on this record, we agree with Petitioner that his opinions are entitled to less weight than those of Petitioner’s witness, Mr. Jobin. Reply 27. Unlike Dr. Howle, Mr. Jobin is a designer by profession, with more than 30 years of industry experience. Reply 27 (citing Ex. 1003 ¶¶ 5–30). For example, Mr. Jobin designed a home-based beer dispensing system utilizing cartridge identification technologies. Id. (citing Ex. 1003 ¶ 24). Mr. Jobin also “has substantial experience with sensors for recognizing identifiers.” Id. (citing Ex. 1003 ¶ 19; Ex. 1072, 3712–19, 67:22–70:19). Dr. Howle, by contrast, “has never designed a beverage machine.” Reply 22; see generally Sur-reply (declining to contest that assertion).13” slip op. at 14

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

    “In Petitioner’s contrary view, Jarisch teaches how to move a code in a centrifugal brewing system to the bottom of the flange and how to configure a light-conductive material so that the detector’s light source will reach the bottom of the flange. Pet. 45–46; Reply 21–22 (Ex. 1003 ¶¶ 194–195; Ex. 1005 ¶¶ 82–84, Fig. 5). Although Figure 61 of Yoakim discloses a flare in its brewing chamber, bodily incorporation is not required, and we are directed to no persuasive argument or evidence that Yoakim could not be configured with a straight chamber, as depicted in Figure 5 of Jarisch. We credit the testimony of Mr. Jobin that a person of ordinary skill in the art would have sought to place the code at the bottom of the flange and would have had a reasonable expectation of success in so doing. Ex. 1003 ¶ 184. For reasons explained above, we assign little or no weight to Dr. Howle’s conflicting testimony because he has little or no experience designing a mechanical beverage system or similar product. See supra 10– 16. Petitioner lays out persuasive reasons why Dr. Howle’s testimony, on this particular point, is “conclusory” and rests on “bodily incorporation” of the references. Reply 24; see id. at 22–24 (pointing out with particularity fundamental flaws in Dr. Howle’s opinions); In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). In addition, Patent Owner contends that Yoakim requires that the capsule holder be capable of receiving a set of multiple volume capsules and that there is a “snug fit” to avoid “unbalances.” Sur-reply 8 (citing Ex. 1004 ¶¶ 205, 479, 484, 507, 512). According to Patent Owner, Petitioner does not explain adequately how the use of Jarisch’s “straight chamber” with a capsule holder that does not engage with the side wall of the capsule would allow insertion of multiple volume capsules or permit a “snug fit” in the modified device of Yoakim. Id. at 8–9. Patent Owner’s view that Yoakim discloses the use of certain capsules which might not fit into a device with Jarisch’s non-flared structure is ineffective to undercut the sufficiency of Petitioner’s showing on this point. Petitioner is not seeking a bodily incorporation of Yoakim and Jarisch and, in any event, other embodiments of Yoakim do not require the type of flared capsule identified by Patent Owner. Ex. 1004, Fig. 63. Furthermore, we credit the testimony of Mr. Jobin that one of ordinary skill in the art would have understood how to design the chamber of Yoakim to allow reading of a barcode on the underside of the flange. Ex. 1003 ¶¶ 187–195. With respect to the argument that the use of Jarisch’s design would not allow a snug fit, we are directed to no persuasive evidence that Jarisch’s lack of contact between the capsule side wall and the holder would render the device inoperable or less effective. Resp. 39–40; see Reply 22 (citing Ex. 2019, 36:18–37:6). Indeed, as Petitioner points out, Jarisch indicates that its device, including its capsule holding means, allows the capsule to be successfully driven in rotation. Reply 22 (citing Ex. 1005 ¶ 23).” slip op. at 49

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “That argument is not persuasive. A reference need not identify or discuss another prior art patent or application in order for that reference to be deemed relevant or analogous art. Nor do we endeavor to determine why, or why not, a particular reference is discussed in a prior art reference. The analogous art inquiry focuses on reasonable pertinence and involves assessing the similarities between the claimed invention and the prior art, including the problems addressed and the closeness of the subject matter, as viewed by an ordinarily skilled artisan. Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1360 (Fed. Cir. 2020); see Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1380-81 (Fed. Cir. 2019) (relevant analysis focuses on comparing the disclosed embodiments, function, and structure of the claimed invention to the disclosures of the prior art). Against that backdrop, we reject Patent Owner’s suggestion that the inquiry involves whether the inventors of Jarisch saw a need to discuss Yoakim’s disclosure in Jarisch’s priority document.” slip op. at 45

  Patent outcomesUS 10,994,923 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,994,923
• Canon U.S.A., Inc. / Canon Inc. v. Slingshot Printing LLCAll claims unpatentable
  PTAB · May 20, 2024 · IPR2022-01541 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–7, 9, 10, 20–22, and 24 are unpatentable as obvious over Hamafuku, Whitman, and Imanaka, with Cleland added for claim 5.

  RulingsFinal written decision

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

    “Upon review of the prior art of record, we determine that no claim terms require construction for purposes of this Final Written Decision. 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 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Upon review of the prior art of record, we adopt Petitioner’s definition of a person of ordinary skill in the art as it is consistent with the prior art of record, but note that neither party contends the outcome of this case depends on whether a person of ordinary skill could include an individual with a degree in Materials Science.” slip op. at 10

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

    “In this case, there was a known desire to increase nozzle pitch in inkjet printheads, Imanaka’s heater and nozzle configuration had been used in the art to achieve this goal, and there is no suggestion that combining the teachings of Hamafuku, Whitman, and Imanaka was beyond the skill of an ordinarily skilled artisan. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1381 (Fed. Cir. 2023). Thus, we credit the testimony of Mr. Curley that one of ordinary skill in the art would have sought to use Imanaka’s heater and nozzle pitch in Hamafuku in order to provide a more compact and higher density printhead. Ex. 1002 ¶¶ 404–05. A conclusion of obviousness requires a reasonable expectation of success. Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1365 (Fed. Cir. 2016). This inquiry asks whether one of ordinary skill in the art would have had a reasonable expectation of combining the references to achieve what is claimed in the patent-at-issue. Id. at 1367. The inquiry does not look to whether unclaimed elements or functions would or would not also be achieved, or whether “one would reasonably expect the prior art reference to operate as those references intended once combined.” Id.” slip op. at 42

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

    “As noted by Patent Owner, the components of Imanaka are made of silicon-based materials, manufactured using thin film technology. PO Resp. 53–54 (citing Ex. 1008, 6:50–61). We are not persuaded, however, that Imanaka’s preference for silicon-based materials would teach away from, or otherwise discourage, one of ordinary skill in the art from combining Hamafuku, Whitman, and Imanaka. Imanaka does not suggest that failure to use silicon-based materials would result in an inoperable device. Rather, Imanaka states that use of silicon-based materials may “improve the mechanical characteristics” and “reliability” of “the liquid discharge head.” Ex. 1008, 6:50–61. Given the considerable increase in printhead nozzle pitch and print resolution provided by Imanaka’s heater and nozzle pitch configuration, we are not persuaded that a failure to capture the same improvement in mechanical characteristics and reliability from the use of silicon-based materials would prevent one of ordinary skill in the art from implementing Imanaka’s nozzle pitch in Hamafuku and Whitman or counsel against this modification.” slip op. at 41

  Patent outcomesUS 7,152,951 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,152,951
• Micron Technology, Inc. v. Katana Silicon Technologies LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
• Micron Technology, Inc. v. Katana Silicon Technologies LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
• Micron Technology, Inc. v. Katana Silicon Technologies LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,352,879

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.