- PTAB · Jan 6, 2023 · IPR2022-01205 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 1–10, 18, and 20 based on the asserted § 102 and § 103 grounds.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“Here, Patent Owner filed a statutory disclaimer of claims 11–17 of the ’417 patent. Prelim. Resp. 1–2; Ex. 2019. Based on our review of Exhibit 2019, we determine that a disclaimer of claims 11–17 of the ’417 patent under 35 U.S.C. § 253(a) has been filed with the Office as of October 5, 2022. Based on the information in the public record, we find that the disclaimer complies with the above-listed requirements of 37 C.F.R. § 1.321(a). Because claims 11–17 have been disclaimed under 35 U.S.C. § 253(a), in compliance with 37 C.F.R. § 1.321(a), we do not reach challenges to claims 11–17. As a result, the remaining challenged claims are claims 1–10, 18, and 20 (“the challenged claims”).” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“in situations where a district court trial date is set to occur before the issuance of the Board’s final written decision. The facts and reasoning of Fintiv are, at a minimum, only applicable to cases in which the district court has actually set a trial date in a copending litigation. But here, as will be discussed below, the parties agree that no trial date has been set, and the 14 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. District Court has stayed the litigation. Prelim. Reply 8; Prelim. Sur-Reply 6 (“There has never been a trial date). Furthermore, that stay will continue until our final determination should we decide to institute trial. Without a trial date, we see no need to engage in a full analysis of the Fintiv factors,15 as there is no basis for Patent Owner’s argument for discretionary denial.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the reasons above, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to challenged claims 1–10, 18, and 20 of the ’417 patent. At this juncture in the proceeding, we have not made a final determination with respect to the patentability of the challenged claims, or with respect to claim construction. V. ORDER For the foregoing reasons, it is ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–10, 18, and 20 of the ’417 patent is hereby instituted with respect to the ground of unpatentability set forth in the Petition; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial will commence on the entry date of this Decision.” slip op. at 44
- Skill levelOther
“would have at least a Ph.D. degree in chemistry, or a bachelor’s or master’s degree plus experience involving the use and design of fluorescent probes or dyes.” Pet. 18 (citing Ex. 1007 ¶¶ 14–18). Patent Owner agrees that a POSITA may have a Ph.D. degree or master’s degree in chemistry, but asserts that a POSITA would also have “some experience with fluorescence” in addition to a Ph.D. degree in chemistry and that the experience of a POSITA with a master’s degree in chemistry is alternatively “industry experience in the field of biological detection systems.” Prelim. Resp. 5–6 (citing Ex. 2001 ¶ 7). For purposes of this Decision, we need not resolve these differences between the parties’ definitions, because any differences do not affect our analysis.13 If either party believes that adopting its preferred definition of the level of ordinary skill would have a material effect on the outcome of this proceeding, the party should address this issue during the instituted trial. slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,955,417 - Beckman Coulter, Inc. v. Sirigen II LimitedInstitution deniedPTAB · Jan 6, 2023 · IPR2022-01208 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution on all challenged claims and grounds because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), 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.” For the reasons stated below, we determine that Petitioner does not establish a reasonable likelihood that it would prevail with respect to at least one claim of the ’303 patent. Thus, we do not institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denialNot reached
“1 Because we deny the Petition on the merits, we do not address the parties’ arguments related to discretionary denial.” slip op. at 2
- Skill levelOther
“Petitioner asserts that a person having ordinary skill in the art (POSITA) “would have at least a Ph.D. degree in chemistry, or a bachelor’s or master’s degree plus experience involving the use and design of fluorescent probes or dyes.” Pet. 17 (citing Ex. 1007 ¶¶ 14–18). Patent Owner agrees that a POSITA may have a Ph.D. degree or master’s degree in chemistry, but asserts that a POSITA would also have “some experience with fluorescence” in addition to a Ph.D. degree in chemistry and that the experience of a POSITA with a master’s degree in chemistry is alternatively “industry experience in the field of biological detection systems.” Prelim. Resp. 9–10 (citing Ex. 2001 ¶ 7). For purposes of this Decision, we need not choose between the parties’ proposed levels of one of ordinary skill in the art, which are quite similar, as neither party asserts that the anticipation or obviousness analyses in this case would turn on which definition is adopted. See, e.g., id. at 10 (noting that the arguments and conclusions reached in the Preliminary Response “would not change” if Petitioner’s definition of the ordinarily skilled artisan were applied).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“structure of Formula (Ia),” including specific MU, L1 and L2, G1 and G2, n, and a, b, c, and d (which define the mol % of each unit within the structure) constituents, wherein each R group must be a “[n]on-ionic side group capable of imparting solubility in water in excess of 10 mg/mL.” Ex. 1006, 239:29–240:56. The ’303 patent expressly defines the phrase “[n]on-ionic side groups capable of imparting solubility in water” to refer to “side groups which are not charged and allow the resulting polymer to be soluble in water or aqueous solutions with no visible particulates.” Id. at 54:31–34. In view of structure of claim 1 and the express definition provided in the ’303 patent, we agree with Patent Owner that claim 1 requires that the non-ionic side group R must be capable of imparting solubility to the claimed conjugated polymer (having constituents that satisfy the claimed variables noted above) in excess of 10 mg/mL. Prelim. Resp. 13. On this record, it is not sufficient to show that a particular R group is capable of” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,575,303 - PTAB · Jan 6, 2023 · IPR2022-01207 · APJ Jon B Tornquist · IPR · Institution
Instituted IPR of claims 1–14, 18, and 19 on all asserted grounds after finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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.” For the reasons set forth below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. Thus, we hereby institute an inter partes review as to claims 1–14, 18, and 19 of the ’620 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“be lifted for each patent for which the petition is denied. As noted above, there are six related petitions at the Board involving the patents before the court. The district court stayed the litigation “pending resolution of the IPR proceedings that have been instituted on the patents at issue in this case.” Ex. 2006, 2. Regarding the length of the stay, the district court explicitly ordered the parties not to use continuance of the fact discovery to October 28, 2022 “as grounds for . . . opposing institution of any post-grant proceeding.” Ex. 2007, 2. Regarding when the stay will be lifted, the order merely gives Patent Owner the opportunity to “seek to lift the stay as to any patents that are not instituted for review.” Ex. 2006, 2 (emphasis added). But we decline to speculate whether the district court would grant such a motion directed only to one of the six patents. Among the reasons warranting a stay of the litigation, the district court found “IPR has the potential to streamline issues for trial” and “the resources the parties will need to expend for experts could be significantly impacted by the outcome of any instituted IPR proceedings.” Id. Thus, the litigation is stayed pending the outcome of the six related proceedings, not merely the outcome of this institution decision, and the district court stayed the litigation for the explicit purpose of gaining efficiency and avoiding duplication of efforts by letting this inter partes review proceed to its conclusion first.14 See Prelim. Reply. 4–5. While Patent Owner may seek to lift the stay as to any patent for which institution is denied, the grant of any such request is uncertain. Accordingly, this factor strongly weighs against discretionary denial of institution.” slip op. at 15
- Skill levelOther
“Petitioner asserts that a person of ordinary skill in the art (POSITA) “would have at least a Ph.D. degree in chemistry, or a bachelor’s or master’s degree plus experience involving the use and design of fluorescent probes or dyes.” Pet. 17 (citing Ex. 1007 ¶¶ 14–18). Patent Owner agrees that a POSITA may have a Ph.D. degree or master’s degree in chemistry, but asserts that a POSITA would also have “some experience with fluorescence” in addition to a degree in chemistry and that the experience of a POSITA with a master’s degree in chemistry is alternatively “industry experience in the field of biological detection systems.” Prelim. Resp. 10 (citing Ex. 2001 ¶ 7). For purposes of this Decision, we need not choose between the parties’ proposed levels of one of ordinary skill in the art, which are quite similar, as neither party asserts that the anticipation or obviousness analyses in this case would turn on which definition is adopted. See Prelim. Resp. 10 (Patent Owner stating that its arguments and conclusions “would not change” if Petitioner’s definition were applied).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner
“The express language of claim 1 requires no solubility threshold, and dependent claim 10 demonstrates that where a solubility threshold was intended by the inventors of the ’620 patent they knew how to expressly set forth that threshold in the claims. Compare Ex. 1005, 213:26–27 (“capable of imparting solubility in water”), with id. at 218:12–14 (“The method according to claim 1, wherein each R is a non-ionic side group capable of imparting solubility in water in excess of 10 mg/mL.”). Thus, the claim language does not support applying a particular solubility threshold in claim 1. As noted by Patent Owner, the written description of the ’620 patent explains that “[i]n some embodiments, each R is independently a non-ionic side group capable of imparting solubility in water in excess of 10 mg/mL.” Id. at 54:2–10; Prelim. Resp. 12–13. This solubility threshold, however, is not in claim 1, and we decline to import such a limitation from the written description into claim 1 absent compelling reasons for doing so. See SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc., 242 F.3d 1337, 1340 (Fed. Cir. 2001) (explaining that “reading a limitation from the written description into the claims” is “one of the cardinal sins of patent law”); see also Thorner v. Sony Comp. Entm’t Am., LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“It is likewise not enough that the only embodiments, or all of the embodiments, contain a particular limitation. We do not read limitations from the specification into claims; we do not redefine words.”). In view of the foregoing, we construe the term “non-ionic side group capable of imparting solubility in water” to not include any particular numeric solubility threshold.13” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,288,620 - PTAB · Jan 6, 2023 · IPR2022-01203 · APJ Christopher L Crumbley · IPR · Institution
The Board instituted IPR on claims 1–10, 12–14, and 17–19 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. Patent Owner has not persuaded us that we should exercise our discretion to deny institution. We hereby institute an inter partes review as to claims 1–10, 12–14, and 17–19 of the ’989 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“in situations where a district court trial date is set to occur before the issuance of the Board’s final written decision. The facts and reasoning of Fintiv are, at a minimum, only applicable to cases in which the district court has actually set a trial date in a copending litigation. But here, as will be discussed below, the parties agree that no trial date has been set, and the District Court has stayed the litigation. Prelim. Reply 8; Prelim. Sur-Reply 6 (“There has never been a trial date.”). Furthermore, that stay will continue until our final determination should we decide to institute trial. Without a trial date, we see no need to engage in a full analysis of the Fintiv factors,14 as there is no basis for Patent Owner’s argument for discretionary denial.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“numerical solubility limit into the claims, noting that the ’989 patent expressly defines “non-ionic side groups capable of imparting solubility in water” as simply “side groups which are not charged and allow the resulting polymer to be soluble in water or aqueous solution with no visible particulates.” Prelim. Reply 1 (citing Ex. 1001, 54:9–13). Petitioner notes that this definition contains no numerical limit, and that it is followed by a statement that in some embodiments, the R group is capable of imparting solubility in excess of 10 mg/mL. Id. at 2 (citing Ex. 1001, 54:13–16). Petitioner contends that reading a limitation from “some embodiments” into the claims would be “one of the cardinal sins of patent law.” Id. (citing Phillips, 415 F.3d at 1320; Polaris Innovations Ltd. v. Brent, 48 F.4th 1365, 1375–76 (Fed. Cir. 2022)). Petitioner also directs our attention to related patents that expressly claim a solubility in excess of 10 mg/mL, arguing that when Patent Owner sought to claim such polymers, it knew how to do so. Id. (citing Ex. 1005, 218:11–12; Ex. 1006, 239:43–45, 252:51–52, 254:39–40, 262:56–57, 269:31–35).” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“proposed claim construction on solubility above, which we declined to do on the present record. For this reason, we find them unpersuasive. In addition, we note that Xue expressly discloses that its glycopolymers utilizing PEG-tethered spacers (Polymers B and C) “are highly water-soluble due to their long, flexible, hydrophilic spacers.” Ex. 1010, Abstract, 2289–90. Petitioner sufficiently sets forth why a person of ordinary skill in the art would have considered the PEG side chains of Xue to impart solubility in water, which is all we have construed the claims to require.” slip op. at 35
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,458,989 - Hanwha Solutions Corporation / Hanwha Q Cells USA, Inc. v. Rec Solar Pte. Ltd.No claims unpatentablePTAB · Dec 9, 2022 · IPR2021-00989 · APJ Brian D Range · IPR · Final written decision
Claims 1–6, 11, and 13 were not shown unpatentable under either obviousness ground because Petitioner did not establish a motivation to combine Yagiura and Shimasaki.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Petitioner’s position is persuasive. We agree that documents from the Japanese Patent Office are self-authenticating official government documents. The technical issues regarding missing pages in the originally filed version of the document do not cause us to question authenticity. We also agree that Petitioner uses the documents to establish what the documents teach rather than establishing the truth of what the documents teach. In Reply, Patent Owner argues that Petitioner relies on the date printed on the document to prove up the truth of when the document was published. Mot. Excl. Reply 1–2. To the extent this is the case, an exception to hearsay applies because the document is a record of a public office. Fed. R. Evid. 803(8)(B) (a record of public office is an exception to the hearsay rule if the opponent does not show that the source of information or other circumstances “indicate a lack of trustworthiness”). Here, Patent Owner does not persuasively demonstrate a lack of trustworthiness; Patent Owner does not identify any substantively meaningful distinction in the missing pages of the originally filed document and does not identify any evidence to suggest that the missing pages were anything more than a harmless clerical error. For the reasons above, Patent Owner’s motion to exclude is denied with respect to these documents. B.” slip op. at 8
- Skill levelSkill level board ownOther
“Petitioner’s proposal is too broad. PO Resp. 8. For example, a person who merely installs solar panels for three years (satisfying “professional experience in solar energy”) while having some familiarity with module manufacturing would not be of ordinary skill in the design aspects of the ’060 patent as, for example, reflected by the claims at issue and the ’060 patent’s text and figures. See, e.g., Ex. 1101, Figs. 2a, 2b, 3a, 3b, 4a, 4b, 3:22–7:44. On the other hand, we also determine that Patent Owner’s proposal is too narrow. A person could, for example, have ordinary skill in the art of the ’060 patent by virtue of non-professional experience (for example, academic experience). When assessing relevant experience, research work done for a university (beyond mere classroom study) would have been just as valuable as research work done for a corporation. Also, ordinary skill in the art could be demonstrated by work that requires understanding of the ’060 patent’s field even if not “designing, developing, and/or researching” in the field itself We, thus, determine that a person of ordinary skill in the art of the ’060 patent would have been someone with a bachelor’s degree in electrical engineering, applied physics, or the like, and at least two years of (a) experience designing, developing, and/or researching in the field or (b) experience in solar energy that required an understanding of the ’060 patent’s field. Alternatively, that person would have had an advanced degree in electrical engineering, applied physics, or the like and at least one year of” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“qualifies as evidence in this matter. The Federal Circuit has held that expert testimony about the perspective of person of ordinary skill in the art (as Dr. Kimball provides here) must come from a person having at least ordinary skill in the art. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022) (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)) (holding that ITC Administrative Law Judge abused discretion by admitting expert testimony of witness who lacked the experience of a person having ordinary skill in the art); see Mot. Excl. 6–7 (arguing this point). Patent Owner, however, cites no authority that expert testimony on such matters come from a person having ordinary skill in the art at the time of the invention. Cf. Scentair Tech., LLC v. Prolitiec Inc., IPR2021-00012, Paper 22 at 61 (PTAB Apr. 22, 2022) (similarly noting a party’s lack of authority on this point). Beyond needing to come from a person of ordinary skill in the art, expert testimony is admissible if the expert has the “scientific, technical, or other specialized knowledge [that] will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702. Furthermore, “[t]here is … no requirement of a perfect match between the expert’s experience and the relevant field.” USPTO, Patent Trial and Appeal Board Consolidated Trial Practice Guide, 34 (Nov. 2019). Here, Petitioner adequately establishes that Dr. Kimball qualifies as a” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Petition argues that all claim terms should be given their plain and ordinary meaning. Pet. 18. Patent Owner does not dispute this. PO Resp. 13. We determine that no claim term requires express construction for purposes of this Final Written Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms that are in controversy, and only to the” slip op. at 15
Patent outcomesUS 10,749,060 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,749,060 - Hanwha Solutions Corporation / Hanwha Q Cells USA, Inc. v. Rec Solar Pte. Ltd.All claims unpatentablePTAB · Dec 9, 2022 · IPR2021-00988 · APJ Brian D Range · IPR · Final written decision
Claims 1–6, 11, and 13 are unpatentable as obvious over Huang and Wu; claims 1, 2, and 4 are also anticipated by Zhang.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Petitioner’s position is persuasive. We agree that documents from the Japanese Patent Office are self-authenticating official government documents. The technical issues regarding missing pages in the originally filed version of the document do not cause us to question authenticity. We also agree that Petitioner uses the documents to establish what the documents teach rather than establishing the truth of what the documents teach. In Reply, Patent Owner argues that Petitioner relies on the date printed on the document to prove up the truth of when the document was published. Mot. Excl. Reply 1–2. To the extent this is the case, an exception to hearsay applies because the document is a record of a public office. Fed. R. Evid. 803(8)(B) (a record of public office is an exception to the hearsay rule if the opponent does not show that the source of information or other circumstances “indicate a lack of trustworthiness”). Here, Patent Owner does not persuasively demonstrate a lack of trustworthiness; Patent Owner does not identify any substantively meaningful distinction in the missing pages of the originally filed document and does not identify any evidence to suggest that the missing pages were anything more than a harmless technical error. For the reasons above, Patent Owner’s motion to exclude is denied with respect to these documents. B.” slip op. at 8
- Skill levelSkill level board ownOther
“Petitioner’s proposal is too broad. PO Resp. 8. For example, a person who merely installs solar panels for three years (satisfying “professional experience in solar energy”) while having some familiarity with module manufacturing would not be of ordinary skill in the design aspects of the ’060 patent as, for example, reflected by the claims at issue and the ’060 patent’s text and figures. See, e.g., Ex. 1001, Figs. 2a, 2b, 3a, 3b, 4a, 4b, 3:22–7:44. On the other hand, we also determine that Patent Owner’s proposal is too narrow. A person could, for example, have ordinary skill in the art of the ’060 patent by virtue of non-professional experience (for example, academic experience). When assessing relevant experience, research work done for a university (beyond mere classroom study) would have been just as valuable as research work done for a corporation. Also, ordinary skill in the art could be demonstrated by work that requires understanding of the ’060 patent’s field even if not “designing, developing, and/or researching” in the field itself. We, thus, determine that a person of ordinary skill in the art of the ’060 patent would have been someone with a bachelor’s degree in electrical engineering, applied physics, or the like, and at least two years of (a) experience designing, developing, and/or researching in the field or (b) experience in solar energy that required an understanding of the ’060 patent’s field. Alternatively, that person would have had an advanced degree in electrical engineering, applied physics, or the like and at least one year of (a) experience designing, developing, and/or researching in the field or 7 Our analysis is constrained to the extent neither party addresses the Best Medical factors with particularity. For example, the briefing does not address the educational level of the inventor. patent’s field.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We next assess whether or not Dr. Kimball’s testimony properly qualifies as evidence in this matter. The Federal Circuit has held that expert testimony about the perspective of a person of ordinary skill in the art (as Dr. Kimball provides here) must come from a person having at least ordinary skill in the art. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022) (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)) (holding that ITC Administrative Law Judge abused discretion by admitting expert testimony of witness who lacked the experience of a person having ordinary skill in the art); see Mot. Excl. 6–7 (arguing this point). Patent Owner, however, cites no authority that expert testimony on such matters come from a person having ordinary skill in the art at the time of the invention. Cf. Scentair Tech., LLC v. Prolitiec Inc., IPR2021-00012, Paper 22 at 61 (PTAB Apr. 22, 2022) (similarly noting a party’s lack of authority on this point). Beyond needing to come from a person of ordinary skill in the art, expert testimony is admissible if the expert has the “scientific, technical, or other specialized knowledge [that] will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702. Furthermore, “[t]here is … no requirement of a perfect match between the expert’s experience and the relevant field.” USPTO, Patent Trial and Appeal Board Consolidated Trial Practice Guide, 34 (Nov. 2019). Here, Petitioner adequately establishes that Dr. Kimball qualifies as a” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner argues, however, that where claim 4 recites “the first and second solar cell series are coupled with the bypass diode of the first solar cell unit via a first cross-connector, and the third and fourth solar series are coupled with the bypass diode of the second solar cell unit via a second cross-connector,” the word “a” means “one.” PO Resp. 13–14. In particular, Patent Owner argues that a person of ordinary skill in the art via one or more cross-connectors” and that “a” meaning “one” in claim 4 is necessary for claim 4 to further limit claim 1. Id. Petitioner argues that “a” means “one or more.” Pet. Reply 2–4. We agree with Petitioner. The ’040 patent explicitly defines “a” consistently with Petitioner’s position by stating that “it should be noted that the term ‘comprising’ does not exclude other elements or steps and the ‘a’ or ‘an’ does not exclude a plurality.” Ex. 1001, 7:62–63. The ’040 patent’s explicit definition is consistent with typical usage of “a” in this patent law context. See, e.g., KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (explaining that “a” in patent parlance means “one or more” for open-ended claims reciting the transitional phrase “comprising”). Patent Owner’s argument regarding claim construction is unpersuasive because Claim 4 further limits claim 1 by explicitly requiring first and second crossconnectors; claim 1 does not recite a “cross-connector.” Ex. 1001, 8:2–22. Thus, we construe “a” in this context as meaning “one or more.”” slip op. at 15
Patent outcomesUS 10,749,060 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,749,060 - Globalfoundries Inc. / Globalfoundries U.S. Inc. et al. v. Katana Silicon Technologies LLCInstitution deniedPTAB · Dec 6, 2022 · IPR2022-01083 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “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 Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claims on any ground asserted in the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“it is used consistently throughout. First, in describing related prior art, the ’903 patent states that “[t]he through plug is constituted of an insulating material covering a sidewall of a through hole and a low electrical resistance metal material . . . in a columnar shape that is positioned so as to be surrounded by the insulating material and that serves as a conductive member.” Ex. 1001, 1:35–40. In describing its own drawings, reference numeral 15 consistently is used to refer to the “through plug.” Id. at 2:37– 52. Figures 1A and 1B “are views schematically showing the structure of a semiconductor device (semiconductor chip) according to an embodiment of the present invention.” Id. at 5:46–48, Figs. 1A, 1B. In these figures, reference numeral 15 refers to “[a] through plug.” Id. at 6:16. This through plug “is constituted of a columnar electric conductor 15a . . . and an insulation layer 15b . . . surrounding the electric conductor 15a.” Id. at 6:21–25. Similarly, reference numeral 15 refers to the “through plug” in Figures 1C, 2A, 2B, 3, 4, 5, 6, 7A, and 7B. Id. at 6:35–40, 7:10–38, 8:10– 17, 8:32–38, 8:65–9:43. Where it is referred to in these same parts of the ’903 patent, the conductive core is discussed as merely a portion of the through plug and is referred to by the reference numeral 15a. Id. Thus, the ’903 patent consistently defines the through plug as having two portions: both a conductive core and a surrounding insulation layer. This is true whether the patent is referring to either of its disclosed embodiments or the prior art. Based on this unambiguous usage, we determine that the ’903 patent defines the term “through plug” as including both a conductive core and a surrounding insulating layer. See Phillips, 415 F.3d at 1320–21 (“the specification ‘acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication’” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996))).” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“We are not persuaded that the Petition adequately identifies how Christensen teaches or suggests a through plug as that term is used in the ’903 patent. As noted above, the ’903 patent requires a through plug to have both a conductive core and a surrounding insulating layer. It is clear on the current record that Christensen’s “conductive stud” could correspond to the conductive portion of such a through plug. Ex. 1033, 4:66–5:1 (“the stud 34 may comprise any number of conductive materials”). But Petitioner does not show sufficiently that Christensen teaches or suggests the surrounding insulating layer necessary to turn the conductive core into a through plug. First, Petitioner does not allege that Christensen teaches or suggests such a layer. Pet. 33–34. Second, Christensen discloses the use of “conductive materials” and “material[s] which promote[] adhesion to the surrounding oxide such as titanium or titanium nitride.” Ex. 1033, 4:66–5:1, 5:15–20. None of these materials are identified by Christensen as insulators. Id. Accordingly, we are not persuaded on the current record that Petitioner has shown sufficiently that Christensen alone teaches or suggests the through plug of the challenged claims. b. Christensen and Lin Petitioner also argues that the combination of Christensen and Lin teaches or suggests the through plug of the challenged claims. Pet. 34–36. Specifically, Petitioner argues that “[t]o the extent [it is determined] that Christensen alone is not sufficient because the conductive stud 34 does not extend all the way through wafer 12, Christensen in view of Lin renders obvious a ‘through plug.’” Id. at 34. According to this argument, “Lin teaches a backside process for forming ‘a conductive plug through a silicon’ wafer and an insulation layer,” and it would have been obvious to form such a plug “from the backside of the wafer 12 below [Christensen’s] conductive stud 34,” such that the combination of the two structures would form a conductive path all the way through the structure of Christensen’s Figures 8B and 9. Id. at 34–35 (emphasis omitted). As with the argument based on Christensen alone, however, this argument does not show sufficiently that the combination of Christensen and Lin teaches or suggests a through plug that has both a conductive core and a surrounding insulating layer. Lin describes its structure as a “conductive plug” and does not describe any insulation surrounding that structure. Ex. 1054, 1:60–64, 3:2– 34, 4:23–32, Fig. 7. “The conductive plugs” of Lin “typically compris[e] metal,” which Lin does not describe as an insulator. Id. at 3:21–25. Nor does Petitioner allege the presence of a conductive core surrounded by insulation either in Lin itself or in the combination of Lin and Christensen. Pet. 34–36. Accordingly, we are not persuaded on the current record that Petitioner has shown sufficiently that the combination of Christensen and Lin teaches or suggests the through plug of the challenged claims.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“An invention is not obvious just ‘because all of the elements that comprise the invention were known in the prior art.’” Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1335 (Fed. Cir. 2013) (quoting Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1351 (Fed. Cir. 2010)). Instead, “a finding of obviousness at the time of invention requires a ‘plausible rational[e] as to why the prior art references would have worked together.’” Id. (quoting Power-One, 599 F.3d at 1352). This rationale requires “some articulated reasoning with some rational underpinning” to combine the known elements in the manner required in the claim at issue. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[I]t can be important to” include within this reasoning “a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. Here, Petitioner offers two reasons to combine the teachings of Shim and Shirakawa. First, Petitioner argues that “Shim’s diffusion teachings would facilitate the formation of” Shirakawa’s collector layer. Pet. 65–66. On the present record, we do not find this reason sufficiently persuasive. Even though Shim does teach a way to make the n-GaAs that Shirakawa uses, Shirakawa teaches a different way to make the same material, and other prior-art references agree with Shirakawa. Ex. 1022, 1:34–40 (“silicon ions of a silicon layer formed on a GaAs substrate are diffused by means of ion-implantation method using little energy and annealing treatment”); Ex. 1005, 9:36–42 (first embodiment “collector layer” is “laminated on top of a semi-insulating GaAs substrate . . . by epitaxial growth process”), 12:47–48 (fourth embodiment made in same way as first embodiment); Ex. 1016, 8:7–19 (“a highly doped n type GaAs subcollector layer . . . [and other layers] are made to grow above a semiinsulating GaAs substrate . . . by a metal organic vapor phase epitaxial growth method”); Ex. 1025, 4:40–45 (teaching “[f]orming two flat epitaxial layers of gallium arsenide to obtain [a] collector,” including “a layer . . . of the n+ conductivity type and a layer . . . of the n -conductivity type” by “epitaxial growth . . . from the vapour phase or from the liquid phase”). The mere fact that Shim offers an alternative process does not, in the absence of a reason to adopt that alternative process, provide a reason for a person of ordinary skill in the art to make Shirakawa’s n-GaAs via Shim’s method rather than via Shirakawa’s own method. In addition, Patent Owner’s declarant, Dr. Peter Elenius, testifies that the ion implantation involved in Shim’s diffusion process would damage Shirakawa’s gallium arsenide in a way that would dissuade a person of ordinary skill in the art from using that process to produce the HBT of Shirakawa. Ex. 2001 ¶¶ 52–57. The other reason that Petitioner provides to combine the teachings of Shim and Shirakawa is that Shim’s diffusion “method us[es] little energy and annealing treatment.” Pet. 66 (quoting Ex. 1022, 1:34–40). Shim’s method is described as “diffus[ion] by means of ion-implantation method using little energy and annealing treatment,” which Shim distinguishes from earlier methods “widely used in the art,” which involved “ion-implantation . . . using high energy.” Ex. 1022, 1:12–40. Shim teaches that its lower-energy ion implantation does not suffer from the “problem” of the earlier method, “damaging of ohmic contacts of metal electrodes” due to the injection of “lots of impurity ions.” Id. at 1:17–22; see id. at 3:37–40 (“the manufacturing method of the present invention can prevent damage to be generated in ohmic contacts of source/drain electrodes due to ion-injecting of high density”). Thus, the lower energy of Shim’s process is a benefit of that process over earlier ion implantation processes, which use higher energy. Shim does not teach that its use of lower-energy ion implantation is an improvement over other processes, such as the epitaxial growth taught by Shirakawa and the other references cited by Petitioner. Thus, Petitioner does not explain sufficiently why lower energy would be a benefit of the Shim- Shirakawa combination over Shirakawa alone. Accordingly, we are not persuaded on the current record that Petitioner has shown sufficiently that a person of ordinary skill in the art would have had a reason to combine the teachings of Shirakawa and Shim to arrive at a combination that teaches or suggests the “diffusion layer patterns” of the challenged claims. slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,402,903 - PTAB · Dec 2, 2022 · IPR2022-00951 · APJ Stacey G White · IPR · Institution
Instituted review of claims 1–11 on all asserted §103 grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to all of the challenged claims of the ’240 patent on all of the asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“1 We apply the pre-AIA version of 35 U.S.C. § 103 because the claims at issue have an effective filing date prior to March 16, 2013, the effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). See Ex. 1001, code (22). 2 Petitioner does not list claim 1 in its table on page 3, but Petitioner provides argument as to claim 1 in its discussion of the ground. See Pet. 56– 57. 3 Petitioner does not list claims 1and 4 in its table on page 3, but Petitioner provides argument as to claims 1 and 4 in its discussion of the ground. See Pet. 73. 4 Petitioner argues that the Fintiv factors weigh against discretionary denial. Pet. 77–78; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5‒6 (PTAB Mar. 20, 2020) (precedential). Because Patent Owner does not argue for discretionary denial, we see no need to consider the issue further.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“educational level of active workers in the field.” Best Med. Int'l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quotation omitted). The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). The specification of the ’240 patent describes its technical field as relating to “‘secure documents’ …having RFID (radio frequency identification) chips …operating in contactless mode (ISO 14443) including dual interface (‘DI’, or ‘DIF’) cards which can also operate in contact mode (ISO 7816-2), and more particularly to improving coupling between components within the smart card …and consequent improvements in interacting with external RFID readers.” Ex. 1001, 1:24–34. The specification discusses both inductive and capacitive coupling. See e.g., id. at 6:55–58. Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be at use by various RFID systems. See Ex. 20035, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Thus, on the record currently before us, we are not persuaded that the level of 5 Our citations are to the native page numbers in the document and not Patent Owner’s numbering. devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1– 2 years of experience researching and developing antennas used in RFID applications.” See Pet. 8.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“B. Dr. van der Weide’s Level of Experience Patent Owner argues that we should not give substantial weight to the testimony of Petitioner’s declarant, Dr. van der Weide, because he “lacks relevant experience to provide opinions through the lens of a [person having ordinary skill in the art].” Prelim. Resp. 27–28 (citing Ex. 2001 ¶¶ 71–72. According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with relevant inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. at 27. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Based on the current record, Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,165,240 - Moleculight, Inc. v. Swift Medical Inc.InstitutedPTAB · Nov 9, 2022 · PGR2022-00041 · APJ Brian D Range · PGR · Institution
The Board instituted PGR of claims 1–20 on all petition grounds, finding it more likely than not that at least one claim is unpatentable under § 102 or § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“challenges the patentability of claims 1–20 of the ’345 patent under 35 U.S.C. §§ 102 and 103. Patent Owner did not file a preliminary response. We have jurisdiction under 35 U.S.C. § 324(a), which provides that a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention would “have had at least a bachelor’s degree in engineering with relevant coursework, and the equivalent of at least two years of work experience in the design, operation, and functioning of imaging systems, amounting to familiarity with concepts related to illumination and detection schemes for optical imaging systems.” Pet. 14 (citing Ex. 1004 ¶ 48). Petitioner further asserts that “[a]dditional relevant work experience could substitute for a bachelor’s degree, and additional education or training could substitute for relevant work experience.” Id. We find Petitioner’s proposed definition is consistent with the cited prior art and the disclosure of the ’345 patent. Thus, for purposes of this decision, we determine that a person of ordinary skill in the art as of the date of the invention would have had a bachelor’s degree in engineering with relevant coursework, and the equivalent of at least two years of work experience in the design, operation, and functioning of imaging systems, amounting to familiarity with concepts related to illumination and detection schemes for optical imaging systems. 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, 163 (Fed. Cir. 1985))).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We need only construe terms that are in controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Here, Petitioner “submits that no explicit construction is necessary when applying the prior art presented,” but notes “the Board may wish to construe ‘a central aperture of the illumination unit’ in claim 5[, construe] ‘proper distance’ in claim 13, and [consider] application of 35 U.S.C. § 112(f) in view of the prosecution history of the ‘345 patent.” Pet. 10. Petitioner also addresses “a central aperture of the illumination unit” as claim 5 recites and “proper distance” as claim 13 recites. Id. at 10–11. Petitioner also addresses the possibility of various terms invoking 35 U.S.C. § 112(f). Id. at 11–13. For purposes of this decision, we determine that claim construction is unnecessary for institution of this post grant review. As we explain herein, Petitioner adequately establishes that it is more likely than not that Petitioner would prevail in showing that at least one of the challenged claims is unpatentable under §§ 102 or 103. This is true whether based on plain and ordinary meaning or based on the various alternatives Petitioner presents when addressing claim construction. Pet. 9–14” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“C. Relevant Law To establish anticipation under 35 U.S.C. § 102, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Thus, the dispositive question is whether one skilled in the art would have reasonably understood or inferred from a prior art reference that every claim element is disclosed in that reference. Eli Lilly v. Los Angeles Biomedical Research Inst. at Harbor–UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,266,345 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting v. Cao Lighting, Inc.InstitutedPTAB · Oct 19, 2022 · IPR2022-00848 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 18, 22, 25, 26, 28–30, 32–36, 40–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 70–73, 77, 78, 81, 82, 85, 86, and 88–91 on both asserted §103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to all of the challenged claims of the ’770 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Here, our consideration of relevant factors including the seven Becton, Dickinson factors does not favor discretionary denial. In particular, the reexamination examiner allowed new claims based on prior art not disclosing an LED chip configured to output light at greater than about 40 mW as follows. Pet. 14. In particular, the Examiner distinguishes claim 18 from the prior art as follows: Proposed new claim 18, from which all of the other proposed new claims depend directly or indirectly, includes a feature requiring the semiconductor chip to be “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts. Ex. 1005, 7/9/2014 Notice of Intent to Issue Ex Parte Reexamination Certificate; see also Pet. 1 (explaining same). In the Petition, Petitioner persuasively establishes for purposes of institution that Krames teaches an LED chip that achieves “[a] power output of over 170 mW.” Pet. 53 (quoting Ex. 1008, 10). As explained herein when addressing the merits of Petitioner’s asserted grounds, Petitioner also provides persuasive argument why a person of skill in the art would have reason to combine Krames’s teachings with the teachings of the other cited references with a reasonable expectation of success. Pet. 26–31. Given these circumstances, the seven Becton, Dickinson factors weigh” slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts: As of the ’770 Patent’s claimed priority date (August 24, 2001), a POSITA would have had at least a bachelor’s degree in an engineering discipline with coursework in semiconductors and/or optoelectronics, and three or more years of experience working in the semiconductor and/or optoelectronics fields. Less work experience may be compensated by a higher level of education with the foregoing coursework. Pet. 19–20 (citing Ex. 1006 ¶ 34). Patent Owner does not dispute Petitioner’s definition of one of ordinary skill in the art. See generally Prelim. Resp. Petitioner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Petitioner’s description.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “[t]he terms in the Challenged Claims should receive their ordinary and customary meaning as understood by a POSITA in the context of the patent specification and prosecution history.” Pet. 19 (citing Ex. 1006 ¶ 69). Patent Owner asserts that the petition fails to show a reasonable likelihood that Petitioner would prevail for at least one claims because Petitioner has not identified how the challenged claims are to be construed or how the asserted references apply to any construed claim. Prelim. Resp. 1–4; Prelim. Sur-reply 1–3. Patent Owner further asserts that the petition violates 37 C.F.R. § 42.104(b)(3) because it does not, for each claim challenged, identify “how the challenged claim is to be construed” and “how the construed claim is unpatentable.” Prelim. Sur-reply 1. In particular, Patent Owner emphasizes that two district courts have construed various terms of the ’961 Patent and that Petitioner does not address these constructions. Prelim. Resp. 4–10. Patent Owner’s argument does not persuade us that institution is inappropriate here. Petitioner identified how each challenged claim is to be construed by asserting that “ordinary and customary meaning” applies. Pet. 19. Petitioner also explained how each challenged claim is unpatentable. Id. at 32–111. Patent Owner does not persuasively dispute Petitioner’s position. Under these circumstances, the petition satisfies 37 C.F.R. § 42.104(b)(3). As we explain below, Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim under each of these constructions. Thus, we determine that no claim terms require express construction for purposes of this Decision. See, e.g., Nidec Motor Corp. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,634,770
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.