- 3M Company v. Bay Materials, LLCNo claims unpatentablePTAB · Jan 16, 2024 · IPR2022-01214 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1–4, 7–11, and 13 were not shown unpatentable because Petitioner did not establish the flexural-modulus limitation over Hinz and the Durasoft data sheets, with or without Sun.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties disagree about the appropriate definition of the ordinarily skilled artisan and, in particular, whether that artisan would have had experience or familiarity with processing “thermoformable polymer sheets” to form “orthodontic and dental appliances.” Resp. 8; see Pet. 10–11 n.1 (disagreeing with that proposition). We agree with Patent Owner for the following reasons.” slip op. at 8
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“B. Conflicting Opinion Testimony Petitioner’s own witness, Dr. Giacomin, opines that an ordinarily skilled artisan “would have been familiar with various machines and methods that would have enabled the thermoforming of multilayer dental sheets into shapes that conform with the teeth (i.e., creating a dental appliance).” Ex. 1002 ¶ 25. Nonetheless, Petitioner does not contest Patent Owner’s evidence that Dr. Giacomin himself lacks that qualification. Compare Resp. 9–10 (citing Ex. 1002 ¶¶ 1–9, 17 & n.1), with Reply (nowhere contesting that evidence). Petitioner also leaves uncontested Patent Owner’s evidence that Dr. Osswald, by contrast, possesses “the required experience” with dental appliances, including thermoforming processes for their manufacture. Compare Resp. 10 (citing Ex. 2006 ¶¶ 2–8; Ex. 2007), with Reply (nowhere contesting that evidence). Dr. Giacomin possesses excellent qualifications in the field of polymer rheology, but on this record, he demonstrates no, or inadequate, familiarity or experience with methods of thermoforming dental appliances from polymeric materials, which by his own admission is a minimum qualification of the hypothetical person of ordinary skill in the art. Ex. 1002 ¶¶ 1–11 (statement of qualifications), App’x A (curriculum vitae). Patent Owner’s witness, Dr. Osswald, by contrast, has “experience with polymer materials used in dental appliances” and “shaping operations, including thermoforming” processes for such applications. Ex. 2006 ¶¶ 5, 6. Against that backdrop, where the two witnesses’ opinions differ about the level of ordinarily skill in the art of thermoforming processes for dental appliances at the time of the invention, we credit Dr. Osswald’s opinions over those of Dr. Giacomin. We take note, moreover, that Dr. Osswald’s opinions would not change under Petitioner’s somewhat different definition of the level of ordinary skill in the art. Ex. 2006 ¶ 14.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Claim terms are given their ordinary and customary meaning, as understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We construe only terms in controversy and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). No claim term requires express construction for purposes of this Decision.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“In the absence of explanation by Petitioner, we are left to wonder why either of those two ranges reported in Sun would have been recognized as applicable, without modification, to the three-layer dental splint of Hinz. Starting with a commercially-available, two-layer sheet of hard-soft PC-TPU or hard-soft PETG-TPU thermoplastic polymers, Hinz bonds a third layer, consisting of hard PC or hard PETG, to the soft TPU layer of the two-layer material by a process of thermoforming. No prior art reference explains how that process would have been understood to affect the overall flexural modulus of the resulting three-layer, hard-soft-hard composition. Petitioner does not supply an adequate reason for combining Sun’s preferred flexural modulus range, reported for Sun’s dental appliances at a temperature of 23˚ C, to dental splints formed by Hinz from fundamentally different polymers and a fundamentally different process. See Pet. 65–68 (entirety of four-page analysis on this ground); Resp. 32–38; Sur-reply 7–14 (well-supported explanation of those fundamental differences); Reply 8–16 (Petitioner’s unpersuasive responsive positions). The flexural modulus of Sun’s dental appliance not only is temperature dependent but also varies with the flexural strength of the polymeric material at hand. Ex. 1018 ¶ 12. Too late in the Reply, Petitioner raises fact-intensive reasons why those differences would not have mattered to an ordinarily skilled artisan. Reply 8–16. In any event, we agree with Patent Owner that Petitioner glosses over “[f]undamental differences” between the polymers and processes of Sun and Hinz, differences that “are central to [the] motivation to combine inquiry” and undercut Petitioner’s view that an ordinarily skilled artisan would have understood either of Sun’s flexural modulus ranges to apply, without modification, to Hinz’s polymers and process. Resp. 33 (quoting Adidas AG v. Nike, Inc., 963 F.3d 1355, 1359 (Fed. Cir. 2020)) (first alteration in original); see Sur-reply 8–16 (Patent Owner’s persuasive arguments and evidence on point). The ground based on Sun is deficient for the above reasons.” slip op. at 25
Patent outcomesUS 10,946,630 not shown unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,946,630 - Sma Solar Technology America, LLC v. Tigo Energy, Inc.Institution deniedPTAB · Jan 12, 2024 · IPR2023-01133 · APJ Kristina M Kalan · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–13 were unpatentable over the asserted Mieth-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute inter partes review, we must determine that 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.” 35 U.S.C. § 314(a). Upon considering the parties’ submissions and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the claims challenged in the Petition. Accordingly, we decline to institute inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(citing Ex. 1007 ¶¶ 30–31). Patent Owner disputes Petitioner’s definition because it excludes “individuals with higher education and less experience.” Prelim. Resp. 7. However, Patent Owner does not argue that the level of ordinary skill in the art impacts the analysis. See id. For the purposes of this Decision, we adopt Petitioner’s proposal because we find Petitioner’s statement of the level of ordinary skill in the art adequate and supported on this record. The level of ordinary skill in the art also appears to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 6
- BurdenNot shown unpatentable
“We also agree with Patent Owner that Petitioner fails to show Mieth inherently discloses the claimed micro-controller. Petitioner argues that a include a micro-controller” and “the load 20 is analogous to the claimed micro-controller.” Pet. 22–23. Petitioner’s argument itself, however, as noted by Patent Owner (Prelim. Resp. 9), admits that load 20 is not “necessarily” a micro-controller, and that load 20 does not “necessarily” include a micro-controller. Continental Can Co., U.S.A. v. Monsanto Co., 948 F.2d 1264, 1268–69 (Fed. Cir. 1991) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”); see also Pet. 56 (discussing, in the context of claim limitation [7G], “load 20, which may be a micro-controller” (citing Ex. 1002, 17:19–18:3; Ex. 1007 ¶ 170; Ex. 1014, 1180, Fig. 5)). Additionally, Petitioner argues that Mieth’s load 20 is “analogous to” the claimed micro-controller. Pet. 22–23 (citing Ex. 1007 ¶ 97–99 (same language as Petition); Ex. 1014, 1180, Fig. 5). We are not persuaded that Petitioner’s “analogous to” argument comports with the standard for anticipation. Under the applicable standard for anticipation, neither Petitioner nor its declarant provides any analysis that would show that one skilled in the art would have reasonably understood or inferred from Mieth that load 20 is a micro-controller. See Eli Lilly, 849 F.3d at 1074–1075.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,333,405 - PTAB · Nov 8, 2023 · IPR2023-00810 · APJ Jeffrey W Abraham · IPR · Institution
The Board instituted IPR on claims 1–30 and all asserted grounds, finding a reasonable likelihood that claims 1–30 are obvious over Baxter.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons set forth below, we determine the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (informative; precedential as to § III.C.5, first paragraph). We apply a two-part framework in deciding discretionary denial under § 325(d), first considering Becton, Dickinson factors (a), (b), and (d) to determine whether the same or substantially the same art or arguments were previously presented to the Office, and if so, evaluating Becton, Dickinson factors (c), (e), and (f) to determine whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, 7–11.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a “bachelor’s degree in electrical engineering or its equivalent and two years of experience in electrical engineering with some experience in design of power supply management systems, such as battery charging systems.” Pet. 12. Petitioner also contends that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 12 (citing Ex. 1023 ¶¶ 44–48). Patent Owner does not challenge Petitioner’s definition or offer its own. See generally, Prelim. Resp. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’971 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’971 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that the term “start control module” should be construed as “electronic switch.” Pet. 12 (citing Ex. 1023 ¶¶ 148–150). According to Petitioner, “the ‘971 Patent states that ‘the automobile start control module is the electronic switch.’” Pet. 13 (citing Ex. 1001, 2:29–30, 4:42–45, 4:26–28, 4:29–32). Patent Owner does not address claim construction in its Preliminary Response. We determine that we do not need to expressly construe any terms for purposes of this Decision. See 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,376,971 - PTAB · Nov 6, 2023 · IPR2023-00879 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on all claims 1–20 and all asserted grounds, finding a reasonable likelihood that SMA would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute inter partes review, we must determine that 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.” 35 U.S.C. § 314(a) (2018). Upon considering the Petition and the evidence of record, we determine that Petitioner has shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the claims challenged in the Petition. Accordingly, we institute inter partes review of all claims and all grounds asserted in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b) (2023). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. 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 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For the purpose of this Decision, we accept Petitioner’s undisputed contention that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, or a similar discipline and at least two years of design experience with circuit design.” Pet. 22 (citing Ex. 1007 ¶ 30); see Ex. 1007 ¶ 31. The level of ordinary skill in the art is further demonstrated by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,584,021 - Eden Park Illumination, Inc. / Larson Electronics LLC et al. v. S. Edward NeisterAll claims unpatentablePTAB · Oct 24, 2023 · IPR2022-00682 · APJ Elizabeth M Roesel · IPR · Final written decision
Claims 1, 2, 5, and 6 are unpatentable as obvious over Brown-Skrobot and Clauβ, with Liang added for claims 5 and 6.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“bachelor’s degree in an engineering discipline, such as biological, chemical, environmental, electrical, mechanical, and/or systems engineering, or an equivalent degree such as one in physics or similar subject matter.” Pet. 9 (citing Ex. 1003 ¶ 20). “Such a person would also have had two to three years of work or research experience with UV disinfection technology and/or systems and would be familiar with the fundamentals of UV excimer lamps,” but “less education could be compensated by more experience and vice versa.” Id. Patent Owner does not dispute Petitioner’s proposed definition. See PO Resp. 8. We determine that Petitioner’s proposed definition is consistent with the prior art of record, and apply it for this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings on 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 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“It is a well-settled principle of claim construction that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in an open-ended claim containing the transitional phrase ‘comprising.’” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). “The exceptions to this rule are extremely limited: a patentee must ‘evince[] a clear intent’ to limit ‘a’ or ‘an’ to ‘one.’” Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) (quoting KCJ, 223 F.3d at 1356)). “An exception to the general rule that ‘a’ . . . means more than one only arises where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule.” Id. at 1342–43; see also ABS Glob., Inc. v. Cytonome/St, LLC, No. 2022-1761, 2023 WL 6885009, at *4 (Fed. Cir. Oct. 19, 2023) (discussing and applying the general rule).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“obvious to implement the sterilization method disclosed in Brown-Skrobot by combining the monochromatic UV sources disclosed in Clauβ. Pet. 13–15; Pet. Reply 7–16. Our finding is supported by Brown-Skrobot’s teaching concerning the benefits of using two or more monochromatic UV radiation sources having different wavelengths. The different wavelengths may provide increased levels of sterility, because different microorganisms that have to be sterilized on a medical device may have greater or lesser sensitivities to uv radiation at different wavelengths; therefore, multiple monochromatic uv radiation sources can be used which produce monochromatic uv radiation at different wavelengths which when used together will successfully sterilize all the microorganisms, that might not otherwise be sterilized, or would require greater levels of energy if only one monochromatic uv radiation source is used. Ex. 1004 ¶ 42. In our view, the above-quoted passage in Brown-Skrobot provides strong evidence that a POSITA would have had a reason to combine two or more monochromatic UV radiation sources having different wavelengths. Particularly persuasive is Brown-Skrobot’s teaching that different microorganisms have different sensitivities to different wavelengths of radiation such that combining sources that emit different wavelengths will provide more effective sterilization. Id. Brown-Skrobot also teaches that combining two or more monochromatic UV radiation sources having different wavelengths may require less energy than using a single monochromatic UV radiation source to provide the same level of sterilization. Id.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“For many polymers which are commonly used for contact lens containers and contact lenses, which were described earlier, radiation at wavelengths less than 240 nm is absorbed by the polymers and may cause chain scissions within the polymers. Since the laser emits at a single wavelength or a narrow range of wavelengths, a source which produces radiation below 240 nm can be avoided which is a benefit over broad band radiation sources. Ex. 1004 ¶ 54. Patent Owner’s argument overlooks the breadth of Brown- Skrobot’s disclosure, which is not limited to contact lenses or lasers, as discussed above. Nor is Brown-Skrobot’s process limited to sterilization of polymeric materials; the medical devices that may be sterilized include those made from metals. Ex. 1004 ¶ 45; Ex. 1037 ¶ 18. The disclosure of a preferred embodiment does not, in any event, teach away from non-preferred embodiments. Mouttet, 686 F.3d at 1333–34; see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”).” slip op. at 28
Patent outcomesUS 8,975,605 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,975,605 - Hope Medical Enterprises, Inc. v. Fennec Pharmaceuticals, Inc.No claims unpatentablePTAB · Sep 1, 2023 · IPR2022-00125 · APJ Julia Heaney · IPR · Final written decision
The Board granted the revised noncontingent motion to amend, canceled claims 18 and 20, and entered substitute claims 28 and 29, which were not proven obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Dr. Rogers, contends that a person of ordinary skill in the art would have [had] a bachelor’s degree or equivalent in any of the pharmaceutical sciences with at least 5 years of experience in solid state chemistry; a master’s degree in any of the pharmaceutical sciences with at least 3 years of experience in solid state chemistry; or a Ph.D. in any of the pharmaceutical sciences with 1 year of experience in solid state chemistry. Pet. 8 (citing Ex. 1008 ¶¶ 24–28). Petitioner further states that such “[a] person could also have qualified as a [person of ordinary skill in the art] with some combination of (1) more formal education and less technical or professional experience or (2) less formal education and more technical or professional experience.” Id. Patent Owner does not dispute Petitioner’s proposed definition of a person of ordinary skill. See generally MTA, RMTA. Having considered the parties’ arguments and evidence, we adopt the level of ordinary skill in the art proposed by Petitioner, because it is consistent with the disclosures of the ’363 patent and the prior art of record. We note, however, that neither party contends that the outcome of this case would differ based on our adoption of any particular definition of a person of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In our Preliminary Guidance, we construed “for a pharmaceutical composition” to mean “in combination with pharmaceutically acceptable excipients,” based on the ’363 patent’s definition providing that “[t]he terms ‘formulation’ or ‘pharmaceutical composition’ as used herein refers to the drug in combination with pharmaceutically acceptable excipients.” Prelim. Guid. 5–6 (citing Ex. 1001, 12:26–28; Ex. 2010, 17:11–12; Ex. 2011, 26:26– 27). We also encouraged the parties to address whether “for a pharmaceutical composition,” which appears in the preamble of substitute claims 28 and 29, is limiting, as opposed to a statement of intended use or purpose. Id. at 6. Following our Preliminary Guidance, the parties submitted further arguments concerning the term “for a pharmaceutical composition.” Patent Owner argues the term requires that the claimed process provide STS that is sufficiently pure for use in a pediatric patient (see RMTA 8–11) and that the word “drug” in the ’363 patent’s definition of “pharmaceutical composition” requires that the anhydrous STS is of sufficient purity for pharmaceutical use. Reply RMTA 3. Petitioner argues that the construction set forth in our Preliminary Guidance was correct. See Sur-reply RMTA 2–3. Having considered the arguments and evidence, we do not further construe the term “for a pharmaceutical composition” in this Decision because, as discussed in our analysis of obviousness below, it is not necessary to construe the term in order to determine whether Petitioner has met its burden of demonstrating by a preponderance of the evidence that proposed substitute claims 28 and 29 are unpatentable. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 13
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“1. Reasonable Number of Substitute Claims A motion to amend must “propose a reasonable number of substitute claims.” 35 U.S.C. § 316(d)(1)(B); see 37 C.F.R. § 42.121(a)(3) (“A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.”). Patent Owner proposes the same number of substitute claims as the original challenged claims that are cancelled, i.e., a one-to-one substitution for a total of two substitute claims. MTA 2; RMTA. “There is a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one (1) substitute claim.” Lectrosonics, Paper 15 at 4; see 37 C.F.R. § 42.121(a)(3). Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner proposes a reasonable number of substitute claims. 2. Support in the Original Disclosure Patent Owner has identified written description support in the originally filed disclosure of the ’363 patent for the new limitations added for the proposed substitute claims. See RMTA 5–8. We have reviewed Patent Owner’s assertions of support in the original disclosure for the proposed revised substitute claims and determine that sufficient support exists. Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner has met this requirement. 3. Respond to a Ground of Unpatentability “A motion to amend may be denied where . . . [t]he amendment does not respond to a ground of unpatentability involved in the trial.” 37 C.F.R. § 42.121(a)(2)(i). Patent Owner asserts that the proposed revised substitute claims are patentable over the combination of references that forms the basis of the obviousness ground on which we instituted trial. RMTA 12–13. Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner has met this requirement. 4. Scope of the Claims Patent Owner asserts that the proposed revised substitute claims do not enlarge the scope of original claims 18 and 20. RMTA 5. We have reviewed Patent Owner’s assertion that the purity amendments of proposed revised substitute claims 28 and 29 narrow the claims’ scope. Id. Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner has met this requirement.” slip op. at 17
- BurdenNot shown unpatentable
“determine the evidence relied on by Petitioner does not support Petitioner’s position that a person of ordinary skill in the art would have been motivated to combine Levenson, Sherman, Edwards, and USP. Petitioner’s contention that it would have been obvious to a person of ordinary skill in the art to combine the teachings of Levenson with Sherman is based on Dr. Rogers’s testimony that “[b]oth references disclose synthesis of sodium thiosulfate pentahydrate.” Ex. 1008 ¶ 151; see Pet. 36, 38. Dr. Rogers further testified it would have been obvious to add Edwards’s dehydrating step to the preparation of STS pentahydrate “which is obtained following the teachings of Levenson and Sherman” because “Edwards itself discloses dehydrating [STS] pentahydrate.” Id. ¶ 154. The Petition included these arguments even though they were inconsistent with Petitioner’s previous statement, during the Sherman prosecution, that Levenson taught STS heptahydrate, and therefore “does not provide any teaching with respect to [STS] pentahydrate.” Ex. 2013, 97. This prior inconsistent statement undercuts Petitioner’s rationale for combining Levenson, Sherman, and Edwards in this proceeding. Moreover, Petitioner’s rationale for combining the references in this proceeding is inconsistent with its statements about Levenson during the Sherman prosecution. Recognizing this inconsistency, Petitioner now takes the position that the Petition and Dr. Rogers’s testimony were incorrect. Paper 32; see Tr. 21:14–22:7, 59:1–2 (reemphasizing that “Petitioner maintains the statements that it made in the Sherman prosecution regarding Levenson”). Petitioner attempts to rationalize the inconsistency between its statements in the Sherman prosecution (including that “Levenson does not provide any teaching with respect to [STS] pentahydrate”) and its position in this proceeding by arguing that Dr. Rogers relies on Levenson as teaching surface activation “regardless of any particular hydrates Levenson discloses.” Tr. 22:8–9. That argument is not persuasive, because Dr. Rogers’s declaration clearly states the primary reason for his opinion that it would have been obvious to a person of ordinary skill in the art to combine the teachings of Levenson with Sherman: “[b]oth references disclose synthesis of sodium thiosulfate pentahydrate.” Ex. 1008 ¶ 151. Contrary to Petitioner’s argument, Dr. Roger’s reliance on the surface activation teachings of Levenson is because he believes that both references pertain to STS pentahydrate; the surface activation teachings are not stated as an independent reason to combine the references. Id. Petitioner provides no further explanation of how a person of ordinary skill in the art would have been motivated to combine Levenson’s teachings regarding manufacture of STS heptahydrate with Sherman’s and Edwards’s teachings regarding STS pentahydrate, or how a person of ordinary skill would have regarded the difference between STS hydrates. Dr. Rogers’s acknowledgement of stability differences among STS hydrates highlights the insufficiency of Petitioner’s showing in this regard. See Ex. 2005, 35, 39. Having changed its position at the close of trial and having effectively withdrawn Dr. Rogers’s testimony as to similarities between Levenson and” slip op. at 24
Patent outcomesUS 10,792,363 not shown unpatentableClaim constructioncites KSR · GrahamPatents in suitUS 10,792,363 - The Noco Company, Inc. v. Pilot, Inc.InstitutedPTAB · Jun 15, 2023 · IPR2023-00167 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on all challenged claims and grounds after finding a reasonable likelihood that claims 1, 2, 4–7, 12–14, and 18–22 would be unpatentable over Krieger.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition and the evidence of record, we determine the Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2022). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention “would have been a person having at least a Bachelor’s Degree in a relevant engineering discipline such as electrical engineering and at least two years of relevant experience in the design and/or development of automotive electrical systems, or a Masters or more advanced degree in a relevant engineering discipline such as electrical engineering.” Pet. 5 (citing Ex. 1003 ¶ 46). In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s description of the level of ordinary skill in the art, as consistent with the ’673 patent and the asserted prior art.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“As discussed above, Petitioner’s analysis explains how Krieger teaches claim 1’s subject matter. At this stage of the proceeding, Patent Owner does not dispute or otherwise challenge Petitioner’s information and analysis. Based on the current record and for the reasons advanced by Petitioner and supported by Dr. Wood’s testimony, Petitioner establishes sufficiently for purposes of institution that Krieger teaches or suggests all of the limitations of claim 1, and thus demonstrates a reasonable likelihood of prevailing in proving claim 1 unpatentable under § 103 as obvious over Krieger.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,235,673 - Micron Technology, Inc. v. Katana Silicon Technologies LLCInstitution deniedPTAB · Jun 14, 2023 · IPR2023-00105 · APJ Minn Chung · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving any claim unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review may not be authorized unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, we conclude that the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any challenged claim of the ’013 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although the proposals for the level of skill in the art by the parties’ declarants have differences in wording, we do not find the proposals to be materially different. For purposes of this Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Thus, although we do not find the parties’ proposals for the level of skill in the art to be materially different, for purposes of this Decision, based on our review of the ’013 patent, the types of problems and solutions described in the ’013 patent, and cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“understand the claim term “a support pattern, provided on the second surface” recited in all challenged independent claims to mean a “support section that is part of a wiring pattern formed on the substrate’s second surface.” Pet. 14 (citing Ex. 1002 ¶¶ 119–121, 133–134). At this time, Patent Owner does not dispute Petitioner’s proposed construction of “a support pattern, provided on the second surface.” See generally Prelim. Resp. For purposes of this Decision, we need not construe this term because the parties do not identify any material issue that would turn on the construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“As discussed above in Section II.C, under the heading “SUMMARY OF THE INVENTION,” the ’013 patent states that “[t]he object of the present invention is to provide a wiring substrate, a semiconductor device, and a package stack semiconductor device, all with improved reliability of connection by suppressing occurrence of inadequate electrical connection.” Ex. 1001, 3:60–64 (emphases added). The ’013 patent further states that A wiring substrate of the present invention, in order to achieve the foregoing object, includes an insulating substrate, a terminal section for wire bonding or flip-chip connection and a support pattern, provided on a surface of the other side of the surface where the terminal section is provided, and on a position corresponding to the terminal section, for improving reliability of connection of wire bonding. Therefore, this structure can suppress deformation of the insulating substrate by the support pattern, even when the terminal section is pressed in wire bonding or other connection methods. As a result, reliability of connection in wire bonding or other connection methods, can be improved than conventionally. Id. at 3:65–4:11 (emphases added). In view of these disclosures in the Specification and the express recitation “for improving wire bonding connection” in the claim, we determine that the limitation reciting “support pattern . . . for improving wire bonding connection” requires the recited “support pattern” to be capable of “improving wire bonding connection.” See GPNE Corp. v. Apple Inc., 830 F.3d 1365, 1371 (Fed. Cir. 2016) (“When a patent . . . describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention.” (quoting Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007))); see also C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 864 (Fed. Cir. 2004) (“Statements that describe the invention as a whole are more likely to be found in certain sections of the specification, such as the Summary of the Invention.”).” slip op. at 43
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,731,013 - PTAB · May 15, 2023 · IPR2023-00073 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on claims 1–15 on all asserted grounds, finding a reasonable likelihood of unpatentability based on the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the information presented in the Petition, Preliminary Response, Reply, and Sur-reply, we determine that the information presented establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’879 patent, based on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although the proposals for the level of skill in the art by the parties’ declarants have differences in wording, we do not find the proposals to be materially different. For purposes of this Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Thus, although we do not find the parties’ proposals for the level of skill in the art to be materially different, for purposes of this Decision, based on our review of the ’879 patent, the types of problems and solutions described in the ’879 patent, and cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“’879 patent would understand the term “electrode section” recited in the challenged claims to mean “electrical terminals, usually called bond pads, that are part of the substrate’s wiring layer.” Pet. 16 (citing Ex. 1002 ¶¶ 103–107). At this time, Patent Owner does not dispute Petitioner’s proposed construction of “electrode section.” See generally Prelim. Resp. For purposes of this Decision, we need not construe the term “electrode section” because the parties do not identify any material issue that would turn on the construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“adhesion layer” is recited only in the challenged independent claims and in no other claims of the ’879 patent. See Ex. 1001, 13:45–16:65. And each of the independent claims recites “forming” an “adhesion layer” “on a back surface” of a “wafer.” Id. at 13:47–49, 13:54–56, 15:4–6, 15:45–47, 16:48– 50, 16:56–58. In view of this claim language, we construe the relevant claim language “forming an adhesion layer on a back surface of a wafer” as a whole, not just a single term “adhesion layer” in isolation from the rest of the claim language. See Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1311 (Fed. Cir. 2003) (“[T]he claim limitation, as a whole, [] must be considered in claim construction.”); United States v. Telectronics, Inc., 857 F.2d 778, 781 (Fed. Cir. 1988) (holding that district court’s interpretation of the term “avoid” without regard to the rest of the limitation was error); see also Lexion Med., LLC v. Northgate Techs., Inc., 641 F.3d 1352, 1356 (Fed. Cir. 2011) (“[T]he context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning of those terms.”); IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109, 1117 (Fed. Cir. 2011) (“We caution that claim language must be construed in the context of the claim in which it appears. Extracting a single word from a claim divorced from the surrounding limitations can lead construction astray.” (emphasis added)); Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) (“Proper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.”). Considering the claim language, the Oxford English Dictionary defines “form” as “[t]o construct, frame; to make, bring into existence, produce.”4 Thus, the plain meaning of the claim term to “form[] an adhesion layer on a back surface of a wafer” is “to construct or make an adhesion layer on a back surface of a wafer.” At this time, we do not perceive anything in the claim language that requires any specific method to construct an adhesion layer on a wafer surface. Thus, at least based on the claim language, we are not persuaded at this time that the challenged claims require adhering a pre-formed adhesion layer to a surface of a wafer, as Patent Owner contends. Citing the Specification of the ’879 patent, Patent Owner contends that the recited “adhesion layer” is “a pre-formed layer that is adhered” to the back surface of a wafer because the ’879 patent describes that the “[second semiconductor’s] back surface is adhered to the thermo-compression sheet 6.” Prelim. Resp. 12 (citing Ex. 1001, 6:48–52). The language cited by Patent Owner comes from the ’879 patent’s description of Figure 1, which shows “a semiconductor device in accordance with the first embodiment” of the ’879 patent. Ex. 1001, 5:34–36 (emphasis added), 6:37– 52. A particular embodiment appearing in the written description is generally not incorporated into a claim if the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (citation omitted). Further, “it is improper to read limitations from a preferred embodiment described in the specification— slip op. at 31
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,352,879 - PTAB · May 15, 2023 · IPR2023-00072 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on all challenged claims, finding a reasonable likelihood that Micron would prevail on its asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the information presented in the Petition, Preliminary Response, Reply, and Sur-reply, we determine that the information presented establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’806 patent, based on all grounds raised in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“words” and because “the numerous (8) independent claims recite two very different interconnection techniques for stacked multichip modules.” Id. Petitioner represents that The current Petition challenges independent claims 1, 2, 23, 24, and 30 in addition to dependent claims 6-7, 9-10, 12-13, 14-19, 25-26, and 32—all of which recite a wire bond interconnection technique. The first Petition (IPR 2023-00071) seeks cancellation of independent claims 3, 27, and 31 in addition to dependent claims 4-5, 8, 11, 20-22, 28, 29, and 33—all of which recite using a combination of flip-chip and wire bond interconnection techniques for stacked multichip modules. Id. at 2–3. Petitioner further states that “each claim is challenged only once.” Id. at 3. Patent Owner does not dispute Petitioner’s contentions that two petitions are necessary. See generally Prelim. Resp. On the present record, we see no reason to exercise our discretion to deny institution of either petition on the basis of Petitioner filing two petitions to address the large number of claims included in the ’806 patent. See Patent Trial and Appeal Board Consolidated Trial Practice Guide, 59–60 (Nov. 2019)2 (in determining whether multiple petitions are necessary, the Board may consider petitioner’s explanations regarding “the differences between the petitions, why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).”).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s declarant, Mr. Elenius, states that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical, mechanical or materials engineering and two to three years of experience in the design or development of semiconductor manufacturing, or the equivalent.” Ex. 2001 ¶ 32. Mr. Elenius further states that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Although the proposals for the level of skill in the art by the parties’ declarants have differences in wording, we do not find the proposals to be materially different. For purposes of this Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Thus, although we do not find the parties’ proposals for the level of skill in the art to be materially different, for purposes of this Decision, based on our review of the ’806 patent, the types of problems and solutions described in the ’806 patent, and cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner asserts that a person of ordinary skill in the art reading the ’806 patent would understand the claim term “electrode section” recited in the challenged claims to mean “electrical terminals, usually called bond pads, that are part of the substrate’s wiring layer.” Pet. 16–17 (citing Ex. 1002 ¶¶ 103–107). At this time, Patent Owner does not dispute Petitioner’s proposed construction of “electrode section.” See generally Prelim. Resp. For purposes of this Decision, we need not construe the term “electrode section” because the parties do not identify any material issue that would turn on the construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). Patent Owner contends that the term “adhesion layer” recited in the challenged independent claims should be construed to mean “a pre-formed layer that is adhered.” Prelim. Resp. 13–15. Patent Owner argues that Ball, Fogal, and Mostafazadeh do not teach “adhesion layer” under Patent Owner’s proposed construction of the term. See, e.g., id. at 16–24. Although Patent Owner’s argument raises an issue of claim construction, we need not expressly construe “adhesion layer” for purposes of this Decision because, as discussed in Section III.D.5 below, Petitioner shows sufficiently that the asserted combination of Ball, Fogal, Mostafazadeh, and the knowledge of a skilled artisan teaches or suggests “adhesion layer” even under Patent Owner’s proposed claim construction. See Vivid Techs., 200 F.3d at 803.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
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.