- Shenzhen Apaltek Co., Ltd. v. Asetek Danmark A/SAll claims unpatentablePTAB · Jan 22, 2024 · IPR2022-01318 · APJ Jason W Melvin · IPR · Final written decision
Claims 1, 2, 6 are unpatentable as obvious over Duan; claims 5, 8 are unpatentable as obvious over Duan and Wu.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill would have been knowledgeable regarding liquid cooling systems for computer systems, would have had a Bachelor of Science (B.S.) in electrical or mechanical engineering, or similar advanced post-graduate education in this area, or would have possessed at least 2–3 years of experience in liquid cooling systems for computer systems or similar systems. A POSITA would be knowledgeable of the concepts, components, and their functions described as “prior art” in the ’355 patent such as, e.g., pumps, radiators, fans, reservoirs, and other techniques of heat dissipation and liquid cooling. (Ex- 1001,1:11–47.) In addition, a POSITA would be knowledgeable about electric motors and their components (e.g., electromagnetic coils, rotors, stators, AC/DC motors, etc.) Pet. 6–7 (citing Ex. 1003 ¶¶ 13–18). Patent Owner has not proposed a level of ordinary skill in the art. We adopt Petitioner’s proposed level of ordinary skill as it appears to be consistent with the level of skill reflected by the specification and in the asserted prior art references.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on our analysis of the proceeding, we conclude that no claim term requires express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“disclosures. Pet. 17–45. Petitioner maps the claimed reservoir to Duan’s “structure formed by an accommodation chamber 21, lower cover 225, cap 3, and cooling plate 1.” Id. at 18. Petitioner maps the claimed double-sided chassis to Duan’s accommodation chamber 21 and the claimed impeller cover to Duan’s lower cover 225. Id. at 22–27. Petitioner maps the claimed thermal-exchange chamber to Duan’s cap 3 and cooling plate 1, with heat-absorbing face 11 and cooling plate 1 corresponding to the claimed heat exchanging interface. Id. at 27–36. Petitioner maps the claimed radiator to Duan’s cooling stage 53. Id. at 36–39. Petitioner asserts that Duan’s inlet is “below a center of the impeller” because it is along the axis about which the impeller rotates. Id. at 39–41. Petitioner asserts that Duan’s lower cover 225 defines an outlet tangential to the impeller’s circumference. Id. at 41–45. In summary, Petitioner asserts that Duan, without modification, discloses all of claim 1’s limitations. Patent Owner does not challenge Petitioner’s contentions, as it has filed no Patent Owner Response. We have reviewed Petitioner’s contentions and conclude that they show by a preponderance of the evidence that claim 1’s subject matter would have been obvious over Duan. See Pet. 17– 45. We adopt Petition’s unchallenged contentions as our analysis.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“As to claim 5, Petitioner asserts that it would have been obvious to use Wu’s approach to securing chassis and heat-exchanging interface to the heat generating component, because Duan discusses the need to assemble its components but does not provide detailed instruction. Id. Thus, the modification would provide the benefit of securing Duan’s cooling plate module and cooling plate to the CPU. Id. at 72. For claim 8, Petitioner asserts that it would have been obvious to use Wu’s approach to blowing air through the radiator using a fan driven by a motor separate from the pump’s motor. Id. at 72–73. Petitioner reasons that doing so would improve Duan’s performance by increasing heat dissipation. Id. at 74. We agree that Petitioner’s contentions support the modification with rational underpinning.” slip op. at 12
Patent outcomesUS 10,078,355 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 10,078,355 - PTAB · Feb 6, 2023 · IPR2022-01318 · APJ Jason W Melvin · IPR · Institution
The Board instituted inter partes review of claims 1, 2, 5, 6, and 8 based on a reasonable likelihood of unpatentability over Duan, and Duan with Wu.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“involved two petitioners accused of infringement based on the same product—made by one petitioner and incorporating technology licensed from the other. Valve I, at 9–10 (finding a significant relationship between the two petitioners “with respect to Patent Owner’s assertion” of the challenged patent); Valve II, at 10 (same); see Prelim. Reply 3. Patent Owner has asserted no such relationship here, and we conclude that Patent Owner has failed to establish that Petitioner has a significant relationship with the -522 IPR petitioner. Representation by the same counsel and being accused of infringing the same patent does not create a relationship that justifies discretionarily denying institution. Accordingly, Factor 1 weighs strongly against denying institution.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim, and we institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill would have been knowledgeable regarding liquid cooling systems for computer systems, would have had a Bachelor of Science (B.S.) in electrical or mechanical engineering, or similar advanced post-graduate education in this area, or would have possessed at least 2-3 years of experience in liquid cooling systems for computer systems or similar systems. A POSITA would be knowledgeable of the concepts, components, and their functions described as “prior art” in the ’355 patent such as, e.g., pumps, radiators, fans, reservoirs, and other techniques of heat dissipation and liquid cooling. (Ex-1001,1:11-47.) In addition, a POSITA would be knowledgeable about electric motors and their components (e.g., electromagnetic coils, rotors, stators, AC/DC motors, etc.) Pet. 6–7 (citing Ex. 1003 ¶¶ 13–18). Patent Owner does not dispute this definition of a person of ordinary skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill as it appears to be consistent with the level of skill reflected by the specification and in the asserted prior art references.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Based on our analysis of the issues in dispute at this stage of the proceeding, we conclude that no claim term requires express construction at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 14
Claim constructionDiscretionary denialPatents in suitUS 10,078,355 - PTAB · Dec 28, 2021 · IPR2021-01195 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR on claims 1, 6, 7, 11, and 12, finding a reasonable likelihood that the Batchelder-based obviousness grounds would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityNot reached
“Under the Board’s precedential decision in SharkNinja Operating LLC v. iRobot Corp., when no time-bar or estoppel would apply once determining Petitioner did not name all RPIs, the Board need not address the issue. IPR2020-00734, Paper 11 (Oct. 6, 2020) (precedential); see also Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38 at 6 (PTAB Mar. 4, 2016) (precedential) (“[O]ur jurisdiction to consider a petition does not require a ‘correct’ identification of all RPIs in a petition.”); Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019) (“[I]f a petition fails to identify all real parties in” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the ’354 patent, the overlap in the asserted prior art, and our prior determination of unpatentability regarding the ’354 patent, we conclude that the merits of Petitioner’s case in this proceeding are substantively strong. Thus, this factor weighs strongly in favor of institution. 7. Holistic assessment of factors and conclusion We consider the above factors and take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. In weighing the totality of the evidence, we decide not to exercise discretion under § 314(a) to deny institution.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill would have been knowledgeable regarding liquid cooling systems for computer systems, would have earned at least a bachelor’s degree, such as a B.S. (bachelor of science), or equivalent thereof, in electrical or mechanical engineering or a closely related field, and would have possessed at least two or three years of experience in liquid cooling systems for computer systems or in similar systems. Pet. 7–8 (citing Ex. 1003 ¶¶ 23–26). Patent Owner does not dispute this definition of a person of ordinary skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill as it appears to be consistent with the level of skill reflected by the specification and in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“construe claim terms “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). The parties stipulated to constructions of “reservoir” and “chamber” in the district-court litigation. Ex. 1005, 2. Petitioner proposes additional constructions for “impeller” and “radiator.” Pet. 8–10. Patent Owner does not dispute those constructions. See generally Prelim. Resp. Based on our analysis of the issues in dispute at this stage of the proceeding, we conclude that none of the claim terms identified by the parties require express construction at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 15
Claim constructionDiscretionary denialPatents in suitUS 10,613,601 - Apple Inc. v. Voip-Pal.Com, Inc.Rehearing deniedPTAB · May 24, 2019 · IPR2016-01201 · APJ Scott R Boalick · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving intact the finding that the challenged claims were not shown obvious over the asserted Chu and Chen combinations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“At the outset, we note that in a request for rehearing we do not review the merits of the Final Written Decision de novo. Instead, we consider whether Petitioner has met its burden of showing that a matter has been misapprehended or overlooked in the Final Written Decision. 37 C.F.R. § 42.71(d) (“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.”). We conclude that Petitioner has not met this burden in its Request for Rehearing.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“view of Chu ’684. See Reh’g Opp’n 7–10 (relying on its declarant to argue that Chu ’684 does not operate as asserted by Petitioner, undermining Petitioner’s justification for the combination); PO Resp. 70 (citing Ex. 2016 ¶ 66). Petitioner contends that Dr. Mangione-Smith’s testimony did not address the asserted combination and therefore provided no need for a reply declaration. Reh’g Reply 7–8. We do not agree with Petitioner’s position, for the reasons stated above. Petitioner does not raise any basis on which we should discount the panel’s reliance on Dr. Mangione-Smith’s testimony regarding the reason to combine.7 We conclude that the panel did not misapprehend Chu ’684’s operation when it concluded that the Petition failed to show Chu ’684 is deficient and ripe for improvement. Instead, it resolved a factual dispute in Patent Owner’s favor based on record evidence.” slip op. at 9
- Expert testimonyPatent owner expert creditedDecided for patent owner
“evidence that, in Chu ’684, users would dial according to the dialing conventions of their geographic area. Reh’g Opp’n 8 (citing Ex. 2016 ¶ 66). Patent Owner’s expert witness, Dr. Mangione-Smith, testified that “in Chu ’684, the users would dial PSTN ‘public numbers’ based on the location of the customer premises.” Ex. 2016 ¶ 66 (citing Ex. 1006, Fig. 2). Figure 2 of Chu ’684 supports Dr. Mangione-Smith’s testimony, in that Figure 2 of Chu ’684 illustrates customer premises 105 (which includes IP phones) as connected to a service provider central office 205. See Ex. 1006, Fig. 2; Reh’g Opp’n 9 (contrasting Petitioner’s assertion” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,542,815 - Apple Inc. v. Voip-Pal.Com, Inc.Rehearing deniedPTAB · May 24, 2019 · IPR2016-01198 · APJ Scott R Boalick · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving intact the finding that challenged claims of the ’005 and ’815 patents were not shown obvious over the asserted combinations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“At the outset, we note that in a request for rehearing we do not review the merits of the Final Written Decision de novo. Instead, we consider whether Petitioner has met its burden of showing that a matter has been misapprehended or overlooked in the Final Written Decision. 37 C.F.R. § 42.71(d) (“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.”). We conclude that Petitioner has not met this burden in its Request for Rehearing.” slip op. at 2
- Expert testimonyPatent owner expert creditedDecided for patent owner
“view of Chu ’684. See Reh’g Opp’n 7–10 (relying on its declarant to argue that Chu ’684 does not operate as asserted by Petitioner, undermining Petitioner’s justification for the combination); PO Resp. 70 (citing Ex. 2016 ¶ 66). Petitioner contends that Dr. Mangione-Smith’s testimony did not address the asserted combination and therefore provided no need for a reply declaration. Reh’g Reply 7–8. We do not agree with Petitioner’s position, for the reasons stated above. Petitioner does not raise any basis on which we should discount the panel’s reliance on Dr. Mangione-Smith’s testimony regarding the reason to combine.7 We conclude that the panel did not misapprehend Chu ’684’s operation when it concluded that the Petition failed to show Chu ’684 is deficient and ripe for improvement. Instead, it resolved a factual dispute in Patent Owner’s favor based on record evidence.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“view of Chu ’684. See Reh’g Opp’n 7–10 (relying on its declarant to argue that Chu ’684 does not operate as asserted by Petitioner, undermining Petitioner’s justification for the combination); PO Resp. 70 (citing Ex. 2016 ¶ 66). Petitioner contends that Dr. Mangione-Smith’s testimony did not address the asserted combination and therefore provided no need for a reply declaration. Reh’g Reply 7–8. We do not agree with Petitioner’s position, for the reasons stated above. Petitioner does not raise any basis on which we should discount the panel’s reliance on Dr. Mangione-Smith’s testimony regarding the reason to combine.7 We conclude that the panel did not misapprehend Chu ’684’s operation when it concluded that the Petition failed to show Chu ’684 is deficient and ripe for improvement. Instead, it resolved a factual dispute in Patent Owner’s favor based on record evidence.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“testimony by Dr. Mangione-Smith—when rejecting Petitioner’s view of the prior art and reason for the combination. See FWD 19 (citing Ex. 2016 ¶¶ 65–67); Reh’g Opp’n 6. Thus, when the panel concluded that Petitioner had not shown that Chu ’684’s method would apply to a number reformatted by the secondary references (see FWD 22–23), it relied on record evidence supporting its conclusion. We determine that the panel did not misapprehend the nature of the proposed combination; rather, based on the record, it resolved a factual dispute and concluded that Petitioner failed to show the proposed combination would operate as asserted.” slip op. at 5
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,179,005 - Delphi Technologies, LLC v. Microchip Technology Inc.Rehearing deniedPTAB · Dec 11, 2018 · IPR2017-00864 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 3–5, 7–9, 11–15, and 18–21 unpatentable because their scope did not require the buffer to store the specified information.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” and, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s argument as follows.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“misapprehended any argument. Furthermore, we are unpersuaded that our Decision was in error regarding independent claims 1, 3, 7, 18, and 23 because these claims have a different scope than claims 17, 22, and 24. As Patent Owner correctly noted, our construction of “dedicated USB connection” is “a USB connection that may include some shared physical communication path and includes a buffer for maintaining dedicated address, configuration and response information for the connection.” Dec. 33. Thus, a dedicated USB connection must include a buffer that is capable of storing/maintaining “dedicated address, configuration and response information” regardless of whether such data is actually stored/maintained therein.” slip op. at 3
Claim constructionPatents in suitUS 7,523,243 - Ebay Inc. / Alibaba.Com Hong Kong Ltd. et al. v. Global Equity Management (SA) Pty. Ltd.Rehearing grantedPTAB · Oct 12, 2018 · IPR2016-01828 · APJ Kevin C Trock · IPR · Rehearing
Rehearing was granted in part: review was instituted on all challenged claims and grounds, but claims 16 and 28 were not shown unpatentable because their scope could not be determined without speculation.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“For the reasons explained below, we grant Patent Owner’s request for rehearing to the extent we (1) modify our Institution Decision to institute on all of the challenged claims, including claims 16 and 28, and all of the grounds presented in the Petition, including Ground 2; and (2) modify our Final Written Decision to include a determination with respect to claims 16 and 28. We deny, however, Patent Owner’s request for rehearing to the extent we decline to read claims 16 and 28 on the prior art.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In SAS, the Supreme Court held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc., 1348 at 1359–60. In our Institution Decision, we determined that Petitioner demonstrated a reasonable likelihood that it would establish that at least one of the challenged claims of the U.S. Patent No. 8,650,591 B2 is unpatentable. Inst. Dec. 23. Because of the Supreme Court’s ruling in SAS, we now modify our Institution Decision to institute on all of the challenged claims, including claims 16 and 28, and on all of the grounds presented in the Petition, including Ground 2, and we determine, in this Decision on Patent Owner’s Motion for Rehearing, whether claims 16 and 28 have been shown, by a preponderance of the evidence, to be unpatentable.” slip op. at 4
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“If our unpatentability analysis requires “considerable speculation as to the meaning and assumptions as to the scope” of the claims, In re Steele, 305 F.2d 859, 862 (CCPA 1962), the differences between the claimed invention and the prior art cannot be ascertained. See id.; see also BlackBerry Corp. v. MobileMedia Ideas, LLC, Case IPR2013-00036, slip op. at 19–20 (PTAB Mar. 7, 2014) (Paper 65) (citing Steele, 305 F.2d at 862–63 for the proposition that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption[s] as to the meaning of the claims” and reasoning that “an obviousness determination based on less than all of the claimed elements is speculative as to the meaning or scope of the claims”). In other words, “[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).” slip op. at 6
- Prior constructionPrior construction adoptedDecided for patent owner
“least one partition of said at least one secondary storage device through said secondary storage partitions window,” “means for manipulating said at least one cabinet record through said cabinet visible partition window,” and “means for modifying said at least one cabinet record through said cabinet visible partition window.” Ex. 101, 9:66–10:25. In related litigation, the district court found in its claim construction opinion that the ’400 patent does not provide structure corresponding clearly to the functions of these limitations. Ex. 1010, 49–61. We have reviewed and considered the district court’s analysis and findings and we concur with the district court’s conclusion. We are unable to discern structure in the ’400 patent that corresponds clearly to the functions recited in the “means for” limitations of claim 16. Claim 28 recites similarly “program code for configuring said at least one partition of said at least one secondary storage device through a secondary storage partitions window,” “program code for manipulating said virtual cabinet record through said cabinet visible partition window,” and “program code for means for modifying said at least one cabinet record through said cabinet visible partition window.” Ex. 1001, 10:65–11:29. The district court also found that the ’400 patent did not provide structure corresponding clearly to the function of these limitations. Ex. 1010, 49–61. We have reviewed and considered the district court’s analysis and findings and we concur with the district court’s conclusion. We are unable to discern structure in the ’400 patent that corresponds clearly to the functions recited in the “program code for” limitations of claim 28.” slip op. at 5
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 6,690,400 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 5, 2018 · IPR2017-00692 · APJ Matthew R Clements · IPR · Final written decision
Claims 1–15 are unpatentable: claims 1–14 as anticipated by Best and obvious over Best, and claim 15 as obvious over Best, Mills, and Bonella.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“construction “requires two layers of IC packages, in which a first IC package (the Board’s ‘carrier’) contains one or more second IC packages (the Board’s memory chips).” PO Resp. 39. Petitioner counters that “[t]he Board’s construction does no such thing.” Pet. Reply 18–19. We agree with Petitioner. Patent Owner’s argument is predicated upon the erroneous assertion that “[e]ach memory chip in the Board’s ‘carrier’ requires a different IC package (i.e., a second IC package) that encloses at least one memory die.” PO Resp. 39. Each memory chip does not require its own integrated circuit package. On the contrary, it may be, as Best discloses, a die enclosed with another die in a single IC package. Having considered the arguments and evidence, we maintain our construction of “memory module” to mean “a carrier that contains one or more memory chips,” where “carrier” encompasses an integrated circuit package.” slip op. at 14
- Skill levelSkill level board ownOther
“Otherwise, we determine that no express finding on a specific corresponding level of technical education and experience is necessary. Here, the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 15
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We have reviewed the arguments provided by Patent Owner and determine such arguments are insufficient to have Mr. Maltiel’s declaration excluded in its entirety. Rather, it is within our discretion to assign the appropriate weight to be accorded evidence. See 37 C.F.R. § 42.65(a); see also, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); and Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”). Based on the record before us, we are not persuaded that we should give the entirety of Mr. Maltiel’s declaration no weight.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“8–14. Pet. 30–37, 44–49. Notwithstanding Patent Owner’s arguments, which we have considered and which we address below, we are persuaded by Petitioner’s showing, which we adopt as our own findings and conclusions, that claims 1–14 are unpatentable under 35 U.S.C. § 102 as anticipated by Best.” slip op. at 24
Patent outcomesUS 8,874,831 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,874,831 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 5, 2018 · IPR2017-00561 · APJ Bryan F Moore · IPR · Final written decision
Claims 2–7 were held unpatentable as obvious over Averbuj and Tsern; trial as to claim 1 was terminated based on collateral estoppel.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“Patent Owner asserts that “collateral estoppel does not apply to the application of the claim 1 limitations in assessing dependent claims 2–7.” Id. at 2. Patent Owner further asserts “[a] party seeking to apply collateral estoppel based on a prior action must show that (1) the identical issue was actually litigated; (2) the issue was actually decided in a final decision on the merits; (3) the issue was necessary to the final decision; and (4) the party being estopped was adequately represented in the prior action [i.e. “the United Access test”].” Id. at 2 (citing United Access Techs., LLC v. CenturyTel Broadband Services LLC, 778 F.3d 1327, 1331 (Fed. Cir. 2015)). We agree that this is the proper test to use to assess the applicability of collateral estoppel. Nevertheless, we note United Access applies collateral estoppel in a different context and suggests that issue preclusion can be applied in an obvoisness challenge, even if the final decision on the original issue was considered under an anticipation challenge. In particular, in United Access it was noted that “[i]ssue preclusion [traditionally called “collateral estoppel”3] applies to issues litigated in prior disputes . . . [and, thus, i]t thus makes no difference that the earlier no-damages-due-to-competition ruling arose in a case under the Truth in Negotiation Act and that this dispute arises under the False Claims Act and the common law.” United Access, 778 F.3d. at 726. The “issue” of whether Averbuj teaches the limitations of claim 1 is identical to the issue in and has been litigated in the ‘970 IPR which found that Averbuj anticipates the limitations of claim 1.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1475, 1480 (Fed. Cir. 1994). Only those terms that are in controversy need to be construed, 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); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the ‘434 Patent would have been someone with “a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” Pet. 9 (citing Ex. 1003 ¶ 51). Patent Owner asserts through its declarant: [A Person of ordinary skill in the art at the time of the invention would have been] working on the design of memory devices, would have at least a Bachelor of Science degree in Electrical and/or Computer Engineering, and at least five years of industry experience designing memory devices and controllers. Alternatively, one of ordinary skill in the art would have a Master of Science degree in Electrical and/or Computer Engineering, and at least three years of industry experience designing memory devices and controllers. Also alternatively, one of ordinary skill in the art would have a Doctorate degree in Electrical and/or Computer Engineering, and have at least one year of industry experience designing memory devices and controllers. I agree with Petitioner’s expert that the memory industry requires a POSITA with industry experience. Ex. 2010 ¶¶ 32–33. 16 Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill, above, and acknowledge that, commensurate with that articulation of the level of skill, the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Pet. 41. In other words, Petitioner asserts that because a BIST unit can be incorporated into a chip mounted on a PCB and because memory module 12 is part of the BIST unit, memory unit 12 is mounted on a PCB. We disagree. Unlike claim 1, which simply requires the memory unit is “on” the PCB, claim 2 requires that the memory module be a “physically separate component” and “mounted” on the PCB. Petitioner has not shown sufficient support for its broad reading that a module which is a circuit embedded in a larger circuit included in a chip may be considered a physically separate component mounted on a PCB. Claims 3–7 depend from claim 2, and the Petition fails to provide additional prior art disclosures that cure the deficiency with respect to claim 2; that is, disclosure of separate components 22 mounted on a printed circuit board in Averbuj. Pet. 41–48. Thus, Petitioner has failed to establish, by a preponderance of the evidence, its assertion that claims 2–7 are anticipated by Averbuj.” slip op. at 22
Patent outcomesUS 8,001,434 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,001,434 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 5, 2018 · IPR2017-00562 · APJ Bryan F Moore · IPR · Final written decision
Claim 4 was held unpatentable as obvious over Averbuj and Tsern; the trial was terminated as to claim 1 based on collateral estoppel.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedOther
“Active Video Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012). The court noted that because the expert “failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims,” the expert’s testimony was conclusory and bore no relation to any specific combination of prior art elements. Id. at 1327. Although the declarant’s testimony here goes further than in Active Video, it fills in gaps about how the combination would be made with only conclusory testimony that appears to be tainted with hindsight.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Skill Analysis Petitioner asserts “[a] a person of ordinary skill in the art at the time of the ‘501 Patent would have been someone with “a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST” Pet. 6 (citing, inter alia, Ex. 1003 ¶ 51). Patent Owner asserts through its declarant: [A Person of ordinary skill in the art at the time of the invention would have been] working on the design of memory devices, would have at least a Bachelor of Science degree in Electrical and/or Computer Engineering, and at least five years of industry experience designing memory devices and controllers. Alternatively, one of ordinary skill in the art would have a Master of Science degree in Electrical and/or Computer Engineering, and at least three years of industry experience designing memory devices and controllers. Also alternatively, one of ordinary skill in the art would have a Doctorate degree in Electrical and/or Computer Engineering, and have at least one year of industry experience designing memory devices and controllers. I agree with Petitioner’s expert that the memory industry requires a POSITA with industry experience. Ex. 2010 ¶¶ 32–33. Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill, above, and acknowledge that, commensurate with that articulation of the level of skill, the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“a. Claim 1 Claim 1 is anticipated by Averbuj under the doctrine of collateral estoppel. See supra Section II. A. b. Claim 4 Claim 4 recites “[t]he memory system of claim 1, wherein the memory system comprises at least two physically separate integrated circuit packages, wherein each of the at least two physically separate integrated circuit packages comprises at least one data handler of the plurality of data handlers.” Petitioner asserts that Averbuj discloses that BIST units are “commonly incorporated into memory chips and other integrated circuits.” Ex. 1005 at ¶ [0003]. Because the memory interfaces are part of a BIST unit, Averbuj also discloses the memory interface (10, 41) is commonly incorporated into (memory or other) chips, or “integrated circuits.” Ex. 1012 at 98, 277; Ex. 1003 at ¶ 126. Averbuj further discloses that the device block (6) and the components contained therein, such as the sequencer (8) and the memory modules (12), are “distributed” and “located throughout an electronic device,” i.e., physically separated. See e.g., Ex. 1005 at ¶¶ [0013], [0015]; Ex. 1003 at ¶ 127. Since memory interfaces (10, 41) are also components of each device block (6), at a minimum, the different sets of memory interfaces (10, 41) belonging to different device blocks (6) must also be physically separated. Ex. 1003 at ¶ 127. Averbuj also discloses that the various integrated circuits or chips of an electronic device are “mounted on a circuit board,” indicating that the integrated circuits and chips comprising the electronic device are packaged integrated circuits or chips. Ex. 1005 at ¶ [0005]; Ex. 1016 at 1:15-27; Ex. 1003 at ¶ 128. Therefore, Averbuj discloses that the memory interfaces (each containing a “data handler”) of different device blocks (which comprise a “memory system”) must be distributed across “at least two physically separate integrated circuit packages.” Ex. 1003 at ¶ 129. Pet. 30–31. In other words, Petitioner asserts that because the sequencer can be” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“There must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008) (internal quotations omitted) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). For example, in ActiveVideo Networks, Inc. v. Verizon, our reviewing court 7 Patent Owner chose not to request additional briefing to address this ground and arguments in the Preliminary Response are generally waived (Paper 8, 2–3), however, we acknowledge these arguments due to the unusual circumstance created by the Supreme Court’s decision in SAS and to explain the background in the context of Patent Owners’ Motion to Strike. held that the following expert testimony on the motivation to combine was deficient as a matter of law: [Y]ou wanted to build something better. You wanted a system that was more efficient, cheaper, or you wanted a system that had more features, makes it more attractive to your customers, because by combining these two things you could do something new that hadn’t been able to do before. Active Video Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012). The court noted that because the expert “failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims,” the expert’s testimony was conclusory and bore no relation to any specific combination of prior art elements. Id. at 1327. Although the declarant’s testimony here goes further than in Active Video, it fills in gaps about how the combination would be made with only conclusory testimony that appears to be tainted with hindsight. As to other of Petitioner’s arguments supported by its declarant, we find those to employ hindsight to piece together the device as claimed. The expert provides a host of rationales for separating the components of Averbuj into separate ICs including structures of Tsern (Ex. 1003 ¶ 143) and other secondary references. We acknowledge that Tsern contains structures that suggest the claimed configuration of the data handlers, but in this ground Petitioner does not assert Tsern as a reference, rather simply as evidence of the knowledge of one of skill in the art. Pet. 34–38. Relying on knowledge in the art does not obviate the need to prove a reference is prior art as of the critical date and show a motivation to combine existing slip op. at 25
Patent outcomesUS 8,359,501 unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,359,501
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.