• Peaklogic, Inc. v. Wave Neuroscience, Inc.Institution denied
  PTAB · Mar 23, 2023 · IPR2022-01550 · APJ Devon Zastrow Newman · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claim 39 was anticipated by Klimesch or Jin.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2019). An inter partes review may not be instituted “unless . . . 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). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing on its assertion that the challenged claims are unpatentable based on the grounds advanced here. Accordingly, we deny institution of inter partes review of claim 39 of the ’354 patent.” slip op. at 2

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

    “Claim 39 describes a device used to treat a subject by creating an electromagnetic field to “tune” the brain and affect mood, focus, and cognition of human subjects. Ex. 1001, 62:62–63:34. Briefly, claim 39 recites a device that creates an electromagnetic field using an electromagnet. A first processor “tunes” the brain by firing the magnetic field. The first or a second processor moves one of the recited frequency characteristics in the brain to a preselected different frequency. The term “moves” in claim 39 describes a function of the first or second processor, which provides the means by which the brain frequency is shifted. See MasterMine Software, Inc. v. Microsoft Corp., 874 F.3d 1307, 1312–1315 (reviewing cases applying and distinguishing reasoning in IPXL Holdings, 430 F.3d at 1383– 84. Unlike IPXL Holdings, there is no confusion here as to when infringement of this claim would occur; infringement occurs when one makes, uses, offers to sell, or sells the claimed apparatus, which is capable of use for treatment. For this reason, we find that the recitation “wherein the first processor or a second processor moves” in claim 39 does not recite a method step, but rather describes the function of the recited structure – the first or second processor – that is capable of performing the recited (a) through (e) steps. MasterMine, 874 F.3d at 1315–16 (“the claims at issue here merely claim that the system ‘possess[es] the recited structure [which is] capable of performing the recited functions.’”) (alterations in original). As a result, we agree with Patent Owner that the recitation “wherein the first processor or a second processor moves” is limiting.7 For purposes of resolving whether to institute trial, we adopt and apply the interpretations stated in the district court’s claim construction order, Ex. 2001.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “(1) Alleged express disclosure The evidence of record does not support that Klimesch expressly discloses the intrinsic frequency limitation. Although Klimsech discloses treating subjects with rTMS at a frequency one Hz above the intrinsic frequency (IAF + 1 HZ), it does not disclose whether the treatment moves the intrinsic frequency. See generally, Ex. 1005. Petitioner asserts that stimulation at IAF + 1 Hz “triggered increased EEG output in the EEG band of that stimulation frequency (IAF to IAF + 2 Hz) directly corresponding to enhanced alpha power in that EEG band.” Pet. 27. Enhancing EEG power is, however, distinct from moving frequency. See, e.g., Ex. 2002, Fig. 1A (spectral analysis plotting frequency on the x-axis and power on the y-axis). Thus, even if we were to credit Petitioner’s assertion that stimulation at IAF + 1 Hz “increased EEG output” and “enhanced alpha power,” such assertion does not support that Klimesch expressly discloses moving the frequency at which peak alpha power is observed. Petitioner also directs us to Klimesch’s disclosure that rTMS at IAF + 1 Hz resulted in “a significant increase in lower-2 and upper alpha desynchronization (ERD) during mental rotation.” Ex. 1005, 1132 (cited at Pet. 27–28). But ERD is also distinct from frequency. See, e.g., Ex. 2002, Fig. 1A (spectral analysis showing ERD as the difference in alpha power when subjects are performing a task as compared to when subjects are in a state of alert wakefulness). Thus, an increase in ERD does not support that Klimesch discloses changing the frequency at which peak alpha power is observed. As Petitioner does not direct us to any other disclosure in Klimesch that supports moving the intrinsic frequency, Petitioner is unlikely to prevail in establishing that Klimesch expressly discloses the intrinsic frequency limitation.12” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “Ex. 1001, 34:56–35:5. Although this disclosure supports that the intrinsic frequency can be shifted up or down by applying a “specific magnetic field close to the head,” it does not teach that the intrinsic frequency necessarily shifts every time a magnetic field above or below the patient’s peak alpha frequency is applied. Scaltech Inc. v. Retec/Tetra L.L.C., 178 F.3d 1378, 1384 (Fed. Cir. 1999) (“Inherency may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient to establish inherency.”). In addition, Petitioner does not direct us to disclosure in the ’354 patent supporting that stimulation at IAF + 1 Hz under the circumstances disclosed in Klimesch, will necessarily shift the intrinsic frequency. See, Ex. 1003 ¶ 20 (testimony of Dr. Silvetz identifying factors that impact how the brain responds to rTMS); Ex. 1001, 40:19–32 (describing “parameters that require optimization for rTMS,” including: “[f]requency, “[i]ntensity, “[d]uration,” and “[s]ite of stimulation”).” slip op. at 21

  Claim construction§ 102 anticipationcites Phillips · Graham
  Patents in suitUS 8,475,354
• Peaklogic, Inc. v. Wave Neuroscience, Inc.Institution denied
  PTAB · Mar 23, 2023 · IPR2022-01526 · APJ David Cotta · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claim 1 was anticipated by Klimesch or Jin, or obvious over their combination.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” For the reasons discussed below, Petitioner has not established a reasonable likelihood of prevailing on its assertion that the challenged claims are unpatentable based on the grounds advanced here. Accordingly, we deny institution of inter partes review of claim 1 of the ’259 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “encountered in the art, the art’s solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). Petitioner contends that the person of ordinary skill in the art (“POSA”) would have had “a medical degree plus at least two years of academic and/or industry experience in the field of TMS.” Pet. 10. According to Petitioner, “[a]dditional professional and/or technical experience could substitute for education, and vice versa.” Id. Patent Owner does not challenge Petitioner’s proposed definition of the POSA for purposes of its preliminary response. See generally, Prelim. Resp. Petitioner’s definition appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’259 patent. Accordingly, for purposes of this Decision, we accept Petitioner’s proposed definition of the person of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Importantly, however, Dr. Silvetz does not cite anything to support his opinion that stimulation at a frequency above the peak alpha frequency moves the peak frequency. Id. Nor does Dr. Silvetz explain why such stimulation moves the peak frequency. Id. Accordingly, Dr. Silvetz’s testimony is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (Decision Denying Institution) (precedential) (finding that conclusory testimony that “does not cite to any additional supporting evidence or provide any technical reasoning to support [that testimony] . . . is entitled to little weight”); see also, 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quoting Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)); Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some circumstances unsupported oral testimony can be sufficient to prove prior knowledge or use, it must be regarded with suspicion and subjected to close scrutiny.”). peak alpha frequency moves the peak frequency to a higher frequency is not specific to the conditions under which rTMS was administered in Klimesch. This is problematic because Dr. Silvetz also testifies that the brain’s response to rTMS varies depending on the conditions under which it was administered. Ex. 1003 ¶ 20 (“The brain’s natural response varies depending on factors such as: a) the location of the electromagnet; b) the frequency of stimulation; c) the duration of stimulation; d) the number of stimulation pulses administered; e) the amplitude of the pulses administered; and f) the patient’s physiology.”). In summary, given that it not accompanied by supporting evidence, does not provide any technical reasoning, and is not specific to Klimesch, we give little weight to Dr. Silvetz’s testimony in determining whether Petitioner has established a reasonable likelihood that Klimesch inherently discloses the intrinsic frequency limitation. We do not determine here that Dr. Silvetz’s testimony is incorrect, only that it is insufficiently supported by evidence and technical reasoning to be accorded substantial weight.” slip op. at 18

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

    “Although the parties have briefed construction of the terms “preselected intrinsic frequency” and “preselected Q-factor” (Pet. 13–20; Prelim. Resp. 11–16), there does not appear to be any dispute regarding the “preselected” aspect of these claim terms. Pet. 18, 20 (proposing that “preselected intrinsic frequency” and “preselected Q-factor” be construed to require “a fixed target [intrinsic frequency/Q-factor] . . . chosen before treatment”); Prelim. Resp. 16 (proposing that the Board should adopt the district court’s claim construction: “a targeted [intrinsic frequency/Q-factor] chosen before treatment”); Reply 4 (“the parties to the IPRs have agreed that, for the purposes of these IPRs, the Board should accept the claim construction as adopted by the district court”). Accordingly, we do not find it necessary to construe any claim terms in order to resolve this proceeding. See Vivid Techs. 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 8

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,446,259
• Penumbra, Inc. v. Rapidpulse, Inc.All claims unpatentable
  PTAB · Mar 10, 2023 · IPR2021-01466 · APJ Jamie T Wisz · IPR · Final written decision

  Claims 1–18 are unpatentable under §103: claims 1–12, 15, 16, and 18 over Teigen and Grey; claims 13–14 over Teigen, Grey, and Yang; claim 17 over Teigen, Grey, and Matteo.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Based on our consideration of the full record, we find that, overall, Patent Owner’s definition is more specifically tailored to the claimed subject matter of the ’883 patent. We also find that, a person with a biomedical engineering degree could have the required background in fluid mechanics. See Ex. 1031, 45:21–46:7. Therefore, we find that a person of ordinary skill in the art would have a B.S. in mechanical or biomedical engineering with at least three years of experience in designing systems for minimally invasive intravascular procedures for treating occluded vessels or the equivalent and in consultation with medical professionals such as interventional neurosurgeons. Although we agree with, and have primarily adopted Patent Owner’s definition for an ordinarily skilled artisan in this proceeding, our analysis and conclusions herein would not change even under Petitioner’s definition. The parties also do not indicate that the outcome would differ based on the definition of the person of ordinary skill in the art. See Pet. 15; PO Resp. 6; Pet. Reply 1.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “as adopted by the Board in the Institution Decision. The ’883 patent explicitly defines this term, stating: The term “forward flow” is used herein to define an amount of liquid in the lumen 662 that exits the distal end 664 in a distal direction. Forward flow is defined as greater than 6 microliters of fluid (approximately 1 mm of catheter length of ID 0.071″=5.7 μL). Ex. 1001, 36:18–23 (emphasis added). Moreover, in discussing problems with the prior art systems, the ’883 patent states that “[w]hen positive pressure exists at the distal end of the lumen, liquid from inside the lumen exits out from the distal end of the catheter in a distal direction. This is referred to as forward flow.” Id. at 2:62–65. In the ’883 patent, the patentee acted as its own lexicographer as evidenced by usage of language such as “is used herein to define,” “is defined,” and “is referred to as,” to discuss “forward flow.” We find that the definition of “forward flow” in the ’883 patent specification would provide a person of ordinary skill with “reasonable clarity, deliberateness, and precision” as to the meaning of the term. See Paulsen, 30 F.3d at 1480; see also Ex. 1030 ¶¶ 13–14; Ex. 2001 ¶¶ 53, 62. Thus, we construe the term, “forward flow,” to mean “an amount of liquid in the lumen that exits the distal end in the distal direction that is greater than 6 microliters.”” slip op. at 14

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “As discussed above, we construed “forward flow” to mean “an amount of liquid in the lumen that exits the distal end in the distal direction that is greater than 6 microliters.” Thus, for the ’011 provisional to provide support for this limitation, the provisional must demonstrate that the inventors had possession of preventing greater than 6 microliters of fluid out of the distal end of the catheter. While Patent Owner points to disclosure from the ’011 provisional application which describes “a minimal amount of momentum transfer from the fluid column to the stuck clot to unstick the clot sufficiently” and “[t]he exiting movement of fluid [being] limited to a specific volume and/or pressure and is automatically and precisely controlled” to prevent the “possibility of overshooting,” it would not convey to one of ordinary skill in the art that the inventors were in possession of a device that limited forward flow to no greater than 6 microliters of fluid. PO Resp. 33 (citing Ex. 1003 ¶¶ 16, 138). Patent Owner also contends that the ’011 provisional application provides “multiple examples of liquid flow exiting the distal end of the catheter such that no forward flow occurs, such as 1 microliter or 0.5 mm of column shift.” PO Resp. 34 (citing Ex. 1003 ¶ 91). However, the disclosure cited by Patent Owner provides ranges of liquid flow of “approximately 0.001 ml to approximately 1.0 ml, in particular, approximately 0.1 ml to approximately 0.5 ml” and exemplary length of shift distances of “approximately 0.5 mm to approximately 30 mm, in particular, approximately 0.5 mm to approximately 15 mm.” Ex. 1003 ¶ 91. There is nothing in the disclosure of the ’011 provisional application that specifically directs the person of ordinary skill to the portions of these ranges which fall within the ’883 patent’s definition of no “forward flow” (i.e., no greater than 6 microliters of fluid). In fact, the majority of the cited ranges are greater than 6 microliters, going all the way up to 1,000 microliters, such that there would be forward flow in these examples. See Ex. 1030 ¶ 29; Purdue Pharma, 230 F.3d at 1326–27 (“[O]ne cannot disclose a forest in the original application, and then later pick a tree out of the forest and say here is my invention. In order to satisfy the written description requirement, the blaze marks directing the skilled artisan to that tree must be in the originally filed disclosure.”); Fujikawa v. Wattanasin, 93 F.3d 1559, 1571 (Fed. Cir. 1996).” slip op. at 21

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “AIA § 102 draws a distinction between actually being entitled to a right of priority to, or the benefit of, a prior-filed application according to the definition of “effective filing date” of a claimed invention in AIA 35 U.S.C. § 100(i)(1)(B), and merely being entitled to claim a right of priority to, or the benefit of, a prior-filed application for prior-art purposes according to the use of “effectively filed” in AIA 35 U.S.C. § 102(d). See 35 U.S.C. §§ 100(i)(1)(B), 102(a)(2), 102(d)(2); MPEP § 2154.01(b). USPTO guidance also indicates that AIA § 102 prior-art reference effective-filing-date determinations differ from pre-AIA law. For example, a 2018 Memorandum to the Patent Examining Corps states, in the context of prior-art determinations, that “[t]he requirement that one of the claims in the patent [document] . . . be supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. § 112, first paragraph (or AIA 35 U.S.C. § 112(a)), is not applicable when examining an application subject to the first inventor to file provisions of the AIA.” Robert W. Bahr, Memorandum re: Critical Reference Date Under pre-AIA 35 U.S.C. §102(e) (Apr. 5, 2018), available at http://www.uspto.gov/sites/ default/files/documents/dynamic_memo_05apr2018_0.pdf (emphasis added) (citing Dynamic Drinkware, 800 F.3d at 1381 n.2; 157 Cong. Rec. 3423 (2011) (explaining the distinction between being entitled to claim priority or benefit in AIA 35 U.S.C. § 102(d) and actually being entitled to priority or benefit under 35 U.S.C. § 119, 120, or 365)). This Memorandum further indicates: The date subject matter was “effectively filed” under AIA 35 U.S.C. § 102(d) for purposes of considering a U.S. patent, a U.S. patent application publication, or an international application publication as prior art under AIA 35 U.S.C. § 102(a)(2) is discussed in MPEP § 2154.01(b), and is not affected by Dynamic Drinkware or [Amgen v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017)] and is not being modified by this memorandum. Id. at 2. MPEP § 2154.01(b) explicitly states, as a result of the distinction discussed above, in application of the AIA version of § 102, “the question of whether a patent or published application is actually entitled to priority or benefit with respect to any of its claims is not at issue in determining the date the patent or published application was ‘effectively filed’ for prior art purposes.” MPEP § 2154.01(b) (emphases added).” slip op. at 31

  Patent outcomesUS 10,531,883 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 10,531,883
• Applied Materials, Inc. v. Ocean Semiconductor LLCAll claims unpatentable
  PTAB · Feb 7, 2023 · IPR2021-01340 · APJ David Cotta · IPR · Final written decision

  Claims 1–17 are unpatentable as obvious over Coronel and Fox because their combination teaches the claimed fault detection and process control features.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner’s proposal appears to be generally consistent with the level of skill reflected in the specification and in the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 8 163 (Fed. Cir. 1985)). And we agree with Patent Owner that “additional education can compensate for less work experience and vice versa.” Accordingly, we adopt Petitioner’s proposed definition of the POSA level with the additional clarification proposed by Patent Owner.” slip op. at 8

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

    “Petitioner does not identify any claim terms that require construction. Pet. 15. Patent Owner does not dispute Petitioner’s assertion that no claim terms require construction. PO Resp. 6. We do not find it necessary to provide an express construction for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 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))); 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 9

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

    “In view of these teachings, we agree with Petitioner and Dr. Hatalis that “[a] POSA would have recognized that applying the teachings of Fox to the system of Coronel, . . . would have promoted the desired objective of increasing process yields by combining fault detection based on multivariate analysis of tool state data with fault detection based on data received from the monitoring equipment of Coronel.” Ex. 1002 ¶ 74; Pet. 35–36. The record supports Dr. Hatalis’s testimony that “applying the methods disclosed in Fox to the system of Coronel would have been straightforward and an application of known techniques to improve a comparable system in the same way.” Ex. 1002 ¶ 75. In this regard, the 17 record supports that multivariate analysis was known and used in the art. Id. ¶ 71 (Dr. Hatalis’s testimony, citing Ex. 1013, 56–57 (article entitled “Practical issues in the deployment of a run-to-run control system in a semiconductor manufacturing facility,” (id. at 52) teaching that “FDC [fault detection and classification] can take many forms in ProcessWORKS, from traditional process monitoring techniques such as statistical process control (SPC) to advanced multivariate analysis based on trace data”)); see also Ex. 1005, 4:7–9 (“The use of the Hotelling’s T2 multivariate analysis is a statistical method well known in the prior art.”). In addition, as Dr. Hatalis explains, “because the methods described in Fox are executed using a computer, they would have been readily applied to the computer, database, and supervisor of Coronel.” Ex. 1002 ¶ 76. Further, “performing fault detection by using T2 values . . . had been previously implemented on an AME 5000 system, which is the same system referenced in Coronel,” and “Fox implements the T2 analysis with the same kind of tool used in Coronel, a plasma etcher.” Id. ¶ 78 (Dr. Hatalis’s testimony). In view of the evidence that multivariate analysis was well-known and in view of the similarities between Coronel and Fox, we agree with Petitioner that a POSA would reasonably have expected success in combining Coronel and Fox. As Dr. Hatalis explains, modifying Coronel’s method to include Fox’s multivariate analysis would have “simply involved adapting the software in the supervisor of Coronel, which already has computing capabilities and storing in its database the T2 values and UCL and LCL boundary values as taught by Fox.” Id. ¶ 83. And we find no evidence that applying Fox’s algorithms or methods to Coronel’s computer would” slip op. at 17

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Patent Owner cites the testimony of Mr. Humphrey to support that translating between the different protocols of Coronel and Fox would have brought “an additional degree complexity to the system and compromised its ability to efficiently report faults.” Ex. 2040 ¶ 70. However, the persuasiveness of Mr. Humphrey’s testimony is diminished by the absence of explanation and by the absence of citation to supporting evidence. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he 26 Board is entitled to weigh the declarations and conclude that the lack of factual corroborations warrants discounting the opinions expressed in the declarations.”); 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Although Mr. Humphrey testifies that translation adds complexity, the evidence of record supports that the translation technique on which Petitioner relies was routine. Ex. 1002 ¶ 90 (Dr. Hatalis testimony that “[i]t was well-known in the art how to transmit data in ASCII format or as numeric data via the SECS II communications protocol”); Ex. 1001, 5:26–33 (explaining that translation between the communication protocol used by “equipment interface 110” and “Common Object Request Broker Architecture Interface Definition Language (COBRAIDL)” is “well known to those of ordinary skill in the art” and, thus will “not be discussed . . . to avoid unnecessarily obscuring the present invention”); see also Ex. 1018, 172 (article cited by Dr. Hatalis describing transmission of ASCII data over SECS II protocol). To the extent Mr. Humphrey’s testimony that translation adds “an additional degree complexity to the system and compromised its ability to efficiently report faults” contradicts Dr. Hatalis’s testimony, we credit Dr. Hatalis over Mr. Humphrey. Moreover, as discussed above, we credit Dr. Hatalis’s testimony that a POSA would have understood that it was necessary to translate from ASCII to SECS II in order to transmit tool state data to the supervisor for fault detection. Ex. 1002 ¶ 90. Given the evidence that the asserted translation was both necessary and routine, we find that the potential for delays that 27” slip op. at 26

  Patent outcomesUS 6,725,402 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,725,402
• Applied Materials, Inc. v. Ocean Semiconductor LLCAll claims unpatentable
  PTAB · Feb 7, 2023 · IPR2022-00680 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–22 of the ’248 patent and claims 1–25 and 33–53 of the ’305 patent are unpatentable as obvious over Schulze and Gupta.

  RulingsFinal written decision

  • Strike new argumentNew argument disregardedNew argument consideredGranted in part

    “Petitioner an opportunity to respond raises concerns as to whether we should consider it. The issue of enablement is a mixed issue of law and fact, where underlying facts may be necessary to support such a conclusion. Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002). The lack of evidence for the proposition that the art is not enabled and the further lack of an opportunity for rebuttal argument make this issue one that is not fully developed on the full record before us, and particularly because it was raised too late. Thus, we agree with Petitioner that this is an issue on” slip op. at 98

  • Skill levelOther

    “E. Level of Ordinary Skill in the Art Petitioner contends that a person having ordinary skill in the art” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “A. Whether the preamble is limiting The standard that governs the significance of the “preamble” in claim” slip op. at 15

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

    “monitoring and assessment system that is suitable for implementing the local scheduler and related data structures disclosed in Gupta, which is implemented in software. Id. ¶ 125. The need for a scheduler that works as a local optimizer is evidenced by the recognition in Gupta’s disclosure of real-time scheduling decisions, which are advantageous for dealing with unexpected or unplanned events in a manufacturing process. Id. ¶ 121 (citing Ex. 1008, 30:19−20). Further, the local optimization scheme would have been desirable for devising scheduling strategies for specific machines, resulting in a reduction of re-engineering efforts each time a new machine is added to the process flow. Id. ¶ 119. Because Gupta focuses on a specific machine and the strategy devised for each machine, the decision-making is simplified as it focuses on optimizing each machine and not re-programming the entire process flow for the factory. Id. ¶¶ 116−118. As stated above, the enhancement of using Gupta’s local optimizer stems from the recognition that global process flow scheduling was an NP-hard program of extensive computing costs; yet, Gupta solved for it by reducing the computational costs of scheduling through optimizing local machines, rather than performing global factory calculations each time an event occurs. Id. ¶¶ 114−116; Ex. 1008, 8:48−55, 13:22−34; 13:43−48; 14:6−11. The testimony of Dr. Shanfield is persuasive and supported by the facts, and we credit it accordingly. Dr. Shanfield regarding the expectation of success is supported by the facts and we credit it accordingly. Dr. Shanfield opines that Schulze’s system is specifically designed to monitor the state of the equipment and to provide notification of events like machine operation status transitions. 1342 Shanfield Decl. ¶ 123. Gupta’s local optimization scheme is driven by events like those that Schulze captures. Id. Gupta provides additional events that are useful for Schulze’s factory, such as machine loads and unloads. Id. Thus, we agree that Schulze’s system is particularly suitable for Gupta’s local optimization scheme. And according to Dr. Shanfield, the implementation of Gupta’s scheduler (together with its database and its related data structures) would be suitable for implementation in the computer of Schulze (automated monitoring and assessment system 107) because they are both software compatible. Id. ¶¶ 124−125. Once Gupta’s scheduler is implemented in Schulze’s computer, there are no changes to the functions performed by Schulze’s semiconductor fabrication system or Gupta’s local optimization scheme. Id. ¶ 127. The implementation would require adjustments to the local scheduler program, so that it can interpret and interact with the messages generated by the equipment and MES of Schulze. Id. However, Dr. Shanfield testifies that, “[b]ased on my industry experience, such routine adjustments to the local scheduler software involve tasks like making one-time inputs identifying status flags for each equipment module being characterized, and are well within the ordinary skill of a POSA.” Id. None of these tasks would have required special techniques or extraordinary skill given the well-known components and standards used in the Schulze and Gupta implementations. Id. ¶ 128.” slip op. at 57

  Patent outcomesUS 6,907,305 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,907,305
• Applied Materials, Inc. v. Ocean Semiconductor LLCAll claims unpatentable
  PTAB · Feb 7, 2023 · IPR2021-01344 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–22 of the ’248 patent and claims 1–25 and 33–53 of the ’305 patent are unpatentable as obvious over Schulze and Gupta.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “A. Whether the preamble is limiting The standard that governs the significance of the “preamble” in claim” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “the “software scheduling agent” broadly as being “capable of reactively scheduling appointments for activities in the process flow responsive to an automatic detection and notification of a plurality of predetermined events.” Ex. 1001, 32:7−11; Ex. 1001, 43:48−50, 44:54−58 (claim 44 of the ’305 patent recites similar language except it requires scheduling appointments for processing the work pieces through the process stations, instead of for activities in the process flow). Again, this language is agnostic as to which manufacturing domain entity the software scheduling agent is monitoring and scheduling for. For instance, an MSA receives any changes that occur to a particular machine. Ex. 1001, 7:61−62. If the availability of the machine changes, the MSA subscribed to monitor for notifications from that specific machine receives an alert and reacts appropriately. Id. at 7:62−67. Likewise, the change of an appointment for processing a lot causes a notification for the corresponding lot scheduling agent, which will then change its calendar accordingly. Id. at 9:51−59. Regardless of whether it is a machine or a lot, the claimed software scheduling agent is notified of an event, and then reactively schedules an appointment for a corresponding manufacturing entity domain in response to the event. It is therefore” slip op. at 29

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

    “monitoring and assessment system that is suitable for implementing the local scheduler and related data structures disclosed in Gupta, which is implemented in software. Id. ¶ 125. The need for a scheduler that works as a local optimizer is evidenced by the recognition in Gupta’s disclosure of real-time scheduling decisions, which are advantageous for dealing with unexpected or unplanned events in a manufacturing process. Id. ¶ 121 (citing Ex. 1008, 30:19−20). Further, the local optimization scheme would have been desirable for devising scheduling strategies for specific machines, resulting in a reduction of re-engineering efforts each time a new machine is added to the process flow. Id. ¶ 119. Because Gupta focuses on a specific machine and the strategy devised for each machine, the decision-making is simplified as it focuses on optimizing each machine and not re-programming the entire process flow for the factory. Id. ¶¶ 116−118. As stated above, the enhancement of using Gupta’s local optimizer stems from the recognition that global process flow scheduling was an NP-hard program of extensive computing costs; yet, Gupta solved for it by reducing the computational costs of scheduling through optimizing local machines, rather than performing global factory calculations each time an event occurs. Id. ¶¶ 114−116; Ex. 1008, 8:48−55, 13:22−34; 13:43−48; 14:6−11. The testimony of Dr. Shanfield is persuasive and supported by the facts, and we credit it accordingly. Dr. Shanfield regarding the expectation of success is supported by the facts and we credit it accordingly. Dr. Shanfield opines that Schulze’s system is specifically designed to monitor the state of the equipment and to provide notification of events like machine operation status transitions. 1342 Shanfield Decl. ¶ 123. Gupta’s local optimization scheme is driven by events like those that Schulze captures. Id. Gupta provides additional events that are useful for Schulze’s factory, such as machine loads and unloads. Id. Thus, we agree that Schulze’s system is particularly suitable for Gupta’s local optimization scheme. And according to Dr. Shanfield, the implementation of Gupta’s scheduler (together with its database and its related data structures) would be suitable for implementation in the computer of Schulze (automated monitoring and assessment system 107) because they are both software compatible. Id. ¶¶ 124−125. Once Gupta’s scheduler is implemented in Schulze’s computer, there are no changes to the functions performed by Schulze’s semiconductor fabrication system or Gupta’s local optimization scheme. Id. ¶ 127. The implementation would require adjustments to the local scheduler program, so that it can interpret and interact with the messages generated by the equipment and MES of Schulze. Id. However, Dr. Shanfield testifies that, “[b]ased on my industry experience, such routine adjustments to the local scheduler software involve tasks like making one-time inputs identifying status flags for each equipment module being characterized, and are well within the ordinary skill of a POSA.” Id. None of these tasks would have required special techniques or extraordinary skill given the well-known components and standards used in the Schulze and Gupta implementations. Id. ¶ 128.” slip op. at 57

  • Strike new argumentNew argument disregardedNew argument consideredGranted in part

    “Petitioner an opportunity to respond raises concerns as to whether we should consider it. The issue of enablement is a mixed issue of law and fact, where underlying facts may be necessary to support such a conclusion. Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002). The lack of evidence for the proposition that the art is not enabled and the further lack of an opportunity for rebuttal argument make this issue one that is not fully developed on the full record before us, and particularly because it was raised too late. Thus, we agree with Petitioner that this is an issue on” slip op. at 98

  Patent outcomesUS 6,907,305 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,907,305
• Applied Materials, Inc. v. Ocean Semiconductor LLCAll claims unpatentable
  PTAB · Feb 7, 2023 · IPR2022-00681 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–22 of the ’248 patent and claims 1–25 and 33–53 of the ’305 patent are unpatentable as obvious over Schulze and Gupta.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “E. Level of Ordinary Skill in the Art Petitioner contends that a person having ordinary skill in the art” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “A. Whether the preamble is limiting The standard that governs the significance of the “preamble” in claim construction is set forth in Catalina Marketing Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801 (Fed. Cir. 2002). See Pet. 41. In steps, or if it is necessary to give life, meaning, and vitality to the claims. Catalina Marketing, 289 F.3d at 808. Claims 1 and 14 of the ’240 patent and claims 1, 12, 19, 33, and 44 of the ’305 patent recite preambles as follows: Claim No. Preamble Claim 1 of ’240 patent a method for scheduling in an automated manufacturing environment, comprising:” slip op. at 15

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

    “monitoring and assessment system that is suitable for implementing the local scheduler and related data structures disclosed in Gupta, which is implemented in software. Id. ¶ 125. The need for a scheduler that works as a local optimizer is evidenced by the recognition in Gupta’s disclosure of real-time scheduling decisions, which are advantageous for dealing with unexpected or unplanned events in a manufacturing process. Id. ¶ 121 (citing Ex. 1008, 30:19−20). Further, the local optimization scheme would have been desirable for devising scheduling strategies for specific machines, resulting in a reduction of re-engineering efforts each time a new machine is added to the process flow. Id. ¶ 119. Because Gupta focuses on a specific machine and the strategy devised for each machine, the decision-making is simplified as it focuses on optimizing each machine and not re-programming the entire process flow for the factory. Id. ¶¶ 116−118. As stated above, the enhancement of using Gupta’s local optimizer stems from the recognition that global process flow scheduling was an NP-hard program of extensive computing costs; yet, Gupta solved for it by reducing the computational costs of scheduling through optimizing local machines, rather than performing global factory calculations each time an event occurs. Id. ¶¶ 114−116; Ex. 1008, 8:48−55, 13:22−34; 13:43−48; 14:6−11. The testimony of Dr. Shanfield is persuasive and supported by the facts, and we credit it accordingly. Dr. Shanfield regarding the expectation of success is supported by the facts and we credit it accordingly. Dr. Shanfield opines that Schulze’s system is specifically designed to monitor the state of the equipment and to provide notification of events like machine operation status transitions. 1342 Shanfield Decl. ¶ 123. Gupta’s local optimization scheme is driven by events like those that Schulze captures. Id. Gupta provides additional events that are useful for Schulze’s factory, such as machine loads and unloads. Id. Thus, we agree that Schulze’s system is particularly suitable for Gupta’s local optimization scheme. And according to Dr. Shanfield, the implementation of Gupta’s scheduler (together with its database and its related data structures) would be suitable for implementation in the computer of Schulze (automated monitoring and assessment system 107) because they are both software compatible. Id. ¶¶ 124−125. Once Gupta’s scheduler is implemented in Schulze’s computer, there are no changes to the functions performed by Schulze’s semiconductor fabrication system or Gupta’s local optimization scheme. Id. ¶ 127. The implementation would require adjustments to the local scheduler program, so that it can interpret and interact with the messages generated by the equipment and MES of Schulze. Id. However, Dr. Shanfield testifies that, “[b]ased on my industry experience, such routine adjustments to the local scheduler software involve tasks like making one-time inputs identifying status flags for each equipment module being characterized, and are well within the ordinary skill of a POSA.” Id. None of these tasks would have required special techniques or extraordinary skill given the well-known components and standards used in the Schulze and Gupta implementations. Id. ¶ 128.” slip op. at 57

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

    “monitoring and assessment system that is suitable for implementing the local scheduler and related data structures disclosed in Gupta, which is implemented in software. Id. ¶ 125. The need for a scheduler that works as a local optimizer is evidenced by the recognition in Gupta’s disclosure of real-time scheduling decisions, which are advantageous for dealing with unexpected or unplanned events in a manufacturing process. Id. ¶ 121 (citing Ex. 1008, 30:19−20). Further, the local optimization scheme would have been desirable for devising scheduling strategies for specific machines, resulting in a reduction of re-engineering efforts each time a new machine is added to the process flow. Id. ¶ 119. Because Gupta focuses on a specific machine and the strategy devised for each machine, the decision-making is simplified as it focuses on optimizing each machine and not re-programming the entire process flow for the factory. Id. ¶¶ 116−118. As stated above, the enhancement of using Gupta’s local optimizer stems from the recognition that global process flow scheduling was an NP-hard program of extensive computing costs; yet, Gupta solved for it by reducing the computational costs of scheduling through optimizing local machines, rather than performing global factory calculations each time an event occurs. Id. ¶¶ 114−116; Ex. 1008, 8:48−55, 13:22−34; 13:43−48; 14:6−11. The testimony of Dr. Shanfield is persuasive and supported by the facts, and we credit it accordingly. Dr. Shanfield regarding the expectation of success is supported by the facts and we credit it accordingly. Dr. Shanfield opines that Schulze’s system is specifically designed to monitor the state of the equipment and to provide notification of events like machine operation status transitions. 1342 Shanfield Decl. ¶ 123. Gupta’s local optimization scheme is driven by events like those that Schulze captures. Id. Gupta provides additional events that are useful for Schulze’s factory, such as machine loads and unloads. Id. Thus, we agree that Schulze’s system is particularly suitable for Gupta’s local optimization scheme. And according to Dr. Shanfield, the implementation of Gupta’s scheduler (together with its database and its related data structures) would be suitable for implementation in the computer of Schulze (automated monitoring and assessment system 107) because they are both software compatible. Id. ¶¶ 124−125. Once Gupta’s scheduler is implemented in Schulze’s computer, there are no changes to the functions performed by Schulze’s semiconductor fabrication system or Gupta’s local optimization scheme. Id. ¶ 127. The implementation would require adjustments to the local scheduler program, so that it can interpret and interact with the messages generated by the equipment and MES of Schulze. Id. However, Dr. Shanfield testifies that, “[b]ased on my industry experience, such routine adjustments to the local scheduler software involve tasks like making one-time inputs identifying status flags for each equipment module being characterized, and are well within the ordinary skill of a POSA.” Id. None of these tasks would have required special techniques or extraordinary skill given the well-known components and standards used in the Schulze and Gupta implementations. Id. ¶ 128.” slip op. at 57

  Patent outcomesUS 6,968,248 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,968,248
• Applied Materials, Inc. v. Ocean Semiconductor LLCAll claims unpatentable
  PTAB · Feb 7, 2023 · IPR2021-01342 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–22 of the ’248 patent and claims 1–25 and 33–53 of the ’305 patent are unpatentable as obvious over Schulze and Gupta.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “monitoring and assessment system that is suitable for implementing the local scheduler and related data structures disclosed in Gupta, which is implemented in software. Id. ¶ 125. The need for a scheduler that works as a local optimizer is evidenced by the recognition in Gupta’s disclosure of real-time scheduling decisions, which are advantageous for dealing with unexpected or unplanned events in a manufacturing process. Id. ¶ 121 (citing Ex. 1008, 30:19−20). Further, the local optimization scheme would have been desirable for devising scheduling strategies for specific machines, resulting in a reduction of re-engineering efforts each time a new machine is added to the process flow. Id. ¶ 119. Because Gupta focuses on a specific machine and the strategy devised for each machine, the decision-making is simplified as it focuses on optimizing each machine and not re-programming the entire process flow for the factory. Id. ¶¶ 116−118. As stated above, the enhancement of using Gupta’s local optimizer stems from the recognition that global process flow scheduling was an NP-hard program of extensive computing costs; yet, Gupta solved for it by reducing the computational costs of scheduling through optimizing local machines, rather than performing global factory calculations each time an event occurs. Id. ¶¶ 114−116; Ex. 1008, 8:48−55, 13:22−34; 13:43−48; 14:6−11. The testimony of Dr. Shanfield is persuasive and supported by the facts, and we credit it accordingly. Dr. Shanfield regarding the expectation of success is supported by the facts and we credit it accordingly. Dr. Shanfield opines that Schulze’s system is specifically designed to monitor the state of the equipment and to provide notification of events like machine operation status transitions. 1342 Shanfield Decl. ¶ 123. Gupta’s local optimization scheme is driven by events like those that Schulze captures. Id. Gupta provides additional events that are useful for Schulze’s factory, such as machine loads and unloads. Id. Thus, we agree that Schulze’s system is particularly suitable for Gupta’s local optimization scheme. And according to Dr. Shanfield, the implementation of Gupta’s scheduler (together with its database and its related data structures) would be suitable for implementation in the computer of Schulze (automated monitoring and assessment system 107) because they are both software compatible. Id. ¶¶ 124−125. Once Gupta’s scheduler is implemented in Schulze’s computer, there are no changes to the functions performed by Schulze’s semiconductor fabrication system or Gupta’s local optimization scheme. Id. ¶ 127. The implementation would require adjustments to the local scheduler program, so that it can interpret and interact with the messages generated by the equipment and MES of Schulze. Id. However, Dr. Shanfield testifies that, “[b]ased on my industry experience, such routine adjustments to the local scheduler software involve tasks like making one-time inputs identifying status flags for each equipment module being characterized, and are well within the ordinary skill of a POSA.” Id. None of these tasks would have required special techniques or extraordinary skill given the well-known components and standards used in the Schulze and Gupta implementations. Id. ¶ 128.” slip op. at 57

  • Strike new argumentNew argument disregardedNew argument consideredGranted in part

    “Petitioner an opportunity to respond raises concerns as to whether we should consider it. The issue of enablement is a mixed issue of law and fact, where underlying facts may be necessary to support such a conclusion. Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002). The lack of evidence for the proposition that the art is not enabled and the further lack of an opportunity for rebuttal argument make this issue one that is not fully developed on the full record before us, and particularly because it was raised too late. Thus, we agree with Petitioner that this is an issue on” slip op. at 98

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “A. Whether the preamble is limiting The standard that governs the significance of the “preamble” in claim” slip op. at 15

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

    “monitoring and assessment system that is suitable for implementing the local scheduler and related data structures disclosed in Gupta, which is implemented in software. Id. ¶ 125. The need for a scheduler that works as a local optimizer is evidenced by the recognition in Gupta’s disclosure of real-time scheduling decisions, which are advantageous for dealing with unexpected or unplanned events in a manufacturing process. Id. ¶ 121 (citing Ex. 1008, 30:19−20). Further, the local optimization scheme would have been desirable for devising scheduling strategies for specific machines, resulting in a reduction of re-engineering efforts each time a new machine is added to the process flow. Id. ¶ 119. Because Gupta focuses on a specific machine and the strategy devised for each machine, the decision-making is simplified as it focuses on optimizing each machine and not re-programming the entire process flow for the factory. Id. ¶¶ 116−118. As stated above, the enhancement of using Gupta’s local optimizer stems from the recognition that global process flow scheduling was an NP-hard program of extensive computing costs; yet, Gupta solved for it by reducing the computational costs of scheduling through optimizing local machines, rather than performing global factory calculations each time an event occurs. Id. ¶¶ 114−116; Ex. 1008, 8:48−55, 13:22−34; 13:43−48; 14:6−11. The testimony of Dr. Shanfield is persuasive and supported by the facts, and we credit it accordingly. Dr. Shanfield regarding the expectation of success is supported by the facts and we credit it accordingly. Dr. Shanfield opines that Schulze’s system is specifically designed to monitor the state of the equipment and to provide notification of events like machine operation status transitions. 1342 Shanfield Decl. ¶ 123. Gupta’s local optimization scheme is driven by events like those that Schulze captures. Id. Gupta provides additional events that are useful for Schulze’s factory, such as machine loads and unloads. Id. Thus, we agree that Schulze’s system is particularly suitable for Gupta’s local optimization scheme. And according to Dr. Shanfield, the implementation of Gupta’s scheduler (together with its database and its related data structures) would be suitable for implementation in the computer of Schulze (automated monitoring and assessment system 107) because they are both software compatible. Id. ¶¶ 124−125. Once Gupta’s scheduler is implemented in Schulze’s computer, there are no changes to the functions performed by Schulze’s semiconductor fabrication system or Gupta’s local optimization scheme. Id. ¶ 127. The implementation would require adjustments to the local scheduler program, so that it can interpret and interact with the messages generated by the equipment and MES of Schulze. Id. However, Dr. Shanfield testifies that, “[b]ased on my industry experience, such routine adjustments to the local scheduler software involve tasks like making one-time inputs identifying status flags for each equipment module being characterized, and are well within the ordinary skill of a POSA.” Id. None of these tasks would have required special techniques or extraordinary skill given the well-known components and standards used in the Schulze and Gupta implementations. Id. ¶ 128.” slip op. at 57

  Patent outcomesUS 6,968,248 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,968,248
• Applied Materials, Inc. v. Ocean Semiconductor LLCAll claims unpatentable
  PTAB · Feb 7, 2023 · IPR2021-01339 · APJ David Cotta · IPR · Final written decision

  Claims 1–16, 18–26, and 28–31 are unpatentable: claims 1, 2, 6, 9–13, 18, 19, 21–23, 28, and 29 are anticipated by Brcka; the remaining challenged claims are obvious over Brcka.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposal is generally consistent with the level of skill reflected in the specification and the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) 6 Patent Owner does not present objective indicia of nonobviousness in this case. See generally, PO Resp. 9 (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). And we agree with Patent Owner that “additional education can compensate for less work experience and vice versa.” Accordingly, we adopt Petitioner’s proposed definition of the POSA level with the additional clarification proposed by Patent Owner.” slip op. at 9

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

    “Petitioner does not identify any claim terms that require construction. Pet. 18. Patent Owner does not dispute Petitioner’s assertion that no claim terms require construction. PO Resp. 16–17. We do not find it necessary to construe the claims in order to resolve this case. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 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))); 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 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “The implicit premise of Patent Owner’s argument is that Brcka discloses only failures and thus does not disclose “fault detection.” However, we credit the testimony of Dr. Shanfield that “[g]enerally you always need a fault to have a failure occur. So when there is a failure, a fault has occurred.” Ex. 2003, 74:6–11; see also Ex. 1003 ¶ 37 (“A fault is an abnormal tool condition, such as when a parameter strays beyond its acceptable boundary. Faults may lead to failure, which is the ‘termination of the ability of an item to perform a required function.’”) (internal citation omitted), 81 (“Machine failure, though, means that a fault condition existed requiring termination of the machine function upon the wafer.”). Thus, Brcka’s disclosure of analyzing machine failures is also, necessarily, a disclosure of a analyzing a fault. Accordingly, we find that Petitioner has established, by a preponderance of the evidence, that Brcka discloses “performing in a computer a fault detection analysis relating to processing of a workpiece.”” slip op. at 20

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Petitioner cites to the embodiment depicted in Brcka’s Figure 4 as illustrating Brcka’s “fault detection analysis.” Pet. 32–33; see also Ex. 1003 ¶¶ 72–73. Figure 4 is a “flow diagram demonstrating operation of a learning system and [a] neural network model designed in accordance with at least one embodiment of [Brcka’s] invention.” Ex. 1005 ¶ 44. In step 415 of the operation disclosed in Figure 4, “a determination is made whether maintenance has been performed or a machine failure has occurred.” Id. ¶ 44, Fig. 4. If either of these things has happened, “a new reward value is calculated.” Id. In step 440, “a determination is made whether maintenance is needed.” Id. ¶ 45, Fig. 4. Thus, Brcka determines whether a failure has occurred, accounts for this determination by assigning a “reward value” (Fig. 4, step 425), and then decides whether maintenance is needed. On this record, the analysis reflected in these steps qualifies as a “fault detection analysis.” We recognize that Brcka’s fault detection analysis is used in a method that includes a predictive component. But, we do not find anything in the language of claim 1 that precludes performing the fault detection analysis as part of a predictive model. Indeed, the claim language requires only “performing . . . a fault detection analysis.” Moreover, the “fault detection” itself (i.e., Brcka’s step 415), as opposed to the analysis of the detected fault, is backward-looking, not predictive; it determines “whether . . . a machine failure has occurred.” Id. ¶ 44 (emphasis added).” slip op. at 16

  Patent outcomesUS 8,676,538 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,676,538
• Illumina, Inc. v. Ravgen, Inc.No claims unpatentable
  PTAB · Jan 25, 2023 · IPR2021-01271 · APJ David Cotta · IPR · Final written decision

  Claims 1, 3–9, 21, 22, and 24–30 were not shown unpatentable because Illumina did not prove that glucose in the cited ACD samples necessarily impeded cell lysis.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner did not expressly contest this definition during trial, noting only that “Dr. Van Ness meets [this] definition” and “confirms [that] his opinions are the same under either party’s definition.” PO Resp. 6 (citing Ex. 2239 ¶¶ 20–25). To the extent there are minor differences in the above 14 definition and the alternative definition offered by Dr. Van Ness (Ex. 2239 ¶ 23), Dr. Van Ness’s proposal is too broad for at least the reason that it does not require the POSA have experience collecting and analyzing cell-free DNA from blood samples—subject matter relevant to the claims and applied art. Accordingly, we continue to apply Petitioner’s proposed definition here.13 In any event, the parties’ technical declarants meet or exceed either definition and there is no indication that their opinions would change depending on which definition was applied, and no argument from the parties to the contrary. Ex. 1056 ¶¶ 5–10 (overview of qualifications and experience); Ex. 2239 ¶¶ 4–7 (same).” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundTerm construed board ownDecided for patent owner

    “presents is whether a claimed agent that inhibits cell lysis may be a chelator used as an anticoagulant. The Specification and prosecution history make clear that at least one anticoagulant chelator—EDTA—is excluded from satisfying the claimed agent as recited in claim 1. As discussed above, the Specification describes an example where a sample processed in a tube with only EDTA is described as processing a sample in the “absence” of an agent that inhibits cell lysis. Ex. 1001, 89:35–57 (describing, in contrast, the EDTA + formalin sample as showing an example in the “presence of inhibitors of cell lysis”). If EDTA alone could be read as meeting the “agent” limitation, that example would make no sense. Petitioner provides no persuasive argument otherwise. The prosecution history buttresses the exclusion of the anticoagulant chelator EDTA from being the claimed “agent.” For example, during prosecution of the related ’277 patent, the Examiner at one point expressly 20 identified the EDTA in the tubes of a prior art reference as satisfying the agent term, prompting applicant’s argument that the Office was “incorrect” in doing so, and further distinguishing EDTA as merely “a well-known chelator of calcium and magnesium” that is added to blood “as an anticoagulant due to its ability to chelate calcium.” Ex. 2064, 1196 (arguing “EDTA is clearly referred to as a chelator in Applicant’s specification, not as a cell lysis inhibitor”); supra Section I(E); Ex. 1001, 32:61–64 (listing EDTA and EGTA as chelators). This, in turn, convinced the Examiner to withdraw the finding that EDTA was an “agent” as claimed and move on to art that disclosed formaldehyde as meeting that claim term. Ex. 2064, 1024 (Examiner interview summary noting that “applicant pointed out [that] EDTA could not be defined as a cell lysis inhibitor but rather was simply an anticoagulant”). This colloquy during prosecution evidences a clear and unmistakable disavowal of EDTA as being the claimed “agent.” Having determined that Patent Owner disavowed EDTA as the claimed “agent,” we next consider whether the disavowal extends more broadly to other anticoagulant chelators and, specifically, to ACD. On this record, we find that it does as explained below. In distinguishing EDTA from being the “agent,” Patent Owner relied not on properties that are unique to EDTA, but on the fact that it was a “well-known chelator” used as an anticoagulant in this technical field. Ex. 2064, 1196. Given Patent Owner’s clear intent to exclude EDTA from the scope of the claimed “agent” on the basis that it was simply an anticoagulant chelator, we find that a POSA would also have understood other anticoagulant chelators as subject to Patent Owner’s disavowal.” slip op. at 20

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner

    “20 Before institution, Patent Owner contested the sufficiency of Petitioner’s showing on whether Landes was entitled to the priority benefit of the filing date of the Landes provisional application. We disagreed that Petitioner’s showing was insufficient. Inst. Dec. 43–47. Patent Owner did not raise any issue during trial about Landes’s prior art status and, thus, has forfeited any argument that Landes is not prior art. On this record, we determine that Landes is § 102(a) prior art based on its July 31, 2003, publication date. On this record, we do not presume the claims of the ’720 patent are entitled to any earlier priority date of other applications listed in its ancestral chain. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008) (explaining that “there is simply no reason to presume that claims in a [CIP] application are entitled to the effective filing date of an earlier filed application”). That is especially true with the patent’s complex priority chain, involving several CIPs leading back to a provisional application filed 26” slip op. at 26

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “Altogether, considering the argument and evidence of record, Petitioner has shown, at best, that it is possible for glucose to help impede cell lysis by reason of isotonicity and providing a nutrient source. But such possibilities are not enough for Petitioner to prevail on its challenge to the claims as anticipated by Landes. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (“Inherency, however, may not be established by probabilities or 41 possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”) (internal quotation and citation omitted); Guangdong Alison Hi-Tech, 936 F.3d at 1364 (same). Petitioner has not, on this record, met its burden to show that the glucose component of ACD in Landes’s specific method is an “agent that impedes cell lysis” in the manner claimed.” slip op. at 41

  Patent outcomesUS 7,727,720 not shown unpatentable
  Claim construction§ 102 anticipationcites KSR · Graham
  Patents in suitUS 7,727,720

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.