- PTAB · Sep 27, 2024 · IPR2024-00672 · APJ Julia Heaney · IPR · Institution
The Board instituted review of claims 1–18 on all asserted grounds and granted Texas Instruments’ motion to join IPR2023-01243 in an understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage of the proceeding, we determine that the arguments and evidence of record favor Petitioner. Both parties agree that a downward-sloping gradient, as disclosed in Kawagoe, will create an electrical field with a force in a direction toward the substrate. See generally Prelim. Resp.; Ex. 1007, 16:7–9. Patent Owner does not meaningfully dispute that Kawagoe has a graded dopant concentration in an active region. See generally Prelim. Resp. Further, Patent Owner contradictorily stated during prosecution of the ’195 patent that a graded dopant concentration itself creates “a built-in electrical field that forces the movement of carriers in a particular direction” (Ex. 1016, 289–290) and is “the additional parameter for ensuring that all minority carriers are being moved in one direction” (id. at 290). In light of this evidentiary record, which at most presents a material issue of fact for resolution at trial, we determine Petitioner establishes a reasonable likelihood of prevailing in its challenge of claim 1. We decline to further discuss the parties’ arguments or resolve any disputed issues as to challenges based on Kawagoe on this preliminary record, because the trial in the 1243 IPR is the better proceeding in which to do so. Specifically, as compared to the preliminary phase of this case, the instituted trial in the 1243 IPR affords the parties better opportunity to brief, argue, and develop evidence in support of their positions. Thus, for the same reasons stated in our Decision on Institution in the 1243 IPR, we determine the Petition here warrants institution.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“deficient because Kawagoe’s disclosure of graded dopant concentration teaches impeding carrier movement rather than aiding it, as required by claim element 1.5. Prelim. Resp. 13–14. Patent Owner relies on Kawagoe’s disclosure that the concentration gradient prevents electrons from entering the p-well. Id. at 14 (citing Ex. 1007, 16:7–11). Patent Owner further argues Kawagoe’s carriers are not in the active regions, as required by claim element 1.5. Id. at 14–16 (citing Ex. 1003 ¶ 91, n.5). At this stage of the proceeding, we determine that the arguments and evidence of record favor Petitioner. Both parties agree that a downward-sloping gradient, as disclosed in Kawagoe, will create an electrical field with a force in a direction toward the substrate. See generally Prelim. Resp.; Ex. 1007, 16:7–9. Patent Owner does not meaningfully dispute that Kawagoe has a graded dopant concentration in an active region. See generally Prelim. Resp. Further, Patent Owner contradictorily stated during prosecution of the ’195 patent that a graded dopant concentration itself creates “a built-in electrical field that forces the movement of carriers in a particular direction” (Ex. 1016, 289–290) and is “the additional parameter for ensuring that all minority carriers are being moved in one direction” (id. at 290). In light of this evidentiary record, which at most presents a material issue of fact for resolution at trial, we determine Petitioner establishes a reasonable likelihood of prevailing in its challenge of claim 1.” slip op. at 15
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“II. TIMELINESS OF PETITION UNDER 35 U.S.C. § 315(B) Pursuant to 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), included revisions to 35 U.S.C. §§ 102 and 103 that became effective in 2013, after the effective filing date of the challenged claims. See Ex. 1001, codes (22), (60). Therefore, we apply the pre-AIA versions of 35 U.S.C. §§ 102 and 103(a). 2 US 6,043,114, issued March 28, 2000 (Ex. 1007, “Kawagoe”). Petitioner asserts that Kawagoe is prior art under 35 U.S.C. § 102(b). Pet. 4. 3 US 6,163,877, issued December 19, 2000 (Ex. 1014, “Gupta”). Petitioner asserts that Gupta is prior art under 35 U.S.C. § 102(b). Pet. 5. 4 US 2003/0183856 A1, published October 2, 2003 (Ex. 1006, “Wieczorek”). Petitioner asserts that Wieczorek is prior art under 35 U.S.C. §§ 102(a),(e). Pet. 4. 5 Stanley Wolf and Richard N. Tauber, Silicon Processing for the VLSI Era, Vols. 1–4, Lattice Press (2000) (Ex. 1008, “Wolf”). Petitioner asserts that Wolf was published and publicly available no later than 2002, and is prior art under 35 U.S.C. § 102(b). Pet. 5 (citing Exs. 1012, 1013, 1036). Exhibit 1008 was submitted in four parts (A–D) and includes selected portions of Wolf. We cite to Wolf using its original page numbers and omit the exhibit part designations. Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 18– 39. However, 35 U.S.C. § 315(b) also provides that the one-year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Because the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2023-01243), which we grant as further discussed below, Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, irrespective of whether Petitioner is in privity with time-barred entities.” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Patent Owner’s first argument is not persuasive because it is based on speculation that Petitioner “is trying to block settlement with any of these defendants unless [Patent Owner] also settles with” Petitioner. Opp. Mot. Join. 5. As discussed below, we determine that Patent Owner will not be prejudiced unduly by the joinder. Moreover, we note that even in a situation where the petitioner and patent owner in the proceeding to be joined had settled (Code200 v. Bright Data Ltd., IPR2022-00861, Paper 17 at 5 (PTAB July 25, 2022) (vacated)), the Director nevertheless vacated a decision to deny a motion for joinder. Code200 v. Bright Data Ltd., IPR2022-00861, Paper 18 at 7 (Office of the Director of the USPTO Aug. 23, 2022) (precedential); see also eBay, Inc. v. Lexos Media IP, LLC, IPR2024-00336, Paper 11 at 13–15 (PTAB Feb. 23, 2024). Patent Owner’s second argument is moot because Patent Owner’s Request for Director Review has been denied. 1243 IPR, Paper 43 (PTAB Apr. 24, 2024). Based on the facts and circumstances discussed above, we determine Petitioner has established good cause for joining the 1243 IPR. Specifically, we find that joining Petitioner to the 1243 IPR is unlikely to require any delay or modification to the scheduling order already in place for the 1243 IPR. We also determine that Patent Owner will not be prejudiced unduly by the joinder of this proceeding. Thus, we determine that granting the Motion for Joinder would help “secure the just, speedy, and inexpensive resolution” of these proceedings. See 37 C.F.R. § 42.1(b). For the above reasons, we grant Petitioner’s Motion for Joinder and join Petitioner as a party to the 1243 IPR.” slip op. at 19
§ 103 obviousnessPatents in suitUS 10,510,842 - PTAB · Sep 18, 2024 · IPR2024-00603 · APJ Sheldon M Mcgee · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on claim 1 over Honermann and Cline.
RulingsInstitution decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Pet. 5–6 (citing Ex. 1003 ¶ 50). Petitioner further states “that more education could compensate for less experience and vice versa.” Id. at 6. Petitioner’s position is, therefore, consistent with Patent Owner’s proffered level of skill in the art which reflects less education and more experience in substantially the same fields. Specifically, Patent Owner asserts that such a skilled artisan “would have at least a bachelor’s degree in mechanical or automotive engineering and/or five or more years of experience in the automotive industry designing, developing, testing, and engineering automotive components or practical experience servicing, assembling, repairing, and/or developing internal combustion engines and/or engine oil filters.” Prelim. Resp. 4. On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the 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, 163–64 (Fed. Cir. 1985))). A more specific definition is not necessary for purposes of deciding whether to institute review. To the extent a more specific definition is required, however, we adopt Patent Owner’s definition because it is consistent with the disclosures of the asserted prior art references. We note, however, that we would reach the same conclusion under either parties’ definition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that all non-“means” terms in the challenged claims should be afforded their plain and ordinary meaning, and that the “means” limitations recited in claims 1 and 15 should not be construed as means-plus- function terms pursuant to 35 U.S.C. § 112(6). Pet. 7. According to Petitioner, claims 1 and 15 include additional limitations that denote structure for those “means” limitations and furthermore do not recite a function corresponding to the recited means. Id. Patent Owner asserts that “the Board need not make a determination on claim construction in assessing whether to institute” trial. Prelim. Resp. 5. After review of the preliminary record, we determine that no claim terms require an express construction for purposes of institution. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“2. Advanced Bionics Prong One: whether “the same or substantially the same art or arguments previously were presented to the Office” As Petitioner acknowledges, a Japanese-language version of Yokoyama was cited in an IDS without an English translation. Pet. 19; Ex. 1002, 34 (indicating that an English translation was not provided by virtue of the absence of a checkmark in the “T” column on the far right of the PTO/SB/08a form).4 The Yokoyama reference relied on in the Petition (Ex. 1008) however, includes an English language translation of the text in 4 It is also not readily apparent that Patent Owner complied fully with the “Content Requirements for an Information Disclosure Statement” as set forth in MPEP § 609 in its IDS submission dated March 30, 2015. Specifically, § 609.04(a)(III) states that “[e]ach information disclosure statement must further include a concise explanation of the relevance . . . of the information listed that is not in the English language.” (italicized emphasis added, underlining in original); see also § 609.01 B.3 (stating this requirement). It does not appear that any concise explanation was filed with respect to either Japanese reference filed in the IDS. See Ex. 1002, 13–38 (IDS documents pertaining to Yokoyama reference); Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1376 (Fed. Cir. 2000) (“[A]lthough MPEP Section 609[] allows the applicant some discretion in the manner in which it phrases its concise explanation, it nowhere authorizes the applicant to intentionally omit altogether key teachings of the reference.”). addition to the Drawings that also appear in the untranslated Japanese-language version of Yokoyama submitted during prosecution. Compare Ex. 1007 (containing Japanese text with Figures 1–7c), with Ex. 1008 (containing English text along with Figures 1–7c). As such, the Yokoyama reference relied on in the Petition––being in English––contains roughly ten pages of more readily discernible information than the Japanese-language version of this reference submitted during prosecution. Significantly, Petitioner relies on textual disclosure in the English-translated version of Yokoyama in its challenges. Pet. 28–51, 54, 58, 59 (citing Ex. 1008 repeatedly). Such English-translated disclosure was not previously before the Examiner. Ex. 1002, 13–38. In view of this additional disclosure before us in English, i.e., disclosure that was not presented previously to the Office, we find that the English translated version of Yokoyama relied on here (Ex. 1008) is not “the same or substantially the same art” that was previously presented to the Office (Ex. 1007).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretionary denial, we must also consider whether the Petition presents compelling merits. IPR2022-01242, Paper 23 at 4–5. As set forth above, we have considered the circumstances and facts before us in view of Fintiv factors 1–5, and determine that: Factor 1 is neutral, Factor 2 weighs heavily against discretionary denial, Factor 3 is neutral, Factor 4 weighs against discretionary denial, and Factor 5 weighs in favor of discretionary denial. Factors 1–5, considered as a whole, collectively weigh against exercising discretion to deny institution. As such, we need not undertake a “compelling merits” analysis as set forth under CommScope. The Merits Even though we do not consider here whether the merits are “compelling,” we do consider the merits of the Petition under Fintiv factor 6. As set forth below, we determine that Petitioner has satisfied the reasonable likelihood standard for purposes of institution. Such satisfaction weighs further against discretionary denial of the Petition.” slip op. at 19
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 9,023,203 - Eden Park Illumination, Inc. / Larson Electronics LLC et al. v. S. Edward NeisterAll claims unpatentablePTAB · Sep 17, 2024 · IPR2023-00695 · APJ Julia Heaney · IPR · Final written decision
Claims 1–5 and 7–18 are unpatentable as obvious over Eckhardt and Sosnin.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in an engineering discipline such as biological, chemical, environmental, electrical, mechanical, and/or systems engineering, or an equivalent degree such as one in physics or similar subject matter.” Pet. 16 (citing Ex. 1003 ¶ 21). Petitioner further argues that “[s]uch a person would also have two to three years of work or research experience with UV disinfection technology and/or systems and would be familiar with the fundamentals of UV excimer lamps” but, “less education could be compensated by more experience and vice versa.” Id. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’951 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’951 patent and the” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“art references advanced in this Petition” but “[b]eyond these arguments, the challenged claims require no express construction to evaluate their patentability.” Pet. 16–17. After considering the arguments and information Petitioner presents, we determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner demonstrates by a preponderance of the evidence that a person of ordinary skill in the art would have had reasons to combine Eckhardt’s teaching of narrow spectrum UV light in the range of 220 to 310 nm to disinfect skin (Ex. 1004 ¶¶ 31, 69–70), with Sosnin’s teaching of a KrCl excimer lamp having a narrow band UV emission at 222 nm to kill bacteria (Ex. 1005, 320). In particular, Petitioner shows that a person of ordinary skill in the art would have wanted to obtain the benefits of Eckhardt’s teaching of disinfecting skin using any light source capable of sterilization or disinfection and would therefore have considered Eckhardt’s suggestion of using narrow spectrum UV light in combination with Sosnin’s disclosure of using germicidal excimer lamps within the range of wavelengths taught by Eckhardt. See KSR, 550 U.S. at 417 (stating that the “mere application of a known technique to a piece of prior art ready for the improvement” suggests obviousness). The teachings of both Eckhardt and Sosnin support Petitioner’s combination. In particular, both references teach using UV lamps with narrow bands or monochromatic emissions to sterilize surfaces. Eckhardt teaches “light source 7 may be any light source that emits light capable of sterilization or disinfection” and may be a UV light source such as a lamp that “may emit narrow spectrum light (e.g., a line spectrum) or broad spectrum light” including UVA, UVB, and UVC light. Ex. 1004 ¶ 31. Eckhardt also teaches flash light source 7a generates a flash sufficient for sterilization or disinfection and may be a xenon flash lamp having a wavelength in the range of 220 to 310 nm. Id. ¶¶ 43, 70. Additionally, Eckhardt teaches “[t]he sterilization/disinfection units previously described are designed to have a beneficial effect when used on bare skin.” Id. ¶ 69. Sosnin teaches using excimer lamps for sterilization and specifically discloses a KrCl lamp which generates photons having wavelengths of 222 nm. Ex. 1005, 320. We find that Eckhardt would have led a person of ordinary skill to consider using a 222 nm excimer lamp because that wavelength falls within the range of UV light (220–310 nm) suggested by Eckhardt, and the range known to provide disinfection. Ex. 1004 ¶ 70; Ex. 1005, 320 (describing “the high rate of bactericidal effect of excilamps”). We find that Eckhardt also supports Petitioner’s contention that it was within the knowledge of a person of ordinary skill in the art to use UV light in the range of 254 nm for disinfection, even though that wavelength presented safety concerns. Ex. 1004 ¶¶ 54, 56; see Pet. 25.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Based on the evidence before us, we determine that Petitioner has shown by a preponderance of evidence that the combination of Eckhardt and Sosnin discloses claim limitation [1A]. We find that Eckhardt’s disclosure of a lamp emitting sterilizing light in the range of 220 to 310 nm (Ex. 1004 ¶¶ 31, 43, 70), combined with Sosnin’s disclosure of irradiation of E. coli with a KrCl excimer lamp generating a 222 nm wavelength (Ex. 1005, 320, Fig. 3), which correspond to peak absorption wavelengths of DNA or RNA (Ex. 1003 ¶¶ 116–118), discloses limitation [1A]. [1B] Petitioner contends that the Eckhardt-Sosnin combination teaches “directing the photons to a substance or surface to be disinfected, whereby the photons are generated to destroy a plurality of chemical bonds within the proteins, DNA, or RNA of the microorganism,” as recited in limitation [1B]. Pet. 30. According to Petitioner, Eckhardt discloses directing light towards wound 1 and surrounding skin 3. Id. (citing Ex. 1003 ¶ 120; Ex. 1004 ¶¶ 31–32). Petitioner contends Sosnin teaches the photons destroy a plurality of chemical bonds within the DNA or RNA of the microorganism because it discloses using 222 nm radiation, “which intrinsically destroys proteins and the chemical bonds in the proteins associated with the DNA or RNA of the microorganism.” Id. (citing Ex. 1003 ¶ 121; Ex. 1005, 319– 321). Based on the evidence before us, we determine that Petitioner has shown by a preponderance of evidence that the combination of Eckhardt and Sosnin discloses claim limitation [1B]. We find that Eckhardt’s disclosure of directing sterilizing light in the range of 220 to 310 nm toward a surface to be disinfected (Ex. 1004 ¶¶ 31–33, 43, 70), combined with Sosnin’s disclosure of bacterial survival curves resulting from irradiation of E. coli with KrCl excimer lamps (Ex. 1005, 320, Fig. 3), discloses claim limitation [1B]. [1C] Petitioner contends that the combination of Eckhardt and Sosnin” slip op. at 16
Patent outcomesUS 11,246,951 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,246,951 - PTAB · Sep 13, 2024 · IPR2024-00609 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted IPR on claims 1–24 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 58 & n.2, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”). We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 8
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner proposes a slightly different formulation of the level of skill in the art, namely, that a POSITA “would have a bachelor’s degree in electrical engineering, materials science, chemical engineering, or an equivalent field, and such a person would have at least 3 years of academic or industry experience in nucleation and epitaxial growth processes, or other comparable industry experience,” where “[t]his level of skill is approximate and more experience would compensate for less formal education, and vice versa.” Prelim. Resp. 7. Nevertheless, Patent Owner asserts that “the result here does not depend on which of the two articulations that the Board chooses.” Id. at 8. For the purposes of this Decision, we adopt Patent Owner’s proposal because we find Patent Owner’s statement of the level of ordinary skill in the art adequate and supported on this record. The level of ordinary skill in the art also appears to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We also note that the outcome of this Decision would be the same under Petitioner’s proposed definition.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Patent Owner’s arguments. The plain language of claim 1 does not recite any limitation regarding whether or not a group III/II reactant must continue to flow or must stop after the pretreatment step. Claim step [1b] simply recites “pre-treating a surface of the substrate with at least one group III reactant or at least one group II reactant at an elevated growth temperature prior to introducing a group V reactant or a group VI reactant.” Claim steps [1c] and [1d] simply recite “introducing a group V reactant or a group VI reactant to grow a nucleation layer on the surface of the substrate” ([1c]) and “growing a buffer layer on said nucleation layer, said buffer layer providing a surface upon which said epitaxial layer is grown” ([1d]). None of these steps contain any language either requiring or prohibiting the flow of the at least one group III/II reactant recited in step [1b]. Similarly, none of the cited portions of the Specification requires that at least one of the group III/II reactant must continue to flow after the pretreatment steps.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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 discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’360 patent. Thus, we institute an inter partes review of all challenged claims of the ’360 patent on all grounds asserted in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,250,360 - PTAB · Jul 31, 2024 · IPR2024-00222 · APJ Garth D Baer · IPR · Institution
The Board instituted inter partes review of claims 1–3, 6–23, and 25–33 on all petition grounds because Chen showed a reasonable likelihood of anticipating claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“21 (quoting Ex. 1006 ¶ 26)). We have reviewed Petitioner’s arguments and the underlying evidence cited in support and are persuaded that, at this stage, Petitioner sufficiently demonstrates a reasonable likelihood of succeeding in its anticipation challenge to claim 1 based on Chen.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Specifically, Petitioner asserts Chen’s lithium battery teaches the claimed battery pack, Chen’s USB outputs 8, 9, and 10 teach claim 1’s first-current output port, and Chen’s high-current, car-battery output unit 11 teaches claim 1’s pair of output terminals capable of starting a vehicle. Id. at 13–20. Further, Petitioner corresponds Chen’s “electronics of ‘U3B and D12’” that “form ‘an output power limit control’” to the claimed first protection circuit (Id. at 20 (quoting Ex. 1006 ¶ 26)) and Chen’s relay K1 that “is automatically turned off to prevent long-term high-current output” to the claimed second protection circuit configured to prevent overcurrent (Id. at 21 (quoting Ex. 1006 ¶ 26)). We have reviewed Petitioner’s arguments and the underlying evidence cited in support and are persuaded that, at this stage, Petitioner sufficiently demonstrates a reasonable likelihood of succeeding in its anticipation challenge to claim 1 based on Chen.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“B. CLAIM CONSTRUCTION Petitioner asserts “that no claim elements need a formal construction.” Pet. 10. We agree that we need not construe any claim limitations to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. LEVEL OF SKILL IN THE ART Petitioner contends a person of ordinary skill in the art “would have had at least a Bachelor’s of Science in electrical engineering or physics and at least two years of experience in circuit design for portable electronics.” Pet. 10 (citing Ex. 1003 ¶ 17). For the purpose of our decision, we adopt Petitioner’s description.” slip op. at 5
Claim construction§ 102 anticipationPatents in suitUS 9,643,506 - PTAB · Jun 24, 2024 · IPR2024-00380 · APJ Sheldon M Mcgee · IPR · Institution
The Board instituted IPR on claims 1–5, 7, and 9–14 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“because they are premised on a misapplication of our precedent. Providing a document to the Office in an Information Disclosure Statement is sufficient to satisfy AB prong one as long as that “previously presented” art is “the same or substantially the same” as that presented in the Petition. See Advanced Bionics, 7–8 (holding that “[p]reviously presented art includes . . . art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent”). As we have already found, there are no material differences between the asserted art and the prior art involved during examination under BD factor (a). Petitioner provides no authority that requires us to interpret “involved during examination” under BD factor (a) as “used in a rejection” or “mentioned by the examiner” (Pet. 60), and we are aware of none. Patent Owner’s position, in that regard, appears to conflate the first AB prong (whether the art previously was presented to the Office) with an aspect of the second AB prong (the extent to which the Examiner considered that art).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). The findings and conclusions set forth in this Decision are provided for the exclusive purpose of explaining our determination that Petitioner has met that standard on this record. slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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). Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See Prelim. Resp., generally. On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the 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, 163–64 (Fed. Cir. 1985))). A more specific definition is not necessary for purposes of deciding whether to institute review. To the extent a more specific definition is required, however, we adopt Petitioner’s proposed unchallenged definition because, on this record, it is consistent with the disclosures of the asserted prior art references.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that the claimed term “aryl” should be construed to mean “an aromatic ring system.” See Pet. 20–23. Patent Owner does not propose a different claim construction at this stage of the proceeding. See Prelim. Resp., generally. After review of the preliminary record, we determine that no claim terms need to be construed for purposes of institution. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,041,087 - The Noco Company, Inc. v. Pilot, Inc.All claims unpatentablePTAB · Jun 11, 2024 · IPR2023-00167 · APJ Julia Heaney · IPR · Final written decision
Claims 1–24 are unpatentable; the Board finds the asserted § 103 grounds proven for each claim and dismisses the collateral-estoppel motion as moot.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “preponderance of the evidence” standard for proving unpatentability. slip op. at 11
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“A patentee is entitled to a presumption of nexus “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Fox Factory, 944 F.3d at 1373 (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). “[I]f the marketed product embodies the claimed features, and is coextensive with them, then a nexus is presumed and the burden shifts to the party asserting obviousness to present evidence to rebut the presumed nexus.” Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). Coextensive “mean[s] that the product ‘is the invention disclosed and claimed’. . . . A product is ‘essentially the claimed invention when, for example, the unclaimed features amount to nothing more than additional insignificant features.’” Campbell Soup Co. v. Gamon Plus, Inc., 10 F.4th 1268, 1276–77 (Fed. Cir. 2021) (emphasis and citation omitted).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Having considered the evidence and arguments, we determine that the preponderance of the evidence favors Petitioner. Petitioner demonstrates that a person of ordinary skill would have had a reason to modify Richardson’s jump starter with Lai’s overcharge-protection circuit. Pet. 69. In particular, Petitioner shows that in order to protect against dangerous overcharging conditions in Richardson’s jump starter, a person of ordinary skill would have replaced diode 35 in Richardson with a switched overcharge-protection circuit, as taught by Lai, with the predictable result of cutting off recharging of jump starter batteries 22 from vehicle battery 28 in the event an over voltage protection threshold is crossed. See Ex. 1003 ¶ 174. Patent Owner’s argument that Richardson teaches away is not persuasive. Richardson’s teaching of recharging techniques supports the combination with Lai, rather than teaches away, because a system such as Richardson’s that permits recharging would have a need for safety protection and excessive recharging prevention. Further, claim 11 does not require preventing recharging in every situation, but rather only prevents recharging of “a normal voltage of the battery.” Ex. 1001, 6:11–12. In any event, Richardson does not criticize, discredit or discourage investigation into preventing recharging. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits, or otherwise discourages the solution claimed).” slip op. at 35
Patent outcomesUS 11,235,673 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,235,673 - Micron Technology, Inc. v. Katana Silicon Technologies LLCAll claims unpatentablePTAB · May 13, 2024 · IPR2023-00071 · APJ Julia Heaney · IPR · Final written decision
Claims 3–5, 8, 11, 20–22, 27–29, 31, and 33 are unpatentable as obvious over the stated combinations of prior art and skilled-artisan knowledge.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“On the fully developed record, we find that Petitioner’s construction, “a layer that adheres,” is more strongly supported by the evidence than Patent Owner’s construction, “a pre-formed layer that is adhered.” Our analysis begins with the claim language. The term “adhesion layer” appears in each of the ’806 patent’s independent claims, which include both method and device claims. See, e.g., Ex. 1001, 13:44–63 (claim 1 directed to a “semiconductor device”); id. at 17:58–18:17 (claim 30 directed to a “method of manufacturing a semiconductor device”). Claim 1 recites “a first semiconductor chip having a first adhesion layer adhered to its back surface” and “a second semiconductor chip having a second adhesion layer adhered to its back surface.” Id. at 13:49–51, 13:54–56 (emphasis added). Claim 30 recites the steps of “forming a first insulating adhesion layer on a back surface of a first wafer” and “forming a second insulating adhesion layer on a back surface of a second wafer.” Id. at 17:60–62, 18:3–5 (emphases added). In the absence of contrary evidence, we must assume that the term “adhesion layer” has the same meaning in all claims of the ’806 patent. In re Varma, 816 F.3d 1352, 1363 (Fed. Cir. 2016) (“the principle that the same phrase in different claims of the same patent should have the same meaning is a strong one, overcome only if ‘it is clear’ that the same phrase has different meanings in different claims,” quoting Fin Control Sys. Pty, Ltd. v. OAM, Inc., 265 F.3d 1311, 1318 (Fed. Cir. 2001)). The language of claim 30 and similarly worded claims of the ’806 patent suggests strongly that an “adhesion layer” may be formed in situ on the back surface of a wafer and need not be pre-formed, as argued by Patent Owner. The testimony of Patent Owner’s expert, Mr. Elenius, supports this interpretation. See Ex. 2014 ¶¶ 43, 50 (testifying that a person of ordinary skill in the art “would recognize that there are multiple methods of forming an ‘adhesion layer’ on the back surface of the semiconductor chip” and that “[p]astes and other adhesives, adhesive agents, adhesive layers or other material that are dispensed onto a substrate or chip back are formed into a layer over time as they harden through curing” (emphasis added)). Thus, the language of claims 30 and 31 does not support Patent Owner’s construction that the “adhesion layer” must be a pre-formed layer that is adhered. Cf. PO Resp. 22–25 (arguing for that construction).” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Citing testimony from Dr. Suhling, Petitioner asserts that a person of ordinary skill in the art at the priority date of the ’806 patent would have had i) a bachelor-level degree in electrical engineering, mechanical engineering, material science, or a related subject and five or more years of experience working in the field of semiconductor packaging; ii) a Master’s-level degree in mechanical engineering, electrical engineering, material science, or a related field, and at least 1-3 years of experience in the design/development of semiconductor packages; or iii) a Ph.D.- level degree in mechanical engineering, material science, electrical engineering, or a related field, and at least some experience in the area of semiconductor packaging. Pet. 17–18 (citing Ex. 1002 ¶¶ 28–32). Petitioner further states that “[a]dditional education may substitute for professional experience, and significant work experience may substitute for formal education.” Pet. 18. Patent Owner’s declarant, Mr. Elenius, states that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical, mechanical or materials engineering and two to three years of experience in the design or development of semiconductor manufacturing, or the equivalent.” Ex. 2014 ¶ 32. Mr. Elenius further states that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. For purposes of this Decision, we find no meaningful differences” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“3. Reasons to Combine Petitioner contends that it would have been obvious for a person of ordinary skill in the art to combine Ball’s teachings of stacking chips with Mostafazadeh’s process for applying adhesive to create individual chips with adhesive backsides. Pet. 28–29. Petitioner contends that a person of ordinary skill would have been motivated to combine the teachings of Ball and Mostafazadeh for several reasons, including to provide a more efficient manufacturing process for multichip modules and to simplify the stacking process. Pet. 28–31. Patent Owner argues that a person of ordinary skill would not have been motivated to combine Mostafazadeh with Ball because there would have been no reasonable expectation of success and the combination would not have resulted in a functioning semiconductor device. PO Resp. 39. Patent Owner asserts that Petitioner’s combination of Ball and Mostafazadeh would fail for multiple reasons and that Mostafazadeh does not describe multi-chip stacked mounting. Id. at 39–52. Having considered the evidence and arguments, we determine that the preponderance of the evidence favors Petitioner. Petitioner demonstrates persuasively that a person of ordinary skill in the art would have had reasons to combine Ball’s stacked multichip module with Mostafazadeh’s process for applying adhesive at the wafer stage and then dicing to create individual chips with adhesive backsides. Pet. 28–31. In particular, Petitioner shows that a person of ordinary skill in the art would have considered Mostafazadeh’s teaching of applying the adhesive to a wafer surface and then subsequently dicing the wafer in order to provide a more efficient manufacturing process for multichip modules and to simplify Ball’s process of stacking chips. Id.; see KSR, 550 U.S. at 417 (stating that the “mere application of a known technique to a piece of prior art ready for the improvement” suggests obviousness). The teachings of both Ball and Mostafazadeh support Petitioner’s combination. Ball teaches a stacked multichip module using flip-chip and wire bond interconnections, where a lower chip is flip-chip connected to a substrate using metal bumps, and an upper chip is wire bond connected to the substrate. Ex. 1005, Abstract, 3:42–64, 4:58–59, 5:3–12, 5:18–20, 5:23– 27, Fig. 1. Ball teaches that the upper chip is attached to the lower chip in a back-to-back arrangement with a layer of adhesive applied over a back side of the lower chip. Id. Mostafazadeh teaches a method for applying integrated circuit dies to support surfaces. Ex. 1003, Abstract. In Mostafazadeh’s method, an adhesive coating is formed on a surface of a semiconductor wafer, the adhesive coating is dried, and the semiconductor wafer is diced to form integrated circuit dies, each having an adhesive layer on its mounting surface, i.e., its back surface. Id. at 3:5–11, 5:20–25, 7:9–11, 7:29–8:2, Fig. 2 (steps 104–110). A selected die is then attached to an associated support surface by placing the adhesive layer of the selected die in contact with the associated support surface. Id. at 3:11–13, 8:10–12, Fig. 2 (steps 112–118).” slip op. at 33
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“After considering the parties’ arguments and evidence, we determine that Petitioner meets its burden of proof for claim element [3d]. Our finding is supported by Figure 1 of Ball, which depicts a second chip mounted to a first chip in a back-to-back arrangement. Ex. 1002 ¶ 158; Ex. 1005, Fig. 1. More particularly, Ball’s Figure 1 shows that back side 32 of upper die 12 (the claimed “second semiconductor chip”) is mounted to back side 30 of lower die 14 (the claimed “first semiconductor chip”) by adhesion layer 28. Ex. 1005, 5:18–20. Relying on Dr. Suhling’s testimony, Petitioner shows persuasively that “a circuit is formed on the front surface 34 of upper die 12 . . . , as evidenced by bonding pads 36 and wires 38 connecting the upper die’s circuitry to the wiring layer on substrate 16.” Pet. 41; Ex. 1002 ¶ 159. We credit Dr. Suhling’s unrebutted testimony that, “[b]ecause the circuitry is on the front side of upper die 12, a [person of ordinary skill in the art] would know that the back surface adhesive layer is ‘where a circuit is not formed.’” Ex. 1002 ¶ 159. Patent Owner argues that, to meet claim elements [3b] and [3d], “a reference must show that an adhesion layer extends to cover the entire back surface of the second semiconductor chip where a circuit is not formed.” PO Resp. 30. We find no support in the claim language or other intrinsic evidence for Patent Owner’s argument. In our view, the phrase “back surface where a circuit is not formed” identifies the back side of the chip as opposed to the front side, where a circuit is formed. Ex. 1001, 14:26–27 (claim element [3d]). Our interpretation is supported by the claim language as a whole. Claim element [3b], for example, recites “a first semiconductor chip having a circuit forming on its front surface and an adhesion layer adhered to its back surface.” Id. at 14:17–19 (emphasis added). In this” slip op. at 47
Patent outcomesUS RE38,806 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR - Micron Technology, Inc. v. Katana Silicon Technologies LLCAll claims unpatentablePTAB · May 13, 2024 · IPR2023-00072 · APJ Julia Heaney · IPR · Final written decision
Claims 1, 2, 6, 7, 9, 10, 12–19, 23–26, 30, and 32 are unpatentable as obvious over the asserted combinations of prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although the proposals for the level of skill in the art by the parties’ declarants have differences in wording, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Nevertheless, based on our review of the ’806 patent, the types of problems and solutions described in the ’806 patent, and cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionGranted
“On the fully developed record, we find that Petitioner’s construction, “a layer that adheres,” is more strongly supported by the evidence than Patent Owner’s construction, “a pre-formed layer that is adhered.”” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner shows persuasively that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Mostafazadeh with Ball and Fogal. Pet. 32–33. The evidence discussed above concerning reasons to combine supports a reasonable expectation of success. We are also persuaded by Dr. Suhling’s testimony that the “combination of Ball, Fogal, and Mostafazadeh would require no modification of the multichip modules in Ball and Fogal: rather Mostafazadeh merely explains in more detail methods known in the art for creating chips with adhesive surfaces.” Ex. 1002 ¶ 239; see also id. ¶¶ 62– 69 (describing prior art methods for applying adhesive to the backside of a wafer). For the foregoing reasons, we find that Petitioner has demonstrated that a person of ordinary skill in the art would have had a reasonable expectation of successfully combining Ball, Fogal, and Mostafazadeh.” slip op. at 46
- ExcludeOther
“We do not discuss or cite any of these exhibits in this Decision, or rely on any of them in reaching our determination that all of the challenged claims are unpatentable. Because their presence in the record would not affect our analysis in this Decision, we dismiss as moot Petitioner’s motion with respect to these exhibits.” slip op. at 72
Patent outcomesUS RE38,806 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR - Micron Technology, Inc. v. Katana Silicon Technologies LLCAll claims unpatentablePTAB · May 13, 2024 · IPR2023-00073 · APJ Sheldon M Mcgee · IPR · Final written decision
Claims 1–15 are unpatentable under §103: the Board found the asserted combinations taught the limitations, with motivation to combine and a reasonable expectation of success.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The claim language, “forming” an “adhesion layer on a back surface,” suggests strongly that an “adhesion layer” may be formed in situ on the back surface of a wafer. The testimony of Patent Owner’s expert, Mr. Elenius, supports this interpretation. See Ex. 2014 ¶¶ 43, 50 (testifying that a person of ordinary skill in the art “would recognize that there are multiple methods of forming an ‘adhesion layer’ on the back surface of the semiconductor chip” and that “[p]astes and other adhesives, adhesive agents, adhesive layers or other material that are dispensed onto a substrate or chip back are formed into a layer over time as they harden through curing” (emphasis added)). Thus, the language of the claims of the ʼ879 patent does not support Patent Owner’s construction that the “adhesion layer” must be a preformed layer that is adhered. Cf. PO Resp. 21–23 (arguing for that construction).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Nevertheless, based on our review of the ’879 patent, the types of problems and solutions described in the ’879 patent, and cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 13
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Mostafazadeh, could overflow.” PO Resp. 41, 42 (citing Ex. 2014 ¶ 121). According to Patent Owner, the downward pressure during mounting “could cause adhesive to squeeze out.” Id. at 41. We find that Patent Owner’s argument and the corresponding testimony of Mr. Elenius are speculative and do not outweigh Petitioner’s evidence of obviousness. The overflow issue was recognized and addressed by Mostafazadeh. Contrary to Patent Owner’s argument, Mostafazadeh provides explicitly that its adhesive layer “covers an entire mounting surface 190 of the selected integrated circuit dies 182 and does not extend beyond a boundary of the mounting surface 190.” Ex. 1003, 10:6–9 (emphasis added). Additionally, Mostafazadeh teaches that when “the adhesive layer is rolled on, it is exactly the same size as the mounting surface and is quite even. Thus, when the die is attached to its supporting surface the adhesive does not extend beyond the mounting surface of the die.” Id. at 9:15–18. Further, Mostafazadeh teaches that its process avoids the adhesive jutting around the edges of the die. Id. at 2:26–28. These teachings support that a person of ordinary skill in the art would have had a reasonable expectation of successfully applying Mostafazadeh’s die attachment method to Ball’s multichip device while avoiding adhesive overflow. Next, Patent Owner argues that Petitioner’s combination would fail” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“preponderance of the evidence favors Petitioner. Petitioner demonstrates persuasively that a person of ordinary skill in the art would have had reasons to combine Ball’s stacked multichip module using flip-chip and wire bond connections with Mostafazadeh’s process for applying adhesive to create individual chips with adhesive backsides. Pet. 25–28. In particular, Petitioner shows that a person of ordinary skill in the art would have considered Mostafazadeh’s teaching of applying the adhesive to a wafer surface and then subsequently dicing the wafer in order to provide a more efficient manufacturing process for multichip modules and to simplify Ball’s process of stacking chips. Id.; see KSR, 550 U.S. at 417 (stating that the “mere application of a known technique to a piece of prior art ready for the improvement” suggests obviousness). The teachings of both Ball and Mostafazadeh support Petitioner’s” slip op. at 33
Patent outcomesUS 6,352,879 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,352,879
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.