- Bae Systems Information And Electronic Systems Integration, Inc. v. Cheetah Omni, LLCAll claims unpatentablePTAB · Jun 19, 2014 · IPR2013-00175 · APJ Rama G Elluru · IPR · Final written decision
Claims 1, 4, 13, 15, 17, and 19 were held anticipated by Sanders; claim 14 was held obvious over Sanders; Cheetah’s motion to amend was denied.
RulingsFinal written decision- BurdenUnpatentable
“B. Anticipation by Sanders (Ex. 1010) With respect to our review of BAE’s contention that claims 1, 4, 13, 15, 17, and 19 are anticipated by Sanders, we have reviewed BAE’s Petition, Cheetah’s Patent Owner Response, and BAE’s Reply, as well as the evidence discussed in each of those papers. We are persuaded by a preponderance of the evidence that claims 1, 4, 13, 15, 17, and 19 are anticipated by Sanders. See Pet. 15–27, 28–30, 32–44 (claim charts).” slip op. at 8
- 112 supportMotion to amend, deniedDenied
“In its motion, Cheetah contends that the subject matter of its proposed substitute claims have written description support in the specification of the ’673 patent. Mot. 7. Rules 42.121(b)(1) and (2), however, require that a motion to amend set forth the support in the original disclosure of the patent for each claim that is added and the support in an earlier-filed disclosure for each claim for which the benefit of the filing date of the earlier filed disclosure is sought. 37 C.F.R. § 42.121(b)(1), (2). For written description support for the proposed substitute claims, Cheetah refers to portions of the ’673 patent Specification only for the added limitations in its proposed substitute claims. Specifically, Cheetah refers to Figure 8D, and column 19, lines 20–39 of the ’673 patent Specification. Mot. 7. Such reference does not satisfy the requirements of Rule 42.121(b)(1) because the specification is not the original disclosure. Moreover, Cheetah cites alleged support in the specification for only the added Q-switcher limitations. Cheetah does not identify support in the original disclosure “for each claim” in its motion to amend, as a whole and including the Q-switcher limitations, as required by Rule 42.121(b)(1). Cheetah, therefore, has not made a sufficient showing that its proposed substitute claims, as a whole, have written description support in the original disclosure of the ’673 patent, and we deny the motion on that basis.” slip op. at 18
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Analysis We are persuaded by BAE’s arguments (Opp. 11) that it would have been obvious to a person of ordinary skill in the art to modify Sanders to couple a Q-switcher with fiber laser 82 shown in Figure 16 based on the teachings of Lees. See Ex. 1017 ¶¶ 8–11. As Cheetah acknowledges (Mot. 8), Q-switchers were known in the art and used to obtain high peak power laser pulses. Lees teaches a Q-switcher, the AOM, within the laser cavity of the Er:Yb fiber laser. Ex. 1018, Fig. 1; p. 1836 (right hand column, first full paragraph); Ex. 1017 ¶ 9. Sanders explains that high peak power laser pulses are advantageous for pumping a QPM OPO device, such as Sanders’s NFM device 84. Ex. 1010, 1:40–44, 3:21–27, 17:42–49. We, thus, are persuaded by Dr. Smith’s testimony that it would have been obvious to a person of ordinary skill to provide high peak power pulses to NFM device 84 by arranging Lees’s AOM (i.e., a Q-switcher) within Sanders’s fiber laser 82 in a manner described by Lees. Ex. 1017 ¶¶ 9–10. As BAE asserts, the reason to combine would have been to provide high peak power laser pulses from fiber laser 82 to NFM device 84. See id. ¶¶ 9–11. We further are persuaded that there would have been a reasonable expectation of success for modifying Sanders based on Lees, in view of the similarities between the fiber laser 82 of Sanders and the Q-switched fiber laser of Lees. See id. ¶¶ 10–11.” slip op. at 21
- ScopeMotion to amend, deniedDenied
“We agree with BAE that Cheetah has not demonstrated a need for proposing more than one substitute claim for each of claims 1 and 13. See Opp. 2–3. Substitute claim 22 is identical to substitute claim 21, except for the additional recital of “wherein the Q-switcher produces an output signal having a pulse width in the range of two (2) nanoseconds to one hundred (100) milliseconds.” Mot. 3–4. Cheetah proposes a similar scheme to replace original claim 13. Id. at 5–6. Cheetah, however, has not demonstrated the need for proposing narrower substitute claims than the ones we already have considered. In addition, in order to justify more than one substitute claim for each challenged claim, “a patent owner has to show a special need to justify more than one substitute claim for each challenged claim. In such situations, the patent owner needs to show patentable distinction of the additional substitute claim over all other substitute claims for the same challenged claim.” See Idle Free, Paper 26 at 5, 8–9. With respect to the new limitation of claims 22 and 25, Cheetah states that “[t]he prior art does not read on the Q-switcher output pulse width because it does not read on the Q-switcher itself.” Mot. 12. In its Reply, Cheetah states that “in the manner that the limitations would be read into the claims, the distinction is facially clear without explanation.” PO Reply 3. Cheetah’s conclusory statements have not persuaded us of a patentable distinction of substitute claims 22 and 25 over substitute claims 21 and 24, respectively. See Opp. 4. Cheetah also was required to discuss the “significance and usefulness” of the added features in a proposed substitute claim “from the perspective of one with ordinary skill in the art.” See Idle Free, Paper 26 at 7. This Cheetah failed to do with respect to claims 22 and 25. Therefore, we determine that Cheetah has not met its burden to demonstrate that claims 22 and 25 are patentable.” slip op. at 25
Patent outcomesUS 7,633,673 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,633,673 - Nichia Corporation v. Emcore CorporationAll claims unpatentablePTAB · Feb 11, 2014 · IPR2012-00005 · APJ Joni Y Chang · IPR · Final written decision
Claims 1–17 are unpatentable as obvious over Kidoguchi, Nakamura, Fujimoto, Shibata, and the Admitted Prior Art; Emcore’s motion to amend is denied.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“is a “highly fact-dependent question,” taking into account various factors such as whether the non-party “exercised or could have exercised control over a party’s participation in a proceeding” and the degree to which a non-party funds directs and controls the proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48759-60 (Aug. 14, 2012). Upon review of the parties’ arguments and evidence, we determine that Emcore did not demonstrate adequately that Nichia failed to identify all real parties-in-interest. The petition identifies Nichia Corporation as the real party-in-interest. Pet. 1. Nichia’s motion to stay (Ex. 2017) and the Notice Correcting Corporate Names (Ex. 1036) reveal that: (1) the motion to stay used the shorthand “Nichia” to refer to both Nichia Corporation and NAC; (2) the motion to stay inadvertently stated that “Nichia filed a Petition for inter partes review . . .”; and (3) the motion to stay should have used “Nichia Corporation” rather than “Nichia.” Ex. 2017, 1-2; Ex. 1036, 2. The evidence before us clearly shows that the motion to stay filed in the district court contains a clerical error, especially in light of the fact that in the instant proceeding, we use the term “Nichia” to refer only to Nichia Corporation (see, e.g., Decision on Institution, Paper 13 at 2). Therefore, the evidence does not establish that NAC is a real party-in-interest to this proceeding. Moreover, the mere fact that Nichia and NAC, as co-defendants, shared the same counsel and expert witness, and had similar litigation strategy is not sufficient to prove that NAC exercised, or could have exercised, control over Nichia’s action in the instant proceeding. Nor does being a subsidiary of Nichia establish that NAC has the ability to control Nichia’s conduct in this” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“semiconductor (claim 1); “pure nitride semiconductor” or “pure nitride compound semiconductor” (claim 12) In its petition, Nichia notes that the ’215 patent expressly defines these semiconductor claim terms in the specification. Pet. 10-11 (citing Ex. 1001, 5:5-8; 5:14-17; 5:5-12). Upon review of the cited portions of the specification, we observe that the definitions are set forth in the specification with reasonable clarity, deliberateness, and precision. Therefore, we adopt the definitions as the broadest reasonable constructions for the semiconductor claim terms set forth in the table below. Terms Definitions A semiconductor according to the stoichiometric III-V semiconductor formula Ala Inb Gac Nx Asy Pz where (a+b+c) is about 1 and (x+y+z) is also about 1. Ex. 1001, 5:5-8. A semiconductor having n-type conductivity, i.e., a” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We do not agree with Emcore that its proposed construction is the broadest reasonable interpretation of the claim term “annealing,” as it would import improperly a limitation—“sufficiently to form a contact with low resistance”—from the specification into the claims. Gemstar-TV Guide Int’l, Inc. v. ITC, 383 F.3d 1352, 1366 (Fed. Cir. 2004) (rejecting expressly the contention that claims must be construed as limited to an embodiment disclosed in the patent). We also are not persuaded by Emcore’s arguments. They fail to recognize that it is “a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (citations and quotation marks omitted); see also Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc) (“The written description part of the specification itself does not delimit the right to exclude. That is the function and purpose of claims.”). Emcore has not alleged that the inventors of the ’215 patent acted as their own lexicographer and provided a special definition in the specification for the claim term “annealing” that is different from its recognized meaning 10 to one with ordinary skill in the art. The claim language used by Emcore is broad. There is no requirement as to the resistivity of the contact or a specific and beneficial change, as urged by Emcore. One with ordinary skill in the art may use “annealing” to form a contact that does not have a low resistance contact or to form other semiconductor structures.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We are not persuaded by Emcore’s argument, as it narrowly focus on one sentence and fails to consider Kidoguchi’s disclosure as a whole. The alleged translation error also is of no moment. Even based on the English-language translation submitted by Emcore (Ex. 2011), Kidoguchi’s disclosure as a whole discloses an embodiment that includes an Al base layer. Ex. 2011 ¶¶ 32-33 (“As illustrated in Figure 14, Mo (molybdenum) is employed as a contact metal for n-GaN. . . . Other metals, however, can be employed instead. For instance, W, Ta, Ti and Al may be employed [as a contact metal for n-GaN].” Emphasis added.). Therefore, Kidoguchi describes an Al base layer formed on an n-type GaN semiconductor, as required by claims 1 and 11-14. Emcore also argues that Kidoguchi is “a fundamentally flawed lead reference for n-type contacts to GaN and other type III-V semiconductors,” because Kidoguchi’s primary teaching is a Mo base layer, “which was known not to form a low-resistance, ohmic contact,” and Kidoguchi does not explain how other examples of base layer metals could be used to form a low-resistance, ohmic contact. PO Resp. 7-8, 38-39, 41-42. We are not persuaded by that argument, as it is not commensurate with the scope of claims 1 and 11-14. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (It is well established that limitations not appearing in the claims cannot be relied upon for patentability.). As discussed above in the claim construction section, we decline to import the limitation— 23 “a low-resistance, ohmic contact to the semiconductor”—from the specification into the claim term “base layer.” Additionally, Emcore does not identify any limitation of claims 1 and 11-14, that expressly requires “a low-resistance, ohmic contact.” In fact, the preamble of the sole independent claim, claim 1, merely requires “forming a contact on an n-type III-V semiconductor” and not “forming a low-resistance, ohmic contact on an n-type III-V semiconductor,” as urged by Emcore.” slip op. at 23
Patent outcomesUS 6,653,215 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 6,653,215
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.