- PTAB · Sep 19, 2023 · IPR2023-00695 · APJ Julia Heaney · IPR · Institution
The Board instituted inter partes review of claims 1–5 and 7–18 on the asserted obviousness ground over Eckhardt and Sosnin.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . 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) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.2” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 15. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’951 patent and the asserted prior art.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“Having considered the evidence and arguments presented by both parties on the present record, we find sufficient support for Petitioner’s contentions that Eckhardt and Sosnin teach or suggest all of the limitations in claim 1, and that a person of ordinary skill in the art would have combined Eckhardt’s teaching of narrow spectrum light in the range of 220 to 310 nm to disinfect skin, with Sosnin’s implementation of excimer lasers including 222 nm to kill bacteria, to arrive at the method of claim 1 with a reasonable expectation of success. Petitioner relies on Eckhardt’s teachings, as follows. Eckhardt teaches that “[a] region of tissue to be sterilized or disinfected may include unbreached skin.” Ex. 1004 ¶ 29. Eckhardt describes its Figure 1 as illustrating “a method for sterilizing or disinfecting a region of skin or tissue of a patient using sterilizing or disinfecting light” and that the light may be UV light, such as UVA, UVB, and UVC light. Id. ¶ 31. Eckhardt also teaches that the light may be generated in one or more flashes and that the energy of a single flash might be sufficient to deliver a sterilizing or disinfecting dosage. Id. ¶ 32. On the present record, we disagree with Patent Owner’s argument that Eckhardt’s bandages teach away from the use of UV light on skin. Eckhardt does not teach bandages as a way to block all UV light, but rather, uses bandages to control the intensity of UV light reaching the skin. Indeed, Eckhardt’s embodiment that Petitioner relies upon is titled “UV-Transmissive Bandage” and explains how to choose bandage materials that transmit UV-C light. See id. ¶¶ 69– 72.” slip op. at 15
- Obviousness (§103) › KSR rationalesMotivation foundReasonable expectation foundInstituted
“Having considered the evidence and arguments presented by both parties on the present record, we find sufficient support for Petitioner’s contentions that Eckhardt and Sosnin teach or suggest all of the limitations in claim 1, and that a person of ordinary skill in the art would have combined Eckhardt’s teaching of narrow spectrum light in the range of 220 to 310 nm to disinfect skin, with Sosnin’s implementation of excimer lasers including 222 nm to kill bacteria, to arrive at the method of claim 1 with a reasonable expectation of success. Petitioner relies on Eckhardt’s teachings, as follows. Eckhardt teaches that “[a] region of tissue to be sterilized or disinfected may include unbreached skin.” Ex. 1004 ¶ 29. Eckhardt describes its Figure 1 as illustrating “a method for sterilizing or disinfecting a region of skin or tissue of a patient using sterilizing or disinfecting light” and that the light may be UV light, such as UVA, UVB, and UVC light. Id. ¶ 31. Eckhardt also teaches that the light may be generated in one or more flashes and that the energy of a single flash might be sufficient to deliver a sterilizing or disinfecting dosage. Id. ¶ 32. On the present record, we disagree with Patent Owner’s argument that Eckhardt’s bandages teach away from the use of UV light on skin. Eckhardt does not teach bandages as a way to block all UV light, but rather, uses bandages to control the intensity of UV light reaching the skin. Indeed, Eckhardt’s embodiment that Petitioner relies upon is titled “UV-Transmissive Bandage” and explains how to choose bandage materials that transmit UV-C light. See id. ¶¶ 69– 72.” slip op. at 15
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,246,951 - Hope Medical Enterprises, Inc. v. Fennec Pharmaceuticals, Inc.No claims unpatentablePTAB · Sep 1, 2023 · IPR2022-00125 · APJ Julia Heaney · IPR · Final written decision
The Board granted the revised noncontingent motion to amend, canceled claims 18 and 20, and entered substitute claims 28 and 29, which were not proven obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Dr. Rogers, contends that a person of ordinary skill in the art would have [had] a bachelor’s degree or equivalent in any of the pharmaceutical sciences with at least 5 years of experience in solid state chemistry; a master’s degree in any of the pharmaceutical sciences with at least 3 years of experience in solid state chemistry; or a Ph.D. in any of the pharmaceutical sciences with 1 year of experience in solid state chemistry. Pet. 8 (citing Ex. 1008 ¶¶ 24–28). Petitioner further states that such “[a] person could also have qualified as a [person of ordinary skill in the art] with some combination of (1) more formal education and less technical or professional experience or (2) less formal education and more technical or professional experience.” Id. Patent Owner does not dispute Petitioner’s proposed definition of a person of ordinary skill. See generally MTA, RMTA. Having considered the parties’ arguments and evidence, we adopt the level of ordinary skill in the art proposed by Petitioner, because it is consistent with the disclosures of the ’363 patent and the prior art of record. We note, however, that neither party contends that the outcome of this case would differ based on our adoption of any particular definition of a person of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In our Preliminary Guidance, we construed “for a pharmaceutical composition” to mean “in combination with pharmaceutically acceptable excipients,” based on the ’363 patent’s definition providing that “[t]he terms ‘formulation’ or ‘pharmaceutical composition’ as used herein refers to the drug in combination with pharmaceutically acceptable excipients.” Prelim. Guid. 5–6 (citing Ex. 1001, 12:26–28; Ex. 2010, 17:11–12; Ex. 2011, 26:26– 27). We also encouraged the parties to address whether “for a pharmaceutical composition,” which appears in the preamble of substitute claims 28 and 29, is limiting, as opposed to a statement of intended use or purpose. Id. at 6. Following our Preliminary Guidance, the parties submitted further arguments concerning the term “for a pharmaceutical composition.” Patent Owner argues the term requires that the claimed process provide STS that is sufficiently pure for use in a pediatric patient (see RMTA 8–11) and that the word “drug” in the ’363 patent’s definition of “pharmaceutical composition” requires that the anhydrous STS is of sufficient purity for pharmaceutical use. Reply RMTA 3. Petitioner argues that the construction set forth in our Preliminary Guidance was correct. See Sur-reply RMTA 2–3. Having considered the arguments and evidence, we do not further construe the term “for a pharmaceutical composition” in this Decision because, as discussed in our analysis of obviousness below, it is not necessary to construe the term in order to determine whether Petitioner has met its burden of demonstrating by a preponderance of the evidence that proposed substitute claims 28 and 29 are unpatentable. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we 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 13
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“1. Reasonable Number of Substitute Claims A motion to amend must “propose a reasonable number of substitute claims.” 35 U.S.C. § 316(d)(1)(B); see 37 C.F.R. § 42.121(a)(3) (“A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.”). Patent Owner proposes the same number of substitute claims as the original challenged claims that are cancelled, i.e., a one-to-one substitution for a total of two substitute claims. MTA 2; RMTA. “There is a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one (1) substitute claim.” Lectrosonics, Paper 15 at 4; see 37 C.F.R. § 42.121(a)(3). Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner proposes a reasonable number of substitute claims. 2. Support in the Original Disclosure Patent Owner has identified written description support in the originally filed disclosure of the ’363 patent for the new limitations added for the proposed substitute claims. See RMTA 5–8. We have reviewed Patent Owner’s assertions of support in the original disclosure for the proposed revised substitute claims and determine that sufficient support exists. Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner has met this requirement. 3. Respond to a Ground of Unpatentability “A motion to amend may be denied where . . . [t]he amendment does not respond to a ground of unpatentability involved in the trial.” 37 C.F.R. § 42.121(a)(2)(i). Patent Owner asserts that the proposed revised substitute claims are patentable over the combination of references that forms the basis of the obviousness ground on which we instituted trial. RMTA 12–13. Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner has met this requirement. 4. Scope of the Claims Patent Owner asserts that the proposed revised substitute claims do not enlarge the scope of original claims 18 and 20. RMTA 5. We have reviewed Patent Owner’s assertion that the purity amendments of proposed revised substitute claims 28 and 29 narrow the claims’ scope. Id. Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner has met this requirement.” slip op. at 17
- BurdenNot shown unpatentable
“determine the evidence relied on by Petitioner does not support Petitioner’s position that a person of ordinary skill in the art would have been motivated to combine Levenson, Sherman, Edwards, and USP. Petitioner’s contention that it would have been obvious to a person of ordinary skill in the art to combine the teachings of Levenson with Sherman is based on Dr. Rogers’s testimony that “[b]oth references disclose synthesis of sodium thiosulfate pentahydrate.” Ex. 1008 ¶ 151; see Pet. 36, 38. Dr. Rogers further testified it would have been obvious to add Edwards’s dehydrating step to the preparation of STS pentahydrate “which is obtained following the teachings of Levenson and Sherman” because “Edwards itself discloses dehydrating [STS] pentahydrate.” Id. ¶ 154. The Petition included these arguments even though they were inconsistent with Petitioner’s previous statement, during the Sherman prosecution, that Levenson taught STS heptahydrate, and therefore “does not provide any teaching with respect to [STS] pentahydrate.” Ex. 2013, 97. This prior inconsistent statement undercuts Petitioner’s rationale for combining Levenson, Sherman, and Edwards in this proceeding. Moreover, Petitioner’s rationale for combining the references in this proceeding is inconsistent with its statements about Levenson during the Sherman prosecution. Recognizing this inconsistency, Petitioner now takes the position that the Petition and Dr. Rogers’s testimony were incorrect. Paper 32; see Tr. 21:14–22:7, 59:1–2 (reemphasizing that “Petitioner maintains the statements that it made in the Sherman prosecution regarding Levenson”). Petitioner attempts to rationalize the inconsistency between its statements in the Sherman prosecution (including that “Levenson does not provide any teaching with respect to [STS] pentahydrate”) and its position in this proceeding by arguing that Dr. Rogers relies on Levenson as teaching surface activation “regardless of any particular hydrates Levenson discloses.” Tr. 22:8–9. That argument is not persuasive, because Dr. Rogers’s declaration clearly states the primary reason for his opinion that it would have been obvious to a person of ordinary skill in the art to combine the teachings of Levenson with Sherman: “[b]oth references disclose synthesis of sodium thiosulfate pentahydrate.” Ex. 1008 ¶ 151. Contrary to Petitioner’s argument, Dr. Roger’s reliance on the surface activation teachings of Levenson is because he believes that both references pertain to STS pentahydrate; the surface activation teachings are not stated as an independent reason to combine the references. Id. Petitioner provides no further explanation of how a person of ordinary skill in the art would have been motivated to combine Levenson’s teachings regarding manufacture of STS heptahydrate with Sherman’s and Edwards’s teachings regarding STS pentahydrate, or how a person of ordinary skill would have regarded the difference between STS hydrates. Dr. Rogers’s acknowledgement of stability differences among STS hydrates highlights the insufficiency of Petitioner’s showing in this regard. See Ex. 2005, 35, 39. Having changed its position at the close of trial and having effectively withdrawn Dr. Rogers’s testimony as to similarities between Levenson and” slip op. at 24
Patent outcomesUS 10,792,363 not shown unpatentableClaim constructioncites KSR · GrahamPatents in suitUS 10,792,363 - The Noco Company, Inc. v. Pilot, Inc.InstitutedPTAB · Jun 15, 2023 · IPR2023-00167 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on all challenged claims and grounds after finding a reasonable likelihood that claims 1, 2, 4–7, 12–14, and 18–22 would be unpatentable over Krieger.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . 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) (2018). Upon consideration of the Petition and the evidence of record, we determine the Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2022). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention “would have been a person having at least a Bachelor’s Degree in a relevant engineering discipline such as electrical engineering and at least two years of relevant experience in the design and/or development of automotive electrical systems, or a Masters or more advanced degree in a relevant engineering discipline such as electrical engineering.” Pet. 5 (citing Ex. 1003 ¶ 46). In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s description of the level of ordinary skill in the art, as consistent with the ’673 patent and the asserted prior art.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“As discussed above, Petitioner’s analysis explains how Krieger teaches claim 1’s subject matter. At this stage of the proceeding, Patent Owner does not dispute or otherwise challenge Petitioner’s information and analysis. Based on the current record and for the reasons advanced by Petitioner and supported by Dr. Wood’s testimony, Petitioner establishes sufficiently for purposes of institution that Krieger teaches or suggests all of the limitations of claim 1, and thus demonstrates a reasonable likelihood of prevailing in proving claim 1 unpatentable under § 103 as obvious over Krieger.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,235,673 - Micron Technology, Inc. v. Katana Silicon Technologies LLCInstitution deniedPTAB · Jun 14, 2023 · IPR2023-00105 · APJ Minn Chung · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving any claim unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review may not be authorized unless “the information 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.” Upon consideration of the Petition and the Preliminary Response, we conclude that the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any challenged claim of the ’013 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- 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 do not find the proposals to be materially different. For purposes of this Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Thus, although we do not find the parties’ proposals for the level of skill in the art to be materially different, for purposes of this Decision, based on our review of the ’013 patent, the types of problems and solutions described in the ’013 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
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“understand the claim term “a support pattern, provided on the second surface” recited in all challenged independent claims to mean a “support section that is part of a wiring pattern formed on the substrate’s second surface.” Pet. 14 (citing Ex. 1002 ¶¶ 119–121, 133–134). At this time, Patent Owner does not dispute Petitioner’s proposed construction of “a support pattern, provided on the second surface.” See generally Prelim. Resp. For purposes of this Decision, we need not construe this term because the parties do not identify any material issue that would turn on the construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“As discussed above in Section II.C, under the heading “SUMMARY OF THE INVENTION,” the ’013 patent states that “[t]he object of the present invention is to provide a wiring substrate, a semiconductor device, and a package stack semiconductor device, all with improved reliability of connection by suppressing occurrence of inadequate electrical connection.” Ex. 1001, 3:60–64 (emphases added). The ’013 patent further states that A wiring substrate of the present invention, in order to achieve the foregoing object, includes an insulating substrate, a terminal section for wire bonding or flip-chip connection and a support pattern, provided on a surface of the other side of the surface where the terminal section is provided, and on a position corresponding to the terminal section, for improving reliability of connection of wire bonding. Therefore, this structure can suppress deformation of the insulating substrate by the support pattern, even when the terminal section is pressed in wire bonding or other connection methods. As a result, reliability of connection in wire bonding or other connection methods, can be improved than conventionally. Id. at 3:65–4:11 (emphases added). In view of these disclosures in the Specification and the express recitation “for improving wire bonding connection” in the claim, we determine that the limitation reciting “support pattern . . . for improving wire bonding connection” requires the recited “support pattern” to be capable of “improving wire bonding connection.” See GPNE Corp. v. Apple Inc., 830 F.3d 1365, 1371 (Fed. Cir. 2016) (“When a patent . . . describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention.” (quoting Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007))); see also C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 864 (Fed. Cir. 2004) (“Statements that describe the invention as a whole are more likely to be found in certain sections of the specification, such as the Summary of the Invention.”).” slip op. at 43
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,731,013 - PTAB · May 15, 2023 · IPR2023-00073 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on claims 1–15 on all asserted grounds, finding a reasonable likelihood of unpatentability based on the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information 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.” After considering the information presented in the Petition, Preliminary Response, Reply, and Sur-reply, we determine that the information presented establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’879 patent, based on all grounds raised in the Petition.” slip op. at 2
- 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 do not find the proposals to be materially different. For purposes of this Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Thus, although we do not find the parties’ proposals for the level of skill in the art to be materially different, for purposes of this Decision, 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
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“’879 patent would understand the term “electrode section” recited in the challenged claims to mean “electrical terminals, usually called bond pads, that are part of the substrate’s wiring layer.” Pet. 16 (citing Ex. 1002 ¶¶ 103–107). At this time, Patent Owner does not dispute Petitioner’s proposed construction of “electrode section.” See generally Prelim. Resp. For purposes of this Decision, we need not construe the term “electrode section” because the parties do not identify any material issue that would turn on the construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“adhesion layer” is recited only in the challenged independent claims and in no other claims of the ’879 patent. See Ex. 1001, 13:45–16:65. And each of the independent claims recites “forming” an “adhesion layer” “on a back surface” of a “wafer.” Id. at 13:47–49, 13:54–56, 15:4–6, 15:45–47, 16:48– 50, 16:56–58. In view of this claim language, we construe the relevant claim language “forming an adhesion layer on a back surface of a wafer” as a whole, not just a single term “adhesion layer” in isolation from the rest of the claim language. See Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1311 (Fed. Cir. 2003) (“[T]he claim limitation, as a whole, [] must be considered in claim construction.”); United States v. Telectronics, Inc., 857 F.2d 778, 781 (Fed. Cir. 1988) (holding that district court’s interpretation of the term “avoid” without regard to the rest of the limitation was error); see also Lexion Med., LLC v. Northgate Techs., Inc., 641 F.3d 1352, 1356 (Fed. Cir. 2011) (“[T]he context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning of those terms.”); IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109, 1117 (Fed. Cir. 2011) (“We caution that claim language must be construed in the context of the claim in which it appears. Extracting a single word from a claim divorced from the surrounding limitations can lead construction astray.” (emphasis added)); Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) (“Proper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.”). Considering the claim language, the Oxford English Dictionary defines “form” as “[t]o construct, frame; to make, bring into existence, produce.”4 Thus, the plain meaning of the claim term to “form[] an adhesion layer on a back surface of a wafer” is “to construct or make an adhesion layer on a back surface of a wafer.” At this time, we do not perceive anything in the claim language that requires any specific method to construct an adhesion layer on a wafer surface. Thus, at least based on the claim language, we are not persuaded at this time that the challenged claims require adhering a pre-formed adhesion layer to a surface of a wafer, as Patent Owner contends. Citing the Specification of the ’879 patent, Patent Owner contends that the recited “adhesion layer” is “a pre-formed layer that is adhered” to the back surface of a wafer because the ’879 patent describes that the “[second semiconductor’s] back surface is adhered to the thermo-compression sheet 6.” Prelim. Resp. 12 (citing Ex. 1001, 6:48–52). The language cited by Patent Owner comes from the ’879 patent’s description of Figure 1, which shows “a semiconductor device in accordance with the first embodiment” of the ’879 patent. Ex. 1001, 5:34–36 (emphasis added), 6:37– 52. A particular embodiment appearing in the written description is generally not incorporated into a claim if the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (citation omitted). Further, “it is improper to read limitations from a preferred embodiment described in the specification— slip op. at 31
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,352,879 - PTAB · May 15, 2023 · IPR2023-00072 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on all challenged claims, finding a reasonable likelihood that Micron would prevail on its asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information 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.” After considering the information presented in the Petition, Preliminary Response, Reply, and Sur-reply, we determine that the information presented establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’806 patent, based on all grounds raised in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“words” and because “the numerous (8) independent claims recite two very different interconnection techniques for stacked multichip modules.” Id. Petitioner represents that The current Petition challenges independent claims 1, 2, 23, 24, and 30 in addition to dependent claims 6-7, 9-10, 12-13, 14-19, 25-26, and 32—all of which recite a wire bond interconnection technique. The first Petition (IPR 2023-00071) seeks cancellation of independent claims 3, 27, and 31 in addition to dependent claims 4-5, 8, 11, 20-22, 28, 29, and 33—all of which recite using a combination of flip-chip and wire bond interconnection techniques for stacked multichip modules. Id. at 2–3. Petitioner further states that “each claim is challenged only once.” Id. at 3. Patent Owner does not dispute Petitioner’s contentions that two petitions are necessary. See generally Prelim. Resp. On the present record, we see no reason to exercise our discretion to deny institution of either petition on the basis of Petitioner filing two petitions to address the large number of claims included in the ’806 patent. See Patent Trial and Appeal Board Consolidated Trial Practice Guide, 59–60 (Nov. 2019)2 (in determining whether multiple petitions are necessary, the Board may consider petitioner’s explanations regarding “the differences between the petitions, why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).”).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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. 2001 ¶ 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. Although the proposals for the level of skill in the art by the parties’ declarants have differences in wording, we do not find the proposals to be materially different. For purposes of this Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Thus, although we do not find the parties’ proposals for the level of skill in the art to be materially different, for purposes of this Decision, 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)No construction neededNot reached
“Petitioner asserts that a person of ordinary skill in the art reading the ’806 patent would understand the claim term “electrode section” recited in the challenged claims to mean “electrical terminals, usually called bond pads, that are part of the substrate’s wiring layer.” Pet. 16–17 (citing Ex. 1002 ¶¶ 103–107). At this time, Patent Owner does not dispute Petitioner’s proposed construction of “electrode section.” See generally Prelim. Resp. For purposes of this Decision, we need not construe the term “electrode section” because the parties do not identify any material issue that would turn on the construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). Patent Owner contends that the term “adhesion layer” recited in the challenged independent claims should be construed to mean “a pre-formed layer that is adhered.” Prelim. Resp. 13–15. Patent Owner argues that Ball, Fogal, and Mostafazadeh do not teach “adhesion layer” under Patent Owner’s proposed construction of the term. See, e.g., id. at 16–24. Although Patent Owner’s argument raises an issue of claim construction, we need not expressly construe “adhesion layer” for purposes of this Decision because, as discussed in Section III.D.5 below, Petitioner shows sufficiently that the asserted combination of Ball, Fogal, Mostafazadeh, and the knowledge of a skilled artisan teaches or suggests “adhesion layer” even under Patent Owner’s proposed claim construction. See Vivid Techs., 200 F.3d at 803.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham - PTAB · May 15, 2023 · IPR2023-00071 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on claims 3–5, 8, 11, 20–22, 27, 28, 31, and 33 on all petition grounds, finding a reasonable likelihood of unpatentability under the asserted obviousness combinations.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“On the present record, we see no reason to exercise our discretion to deny institution of either petition on the basis of Petitioner filing two petitions to address the large number of claims included in the ’806 patent. See Patent Trial and Appeal Board Consolidated Trial Practice Guide, 59–60 (Nov. 2019)3 (in determining whether multiple petitions are necessary, the Board may consider petitioner’s explanations regarding “the differences between the petitions, why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).”).” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information 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.” After considering the information presented in the Petition, Preliminary Response, Reply, and Sur-reply, we determine that the information presented establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’806 patent, based on all grounds raised in the Petition.” slip op. at 2
- 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 do not find the proposals to be materially different. For purposes of this Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Thus, although we do not find the parties’ proposals for the level of skill in the art to be materially different, for purposes of this Decision, 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 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Considering the claim language of claim 3 as a whole, see Hockerson- Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) (“Proper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.”), we agree with Petitioner that claim 3 does not recite when or how the “adhesion layer” is “adhered to [the first semiconductor chip’s] back surface.” Patent Owner appears to argue that the “first semiconductor chip” with “an adhesion layer adhered to its back surface,” as recited in claim 3, must have been created “in advance,” e.g., by a wafer-level fabrication process, before the chip is mounted in the recited semiconductor device. Patent Owner argues that the patentee recognized that applying a paste or thermo-compression sheet on individual chips during packaging (i.e., mounting of the chips during packaging) caused the “overflow” and “gap” problems. Sur-reply 2 (citing Ex. 1001, 2:16–24, 2:44–46). According to Patent Owner, “the patentee further recognized that merely switching to a pre-formed solid sheet alone would not solve the problem” because using a thermo-compression sheet on an individual chip for mounting during packaging “results in the same problem as using an adhesive due to the inability to place the chip accurately on the thermo-compression sheet.” Id. at 2–3 (citing Ex. 1001, 2:49–56). Thus, Patent Owner argues the ’806 patent proposes a two-fold solution: “Use a preformed solid sheet and attach that sheet to the back surface of the wafer first” during the wafer fabrication process “before cutting and placing the chip” in a multichip package. Id. at 3 (underlined emphases added). Patent Owner asserts, therefore, “a first semiconductor chip having . . . an adhesion layer adhered to its back surface,” as recited in claim 3, must have a pre-formed adhesion layer adhered to its back surface “in advance” before mounting in a multichip package, such as a solid thermo-compression sheet applied to the backside of a wafer during wafer-level fabrication processing before the chips are produced by dicing. Prelim. Resp. 13–14; Sur-reply 2–3. We note, however, that claim 3 does not recite a “wafer,” placing “an adhesion layer on a back surface of a wafer,” or producing semiconductor chips by dicing or cutting the wafer. See Ex. 1001, 14:14–32. Nor does the claim recite any limitation indicating when or how an “adhesion layer” is “adhered to [the first semiconductor chip’s] back surface.” Thus, at least based on the claim language, claim 3 does not require the recited semiconductor chips with an adhesion layer to have been produced “in advance” before being used for mounting in the recited semiconductor device. Nonetheless, for purposes of this Decision, we need not and do not” slip op. at 34
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham - Florida Food Products, LLC v. Kerry Group Services Int’L Ltd.All claims unpatentablePTAB · Apr 26, 2023 · IPR2022-00006 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1–5 are unpatentable as obvious over Voorde and Hara; the Board did not reach the remaining obviousness grounds.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“the invention would have had: a master’s or doctorate degree in food science, biology, chemistry, or a similar field; or a bachelor’s degree in food science, biology, chemistry, or a similar field along with at least 2-3 years of experience in food preservatives generally or more specifically 2-3 years of experience in the chemistry associated with food preservation and nitrates/nitrites [and] would have known that the USDA regulated nitrites for curing meat and would have been able to find these USDA regulations affecting meat products. Pet. 23–34 (citing Ex. 1002 ¶ 48). Kerry’s recitation of the level of ordinary skill in the art is nearly identical. Prelim. Resp. 13–14 (citing Ex. 2001 ¶¶ 43–44). To the extent the parties’ formulations of the level of skill differ, the differences do not appear to be material to any dispute between the parties or any issue of patentability that we must resolve. We determine that the level of ordinary skill the parties propose is consistent with the challenged patent and the asserted art, and adopt that level for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In the Petition, FFP addressed the construction of only one claim phrase, but also submitted that the construction of that phrase does not affect our decision in this case. Pet. 24. Specifically, FFP asked us to adopt a construction that “clarifies that the nitrite results from the added organism reducing the plant nitrate.” Id. at 25. Kerry does not address this construction, and we agree with FFP that construction of that claim phrase has no effect on our decision herein. Thus, we need not adopt it. See Nidec, 868 F.3d at 1017; Vivid Techs., 200 F.3d at 803.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Upon review, we do not believe it is proper to adopt a blanket approach that would assign weight to the entirety of Dr. Baldwin’s 12 In its Sur-Reply, Kerry raises for the first time that, under its definition of the level of skill in the art, Dr. Baldwin is not himself a person of ordinary skill and therefore is not allowed to offer expert testimony from the perspective of a skilled artisan, citing Kyocera Senco Indus. Tools Inc. v. ITC, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022). See Sur-Reply 15 n.1. To the extent that Kerry is seeking to disqualify Dr. Baldwin’s testimony in its entirety under Kyocera, we consider this to be a new argument that differs from Kerry’s initial argument that Dr. Baldwin’s testimony should be afforded little or no weight due to his lack of familiarity with the field of the ’304 patent. Because new arguments made for the first time in sur-reply are not permitted, we will only focus on Kerry’s initial challenge to the testimony of Dr. Baldwin. testimony, regardless of the subject of his particular opinions. It is clear that Dr. Baldwin has expertise in some areas of chemistry, while Dr. Milkowski’s experience is focused on other areas and emphasizes food chemistry. These differences in expertise may impact how we weigh the testimony of both witnesses, but that determination should be made in the context of a specific subject and based on the applicability of each witness’s background to the opinions. Therefore, we decline to adopt Kerry’s proposed approach of giving Dr. Baldwin’s testimony “little to no weight,” and instead will weigh the expertise of both witnesses in evaluating their testimony on specific areas of dispute, if necessary.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Upon review, we find that a person of ordinary skill in the art would have had reason to modify Voorde in the manner FFP suggests. Voorde explicitly discloses the advantages of heating the medium, and there is no disagreement that heating to 50–52°C would have resulted in at least some reduced microbial load, which is all that the claims require.13 Indeed, Voorde describes that as a result of heating to 50–52°C, its medium is “(partially) sterilized.” Ex. 1003, 7. Kerry’s argument that Voorde does not disclose starting with a “sterile medium” (PO Resp. 25) is unavailing; as discussed above, we do not interpret anything in claim 1 or the ’304 patent 13 At oral argument, Kerry raised for the first time a claim construction argument that “heat treating,” as recited in the claims, requires heating to a level in excess of what is required in Voorde, and a person of ordinary skill would have understood the term to refer to sterilization. Tr. 33:4–34:19, 55:3–9. We decline to address this late-arising argument fully, but note that we find that the ’304 patent does not support such a limited interpretation of the term “heat treating.” to require a sterile medium, and Kerry does not direct us to anything in the record that would persuade us otherwise.” slip op. at 18
Patent outcomesUS 11,071,304 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,071,304 - Scientific Design Company, Inc. v. Shell USA, Inc., F/K/A Shell Oil CompanyAll claims unpatentablePTAB · Mar 28, 2023 · IPR2022-00158 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1–28 are unpatentable: claims 1–14 and 17–28 as obvious over Lockemeyer and Liu, and claims 15–16 as obvious over Lockemeyer, Liu, Lockemeyer-II, and Kowaleski.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“contention that a person of ordinary skill in the art “would have held a Bachelor’s or Master’s degree in chemical engineering or a related discipline with five or more years of experience in the catalyst field.” Pet. 11 (citing Ex. 1014 ¶¶ 12–14); Dec. 6. Patent Owner represents that it “does not challenge Petitioner’s . . . POSA definition (Petition, 11).” PO Resp. 19. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Accordingly, we adopt Petitioner’s definition, because it is consistent with the cited prior art. 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).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only 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). Petitioner proposes a construction for “non-platelet morphology” in claim 27 as “the morphology of the carrier when imaged by scanning electron microscopy at a magnification of 2000, and to the substantial absence in such images of structures having substantially flat surfaces.” Pet. 10–11 (citing Ex. 1001, 5:31–35). Patent Owner represents that it “does not challenge Petitioner’s proposed claim interpretations (Petition, 10–11).” PO Resp. 19. On this record, we determine that no claim terms require express construction. See, e.g., Vivid Techs., 200 F.3d at 803.” slip op. at 7
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We find credible Dr. Haller’s explanation that a person of ordinary skill “would have been motivated to use Liu to direct the pore size distribution, especially ones that are within the ranges taught by Lockemeyer” with “a reasonable expectation of success” (Ex. 1014 ¶¶ 193–197) and would have pursued Lockemeyer’s “invitation to optimize PSD, where Liu’s PSDs show outstanding performance” (Ex. 1038 ¶ 152). With regard to Patent Owner’s arguments, first, we do not find persuasive Patent Owner’s argument that different amounts of silver and promoters in Lockemeyer and Liu’s examples “eviscerate” a motivation to modify Lockemeyer’s PSD. See Sur-Reply 24. Regarding silver, we find more persuasive Petitioner’s argument that a person of ordinary skill would have understood the 35.5 wt% silver in Liu’s Example 1 catalyst to be within Lockemeyer’s preferred range of 1–50 wt% silver. See Reply 22 (citing Ex. 1003 ¶¶ 69–70; Ex. 1038 ¶¶ 135–139). We credit Dr. Haller’s testimony that one of ordinary skill in the art seeking to improve upon Lockemeyer’s carriers “would not have ignored the high performance of Liu’s exemplified carriers simply because they were used in catalysts with a higher amount of silver because the amount used in Liu’s examples are well within the preferred range taught by Lockemeyer.” Ex. 1038 ¶ 137. Further, Dr. Haller’s testimony is responsive to Patent Owner’s argument (see PO Resp. 56–57) and not improper new argument.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“limitations of the challenged claims, and secondarily on Liu’s Carriers S, T, and V to disclose the “nested range” limitations. Pet. 52–53. Contrary to Patent Owner’s claims that Petitioner is demonstrating a “modification” of Lockemeyer’s PSD, we find that Lockemeyer already discloses a PSD “such that the pores with diameters from 0.2–10 μm represent more than 75%, in particular more than 80% of the total pore volume” (id. at 52 (citing Ex. 1003 ¶ 26)), although Lockemeyer does not disclose a sub-PSD within that range. Accordingly, relying on Liu to disclose a sub-PSD range within the range of 0.2–10 μm where “at least 80% of the pore volume contained in the pores with diameters in the range of from 0.1 to 10 μm is contained in pores with diameters in the range of from 0.3 to 10 μm” is not so much a modification of Lockemeyer as an optimization of Lockemeyer’s PSD within the range of 0.2–10 μm. Lockemeyer discloses that PSD has “been found to play a significant role” in preparing carriers for catalysts with excellent properties. Ex. 1003 ¶ 5 (cited in Pet. 53). Liu presents a desirable PSD in carriers such as Carriers S, T, and V, which Liu describes through its results as making catalysts that are selective, active, and stable. See Pet. 47 (citing Ex. 1002, 6:1–2, 21:10–22:16). We are persuaded by Petitioner’s reasoning and supporting testimony regarding why one of ordinary skill in the art would have been motivated to make the combination with a reasonable expectation of success. Pet. 46–48 (citing Ex. 1014 ¶¶ 188–197). We find credible Dr. Haller’s explanation that a person of ordinary skill “would have been motivated to use Liu to direct the pore size distribution, especially ones that are within the ranges taught by Lockemeyer” with “a reasonable expectation of success” (Ex. 1014 ¶¶ 193–197) and would have pursued Lockemeyer’s “invitation to optimize PSD, where Liu’s PSDs show outstanding performance” (Ex. 1038 ¶ 152).” slip op. at 22
Patent outcomesUS 8,357,813 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,357,813 - Scientific Design Company, Inc. v. Shell USA, Inc., F/K/A Shell Oil CompanyAll claims unpatentablePTAB · Mar 28, 2023 · IPR2022-00159 · APJ Julia Heaney · IPR · Final written decision
Claims 1–28 are unpatentable under § 103: claims 1–14 and 17–28 over Lockemeyer and Liu, and claims 15–16 over those references with Lockemeyer-II and Kowaleski.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In our Institution Decision, we accepted Petitioner’s undisputed contention that a person of ordinary skill in the art “would have held a Bachelor’s or Master’s degree in chemical engineering or a related discipline with five or more years of experience in the catalyst field.” Pet. 12 (citing Ex. 1014 ¶¶ 12–14); Dec. 6. Patent Owner represents that it “does not challenge Petitioner’s . . . POSA definition.” PO Resp. 21. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of a person of ordinary skill in the art. Accordingly, we adopt Petitioner’s definition, because it is consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). Under that standard, claim terms “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303 at 1312–13 (Fed. Cir. 2005) (en banc). Petitioner argues the term “non-platelet morphology” as recited in claim 27 should be construed as “the morphology of the carrier when imaged by scanning electron microscopy at a magnification of 2000, and to the substantial absence in such images of structures having substantially flat surfaces,’” because of the description in the ’825 specification. Pet. 11 (citing Ex. 1001, 5:33–37). Otherwise, Petitioner argues that the challenged claims should be given their ordinary and customary meaning. Id. Patent Owner does not dispute Petitioner’s proposed claim construction. PO Resp. 21. On this record, we determine we need not explicitly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we 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 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“limitations of the challenged claims, and secondarily on Liu’s Carriers S, T, and V to disclose the “nested range” limitations. Pet. 52–53. Contrary to Patent Owner’s claims that Petitioner is demonstrating a “modification” of Lockemeyer’s PSD, we find that Lockemeyer already discloses a PSD “such that pores with diameters from 0.2–10 μm represent more than 75%, in particular more than 80% of the total pore volume” (id. (citing Ex. 1003 ¶ 26)), although Lockemeyer does not disclose a sub-PSD within that range. Accordingly, relying on Liu to disclose a sub-PSD within the range of 0.2– 10 μm where “at least 80% of the pore volume contained in the pores with diameters in the range of from 0.1 to 10 μm is contained in pores with diameters in the range of from 0.3 to 10 μm” is not so much a modification of Lockemeyer as an optimization of Lockemeyer’s PSD within the range of 0.2–10 μm. Lockemeyer discloses that PSD has “been found to play a significant role” in preparing carriers for catalysts with excellent properties. Ex. 1003 ¶ 5 (cited in Pet. 53). Liu presents a desirable PSD in carriers such as Carriers S, T, and V, which Liu describes through its results as making catalysts that are selective, active, and stable. See Pet. 47 (citing Ex. 1002, 6:1–2, 21:10–22:16). We are persuaded by Petitioner’s reasoning and supporting testimony regarding why one of ordinary skill in the art would have been motivated to make the combination with a reasonable expectation of success. Id. at 46–48 (citing Ex. 1014 ¶¶ 196–202). We find credible Dr. Haller’s explanation that a person of ordinary skill “would have been motivated to use Liu to direct the pore size distribution, especially ones that are within the ranges taught by Lockemeyer” with “a reasonable expectation of success” (Ex. 1014 ¶¶ 198–202) and would have pursued Lockemeyer’s “invitation to optimize PSD, where Liu’s PSDs show outstanding performance” (Ex. 1038 ¶ 152).” slip op. at 23
- Obviousness (§103) › KSR rationalesMotivation foundUnpatentable
“claimed limitation that at least 80% of the total pore volume is contained in pores with diameters from 0.1–10 μm,” and a person of ordinary skill in the art “would have been motivated to modify the pore size distribution of carriers to optimize performance, as a matter of routine.” Pet. 43–45 (citing Ex. 1014 ¶¶ 182, 185–186) (emphasis added). We also credit Dr. Haller’s testimony: As I stated in my previous declaration, Lockemeyer discloses a PSD that encompasses the claimed distributions (as exemplified in Carriers A-C of the ’825 patent) and a process for making the carrier that is virtually identical to the process disclosed in the ’825 patent. EX1014, ¶¶ 184, 187–192. Accordingly, based on Lockemeyer’s disclosure, a POSA would have made the claimed carriers with routine experimentation. Ex. 1038 ¶ 163 (cited in Reply 25). Relatedly, the Petition relies on Federal Circuit precedent establishing that “a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art” (Pet. 15 (citing In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003))), and that once overlap of the claimed range and prior art are shown, a patentee must establish criticality of the claimed range to rebut a determination of obviousness. Id. (citing E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1006, 1008 (Fed. Cir. 2018); see also Tr. 6:5–6 (“There is no evidence that any of the claimed ranges exhibit any criticality or unexpected results, which should end the inquiry regarding obviousness.”), 76:18–77:2. Patent Owner does not carry its burden of producing evidence of criticality adequate to rebut the presumption of obviousness that is established by Petitioner’s information regarding the overlapping ranges.” slip op. at 27
Patent outcomesUS 8,357,825 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,357,825
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.