• Taiwan Semiconductor Manufacturing Company, Ltd. / Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1All claims unpatentable
  PTAB · Jan 17, 2018 · IPR2016-01379 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 10 and 12 are unpatentable under § 103 as obvious over Grill, Aoyama, and Wetzel.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We note the parties’ proposals differ in the specific degree required (i.e., Master of Science vs. Bachelor’s of Science); however, neither party argues this distinction makes a difference in analyzing the asserted ground or other issues in this proceeding. For clarity of the record, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art, as it is more specifically directed to the technology described in the ’696 patent. In addition, given the disclosures in the ’696 patent and cited prior art, we agree with Petitioner that a Master of Science degree (or equivalent) in the relevant area better reflects the level of education and training that an ordinarily skilled artisan would have possessed at the time than a Bachelor’s degree, as Patent Owner contends. Our findings and conclusions, however, would be the same under either party’s proposed level of ordinary skill in the art. The level of ordinary skill in the art in this case further is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “example, the first resist pattern [step g]/second resist pattern and the mask pattern [step i]/patterned fourth insulating film [step j]—“as a mask.” As shorthand, we refer to the various layers as “the designated layer.” define areas for etching.”8 Inst. Dec. 11–15. We further determined that “to meet the limitation ‘using the [designated layer] for etching,’ the designated layer ‘must actually be used to define areas for etching.’” Id. at 15 (quoting Prelim. Resp. 6 (emphasis Patent Owner’s)). Patent Owner agrees with this construction—namely, that “‘using’ something ‘as a mask’ during etching means using it to define areas for etching.” PO Resp. 8–9. Petitioner also applied this construction in this proceeding. See Tr. 6:7–18; see also id. at 19:10–16 (Petitioner’s counsel: “No, no, we did not present a construction and we did not contest the Board’s construction.”). The parties do not dispute that “using the [designated layer] as a mask” means “using the [designated layer] to define areas for etching,” and we discern no reason from the evidence presented to change this construction. We, therefore, maintain our preliminary construction for purposes of this Final Written Decision.” slip op. at 16

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “layer 358 as shown in Patent Owner’s modified Figure 16(a) from ever being a mask when etching layer 355, if it were in fact described as such. However, there is no such description in the Japanese priority application; instead, the corresponding discussion identifies only second resist pattern 359 as a mask for this etching step. See Ex. 1014 ¶ 96 (“If there is a concern that the second resist pattern 359 has been misaligned with the first resist pattern 357, then the mask pattern 358 should be dry-etched using the second resist pattern 359 as a mask before the second silicon dioxide film 355 is dry-etched using the second resist pattern 359 as a mask.” (emphasis added)). Further, as noted by Petitioner (Reply 10–11), the corresponding discussion is, at best, ambiguous as to whether mask pattern 358 is “used as a mask” for etching layer 355. Ex. 1014 ¶ 96 (“That is to say, if the mask pattern 358 is exposed to the openings of the second resist pattern 359 for the formation of contact holes because of the misalignment of the second resist pattern 359 with the first resist pattern 357, then the mask pattern 358 is dry-etched using the second resist pattern 359 as a mask. In this manner, the openings of the mask pattern 358 are expanded to include the openings for the formation of wiring grooves and contact holes.” (emphasis added)). This disclosure is not sufficient to provide support under 35 U.S.C. § 112, first paragraph, for step (i) of claim 10. See Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) (“For a claim in a later-filed application to be entitled to the filing date of an earlier application under 35 U.S.C. § 120 (1994), the earlier application must comply with the written description requirement of 35 U.S.C. § 112, ¶ 1 (1994). . . . A disclosure in a parent application that merely renders the later-claimed invention obvious is not sufficient to meet the written description requirement; the disclosure must describe the claimed invention with all its limitations.” (citing Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997))); see also K & K Jump Start, 13 F. App’x at 984 (“In order for claim 1 of the [U.S.] patent to be entitled to the priority date of the [foreign] application, the test set forth in [Tronzo, 156 F.3d at 1158] must be satisfied.”). 2. Conclusion as to Whether Grill Qualifies as Prior Art Having considered the evidence in this record, we determine that, at least, step (i) of claim 10 is not supported by the Japanese priority application.17 Accordingly, the effective filing date of the challenged claims is March 23, 1999, and Grill is available as prior art as to claims 10 and 12 of the ’696 patent under 35 U.S.C. § 102(e).” slip op. at 39

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

    “2. Conclusion as to Whether Grill Qualifies as Prior Art Having considered the evidence in this record, we determine that, at least, step (i) of claim 10 is not supported by the Japanese priority application.17 Accordingly, the effective filing date of the challenged claims is March 23, 1999, and Grill is available as prior art as to claims 10 and 12 of the ’696 patent under 35 U.S.C. § 102(e). 17 Because we find that claim 10 is not supported by the Japanese priority application, we need not discuss the parties’ arguments and evidence regarding whether or not Grill is entitled to the priority date of the Grill provisional application. Nor must we decide whether Petitioner’s corresponding arguments and evidence submitted in the Reply are proper.” slip op. at 40

  Patent outcomesUS 6,197,696 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 6,197,696
• Taiwan Semiconductor Manufacturing Company, Ltd. / Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1All claims unpatentable
  PTAB · Jan 17, 2018 · IPR2016-01377 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 10–12 are unpatentable as obvious over Grill and Aoyama because the combination teaches the claimed steps and a skilled artisan had reason and a reasonable expectation of success to combine them.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We note the parties’ proposals differ in the specific degree required (i.e., Master of Science vs. Bachelor’s of Science); however, neither party argues this distinction makes a difference in analyzing the asserted ground or other issues in this proceeding. For clarity of the record, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art, as it is more specifically directed to the technology described in the ’696 patent. In addition, given the disclosures in the ’696 patent and cited prior art, we agree with Petitioner that a Master of Science degree (or equivalent) in the relevant area better reflects the level of education and training that an ordinarily skilled artisan would have possessed at the time than a Bachelor’s degree, as Patent Owner contends. Our findings and conclusions, however, would be the same under either party’s proposed level of ordinary skill in the art. The level of ordinary skill in the art in this case further is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 15

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

    “define areas for etching.”7 Inst. Dec. 11–15. We further determined that “to meet the limitation ‘using the [designated layer] for etching,’ the designated layer ‘must actually be used to define areas for etching.’” Id. at 15 (quoting Prelim. Resp. 6 (emphasis Patent Owner’s)). Patent Owner agrees with this construction—namely, that “‘using’ something ‘as a mask’ during etching means using it to define areas for etching.” PO Resp. 8–9. Petitioner also applied this construction in this proceeding. See Tr. 6:7–18; see also id. at 19:10–16 (Petitioner’s counsel: “No, no, we did not present a construction and we did not contest the Board’s construction.”). The parties do not dispute that “using the [designated layer] as a mask” means “using the [designated layer] to define areas for etching,” and we discern no reason from the evidence presented to change this construction. We, therefore, maintain our preliminary construction for purposes of this Final Written Decision.” slip op. at 17

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

    “that “using the [designated layer] as a mask” encompasses a situation in which the modified mask pattern 358, having “edges that are in line and flush” with second resist pattern 359, is therefore used as a mask. For the reasons discussed above, we do not agree with Patent Owner that “us[ed] . . . as a mask” necessarily encompasses such a situation. See supra Section II.C.2. We note that the application of our construction would not preclude layer 358 as shown in Patent Owner’s modified Figure 16(a) from ever being a mask when etching layer 355, if it were in fact described as such. However, there is no such description in the Japanese priority application; instead, the corresponding discussion identifies only second resist pattern 359 as a mask for this etching step. See Ex. 1014 ¶ 96 (“If there is a concern that the second resist pattern 359 has been misaligned with the first resist pattern 357, then the mask pattern 358 should be dry-etched using the second resist pattern 359 as a mask before the second silicon dioxide film 355 is dry-etched using the second resist pattern 359 as a mask.” (emphasis added)). Further, as noted by Petitioner (Reply 10–11), the corresponding discussion is, at best, ambiguous as to whether mask pattern 358 is “used as a mask” for etching layer 355. Ex. 1014 ¶ 96 (“That is to say, if the mask pattern 358 is exposed to the openings of the second resist pattern 359 for the formation of contact holes because of the misalignment of the second resist pattern 359 with the first resist pattern 357, then the mask pattern 358 is dry-etched using the second resist pattern 359 as a mask. In this manner, the openings of the mask pattern 358 are expanded to include the openings for the formation of wiring grooves and contact holes.” (emphasis added)). This disclosure is not sufficient to provide support under 35 U.S.C. § 112, first paragraph, for step (i) of claim 10. See Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) (“For a claim in a later-filed application to be entitled to the filing date of an earlier application under 35 U.S.C. § 120 (1994), the earlier application must comply with the written description requirement of 35 U.S.C. § 112, ¶ 1 (1994). . . . A disclosure in a parent application that merely renders the later-claimed invention obvious is not sufficient to meet the written description requirement; the disclosure must describe the claimed invention with all its limitations.” (citing Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997))); see also K & K Jump Start, 13 F. App’x at 984 (“In order for claim 1 of the [U.S.] patent to be entitled to the priority date of the [foreign] application, the test set forth in [Tronzo, 156 F.3d at 1158] must be satisfied.”). 2. Conclusion as to Whether Grill Qualifies as Prior Art Having considered the evidence in this record, we determine that, at least, step (i) of claim 10 is not supported by the Japanese priority application.16 Accordingly, the effective filing date of the challenged claims is March 23, 1999, and Grill is available as prior art as to claims 10–12 of the ’696 patent under 35 U.S.C. § 102(e).” slip op. at 39

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

    “2. Conclusion as to Whether Grill Qualifies as Prior Art Having considered the evidence in this record, we determine that, at least, step (i) of claim 10 is not supported by the Japanese priority application.16 Accordingly, the effective filing date of the challenged claims is March 23, 1999, and Grill is available as prior art as to claims 10–12 of the ’696 patent under 35 U.S.C. § 102(e). 16 Because we find that claim 10 is not supported by the Japanese priority application, we need not discuss the parties’ arguments and evidence regarding whether or not Grill is entitled to the priority date of the Grill provisional application. Nor must we decide whether Petitioner’s corresponding arguments and evidence submitted in the Reply are proper.” slip op. at 40

  Patent outcomesUS 6,197,696 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 6,197,696
• Taiwan Semiconductor Manufacturing Company, Ltd. / Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1All claims unpatentable
  PTAB · Jan 17, 2018 · IPR2016-01376 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 13 and 15 are unpatentable under § 103 as obvious over Grill and Aoyama; the Board found a reason to combine and a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We note the parties’ proposals differ in the specific degree required (i.e., Master of Science vs. Bachelor’s of Science); however, neither party argues this distinction makes a difference in analyzing the asserted ground or other issues in this proceeding. For clarity of the record, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art, as it is more specifically directed to the technology described in the ’696 patent. In addition, given the disclosures in the ’696 patent and cited prior art, we agree with Petitioner that a Master of Science degree (or equivalent) in the relevant area better reflects the level of education and training that an ordinarily skilled artisan would have possessed at the time than a Bachelor’s degree, as Patent Owner contends. Our findings and conclusions, however, would be the same under either party’s proposed level of ordinary skill in the art. The level of ordinary skill in the art in this case further is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “1. Construction of “using the [designated layer] as a mask” In the Institution Decision, we preliminarily construed the phrase “using the [designated layer] as a mask”6 as “using the [designated layer] to 6 Claim 13 recites several steps of etching “using” various layers—for example, the first resist pattern [step f]/second resist pattern and the mask pattern [step h]/patterned third insulating film [step i]—“as a mask.” As shorthand, we refer to the various layers as “the designated layer.” define areas for etching.”7 Inst. Dec. 11–15. We further determined that “to meet the limitation ‘using the [designated layer] for etching,’ the designated layer ‘must actually be used to define areas for etching.’” Id. at 15 (quoting Prelim. Resp. 6 (emphasis Patent Owner’s)). Patent Owner agrees with this construction—namely, that “‘using’ something ‘as a mask’ during etching means using it to define areas for etching.” PO Resp. 8–9. Petitioner also applied this construction in this proceeding. See Tr. 6:7–18; see also id. at 19:10–16 (Petitioner’s counsel: “No, no, we did not present a construction and we did not contest the Board’s construction.”). The parties do not dispute that “using the [designated layer] as a mask” means “using the [designated layer] to define areas for etching,” and we discern no reason from the evidence presented to change this construction. We, therefore, maintain our preliminary construction for purposes of this Final Written Decision.” slip op. at 16

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

    “that “using the [designated layer] as a mask” encompasses a situation in which the modified mask pattern 358, having “edges that are in line and flush with” second resist pattern 359, is therefore used as a mask. For the reasons discussed above, we do not agree with Patent Owner that “us[ed] . . . as a mask” necessarily encompasses such a situation. See supra Section II.C.2. We note that the application of our construction would not preclude layer 358 as shown in Patent Owner’s modified Figure 16(a) from ever being a mask when etching layer 355, if it were in fact described as such. However, there is no such description in the Japanese priority application; instead, the corresponding discussion identifies only second resist pattern 359 as a mask for this etching step. See Ex. 1014 ¶ 96 (“If there is a concern that the second resist pattern 359 has been misaligned with the first resist pattern 357, then the mask pattern 358 should be dry-etched using the second resist pattern 359 as a mask before the second silicon dioxide film 355 is dry-etched using the second resist pattern 359 as a mask.” (emphasis added)). Further, as noted by Petitioner (Reply 10–11), the corresponding discussion is, at best, ambiguous as to whether mask pattern 358 is “used as a mask” for etching layer 355. Ex. 1014 ¶ 96 (“That is to say, if the mask pattern 358 is exposed to the openings of the second resist pattern 359 for the formation of contact holes because of the misalignment of the second resist pattern 359 with the first resist pattern 357, then the mask pattern 358 is dry-etched using the second resist pattern 359 as a mask. In this manner, the openings of the mask pattern 358 are expanded to include the openings for the formation of wiring grooves and contact holes.” (emphasis added)). This disclosure is not sufficient to provide support under 35 U.S.C. § 112, first paragraph, for step (h) of claim 13. See Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) (“For a claim in a later-filed application to be entitled to the filing date of an earlier application under 35 U.S.C. § 120 (1994), the earlier application must comply with the written description requirement of 35 U.S.C. § 112, ¶ 1 (1994). . . . A disclosure in a parent application that merely renders the later-claimed invention obvious is not sufficient to meet the written description requirement; the disclosure must describe the claimed invention with all its limitations.” (citing Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997))); see also K & K Jump Start, 13 F. App’x at 984 (“In order for claim 1 of the [U.S.] patent to be entitled to the priority date of the [foreign] application, the test set forth in [Tronzo, 156 F.3d at 1158] must be satisfied.”). 2. Conclusion as to Whether Grill Qualifies as Prior Art Having considered the evidence in this record, we determine that at least step (h) of claim 13 is not supported by the Japanese priority application.16 Accordingly, the effective filing date of the challenged claims is March 23, 1999, and Grill is available as prior art as to claims 13 and 15 of the ’696 patent under 35 U.S.C. § 102(e).” slip op. at 39

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

    “2. Conclusion as to Whether Grill Qualifies as Prior Art Having considered the evidence in this record, we determine that at least step (h) of claim 13 is not supported by the Japanese priority application.16 Accordingly, the effective filing date of the challenged claims is March 23, 1999, and Grill is available as prior art as to claims 13 and 15 of the ’696 patent under 35 U.S.C. § 102(e). 16 Because we find that claim 13 is not supported by the Japanese priority application, we need not discuss the parties’ arguments and evidence regarding whether or not Grill is entitled to the priority date of the Grill provisional application. Nor must we decide whether Petitioner’s corresponding arguments and evidence submitted in the Reply are proper.” slip op. at 40

  Patent outcomesUS 6,197,696 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 6,197,696
• Oracle America Inc. / Oracle Corporation et al. v. Intellectual Ventures I LLCSome claims unpatentable
  PTAB · Jan 8, 2018 · IPR2016-01434 · APJ Michael W Kim · IPR · Final written decision

  Claims 11–13 and 15–20 are unpatentable as obvious; claim 14 was not shown unpatentable because the cited personal notes were not “content contributed.”

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “While the parties use slightly different language, we are unable to discern any substantive differences between the proffered levels of skill and basic qualifications of a person of ordinary skill in the art. Accordingly, we adopt Dr. Papakonstantinou’s articulation of the level of ordinary skill as our own, if for no other reason then for its conciseness, with the understanding that the differences between the proffered levels of ordinary skill are limited and inconsequential in our analysis.” slip op. at 23

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for patent owner

    “above-identified single statement in the specification, which uses permissible language such as “can be” and “does not need to be,” is sufficient to justify Patent Owner’s assertions, which for all practical purposes, is a disavowal of claim scope. See Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004) (“Absent a clear disavowal in the specification or the prosecution history, the patentee is entitled to the full scope of its claim language.”) We also credit the testimony of Dr. Almeroth over that of Dr. Papakonstantinou, because, among other reasons, Dr. Almeroth supports his testimony with relevant citations to the specification, while Dr. Papakonstantinou largely repeats that which is set forth in the Patent Owner Response, without further analysis. graphical fields that allow the input of administrative information without programming” are advantageous over “cumbersome programming performed in the past.” Ex. 2002 ¶¶ 44, 47. We treat this argument as subsumed within Patent Owner’s argument that the specification disparages prior art systems that require HTML programming to perform administrative tasks.” slip op. at 16

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

    “224, 232 encompasses a “link to content.” In application, however, “what is a wireless LAN?” 224, 232 is actually two separate components: (1) the underlying technical set of computer instructions that, upon clicking the link associated with “what is a wireless LAN?” 232, transports a user to a web page associated with “what is a wireless LAN?” 232; and (2) the words “what is a wireless LAN?” 224 itself displayed on the computer display, but separate from the technical set of computer instructions set forth in (1). In this example, (1) is “link to content, but not itself ‘content,’” however, (2) is itself “content.” More precisely, when we now consider “what is a wireless LAN?” 224, 232 in relation to the aforementioned construction of “content” as “electronic data embodying information for an individual or individuals,” it becomes clear that “what is a wireless LAN?” 224, 232 is both “links to content” and “content.” Specifically, component (1) of “what is a wireless LAN?” 232 is “links to content,” but not “content” itself, because the underlying technical set of computer instructions is not “electronic data embodying information for an individual or individuals,” but for a computer. By contrast, component (2) of “what is a wireless LAN?” 224 is “content,” as it is clearly “electronic data embodying information for an individual or individuals,” in that the words “what is a wireless LAN?” are intended to convey information to an individual. So, as a practical matter, we discern that every disclosure of a “link to content” that includes “electronic data embodying information for an individual or individuals” (i.e., any information associated with a “link” that is separate from a generic indication of the “link” itself), is “content.” See also Ex. 3001, 6–16 (providing further analysis concerning construction, which we expressly incorporate herein). Accordingly, we determine that a proper construction of “content” is “electronic data embodying information for an individual or individuals,” and excluding “links to content,” but not excluding “content” associated with the “links to content.”” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “We agree with Petitioner. We are persuaded that “administrative interface” is broader than the “administrative page” mentioned in the specification, in that an “administrative interface” may encompass 9 While discussing “graphical user interface” during oral argument, Patent Owner stated that it was not disclaiming claim scope. Tr. 47:20–22 (“We’re not arguing that the claim terms have been disclaimed in some phrase.”). something other than an “administrative page.” We are also persuaded that the specification’s disclosure of a non-limiting embodiment, that of a highlyautomated and browser-based “administrative page,” does not require that a proper construction of “administrative interface” include “graphical user interface.” As admitted by Patent Owner, these pages are “example[s]” only, and, at best, merely “impl[y]” the presence of a “graphical user interface.” See PO Resp. 8–9 (citing Ex. 1002, 16:39–44; Ex. 2002 ¶ 40). We are persuaded that an “implied example” does not belong in a proper construction of a claim term. Indeed, Petitioner asserts that Patent Owner’s factual premise, concerning the above “implied example,” is flawed, as the specification’s “reference to automation and a browser provides no basis for restricting the claimed ‘administrative interface’ to a graphical user interface.” Pet. Reply 5–6 (citing Ex. 1033 ¶ 15) (Dr. Almeroth testifies that “automation of computer systems does not require a graphical user interface.”). More specifically, Dr. Almeroth identifies other automated “interfaces” in the specification, such as “a networked cash register, bar code scanner or electronic product code reader” (Ex. 1002, 13:8–15, 14:51–52) that do not require a “graphical user interface.” Ex. 1033 ¶ 14. We agree with Dr. Almeroth’s analysis of the specification. Dr. Almeroth asserts further, and we agree, again, that “[o]ne of ordinary skill would understand that that cash register could be connected to a server that is accessible only via a command line interface, and that administrators could use command-line tools . . . to group content on that server.” Ex. 1033 ¶ 14. Patent Owner cites In re Abbott Diabetes Care, Inc., 696 F.3d 1142, 1149–1150 (Fed. Cir. 2012) for its finding of an implicit definition of a” slip op. at 13

  Patent outcomesUS 7,516,177 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,516,177
• Taiwan Semiconductor Manufacturing Company Limited / Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1All claims unpatentable
  PTAB · Dec 20, 2017 · IPR2016-01264 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1–3, 5–7, and 9 are unpatentable as obvious over Zhang and Ding, and over Zhang, Ding, and Sun.

  RulingsFinal written decision

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

    “Claims 1 and 5 recite “therein,” not “throughout.” The term “therein” means “in there” (i.e., in the first film). That readily apparent meaning unmistakably was conveyed by the Institution Decision. See Inst. Dec. 5–7 (rejecting Patent Owner’s attempt to read “therein” as “throughout.”). As further conveyed by our Institution Decision, Patent Owner’s attempt to incorporate “a mixture” into the limitation is another, unsupported, mechanism that would require nitrogen throughout. See id.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “not adopted. First, Patent Owner proposes to substitute “non-crystalline” for “amorphous.” Id. at 16 (citing Ex. 2003; Ex. 2008). Although both the intrinsic and extrinsic evidence are probative that “amorphous” and “crystalline” are antonyms, the ’324 patent uses the term “amorphous” dozens of times and not once uses the term “non-crystalline.” Further, the meaning of the term “amorphous” is readily apparent in light of the specification; there is no need for extrinsic evidence. See Phillips, 415 F.3d at 1317 (Extrinsic evidence “is less significant than the intrinsic record in determining the legally operative meaning of claim language.”) (internal quotation marks omitted). This is especially so here because the asserted prior art provides an in haec verba disclosure of the “amorphous” aspect of this limitation. See Ex. 1005, 3:39–41 (Ding teaching that the tantalum nitride (TaNx) layer is “amorphous”). In fact, Patent Owner’s proposed construction would not clarify what “amorphous” means; rather, it appears to be a vehicle by which Patent Owner would add a negative limitation prohibiting any portion of the second film being crystalline. See PO Resp. 16 (“As the specification and claims of the patent clearly distinguish between crystalline and amorphous materials and their different characteristics in a barrier film, a second film consisting essentially of amorphous metal nitride requires amorphous metal nitride throughout, and not merely a portion or portions of the film.”). Such a negative limitation is not part of the claim. Second, Patent Owner proposes to substitute “compound containing nitrogen” for “nitride.” Id. (citing Ex. 2004; Ex. 2009; Ex. 2011 ¶¶71–74). Although Patent Owner persuades us that a nitride is a compound containing nitrogen, there is no need to explicitly construe the limitation. The plain and ordinary meaning of “nitride” in light of the specification is readily apparent, and there can be no reasonable dispute in this inter partes review as to whether the “nitride” aspect of this limitation is taught by the asserted prior art. See, e.g., Ex. 1005, 6:64 (disclosing a “TaNx/Ta barrier layer structure”), 3:27 (designating “TaNx” as meaning “tantalum nitride”). Further, if we were to substitute the words “compound containing nitrogen” for “nitride,” we would introduce yet another transitional phrase— “containing”—into the claim. Doing so would obfuscate what the prior transitional phrase (i.e., “composed of,” which, at Patent Owner’s urging, we have construed to mean “consisting essentially of”) modifies.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the art. Petitioner argues that a person of ordinary skill in the art would have had “an equivalent of a Master of Science degree from an accredited institution in electrical engineering, materials science, or physics, or the equivalent, a working knowledge of semiconductor processing technologies for integrated circuits, and at least two years of experience in semiconductor processing analysis, design, and development.” Pet. 11 (citing Ex. 1003 ¶64). Patent Owner argues that such an individual would have had “at least a Bachelor’s degree in Electrical, Materials, Mechanical, or Chemical Engineering, or a related degree, and at least two years of experience working in semiconductor processing and fabrication, semiconductor equipment manufacturing, or semiconductor materials.” PO Resp. 18–19 (citing Ex. 2011 ¶24). Neither party explains in detail why its proposed level of ordinary skill in the art should be adopted nor how the different levels affect the parties’ analyses. Based on the evidence of record, including the testimony of the parties’ declarants, the subject matter at issue, and the prior art of record, we adopt Petitioner’s definition. 2. Disclosure of Zhang Zhang discloses a semiconductor device that includes a two-layered” slip op. at 16

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

    “To meet the limitations specifying that the first film is crystalline and the second film is amorphous, Petitioner cites Ding’s explicit teaching of a two-layered barrier film with a bottom layer being amorphous tantalum nitride and a top layer being crystalline tantalum. See, e.g., Pet. 24–25 (citing Ex. 1005, 3:39–41, 8:1–4). Petitioner argues that a combination of teachings from Zhang and Ding renders the claims obvious. See, e.g., Pet. 24–26, 30–34. In particular, Petitioner argues, with supporting testimony from Dr. Banerjee, that it would have been obvious to a person of ordinary skill in the art “to use crystalline and amorphous top and bottom films for the films 32 and 22 in Zhang’s barrier structure, in view of Ding, to achieve” certain advantages noted in the prior art. Id. at 25–26 (citing Ex. 1003 ¶¶92–96). For example, Petitioner notes that Ding “discloses the desirability of using an amorphous TaNx layer as the bottom layer, so the TaNx is ‘sufficiently amorphous to prevent the diffusion of copper into underlying silicon or silicon oxide surfaces.’” Id. at 24 (quoting Ex. 1005, 3:39–41 (Petitioner’s emphasis)). Similarly, Petitioner notes that Ding “also discloses the desirability of using a crystalline metal film ‘having a tantalum <002> crystalline orientation’ as a top film in the two-layer diffusion barrier because the crystalline orientation ‘enables easy wetting of the tantalum surface by the copper and 13 Petitioner’s claim 5 arguments largely—and, in all relevant aspects, exclusively—rely on its claim 1 arguments. See Pet. 44–46. Hereafter, we cite to only its claim 1 arguments. depositing of a copper layer having a high <111> crystal orientation.’” Id. at 25 (quoting Ex. 1005, 8:1–4). Petitioner further argues that such a combination of teachings would have been obvious because it would have achieved these predictable results (i.e., an amorphous layer to prevent copper diffusion and a crystalline layer to promote copper adhesion) through known techniques. Id. at 32–34. Specifically, Petitioner notes that Zhang and Ding teach similar sputter-deposition processes for forming the top and bottom films. Id. at 32–33 (citing Ex. 1004, 3:21–50; Ex. 1005, 6:63–7:29; Ex. 1003 ¶98); see also PO Resp. 46 (Patent Owner acknowledging that “Zhang and Ding disclose similar sputtering processes.”).” slip op. at 23

  Patent outcomesUS 6,538,324 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 6,538,324
• Taiwan Semiconductor Manufacturing Company Limited / Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1All claims unpatentable
  PTAB · Dec 20, 2017 · IPR2016-01249 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1–3, 5–7, and 9 and proposed claims 11–12 are unpatentable as obvious over Ding and Zhang; proposed claim 13 is patentable and allowed by amendment.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “essentially of” for “being composed of.” PO Resp. 11 (citing AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 1245 (Fed. Cir. 2001)). In AFG, the Court noted that, “[i]n 1942, the Court of Customs and Patent Appeals [had] stated that ‘“composed of” should be regarded as synonymous with “consisting of.”’” AFG, 239 F.3d at 1245 (quoting In re Bertsch, 132 F.2d 1014, 1019 (CCPA 1942)). However, as further explained in AFG, the Court of Customs and Patent Appeals had “qualified this statement . . . by remarking that ‘the words “composed of” may under certain circumstances be given, in patent law, a broader meaning than “consisting of.”’” Id. (quoting In re Bertsch, 132 F.2d at 1020). The Court in AFG ultimately construed “composed of” to mean “consisting essentially of.” Id. (“[W]e do agree based on the specification and other evidence before us that the term ‘composed of’ in this case is not completely closed. Rather, we think that ‘composed of’ in this case should be interpreted in the same manner as ‘consisting essentially of.’”). Thus, “composed of” means either “consisting of” or “consisting essentially of.” Id. The term “consisting of” prohibits any 4 <111> and <002> are indices that pertain to an orientation or direction of crystals. Ex. 1003 ¶51. unspecified components. Id. (citing PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998)). The term “consisting essentially of” prohibits only unspecified components that materially affect the basic and novel characteristic(s) of a claimed invention. Id. (citing Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1574 (Fed. Cir. 1984)). By arguing that “being composed of” means “consisting essentially of” as opposed to “consisting of,” Patent Owner argues for broader claim scope. For purposes of this Decision, we construe “being composed of” to mean “consisting essentially of,” as Patent Owner argues.5 In conclusion, we construe “first film being composed of crystalline metal containing nitrogen therein,” as recited in independent claims 1 and 5, to mean “first film consisting essentially of crystalline metal containing nitrogen therein.”6” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. Level of Ordinary Skill in the Art The parties propose similar definitions of the level of ordinary skill in the art. Petitioner argues that a person of ordinary skill in the art would have had “an equivalent of a Master of Science degree from an accredited institution in electrical engineering, materials science, or physics, or the equivalent, a working knowledge of semiconductor processing technologies for integrated circuits, and at least two years of experience in semiconductor processing analysis, design, and development.” Pet. 10–11 (citing Ex. 1003 ¶64). Patent Owner argues that such an individual would have had “at least a Bachelor’s degree in Electrical, Materials, Mechanical, or Chemical Engineering, or a related degree, and at least two years of experience working in semiconductor processing and fabrication, semiconductor equipment manufacturing, or semiconductor materials.” PO Resp. 18 (citing Ex. 2011 ¶24). Neither party explains in detail why its proposed level of ordinary skill in the art should be adopted nor how the different levels affect the parties’ analyses. Based on the evidence of record, including the testimony of the parties’ declarants, the subject matter at issue, and the prior art of record, we adopt Petitioner’s definition.” slip op. at 16

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

    “As to Petitioner’s predictable-results assertion, Petitioner persuasively argues that a person of ordinary skill in the art would have added nitrogen to the crystalline tantalum layer of Ding for three independent reasons. First, Petitioner argues that the presence of nitrogen in Ding’s crystalline tantalum layer would make it more easily removable by chemical mechanical polishing (“CMP”), which removal by polishing both Zhang and Ding teach to do. Pet. 24–26 (citing Ex. 1003 ¶¶140, 142, 143; Ex. 1004, 1:30–34, 4:34–37; Ex. 1005, 7:56–65; Ex. 1019, 12–13; Ex. 1021, 354–63). Second, Petitioner argues that the presence of nitrogen in Ding’s crystalline tantalum layer would inhibit, to some additional extent, copper diffusion. Id. at 26–29 (citing Ex. 1003 ¶¶144–146; Ex. 1023, 8). Third, Petitioner argues that adding a small amount of nitrogen to Ding’s crystalline tantalum layer would reduce its resistivity, which was known to help reduce a device’s power consumption and RC delays. Id. at 29–30 (citing Ex. 1003 ¶147; Ex. 1015, 81 (Table 1)). Patent Owner counters that none of these purportedly predictable results are realistic. PO Resp. 46–52. With respect to the first reason offered by Petitioner (to make the first film more susceptible to CMP), Patent Owner argues that: (A) adding only “[a] small amount of nitrogen” to Ding’s crystalline tantalum layer would not change its CMP characteristics; and (B) “[a]dding significant amounts of nitrogen” would result in Ding’s previously crystalline layer becoming amorphous. Id. at 48. Patent Owner does not disclose what it considers “small” and “significant” amounts of nitrogen. Id. As a result, we cannot apply Patent Owner’s argument (even if it were persuasive) to the facts before us. Also, Patent Owner’s argument is based exclusively on declaration testimony that does not cite to any underlying evidence, let alone documentary evidence. See id. at 47–49 (citing Ex. 2011 ¶¶190–98). In contrast, Petitioner’s argument is supported by declaration testimony, which, in turn, is based on underlying evidence, including documentary evidence. See Pet. 24–26 (citing Ex. 1003 ¶¶140, 142, 143; Ex. 1004, 1:30–34, 4:34– 37; Ex. 1005, 7:56–65; Ex. 1019, 12–13; Ex. 1021, 354–63); see also Ex. 1003 ¶139. With respect to the second reason offered by Petitioner (to inhibit, to some additional extent, copper diffusion), Patent Owner argues that, in Petitioner’s asserted combination, “there would be no nitrogen to provide any copper diffusion benefit.” PO Resp. 49. Patent Owner’s argument is premised on Zhang teaching exclusively an upper surface of pure tantalum. Id. But, Zhang explicitly teaches that the upper surface may have a nitrogen content of, for example, 1%, 2%, 3%, or 4%. See Ex. 1004, 3:59–62 (“At the upper surface, the atomic percent tantalum may be at least 95% and the atomic percent nitrogen may be less than 5% if copper adhesion is particularly problematic.”). With respect to the third reason offered by Petitioner (to reduce resistivity), Patent Owner argues that adding nitrogen would actually increase resistivity. As pointed out by Petitioner, however, Patent Owner’s declarant, Harlan R. Harris, Ph.D., conceded that adding nitrogen does lower resistivity. Reply 17–18 (quoting Ex. 1036, 125:3–20). Dr. Harris testified as follows: Q. When the nitrogen flow ratio is zero in the ’324 patent, and the power is kept constant, wouldn’t that result in a film that could be pure tantalum? A. All three of those data points are at the exact same position on the graph. The N2 concentration, which is the numerator of the ratio, is set at zero. And in this particular position, the nitrogen concentration would be assumed to be zero in the film. Q. So is it within the scope of what’s taught in the ’324 patent to have a film that would have no nitrogen at all? A. It’s also apparent to anyone who is examining this of skill in the art that you can decrease from that number, which is favorable in terms of the value of resistivity by adding flow rate in the data points for all of the positions greater than zero. So you decrease resistivity by the addition of any amount of nitrogen, therefore, a person skilled in the art would not be motivated to not have nitrogen, based on this data. Q. You’re referring to the decrease in resistivity as nitrogen is added? A. Yes. Q. Which is desirable? A. You want the resistivity to go down. Ex. 1036, 124:15–125:20. We are satisfied by each of Petitioner’s proffered reasons for why a person of ordinary skill in the art would have added nitrogen to Ding’s crystalline tantalum layer, as taught by Zhang. Petitioner has shown, by a preponderance of the evidence, that claims 1 and 5 would have been obvious over Ding and Zhang.” slip op. at 24

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “obvious over Ding in view of Zhang. Patent Owner’s proposed claims 11 and 12 are unpatentable because they introduce limitations—nitrogen throughout the first film (claim 11) and nitrogen at the upper surface of the first film (claim 12)—that are met by the very references asserted in the ground of unpatentability involved in this inter partes review. Patent Owner’s Motion to substitute claims 11 and 12 is premised, incorrectly, on Zhang requiring pure tantalum (and, thus, no nitrogen) at the upper surface of its tantalum-rich tantalum nitride film. In fact, Zhang does not require any portion of the tantalum-rich tantalum nitride film to be pure tantalum. Ex. 1004, 3:53–54 (“The tantalum-rich tantalum nitride film has a range of approximately 0-30 atomic percent nitrogen.”). And, Zhang explicitly teaches that the upper surface may include nitrogen. Id. at 3:57– 62 (“A lower atomic percent nitrogen at the upper surface typically gives better adhesion to copper films. At the upper surface, the atomic percent tantalum may be at least 95% and the atomic percent nitrogen may be less than 5% if copper adhesion is particularly problematic.”); Ex. 1036, 40:1–6, 42:2–9, 42:15–21, 54:14–20 (Dr. Harris acknowledging that the upper surface of the film would contain some nitrogen). Accordingly, a preponderance of the evidence establishes that Patent Owner’s proposed claims 11 and 12 are not patentable over the art of record in this inter partes review. Put another way, and as Petitioner argues, claims 11 and 12 (like challenged claim 5) are unpatentable as they claim subject matter that would have been obvious over Ding in view of Zhang. See 35 U.S.C. § 103(a); Amend Opp. 6–7 (“The instituted obviousness ground[] based on Zhang and Ding already include[s] the newly-added limitations Patent Owner seeks to add in its Substitute Claims 11–13. Thus, the Substitute Claims 11–13 remain unpatentable over each of the instituted grounds.”).14 Patent Owner’s Motion to Amend is denied with respect to claims 11 and 12.” slip op. at 33

  Patent outcomesUS 6,538,324 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · Graham
  Patents in suitUS 6,538,324
• Adidas AG v. Nike, Inc.No claims unpatentable
  PTAB · Oct 19, 2017 · IPR2016-00922 · APJ James B Arpin · IPR · Final written decision

  Petitioner failed to prove claims 1–9, 11–19, and 21 unpatentable as obvious over Reed and Nishida because it did not adequately explain why a skilled artisan would combine their teachings.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “appropriate factors identified by our reviewing court and utilized by other panels to assess the level of ordinary skill in the art. Id. at 17–18. We agree with Petitioner that it is not necessary to consider every factor or to weigh the factors equally in order to assess the level of ordinary skill in the art. Reply 2 (quoting In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). Here, we may rely on Petitioner’s declarant’s testimony (Ex. 1003 ¶ 34) and the teachings of the prior art to evaluate Petitioner’s assessment of the level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In particular, Reed and Nishida identify the types of problems encountered in the art prior art solutions to these problems, and the sophistication of the technology. E.g., Ex. 1006, 1:13–55; Ex. 1009, 1:10– 36; see, e.g., Ex. 1007, 1:8–32, 2:12–64; Ex. 1008, 1:11–54; Ex. 1010, 145– 160; see also Ex. 1010, Preface (“The aim of this book is to combine in a single volume the fundamental principles of weft and warp knitting in such a manner that its contents are useful to readers in education, industry or commerce. It thus [fulfills] the long felt need for a comprehensive up-to-date textbook explaining this important sector of textile technology.”).” slip op. at 10

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

    “unitary construction” means “a textile element having a unitary construction and having a first area and a second area.” Pet. 6. As Petitioner notes, this is the construction that this panel gave to the same term appearing in the substitute claims of the ’011 patent. adidas AG v. Nike, Inc., Case IPR2013- 00067, slip op. at 16–17 (PTAB Apr. 28, 2014) (Paper 60). We further note that the ’749 patent’s Specification provides that “[a]s defined for purposes of the present invention, unitary construction is intended to express a configuration wherein portions of a textile element are not joined together by seams or other connections, as depicted with textile element 40 in FIG. 8.” Ex. 1001, 6:42–46 (emphasis added); see IPR2013-00067, Ex. 1002, 6:41–46 (identical disclosure). The ’011 patent and the ’749 patent share the same Specification (apart from their claims), neither party contested our construction of this term in the appeal of our decision in the inter partes review of the claims of the ’011 patent, and Patent Owner does not contest Petitioner’s proposed construction of this term in this proceeding. Therefore, in view of the express definition of the phrase “unitary construction” in the Specification of the ’749 patent, we adopt Petitioner’s proposed construction as the broadest reasonable interpretation for this term. See Tr. 20:5–13, 37:11–17.” slip op. at 12

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

    “2. “wide-tube circular knitting machine” (Claims 9 and 19) We determine that the broadest reasonable interpretation of the term “wide-tube circular knitting machine” is “a circular knitting machine forming body garment sized, tubular textile structures, including those having a diameter that ranges from 10 inches to 20 inches.” See Inst. Dec. 9–11. Neither party contests this construction. See Tr. 20:5–13, 37:11–17.” slip op. at 13

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “8 Patent Owner contends that Reed is not analogous art. PO Resp. 34–36. In particular, Patent Owner contends that Reed is not from the same field of endeavor as the challenged claims and that Reed’s teachings are not reasonably pertinent to the particular problem with which the recited methods are involved. Id. at 34–35. Because Reed is directed to the manufacture of all types of garments, including footwear (Reply 12–13; see Ex. 1006, 1:33–44), and Reed is related directly to preparation of garments layouts from a knitted textile structure (Reply 14–15; see Ex. 1006, 2:29– 35), we are persuaded that Reed is analogous art to the challenged claims.” slip op. at 18

  Patent outcomesUS 8,266,749 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,266,749
• Incyte Corporation v. Concert Pharmaceuticals, Inc.Institution denied
  PTAB · Oct 19, 2017 · IPR2017-01256 · APJ Tina E Hulse · IPR · Institution

  The Board denied institution on claims 1–15 because Petitioner did not show a reasonable likelihood of proving anticipation by Rodgers or obviousness over either asserted combination.

  RulingsInstitution decision

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

    “We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.4(a) (stating Director has delegated institution authority to Board). Upon considering the Petition and Preliminary Response, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–15 of the ’149 patent. Accordingly, we decline to institute an inter partes review of those claims.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “15, 2012, would have had a “master’s degree or a Ph.D. in chemistry, biochemistry, pharmaceutics, pharmaceutical sciences, physical organic chemistry or a related discipline,” or a lesser degree with more experience.” slip op. at 6

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

    “unexpired patent according to the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (affirming applicability of broadest reasonable construction standard to inter partes review proceedings). Under that standard, and absent any special definitions, we generally give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We determine that it is unnecessary to expressly construe any claim terms for purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7

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

    “2. Analysis Anticipation requires that “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Anticipation may arise where a reference describes a “definite and limited class,” and a person of ordinary skill in the art would “at once envisage each member of this limited class.” In re Petering, 301 F.2d 676, 681 (CCPA 1962).” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,249,149
• Google Inc. v. Performance Pricing Holdings, LLCAll claims unpatentable
  PTAB · Sep 13, 2017 · CBM2016-00050 · APJ Kevin W Cherry · CBM · Final written decision

  Claims 1–14 are unpatentable under §§ 101 and 112(a) because they claim an abstract advertising-pricing idea implemented with conventional technology and lack written-description support.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Factors that may be considered in determining level of ordinary skill in the art include: (1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (quoting Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983)). Considering these factors, we agree with Petitioner that a degree in computer science is not required for a person of ordinary skill in the art. See Reply 4. First, as Patent Owner admitted at the hearing, the named inventor, Mr. Rosenberg, does not have a computer science degree. Tr. 87:8–22. Second, as Patent Owner’s Response makes clear, the problems encountered in the field of the ’059 patent are problems of maintaining advertising customers, when viewer response to an ad can be tracked and there is an almost limitless inventory. PO Resp. 5–7. These are economic and business problems caused by the particular market conditions present in the Internet advertising market—large inventory and a high level of knowledge of behavior in the market. See Ex. 1003 ¶ 36. We are persuaded that a computer science degree would not provide a person with further useful insight into such economic and business problems. See Ex. 1003 ¶¶ 36–40. Indeed, this understanding is confirmed by the ’059 patent, which describes the business problems Internet advertising had on sellers of advertising. See, e.g., Ex. 1002, 1:55–59 (“As systems of accountability are developed and the amount of advertising inventory increases, vendors or publishers in all media will be faced with the problems of attracting advertisers while, at the same time, covering overhead costs.”); 1:60–63 (noting “[o]ne problem associated with current methods of selling Internet advertising is the difficulty of striking a fair and reasonable balance between fixed-fee pricing and performance-based pricing”); 1:63–3:24 (describing characteristics of the Internet advertising market); 3:27–31 (“[T]he present invention include methods and systems for selling advertising, which incorporates a unique pricing model wherein advertising Buyers earn bonus exposure to the advertising message based on the reflected interest by the Viewers in that advertising message.”). Third, the discussion of computer components in the ’059 patent is only at a very high level. See, e.g., id. at 8:33–9:9 (discussing the components of the claimed system as only “computers,” “servers,” “databases,” “network protocol (such as Hypertext Transfer Protocol or HTTP)”). This indicates that the focus is not on the computer technology, but the pricing strategy. Fourth, the prior art solutions discussed in the ’059 patent are all in terms of different pricing models—“fixed fee” or “performance based”—not in terms of technical solutions. See id. at 1:55– 3:24. Finally, Patent Owner submits a job announcement by Petitioner for hiring a “Technical Program Manager, Ads Quality, AdWords,” as evidence of the level of skill of workers in this field. PO Resp. 29 (citing Ex. 2006 (Google Technical Program Manager, Ads Quality, AdWords Job Announcement)). However, no evidence or explanation is provided why this announcement should be given particular weight for defining the educational level of active workers in the field of the ’059 patent, beyond the fact that they both nominally involve Internet advertising. See PO Resp. 29. Moreover, no evidence or explanation is provided why a job announcement from 2016 would relate to the level of skill in the art at the time of the invention, i.e., at the latest, 2001, the effective filing date of the ’059 patent. See id. Thus, we give Ex. 2006 little weight. Accordingly, considering this evidence together, we agree with Petitioner that a “person of ordinary skill in the art would have, through education or practical experience, the equivalent of a bachelor’s degree in business, economics, or a similar discipline and/or two years of experience with media buying or selling, including Internet advertising or e-commerce systems.” Pet. 17. slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “lacks a computer science degree, he is not a person of ordinary skill and we should give his testimony no weight. PO Resp. 29. As set forth above, we are unpersuaded that Patent Owner’s definition of a person of ordinary skill above is correct. Accordingly, this argument is unpersuasive. Dr. Farris is a tenured professor of business and during his career, Dr. Farris has written a number of articles and books on advertising, including Internet advertising. Ex. 1003 ¶¶ 5–19, Appendix B. He has also taught a number of courses in Internet advertising, and has done extensive consulting on Internet advertising. Id. Thus, contrary to Patent Owner’s contentions, we are persuaded that Dr. Farris’s experience is more than sufficient for him to provide competent testimony on the subject matter of the ’059 patent. Accordingly, we decline to give his testimony no weight.” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “We construe the challenged claims according to these principles. In our Decision to Institute, we determined that no terms required express construction. In its Patent Owner Response, Patent Owner contends that we should construe the term “impression,” recited in claim 1, as “presentation of an Internet advertising message.” PO Resp. 29–31. In the Reply, Petitioner indicates that it agrees with Patent Owner’s proposed interpretation and points to the testimony of Petitioner’s declarant Dr. Farris and Patent Owner’s declarant Mr. Zatkovich for support. Reply 5–6 (citing Ex. 1003 ¶ 27, Ex. 1017, 44:19–45:19, 142:15–143:12). This is also the construction we adopted in our Decision to Institute in the related proceeding, CBM2016- 00049. See Google Inc. v. Performance Price Holdings, LLC, Case CBM2016-00049, slip op. 5–6 (PTAB Sept. 21, 2016) (Paper 10). Given that this construction is consistent with the specification, we adopt Patent Owner’s construction of “impression” as “presentation of an Internet advertising message.” See Ex. 1002, 2:36–44, 5:12–16.” slip op. at 15

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “We agree with Petitioner that these claims are drawn to an abstract idea. Specifically, we agree with Petitioner that the claims of the challenged patent are directed to decreasing the cost of an advertisement based on the performance of the ad, and that such a concept is an abstract idea. Pet. 19. More succinctly, we are persuaded that the claims are directed to a performance-based pricing model for advertising, and that such a pricing model is an abstract idea. The clear language of the claims and unambiguous disclosure of the specification to the contrary belie Patent Owner’s arguments. For example, beginning with independent claims 1 and 6, the only equipment that those claims identify are a “processor” and “at least one storage device in communication with the at least one processor.” Ex. 1002, 12:24–25, 12:56–57. The remainder of the claim is simply a method embodied in instructions stored on the storage device. As discussed above, these claimed method steps include having the processor (i) “ascertain[ ] . . . a predetermined cost to an entity per impression of an advertising message,” (ii) “present[ ] . . . the advertising message for display on a website such that the advertising message is viewable via one or more viewer computers,” (iii) “detect[ ] . . . a quantity of actions performed by users of the one or more viewer computers,” and (iv) “decrease[e] the cost per impression of the advertising message to the entity below the predetermined cost” as the “quantity of detected actions increases.” Id. at 12:30–43. Thus, the focus of the claims is on collecting and analyzing data for the pricing method, not the hardware on which it is performed or the software that implicitly causes it to happen. The specification reinforces the abstract nature of the claimed invention. The “Summary of the Invention,” explains that “[e]mbodiments of the present invention include methods and system for selling advertising, which incorporates a unique pricing model wherein advertising Buyers earn bonus exposure to the advertising message based on the reflected interest by the Viewers in that advertising message.” Id. at 3:27–33. Indeed, the specification describes the advantages of the claimed invention include helping sellers secure fixed-fee pricing while offering a performance-based incentive to buyers, and attracting potential buyers, while maintaining customer loyalty, encouraging effective creative advertising design and placement, and assisting sellers in managing unsold inventory. Id. at 3:34– 39. These advantages all concern abstract concepts, and not technology.” slip op. at 19

  Patent outcomesUS 8,799,059 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Electric Power
  Patents in suitUS 8,799,059
• Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1Institution denied
  PTAB · Sep 11, 2017 · IPR2017-00935 · APJ Justin T Arbes · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted ground.

  RulingsInstitution decision

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

    “requesting inter partes review of claims 1, 4, 8–11, 13, 17–24, 26–28, 43, 46, 49, 50, and 52–62 of U.S. Patent No. 8,354,726 B2 (Ex. 1001, “the ’726 patent”) pursuant to 35 U.S.C. § 311(a). Patent Owner Godo Kaisha IP Bridge 1 filed a Preliminary Response (Paper 8, “Prelim. Resp.”) pursuant to 35 U.S.C. § 313. Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary 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.” For the reasons that follow, we have decided not to institute an inter partes review.” slip op. at 2

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

    “limitation of claim 1. Petitioner does not point to any express disclosure in the Intel 90 nm Report of the relevant distance and thicknesses, instead relying on averages of various measurements made by Dr. Fair. See Pet. 39–40; Ex. 1003 ¶¶ 93–99. Petitioner and Dr. Fair, however, do not explain any basis for why it is appropriate to rely on averages of measurements of different components at different locations—as opposed to actual measurements of each component asserted to be the “first gate electrode,” “auxiliary pattern,” “first side-wall insulating film,” “second side-wall insulating film,” and “stress-containing insulating film” recited in the claim—for purposes of calculating the distance limitation. For example, Petitioner does not contend that a person of ordinary skill in the art would have calculated averages and understood the reference to disclose certain values based on such a methodology. “Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference,” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255–56 (Fed. Cir. 1989), and that the claim limitations be “arranged or combined in the same way as recited in the claim[],” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Petitioner’s reliance on averages of various measurements, without any supporting explanation, is insufficient to show that the Intel 90 nm Report discloses the distance limitation of claim 1.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “D. Other Asserted Grounds (Claims 20, 22, 54, and 56) Petitioner contends that claims 20 and 54 are unpatentable over the Intel 90 nm Report and the Intel IEEE Paper, claims 22 and 56 are unpatentable over the Intel 90 nm Report and Doris, and claims 22 and 56 are unpatentable over the Intel 65 nm Report and Doris, under 35 U.S.C. § 103(a). Pet. 77–83. Claims 20 and 22 depend from claim 1, and claims 54 and 56 depend from claim 43. Petitioner does not argue that the distance limitation of claims 1 and 43 is taught by the Intel IEEE Paper or Doris, alone or in combination with the Intel reports. Id. We are not persuaded that Petitioner has established a reasonable likelihood of prevailing on its asserted grounds for the reasons explained above with respect to parent claims 1 and 43. See supra Sections II.B, II.C.” slip op. at 18

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

    “E. Claim Interpretation The Board interprets claims using the “broadest reasonable construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard as the claim interpretation standard to be applied in inter partes reviews). The parties do not provide proposed interpretations for any claim terms, but Petitioner refers to a district court decision interpreting certain terms. See Pet. 11 (citing Ex. 1008). For purposes of this Decision, we conclude that no claim terms require interpretation.” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,354,726

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.