• LG Energy Solution, Ltd. v. Molecular Rebar Design, LLCInstituted
  PTAB · Dec 16, 2024 · IPR2024-01011 · APJ Jeffrey W Abraham · IPR · Institution

  The Board instituted IPR on claims 1–5 under all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim and no basis for discretionary denial.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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 the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the arguments and evidence set forth by Petitioner and Patent Owner, we determine that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail on at least one of the challenged claims of the ’924 patent. We also determine that the arguments and evidence of record do not support discretionary denial of the Petition under 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review as to all of the challenged claims of the ’924 patent on all of the grounds of unpatentability set forth therein.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “Although the parties appear to agree that this factor is neutral, we note that a district court denial of a motion to stay without prejudice, accompanied by an indication that the district court would consider a renewed motion, “suggests the district court may be willing to avoid duplicative efforts and await the PTAB’s final resolution of the patentability issues raised in the petition before proceeding with the parallel litigation.” Fintiv at 6–7. “This fact has usually weighed against exercising authority to deny institution.” Id. (also noting that factors 2 and 3 are relevant to how much weight to give to the court’s willingness to reconsider a stay); see also T-Mobile, Paper 16 at 12 (noting that a stay was unlikely in that case given the proximity of the trial date to the entry of the institution decision). In view of the forgoing, we determine that Fintiv factor 1 weighs against exercising our authority to deny institution.” slip op. at 39

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had at least a Master’s degree in materials science, chemistry, chemical engineering, a field relevant to polymer science and engineering, or the equivalent, and at least three years of experience in nanomaterials, electrochemistry, batteries, or polymer related activities” and that “[a]dditional work experience can compensate for less formal education, and vice versa.” Pet. 8 (citing Ex. 1003 ¶ 11). For purposes of its Preliminary Response, Patent Owner “does not dispute the Petition’s definition of [the] level of ordinary skill in the art.” Prelim. Resp. 2. On this record, we preliminarily adopt Petitioner’s definition of the person of ordinary skill in the art because it appears consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7

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

    “Petitioner argues that “no formal claim constructions are necessary.” Pet. 9. Patent Owner contends that all claim terms should be interpreted “in accordance with their ordinary and customary meaning.” Prelim. Resp. 2. Upon review of the record, we determine that no claim terms require express construction for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,968,924
• Intel Corporation v. Besang Inc.No claims unpatentable
  PTAB · Dec 11, 2024 · IPR2023-00991 · APJ Jon B Tornquist · IPR · Final written decision

  The Board held claims 1 and 13–17 not unpatentable, finding the asserted obviousness grounds deficient in claim limitations or motivation to combine.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties proposed definitions differ in that Petitioner would permit a degree in “materials science” and require three years, as opposed to two years, of relevant experience. Compare Pet. 9 with PO Resp. 14. On this record, we adopt Patent Owner’s proposed definition, as it is more consistent with the prior art of record and the disclosures of the ’702 patent. We note, however, that neither party contends that the outcome of this case depends on the slight differences in the proposed definitions of a person of ordinary skill in the art.” slip op. at 9

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

    “1996) (“It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history.”). Upon review of the parties’ arguments and the intrinsic record, we agree with Petitioner that the ’702 patent does not support a construction of “stackable add-on layer” that encompasses memory cells formed by sequential deposition on a substrate without being formed and then added to a separately formed substrate. Pet. 11–12. First, the plain language of the claim does not require merely a “layer” having a plurality of vertically oriented semiconductor memory cells, but rather “a stackable add-on layer” having a plurality of vertically oriented semiconductor memory cells; that plurality is bonded to the dielectric layer. Ex. 1001, 12:29–32. A construction that gives meaning to all words of the claim is preferred. Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”).” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “As discussed above, we do not understand a “stackable add-on layer” to include memory cells that are formed by sequential deposition on or above a substrate without being added to a separately formed substrate. It is undisputed, and indeed it is Petitioner’s assertion, that Lee’s memory devices are formed by sequential deposition. Pet. 16, 29 n.11, 51 (“In Lee, each level 3104 is deposited on the underlying level of array 3101.”). Therefore, Petitioner has not shown that Lee discloses every limitation of independent claim 13 under our claim construction. Thus, Petitioner does not demonstrate by a preponderance of the evidence that claim 13 would have been obvious in view of Lee. 3. Analysis: Claims 14–17 Claims 14–17 each depend, directly or indirectly, from claim 13. Petitioner’s arguments with respect to these claims do not remedy the deficiencies noted above with respect to claim 13. Pet. 31–41. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that claims 14–17 would have been obvious over Lee.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Petitioner has not demonstrated that Aspar would improve Lee, would solve a problem in Lee, and that Petitioner is proposing to use Aspar in a way that is not disclosed in the reference. PO Resp. 49–50 (citing Ex. 2029 ¶¶ 153–162); Tr. 57:24–58:12; Pet. 61; KSR, 550 U.S. at 417 (asking whether a technique “would improve similar devices in the same way”), 420 (asking whether there was a known problem in the art), 421 (asking whether one of ordinary skill in the art had reason to “pursue the known options”); Intel, 61 F.4th at 1381 (explaining that obviousness may be demonstrated by showing that there was a known problem in the art (“cache coherency in multiprocessor systems”) and that a person of ordinary skill in the art would recognize that that the prior art solution to this problem (“global segmented secondary cache”) would improve the system of another prior art reference). Petitioner does not persuasively show that there was any known problem in the art with respect to Lee or its monolithic method of constructing memory arrays. Nor does Petitioner provide persuasive argument or evidence that Aspar’s wafer bonding would improve Lee’s memory device.10 For example, Petitioner states in a conclusory fashion that Aspar would address the known problem of “fabricating 3D structures,” but does not explain what those problems were or why Lee fails to solve them. Pet. 61. Dr. Sechen’s testimony merely parrots the Petition, providing no further analysis or explanation of what problem might exist in Lee when fabricating its 3D structures. Ex. 1003 ¶ 212. The Petition notes that Aspar transfers “thin layers of very good thickness homogeneity and with a high crystalline quality,” but the Petition never asserts that Lee’s direct deposition method fails to provide these same or similar qualities. Pet. 60–61.” slip op. at 27

  Patent outcomesUS 7,378,702 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,378,702
• Cholla Energy LLC / Obm, Inc. v. Lancium LLCInstituted
  PTAB · Nov 21, 2024 · IPR2024-00914 · APJ Amber L Hagy · IPR · Institution

  The Board instituted IPR on claims 1–10, 12, and 14–30 on all grounds, finding a reasonable likelihood of prevailing on the Pelio and Chapel obviousness challenge.

  RulingsInstitution decision

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

    “institute review. 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 the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Applying those standards, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’456 patent. We institute review on all challenged claims and on all grounds raised in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, mechanical engineering, or an equivalent, and two years of professional experience relating to green datacenters, or more particularly, the use of renewable energy in powering datacenters and power management techniques for datacenters.” Pet. 14 (citing Ex. 1003 ¶¶ 20–22).” slip op. at 9

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

    “Petitioner asserts “for the purposes of this proceeding and the grounds presented herein, no claim term requires express construction.” Pet. 14. For purposes of this Decision, we agree with Petitioner and determine that no claim term requires express interpretation at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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

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

    “sources, wherein such power distribution units were “a well-known aspect of datacenter design” (id. at 22–23 (citing Ex. 1005 ¶¶ 2, 19, 51, 79, 99; Ex. 1006 ¶¶ 27, 82; Ex. 1007, 1, 4; Ex. 1013, 7; Ex. 1015, 3, 4; Ex. 1003 ¶¶ 61–62)); (4) “Pelio recognizes the variability of renewable sources resulting in times where there is insufficient power for computing operations,” and Chapel addresses that problem by teaching “monitoring and controlling power delivery to manage electrical power distribution within a datacenter based on the available power supply” (id. at 23 (citing Ex. 1005 ¶¶ 2, 37, 70, 106; Ex. 1006 ¶¶ 2, 47, 80–83, 90; Ex. 1003 ¶¶ 63–64)); (5) the ordinarily skilled artisan would have had a reasonable expectation of success in combining the teachings of Pelio and Chapel because their teachings are “compatible” and combining them “would have been predictable” and within the skillset of the ordinarily skilled artisan as it was “already known” in the art to collocate datacenters with “renewable generators” and to control a datacenter’s load “in response to a renewable source’s varying power supply” (id. at 24–25 (citing Ex. 1005, Abs., ¶¶ 2, 33, 37, 50, 106; Ex. 1006 ¶¶ 2, 47, 80–83; Ex. 1007, 1, 4; Ex. 1013, 7; Ex. 1014, 6; Ex. 1015, 3, 4; Ex. 1016, 2; Ex. 1003 ¶ 65)); and (6) the Pelio-Chapel combination “would predictably result in Pelio’s datacenter containers including Chapel’s teachings for controlling power delivered to servers,” which “would advantageously enable Pelio’s datacenters to better follow the power supply and avoid grid electricity costs when the renewable supply cyclically dwindles,” thus combining “known elements” according to “known methods” to achieve “predictable results” (id. at 25 (citing Ex. 1005, Abs., ¶¶ 2, 33, 37, 50, 106; Ex. 1006 ¶¶ 2, 47, 80–83; Ex. 1003 ¶¶ 68–69)).” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,016,456
• Zebra Technologies Corporation v. Intellectual Ventures I LLCInstitution denied
  PTAB · Nov 20, 2024 · IPR2024-00883 · APJ Larry J Hume · IPR · Institution

  The Board denied institution because Zebra did not show Dammann was a publicly accessible printed publication, so it was unavailable as prior art for either obviousness ground.

  RulingsInstitution decision

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

    “institute review. 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 “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.4 (2024).” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “As our reviewing court has held, “public accessibility” requires more than technical accessibility. Acceleration Bay, 908 F.3d at 773. “A reference is considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Id. at 772. Because there is no evidence of record that Dammann was actually physically disseminated to the public, such as at the conference site, our inquiry is focused on whether an interested skilled” slip op. at 24

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “presented. For the reasons explained above, including Patent Owner’s arguments, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that the subject matter of claims 1, 3, 7–10, 13, 14, and 16 would have been obvious over Dammann and Hervin in view of the knowledge of a person of ordinary skill in the art. We reach this conclusion because, under our case law discussed above, we conclude that Petitioner has not sufficiently shown that Dammann is a printed publication. Accordingly, Dammann is not available in this proceeding as prior art to the claims of the ʼ439 patent. Because all of” slip op. at 32

  • Obviousness (§103) › Analogous artNot reached

    “b) Hervin’s Status as Analogous Art Patent Owner contends the Petition fails to show that Hervin is analogous art. Prelim. Resp. 38–40. The Petition does not address whether Hervin is analogous art to the invention claimed in the ʼ439 patent. See generally Pet. For purposes of our decision declining to institute trial, we need not reach a determination as to whether Hervin is analogous art to the claimed invention. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (explaining that an administrative agency “is at perfect liberty” to reach a decision based on a “single dispositive issue”); Bos. Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x 984, 990 (Fed. Cir. 2020) (non-precedential) (recognizing that the “Board need not address issues that are not necessary to the resolution of the proceeding”).” slip op. at 28

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,623,439
• Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Besang Inc.No claims unpatentable
  PTAB · Nov 13, 2024 · IPR2023-00900 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 13–17 were not shown unpatentable: Lee-based grounds fail on the stackable add-on layer limitation, and Watanabe-based grounds fail on nonvolatile memory, enablement, or motivation to combine.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “meaning in the art. See Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) (stating that, absent an accepted meaning in the art, “we construe a claim term only as broadly as provided for by the patent itself”). Thus, we must attempt to discern the meaning of this term from the claim language itself and from the remainder of the intrinsic record. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history.”). Upon review of the parties’ arguments and the intrinsic record, we agree with Petitioner that the ’702 patent does not support a construction of “stackable add-on layer” that encompasses memory cells formed by sequential deposition on a substrate without being formed and then added to a separately formed substrate.” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “As discussed above, we construe “stackable add-on layer” to not include memory cells that are formed by sequential deposition on or above a substrate without being added to a separately formed substrate. It is undisputed, and indeed it is Petitioner’s assertion, that Lee’s memory devices are formed by sequential deposition. See Pet. 52 (asserting that in Lee “the layers of the array are directly deposited on the layers of each underlying level, and the array is deposited on the interlayer insulating layer formed over a substrate”); see also id. at 70 (“Lee discloses forming vertical memory devices through layer-by-layer sequential deposition on the substrate . . . .”). Therefore, Petitioner does not show that Lee discloses every limitation of independent claim 13 under our claim construction. Thus, Petitioner does not demonstrate by a preponderance of the evidence that claim 13 would have been obvious in view of Lee. 3. Claims 14 and 15 Claims 14 and 15 depend from claim 13. Ex. 1001, 12:35–42. Petitioner’s arguments for these claims do not remedy the deficiencies noted above with respect to independent claim 13. Pet. 54–59. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that claims 14 and 15 would have been obvious in view of Lee alone. E. Claims 16 and 17 over Lee and Endoh Petitioner contends the subject matter of claims 16 and 17 would have been obvious over the combined disclosures of Lee and Endoh. Pet. 59–69. Petitioner’s arguments with respect to these claims, however, do not remedy the deficiencies noted above with respect to Lee and its monolithic, sequentially deposited memory array. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that claims 16 and 17 would have been obvious over Lee and Endoh.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “combined Lee and Watanabe to achieve improved integration density. Pet. 71. Petitioner concedes, however, that the benefits of Lee’s design related to 3-D integration and improved integration density would be obtained if Lee’s memory structures are formed using either Lee’s monolithic construction method or Watanabe’s alternative stacking method. Pet. Reply 13–14 (citing Ex. 1041 ¶ 34). Thus, we are not persuaded that improved integration density provides a sufficient rationale for Petitioner’s combination of Lee’s memory device and Watanabe’s stacking method. Petitioner argues that Watanabe’s stacking method “improves the accuracy of the wiring” because the wiring is made “for each planar member.” Pet. 72 (citing Ex. 1005, 6:1–3). Watanabe also states that its disclosed methods provide “a low interconnection wire resistance.” Ex. 1005, 6:20–23. Petitioner does not, however, explain sufficiently how Watanabe’s stacking method would improve Lee’s device. For example, Petitioner does not address whether the alleged wiring benefit already existed in Lee’s monolithic array or explain how this benefit would also apply to Lee’s particular memory array, which differs in construction and elements from Watanabe’s device. This diminishes Petitioner’s benefits-based motivation to combine arguments. In general, a petitioner need not demonstrate that a particular alternate method would improve a prior art device in order to show a motivation to combine. Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023); see Pet. Reply 20 (citing Intel). But here, Petitioner affirmatively invokes improvement of Lee’s device as a reason for the combination, and we must evaluate Petitioner’s contention. Moreover, any relative lack of improvement or benefits must be weighed against any problems the alternative method would introduce. See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 795–96 (Fed. Cir. 2021) (noting that simultaneous advantages and disadvantages to a proposed combination must be analyzed to determine whether the disadvantages “outweighed any reason to combine”). Here, as discussed above in more detail with respect to the ground based on Watanabe, the evidence shows that one of ordinary skill in the art would have expected Watanabe’s bonding temperature of 900– 1000° C to damage the electronic devices in an underlying substrate. Ex. 2029 ¶¶ 75–76; Ex. 2028, 123:13–124:7; Ex. 2027, 715. The expected damage to Lee’s device, when balanced against the limited evidence of a benefit to the combination,7 outweighs the reason to combine Lee and Watanabe set forth in the Petition. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that claim 13 would have been obvious over Lee and Watanabe. 2. Analysis – Claims 14 and 15 Claims 14 and 15 both depend directly from independent claim 13. Ex. 1001, 12:35–42. Petitioner’s arguments with respect to claims 14 and 15 do not remedy the deficiencies noted above with respect to independent claim 13. Pet. 73. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that these claims would have been obvious over Lee and Watanabe.” slip op. at 40

  • Expert testimonyPatent owner expert creditedOther

    “We credit the testimony of Dr. Przybylski that one of ordinary skill in the art would have understood that Watanabe’s stacked structure would be severely impacted if bonded at a temperature above 900° C, as disclosed in Watanabe. Ex. 2029 ¶¶ 76–77. Dr. Przybylski’s opinion is supported by Dr. Lee’s testimony (Ex. 2028, 123:13–124:7, 125:6–126:7), as well as Watanabe (Ex. 1005, 6:6–14) and Batude (Ex. 2027, 715). As further discussed below, we find that Petitioner has not rebutted Patent Owner’s showing of nonenablement, and Patent Owner has carried its burden to demonstrate that Watanabe was not enabled for bonding temperatures of 900–1000° C, as of the 2004 filing date of the ’702 patent.” slip op. at 32

  Patent outcomesUS 7,378,702 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,378,702
• Cub Elecparts Inc. v. Orange Electronic Co., Ltd.Institution denied
  PTAB · Nov 12, 2024 · IPR2024-00744 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, 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 the challenged claims on the grounds set forth in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art (“POSA”) “would have a bachelor’s degree in electrical engineering and at least one year of experience in sensor/detector design or RF communications (RFIDs)” and “would have a working knowledge of tire pressure management systems and, as most POSA would also be automobile owners, would have had personal experience with tire pressure management systems which have been required in all new cars, trucks, and SUVs in the United States since 2007.” Pet. 17. Petitioner adds that “[e]ducation may substitute for experience and vice versa.” Id.” slip op. at 12

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

    “Petitioner contends that all claim terms should be given their ordinary and customary meaning. Pet. 17. Petitioner notes that, in the tire pressure detecting field, terms such as “detector,” “sensor,” and “monitor” relate to the same device and can be used interchangeably. Id. at 17–18. Patent Owner contends that no claim term needs construction to resolve the grounds asserted in the Petition. Prelim. Resp. 16. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “We agree with Patent Owner that Petitioner’s unsupported assertion that tire pressure sensors typically are programmed with only the ID as part of the factory installation is insufficient to establish obviousness in this instance. Petitioner does not provide adequate reasoning or evidence to 11 Petitioner relies on the same analysis of this claim 26 limitation for the substantially similar limitation of claim 27. Pet. 66. Accordingly, our analysis of the claim 26 limitation applies equally to the corresponding limitation of claim 27. art would have known that tire pressure sensors typically are programmed at the factory with a single ID. Furthermore, even if assuming for the sake of argument that Petitioner’s assertion is correct, the Petition fails to explain adequately how or why one of ordinary skill in the art would have modified the combination of Tang and Lemense to store only the old identification in the old tire pressure detector.” slip op. at 20

  Claim construction§ 103 obviousnessDiscretionary denialcites Graham
  Patents in suitUS 8,031,064
• Elmos Semiconductor SE v. Texas Instruments IncorporatedInstitution denied
  PTAB · Nov 5, 2024 · IPR2024-00802 · APJ Bach V Hoang · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood that any of claims 1–20 would be unpatentable on any asserted obviousness ground.

  RulingsInstitution decision

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

    “An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it would prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that “a person having ordinary skill in the art (‘POSITA’) at the relevant time, would have had at least a bachelor’s degree in electrical engineering, or equivalent experience of at least two years working in the field of the design electrical driver systems for Light Emitting Diodes (LEDs).” Pet. 20. Patent Owner has not addressed the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as articulated above. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ432 Patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art). We note, however, that the open-ended language “at least” expands the range of education and experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation.” slip op. at 8

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

    “Based on the record before us, we do not find it necessary to expressly construe any claim terms or phrases to reach our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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))). Petitioner’s constructions do not affect our determinations, and, even under Petitioner’s constructions, Petitioner fails to show a reasonable likelihood of success with respect to its proposed grounds of unpatentability for the challenged claims of the ’432 Patent.” slip op. at 10

  • BurdenNot shown unpatentable

    “First, even under Petitioner’s assertion that “controller RG . . . performs the functions of an error amplifier and amplifier output stage” (id. at 37), Petitioner has not adequately shown that controller RG meets all three of “an error amplifier,” “a control voltage,” and “an amplifier output stage.” Petitioner’s assertions that those elements are “interior to” or “include[d]” in controller RG are conclusory and unsupported. Petitioner summarizes and reproduces portions of Sudhaus regarding the output currents of controller RG, but has not explained the relevance of its summary and reproduction with respect to each recited claim element. See id. at 37–38 (citing Ex. 1005, 2:32–33, 4:25–28, 4:46–50, 8:47–55), 40– 41. Nor has Petitioner explained why or how the summarized or reproduced portions of Sudhaus show that those claim elements are interior or included in controller RG. See id. Further, Petitioner also fails to show how Sudhaus teaches the claimed interactions and relations between the error amplifier, control voltage, and amplifier output stage. The claim recites the error amplifier compares voltages to “generate a control voltage” and the amplifier output stage controls output current “based on the control voltage.” Petitioner has not explained what specific signal controller RG generates that teaches a “control voltage” used to control output current. Nor has Petitioner stated, let alone explained how, controller RG generates a control voltage in the claimed manner and controls output current based on that control voltage. Simply because controller RG produces outputs that are allegedly similar to the claimed outputs does not by itself show that controller RG produces the claimed outputs using the claimed elements in the claimed manner.” slip op. at 16

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 11,653,432
• Samsung Electronics Co., Ltd. v. Dodots Licensing Solutions LLCAll claims unpatentable
  PTAB · Oct 22, 2024 · IPR2024-00145 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–24 are unpatentable: claims 1–4, 7–11, 13–16, and 19–23 as obvious over Brown; claims 5, 6, 17, and 18 as obvious over Brown and Beer.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for petitioner

    “independent claims 1 and 13. In the -01279 IPR, we construed this term as meaning “a fully configurable frame, with one or more controls, through which content is presented to the user.” Ex. 1012, 10–11. Both Petitioner (Pet. 3–4) and Patent Owner (PO Resp. 9) agree with this construction, and we adopt it herein. 2. “networked information monitor template” The term “networked information monitor template” (“NIM template”) also appears in each of independent claims 1 and 13. In the -01279 IPR, we construed this term as meaning “a data structure that defines the characteristics of a NIM, including the NIM frame, view, and control characteristics, and that excludes executable applications/compiled code.” Ex. 1012, 11–20. This construction was affirmed by the Federal Circuit. Ex. 1014, 5–9. Both Petitioner (Pet. 4–5) and Patent Owner (PO Resp. 9) agree with this construction and we adopt it herein.” slip op. at 10

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

    “3. “client computing device” Patent Owner requests construction of the term “client computing device.” PO Resp. 9–10. We do not construe this claim term because its construction is not necessary to resolve the controversy before us. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “We determine that Patent Owner has not shown that it is entitled to the presumption of nexus. That is, Patent Owner has not shown that product “is the invention disclosed and claimed.” Fox Factory, 944 F.3d at 1374 (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). Petitioner is correct that Patent Owner did not discuss in its Patent Owner Response whether the claims of the ’407 patent are coextensive with the DoDots patent. We examine Patent Owner’s contentions in its Sur-reply of coextensiveness, including Patent Owner’s contention that “[t]he ‘gist’ of the inventions centered around the NIM template” (PO Sur-reply 23), to determine if the DoDots product was coextensive or, even if not, if “the unclaimed features amount to nothing more than additional insignificant features,” in which case the presumption of nexus may still be appropriate. See Fox Factory, 944 F.3d at 1373 (“Although we do not require the patentee to prove perfect correspondence to meet the coextensiveness requirement, what we do require is that the patentee demonstrate that the product is essentially the claimed invention.”); Teva Pharms., 8 F.4th at 1361–63 (discussing the “spectrum” of coextensiveness, from one in which unclaimed features are insignificant, which might not disturb the presumption, to one in which a critical feature is unclaimed, which would not show coextensiveness). We determine that the record evidence shows that at least the feature of the “developer ecosystem” was significant and not coextensive with the claims. John Kembel’s testimony describes “a whole developer ecosystem” including a “dev Dot” that allows “web developers to become Dot developers.” Ex. 1031, 59:2–17. Patent Owner contends that NIMs and NIM templates, as claimed, are the only critical features of the DoDots products, but the testimony of John Kembel confirms the criticality of the developer ecosystem: “[Y]ou could collect Dots, you could share Dots, you could organize them into packs based on your different work products, but the gist and the magic of the invention really comes down to the concept of a Dot, the Dot definition, and the server infrastructure that enabled those to be defined, collected, developed, and distributed.” Id. at 19:16–22 (emphasis added); see Ex. 2021 ¶¶ 36–43; Ex. 2027, 6 (discussing the “DevDot”); Ex. 2029.” slip op. at 33

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersObjective indicia outweighedDecided for petitioner

    “art had a recognized need for a solution to the problem, and that others had tried and failed to find a solution to that problem. Millennium Pharms., Inc. v. Sandoz Inc., 862 F.3d 1356, 1369 (Fed. Cir. 2017). We have reviewed the cited evidence presented by Patent Owner, and find that it does not evince strong evidence of a long-felt but unsolved need that Patent Owner contends was addressed by the DoDots products.” slip op. at 34

  Patent outcomesUS 8,510,407 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,510,407
• Samsung Electronics Co., Ltd. v. Dodots Licensing Solutions LLCAll claims unpatentable
  PTAB · Oct 22, 2024 · IPR2023-00701 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–24 are unpatentable: claims 1–4, 7–11, 13–16, and 19–23 as obvious over Brown; claims 5, 6, 17, and 18 as obvious over Brown and Beer.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Pet. 5 (citing Ex. 1003 ¶¶ 20–21). Patent Owner, citing our prior decision in the -01279 IPR and the declaration testimony it submitted of Dr. Ted Selker (Ex. 2010), states: A POSITA would have a bachelor’s degree in Computer Engineering, Computer Science, or a related field and have three or more years of corresponding industry work experience. PO Resp. 9 (citing Ex. 1012, 8; Ex. 2010 ¶¶ 24–25). The parties have not addressed the differences in these definitions. We adopt Patent Owner’s formulation of the level of skill in the art, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for petitioner

    “independent claims 1 and 13. In the -01279 IPR, we construed this term as meaning “a fully configurable frame, with one or more controls, through which content is presented to the user.” Ex. 1012, 10–11. Both Petitioner (Pet. 3–4) and Patent Owner (PO Resp. 9) agree with this construction, and we adopt it herein. 2. “networked information monitor template” The term “networked information monitor template” (“NIM template”) also appears in each of independent claims 1 and 13. In the -01279 IPR, we construed this term as meaning “a data structure that defines the characteristics of a NIM, including the NIM frame, view, and control characteristics, and that excludes executable applications/compiled code.” Ex. 1012, 11–20. This construction was affirmed by the Federal Circuit. Ex. 1014, 5–9. Both Petitioner (Pet. 4–5) and Patent Owner (PO Resp. 9) agree with this construction and we adopt it herein.” slip op. at 10

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

    “3. “client computing device” Patent Owner requests construction of the term “client computing device.” PO Resp. 9–10. We do not construe this claim term because its construction is not necessary to resolve the controversy before us. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

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

    “As noted above, our construction requires “a fully configurable frame, with one or more controls, through which content is presented to the user.” We decline to adopt the construction Patent Owner urges—that the content presented to the user must itself be fully configurable. See PO Resp. 38–39. Rather, our construction derives from language in the specification, which is immediately followed by language describing the advantage of a fully configurable frame: “[t]he fully configurable frame utilized in accordance with the invention stands in contrast to present web browsers, which are branded by the browser vendor and which have limited means by which to alter the controls associated with the browser.” Ex. 1001, 5:21–28; Ex. 1012, 9–10 (citing Ex. 1001, 5:21–24). Patent Owner itself quotes a portion of the specification that describes the “shortcomings” (PO Resp. 4) of prior art browsers, namely “controls associated with a browser are not fully configurable” and developers “have limited control over the user experience” (Ex. 1001, 2:3–29 (quoted at PO Resp. 4)). The Federal Circuit also quoted the language contrasting the “fully configurable” NIM with then-current web browsers (branding and limited alteration of browser controls) in its decision affirming the claim construction of “NIM template” in the -01279 IPR. Ex. 1014, 3 (quoting language from a related patent that is substantively identical to Ex. 1001, 5:24–28). Patent Owner’s argument regarding the configurability of the presented content (as opposed to the frame) asks us to consider the ’407 patent specification’s disclosure that “[t]he developer has full control over all aspects of the appearance and functionality of NIM frame.” PO Resp. 38 (quoting Ex. 1001, 17:32–43). However, we do not agree that this statement requires that the developer of the NIM must be able to make the content within the frame appear “differently” from the source, as argued; rather, in context, this statement again relates to the appearance and operation of the NIM frame, not the content. Neither Patent Owner nor its declarant provides any additional discussion or support for the assertion that the content received from a website (if that is the content presented in the frame) must be capable of being displayed differently than on the website. Ex. 2010 ¶ 106. We find persuasive, and credit, Dr. Schmidt’s testimony that Brown’s desktop components are fully configurable frames because Brown describes that the desktop components may be positioned at any location on the desktop and can be resized, and Brown presents examples of desktop components with different frame controls, in its depiction of two desktop components, one with horizontal and vertical scroll bars, and one with no such controls. Ex. 1003 ¶ 51 (citing Ex. 1005, 7:24–26, 12:64–65, Fig. 3A (elements 306, 310)). This testimony is supported by the cited teachings and is consistent with our claim construction.” slip op. at 17

  Patent outcomesUS 8,510,407 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,510,407
• Samsung Electronics Co., Ltd. v. Dodots Licensing Solutions LLCAll claims unpatentable
  PTAB · Oct 9, 2024 · IPR2024-00143 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–16 are unpatentable: claims 1–5 and 9–13 as obvious over Brown, and claims 6–8 and 14–16 as obvious over Brown and Wecker.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “A person of ordinary skill (“POSITA”) relating to the subject matter of the ’083 Patent would have had (1) a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least three years of corresponding industry work experience. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 5 (citing Ex. 1003 ¶¶ 20–21). Patent Owner, citing our prior decision in the -01278 IPR and the declaration testimony it submitted of Dr. Ted Selker (Ex. 2010), states: A POSITA would have a bachelor’s degree in Computer Engineering, Computer Science, Electrical Engineering, or a related field and have three or more years of corresponding industry work experience. PO Resp. 8 (citing Ex. 1012, 8; Ex. 2010 ¶¶ 24–25). The parties have not addressed the differences in these definitions. We adopt Patent Owner’s formulation of the level of skill in the art, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for petitioner

    “of independent claims 1 and 9. In the -01278 IPR, we construed this term as meaning “a fully configurable frame, with one or more controls, through which content is presented to the user.” Ex. 1012, 9–10. Both Petitioner (Pet. 3–4) and Patent Owner (PO Resp. 8) agree with this construction, and we adopt it herein. 2. “networked information monitor template” The term “networked information monitor template” (“NIM template”) also appears in each of independent claims 1 and 9. In the -01278 IPR, we construed this term as meaning “a data structure that defines the characteristics of a NIM, including the NIM frame, view, and control characteristics, and that excludes executable applications/compiled code.” Ex. 1012, 11–19. This construction was affirmed by the Federal Circuit. Ex. 1014, 5–9. Both Petitioner (Pet. 4–5) and Patent Owner (PO Resp. 9) agree with this construction and we adopt it herein.” slip op. at 9

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

    “3. “execute the template” and “client device” Patent Owner requests construction of the terms “execute the template” and “client device.” PO Resp. 9–10. We do not construe these claim terms because their construction is not necessary to resolve the controversy before us. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10

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

    “networked information monitor” Our determination is that Petitioner has shown by a preponderance of the evidence that Brown’s desktop component teaches or suggests a NIM in accordance with our claim construction of that term. Our construction requires “a fully configurable frame” and we decline to make the determination that Patent Owner urges, that the construction requires that the content presented to the user must be fully configurable. See PO 36–37. Rather, the construction derives from the specification, immediately followed by the language: “[t]he fully configurable frame utilized in accordance with the invention stands in contrast to present web browsers, which are branded by the browser vendor and which have limited means by which to alter the controls associated with the browser.” Ex. 1001, 5:44–48 (using the term “Application Media Package,” which is synonymous with NIM (PO Resp. 4–5)); Ex. 1012, 9–10 (citing Ex. 1001, 5:40–43). Patent Owner itself quotes a portion of the specification that describes the “limiting factors” (PO Resp. 4) of prior art browsers, namely “controls associated with a browser are not fully configurable” and prior art browsers “provide very limited control to a user or content provide[r] to alter the frame and controls provided by the browser window” (Ex. 1001, 2:47, 2:57–59 (quoted at PO Resp. 4)). The Federal Circuit also quoted the language contrasting the “fully configurable” NIM with then-current web browsers (branding and limited alteration of browser controls) in its decision affirming the claim construction of “NIM template” in the -01278 IPR. Ex. 1014, 3 (quoting language from a related patent that is substantively identical to Ex. 1001, 5:44–48). Patent Owner’s argument regarding the configurability of the presented content (as opposed to the frame) asks us to consider the ’083 patent specification’s disclosure that “frame shape and content may be wholly defined by the Dot developer.” PO Resp. 36–37, citing Ex. 1001 10:55–57. However, we do not agree that this statement requires that the developer of the NIM must be able to make the content within the frame appear “differently” from the source, as argued; rather, in context, this statement again relates to the appearance of the frame. In particular, we find the word “frame” in the phrase “frame shape and content” modifies both “shape” and “content,” so that the phrase refers to both the shape and the content of the frame, rather than to frame shape and, separately, the content presented within the frame. See Ex. 1001, 10:46–55 (“The frame . . . defines that area . . . in which data may be rendered [and] may contain rendered Internet data . . . . The appearance of the frame (if any) together with data that is displayed therein is the visible instantiation of the [NIM]. Any Internet data or media data may be contained within the frame.”). Neither Patent Owner nor its declarant provides any additional discussion or support for the assertion that the content received from a website (if that is the content presented in the frame) must be capable of being displayed differently than on the website. Ex. 2010 ¶ 109. slip op. at 15

  Patent outcomesUS 8,020,083 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,020,083

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.