• Apple Inc. v. Smith Interface Technologies, LLCNo claims unpatentable
  PTAB · Feb 24, 2026 · IPR2024-01256 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–6, 10–14, 16, and 17 were not shown unpatentable because Ahn and Chaudhri did not teach or suggest the claimed movement of an object during the gesture.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “interface objects and, more specifically, the display of user interfaces on applications, in accordance with contacts on the touch-sensitive surface of a display. Ex. 1001, (54), Abstr. Consistent with the scope of the ’727 patent, we find that the level of skill in the art is reflected in a person having a bachelor’s degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces, human-computer interfaces, or equivalents.” slip op. at 6

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

    “Because there is no dispute as to the scope and meaning of these terms, and for consistency with the Decision on Institution, we apply the meaning of the terms “blur” and “distance magnitude” as stated above where applicable. However, we note that our determination does not hinge on the meaning of these terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

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

    “it was “known to utilize ‘cues’ to help the user know what gesture to utilize and whether they are correctly performing the gesture (e.g., graphics such as movable images that help the user visualize the correct gesture and how to complete it successfully).” Pet. 40 (citing Ex. 1005, Abstract, ¶¶ 54, 62, 73). This sentence does not cure the deficiency noted above regarding Petitioner’s reliance on Ahn’s graphic shadow moving with a gesture. Chaudhri is relied on for the proposition that, Ahn’s graphic shadow is “[i]ndeed” a movable image known to give a user a visual cue. Id. But no such “cue” is provided in Ahn by the graphical shadow alone, because there is no movement of that object. The Petition does not present argument that a Chaudhri object is the movable object or how any of Chaudhri’s teachings of movable objects would have suggested to modify Ahn “to thereby move” the graphical shadow.” slip op. at 18

  • Strike new argumentNew argument disregardedDecided for patent owner

    “the theory that Ahn’s graphic shadow moves. Reply 3−4. Petitioner interprets the sentences in Ahn we have analyzed above in conjunction with testimony of Dr. Terveen to argue that temporal descriptions in Ahn make it obvious for a person of ordinary skill in the art to drag in the right direction while continuing to press the graphic 1800. Id. (citing Exs. 1004 ¶¶ 117−119, Ex. 1023 ¶ 10). The Petition, however, relies on an Ahn disclosing a moving graphic shadow according to the embodiment of Figure 18(a), as described in paragraph 118. Petitioner now changes its theory of how Ahn’s graphic shadow would move according to paragraph 119, i.e., that although the graphic shadow is merely pressed (in the embodiment shown in Figure 18(b)) it would also be dragged while pressed. Reply 3. Not only is this a shift from the theory Petitioner presents in the Petition, it is not persuasive. As Patent Owner argues, and we agree, there is no cogent explanation for modifying the graphic shadow embodiment of Figure 18(b), especially in light of Ahn’s disclosure that the graphic shadow disappears when pressed and the menu list is displayed as emerging. Sur-reply 2−3. In other words, Petitioner’s new argument does not account for Ahn’s teaching that the objective of the graphic shadow is merely to notify the user of the start of the gesture, and once that start of the gesture is detected (the press on the graphic shadow), paragraph 119 informs us that there is no longer a need for the graphic shadow—it disappears from the display. Ex. 1004 ¶ 119. The Petition does not offer any argument for a theory in which the gesture of paragraph 119 (the press, not a touch and drag operation) results in graphic 1800 disappearing, while also moving during the disappearance. We are mindful that “[i]t is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one skilled in the art.” Bausch & Lomb, Inc. v. Barnes-Hind / Hydrocurve, Inc., 796 F.2d 443, 448 (Fed. Cir. 1986)). Consequently, we determine that Petitioner’s argument in Reply belatedly relying on the different embodiment of paragraph 119 is improper new argument, and that even if considered it is not persuasive.” slip op. at 20

  Patent outcomesUS 11,740,727 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,740,727
• Apple Inc. v. Smith Interface Technologies, LLCNo claims unpatentable
  PTAB · Feb 10, 2026 · IPR2024-01116 · APJ Sharon Fenick · IPR · Final written decision

  Petitioner did not prove claims 1, 2, 27, 37, 58, 60–64, 67–79, 186, 187, 189, 191, 192, 197, 199–204, 208–216, 223, 225, or 230 unpatentable because the asserted combinations did not establish the claimed blurring …

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “(Ex. 1003), that a person of ordinary skill in the art (“POSITA”) would have had “a Bachelor of Science degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a comparable field and at least two years of professional experience in the design and development of graphical user interfaces (GUIs), human-computer interfaces, or equivalents thereof,” and that “[a]dditional years of experience could substitute for an advanced-level degree (and vice-versa).” Pet. 6 (citing Ex. 1003 ¶¶ 29–30).” slip op. at 9

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

    “C. Claim Construction In these proceedings, there is no controversy that would require us to decide any claim construction issue. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D. Obviousness of Claims 2, 27, 37, 58, 60–64, 67–79, 186, 187, 189, 191,” slip op. at 10

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

    “obviousness of the menus in the Ahn-Chaudhri combination following a user’s finger as the user performs the dragging gesture to open the menu.” Pet. Reply 2 (citing 01119-Petition, 26–33, substantially identical to Pet. 32– 40). However, again, the Petition does not explain an alternative theory in which Chaudhri supplements Ahn’s menu functionality to move that menu onto the screen, as opposed to teaching visual cues provided by gradual changes of the display during a gesture or the visual cue that an unlock image may provide during the unlock gesture. See Pet. 14–18 (describing Chaudhri teaching “visual differentiation” or “transitioning an optical intensity” between a user-interface object and the background, based on, e.g., transparency), 35–40 (same). In Reply, Petitioner adds evidence to attempt to support its contention that the combination teaches a menu following a user’s finger during a dragging gesture, involving references to Chaudhri’s discussion of a visual cue, further discussing Chaudhri’s unlock image. Ex. 1005 ¶¶ 54, 62, 74–79, Figs. 5A-5C (cited at Pet. Reply 4–5). With respect to these citations and arguments, even if they had been timely presented in the Petition, we agree with Patent Owner that they do not articulate a modification of Ahn with Chaudhri or a motivation to combine. PO Sur-reply 6. Additionally, we agree that these embodiments of Chaudhri are distinct from the cited portions of Chaudhri discussed with respect to this theory in the Petition, which relate not to the movement of displayed graphics, but to variations of optical intensity and visual cues. Id. at 6–7. We evaluate the Petition’s arguments in light of Petitioner’s statement in Reply that they require a teaching regarding “menus . . . following a user’s finger as the user performs the dragging gesture.” Pet. Reply 2. To the extent that the Petition shows that the combination of Ahn and Chaudhri would show visual changes as the user performs a dragging gesture, these do not relate to the movement of a menu, but rather to other optical effects. Thus, as we do not find that the Petition supports an Ahn-Chaudhri combination in which a menu follows a user’s finger as the user performs the dragging gesture to open the menu, as Petitioner argues, we determine that Petitioner has not shown limitation 2.d of claim 2 taught or suggested by the combination of Ahn and Chaudhri according to this theory.” slip op. at 31

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner argues that “even under [this] interpretation of Ahn, the only difference between Ahn and the claims is whether the animation occurs in direct correspondence with a user’s dragging gesture or after the dragging gesture is complete – a straightforward design choice if ever there was one.” Pet. Reply 3–4 (citing Ex. 1024, 99:16–108:20; Ex. 1023 ¶ 12). However, as Patent Owner argues (PO Sur-reply 7–8) this argument is presented in Reply and is an improper shift of theory from the Petition. Nevertheless, were we to consider it, we would not find it compelling; Dr. Terveen’s cited testimony repeats this bare statement and is not supported by any evidence or additional explanation. Ex. 1023 ¶ 12; see 37 CFR § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (Aug. 24, 2022) (precedential) (assigning little weight to opinion testimony that “merely repeats” conclusory statements in a brief, without “cit[ing] any additional supporting evidence or provid[ing] any technical reasoning to support [the declarant’s] statement”).” slip op. at 29

  Patent outcomesUS 10,656,754 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,656,754
• Apple Inc. v. Smith Interface Technologies, LLCNo claims unpatentable
  PTAB · Feb 10, 2026 · IPR2024-01115 · APJ Sharon Fenick · IPR · Final written decision

  Apple did not prove claims 1, 2, 27, 37, 58, 60–64, 67–79, 186, 187, 189, 191, 192, 197, 199–204, 208–216, 223, 225, and 230 unpatentable over the asserted Ahn combinations.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “In the Decision on Institution in each proceeding, we noted that Petitioner’s definition left it unclear whether the bachelor’s degree in the proposed definition would be considered by Petitioner to be “an advancedlevel degree,” and did not adopt the portion of the definition relating to the substitution of years of experience for a degree. Dec. on Inst. 15–16. Patent Owner “does not agree with all aspects of Petitioner’s proposed level of ordinary skill” but did not propose an alternative definition. PO Resp. 10–11. Patent Owner’s declarant, Dr. Rosenberg, adopted Dr. Terveen’s definition for the purposes of his declaration. Ex. 2018 ¶¶ 32–33. We again adopt the main portion of Dr. Terveen’s definition, and determine that one of ordinary skill in the art would have had “a bachelor’s degree in computer science, computer engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers.” This definition is commensurate with the problems and solutions in the ’754 patent and prior art of record and is supported by declarant testimony.” slip op. at 9

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

    “C. Claim Construction In these proceedings, there is no controversy that would require us to decide any claim construction issue. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D. Obviousness of Claims 2, 27, 37, 58, 60–64, 67–79, 186, 187, 189, 191,” slip op. at 10

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

    “obviousness of the menus in the Ahn-Chaudhri combination following a user’s finger as the user performs the dragging gesture to open the menu.” Pet. Reply 2 (citing 01119-Petition, 26–33, substantially identical to Pet. 32– 40). However, again, the Petition does not explain an alternative theory in which Chaudhri supplements Ahn’s menu functionality to move that menu onto the screen, as opposed to teaching visual cues provided by gradual changes of the display during a gesture or the visual cue that an unlock image may provide during the unlock gesture. See Pet. 14–18 (describing Chaudhri teaching “visual differentiation” or “transitioning an optical intensity” between a user-interface object and the background, based on, e.g., transparency), 35–40 (same). In Reply, Petitioner adds evidence to attempt to support its contention that the combination teaches a menu following a user’s finger during a dragging gesture, involving references to Chaudhri’s discussion of a visual cue, further discussing Chaudhri’s unlock image. Ex. 1005 ¶¶ 54, 62, 74–79, Figs. 5A-5C (cited at Pet. Reply 4–5). With respect to these citations and arguments, even if they had been timely presented in the Petition, we agree with Patent Owner that they do not articulate a modification of Ahn with Chaudhri or a motivation to combine. PO Sur-reply 6. Additionally, we agree that these embodiments of Chaudhri are distinct from the cited portions of Chaudhri discussed with respect to this theory in the Petition, which relate not to the movement of displayed graphics, but to variations of optical intensity and visual cues. Id. at 6–7. We evaluate the Petition’s arguments in light of Petitioner’s statement in Reply that they require a teaching regarding “menus . . . following a user’s finger as the user performs the dragging gesture.” Pet. Reply 2. To the extent that the Petition shows that the combination of Ahn and Chaudhri would show visual changes as the user performs a dragging gesture, these do not relate to the movement of a menu, but rather to other optical effects. Thus, as we do not find that the Petition supports an Ahn-Chaudhri combination in which a menu follows a user’s finger as the user performs the dragging gesture to open the menu, as Petitioner argues, we determine that Petitioner has not shown limitation 2.d of claim 2 taught or suggested by the combination of Ahn and Chaudhri according to this theory.” slip op. at 31

  • BurdenNot shown unpatentable

    “(3) Conclusion For the reasons discussed above, Petitioner has not shown limitation 2.d to be taught, suggested, or otherwise rendered obvious by Ahn and Chaudhri. Thus, we determine that Petitioner does not show by a preponderance of the evidence that claim 2 would have been obvious over the combination of Ahn and Chaudhri.” slip op. at 32

  Patent outcomesUS 10,656,754 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,656,754
• Apple Inc. v. Smith Interface Technologies, LLCNo claims unpatentable
  PTAB · Jan 6, 2026 · IPR2024-01090 · APJ Miriam L Quinn · IPR · Final written decision

  The Board found claims 1–3, 21, 29–31, 42–44, 54, and 62–65 not proven unpatentable because the asserted combination did not teach the third conditional limitation.

  RulingsFinal written decision

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

    “We agree with Patent Owner’s position that the language of the claim requires the fulfillment of all the listed conditions (for each “when” clause) to cause the performance of the recited function. As stated above, the natural reading of the conditions is that they are prerequisites; they must be satisfied for the program to perform the recited function(s). For the third scenario, for example, the condition that the first web page is displayed must be satisfied in order for there to be a hyperlink to a second web page, such that the program can detect whether the location of the first contact point corresponds to that hyperlink. Ex. 1001, 102:60−62, 103:32−33, 103:37−39. The duration of the first contact has exceeded the second duration threshold without ending that first contact, and with no movement of the first contact point. Ex. 1001, 102:66−67, 103:1−3, 103:33−36, 103:39−42.13 These conditions collectively set the characteristics of the gesture that endures for the required amount of time. “When” this particular gesture is detected, for 13 We note that other non-challenged claims, require determining that there is movement of the first contact and performing corresponding functions of displaying the movement. See, e.g., Ex. 1001, 108:9−24 (Claim 40, which depends from claim 1). the required duration, and recognizing the hyperlink is selected on the displayed first web page, then the three functions corresponding to these conditions in the third scenario are performed. This “when-then” relationship is conditional, as the parties seem to agree; but, we find, it is also causal. Because the cause of outputting the feedback with the actuator, displaying a menu, and further displaying a portion of the second web page to which the hyperlink pointed is that all the conditions were satisfied as required by the claim. Ex. 1001, 103:43−55. This is the plain and straightforward reading of the “when” clauses in claim 1.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “Thus, Petitioner’s mapping as described above does not meet the requirements of the third “when” clause. We find that neither the snippet of Blumenberg nor the preview of Bhumkar is displayed in Petitioner’s proffered combination when the conditions of the third “when” clause are met. The condition of determining that the duration exceeds the “activation threshold” has no relationship to whether the display of the snippet or the preview occur. Blumenberg displays the link preview or snippet upon exceeding the 0.2 seconds or “selection threshold.” Ex. 1004 ¶ 49. Thus, there is no conditional relationship, much less a causal relationship between the display of the link preview or snippet and the “activation threshold” to which Petitioner has mapped the condition of the third “when” clause. The substitution of the snippet with Bhumkar’s “quick view” under Petitioner’s “simple substitution” rationale does not remedy the deficiency noted here. The function of “further display at least a portion of the second web page” (i.e., the “quick view”) is causally related to the “selection threshold,” and has no correlation to the duration determination, that the “activation threshold” has been exceeded. See Tr. 9:8−20 (Petitioner’s counsel arguing that “[t]here’s got to be correlation between them.”). Indeed, without a show of causality, the recited “further display” limitation is rendered irrelevant, in the Blumenberg-Bhumkar-Griffin combination. There is no need to “further display” because it already has been displayed, untethered to any condition recited in the third “when” clause.” slip op. at 41

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “at the time of the alleged invention would have had a “a bachelor’s degree in computer science, computer engineering, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers.” Pet. 6 (citing Ex. 1003 ¶¶ 36–37). In the Decision on Institution, the Board adopted the uncontested language quoted above in Petitioner’s assessment of the level of ordinary skill. The Board however did not adopt additional statements proffered by Petitioner regarding the “extensive background knowledge and understanding” allegedly possessed by a person of ordinary skill in the art (Pet. 6–7). Dec. on Inst. 9−10. Patent Owner agrees with the level of ordinary skill in the art adopted by the Board for purposes of the Decision on Institution. PO Resp. 12; see also Ex. 2008 ¶¶ 58−59. The specification of the ’581 patent describes an electronic device that allows for manipulation of user interface objects and, more specifically, the display of web pages through a user interface of a network browser application, according to contact with a touch-sensitive interaction surface. Ex. 1001, (54), Abstr. Consistent with the scope of the ’581 patent and the lack of dispute on the issue, we find that the level of skill in the art is reflected in a person having a bachelor’s degree in computer science, computer engineering, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers.” slip op. at 6

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We agree with Dr. Cockburn that the claims are not themselves programming code or even pseudo code. But they recite the functionality that the program instructions implement.15 We do not find useful Dr. Cockburn’s quibble with the word “instructions” recited in the claim as being too generic to import the understanding in the relevant art that programming logic is involved. Id. ¶ 55. Claim 1 recites more than mere “instructions.” As discussed above in Section II.E.1, the claim requires “one or more programs” and those “programs including instructions.” Ex. 1001, 102:56−59. We are persuaded by Dr. Mahon’s explanation concerning the perspective of a person of ordinary skill in the art and the implementation of instructions in programming logic that is executed by a processor, and that 15 Claim 42 is a method claim and does not recite the “program including instructions to” as claim 1 does. However, claim 42 does recite the processor and memory in parallel with the same functions recited in claim 1, and Petitioner has not argued that the scope of claims 1 and 42 differ in any material way. Ex. 1058 ¶ 55, n.3. Ex. 2008 ¶ 51. “from a software engineering standpoint, it would not be possible to implement a function that performs an action ‘when’ preconditions are met unless that function is designed to be executed because those preconditions have been detected.” Mahon Decl. ¶ 52. We credit Dr. Mahon’s explanations as they are reasoned and supported by the specification of the ’581 patent. Mahon Decl. ¶ 50. We are not persuaded by Dr. Cockburn’s rebuttal of Dr. Mahon’s reliance on the specification as supporting the understanding of a person of ordinary skill in the art because it dismisses the discussions of logic to implement the gesture detection and corresponding operations merely because these passages do not refer specifically to the three scenarios of the claim. Dr. Mahon’s discussion of general programming principles of conditional statements provides context relevant to the field of the invention. See Phillips, 415 F.3d at 1319 (“extrinsic evidence can help educate the court regarding the field of the invention and can help the court determine what a person of ordinary skill in the art would understand claim terms to mean” but warning about the flaws inherent in this type of extrinsic evidence). Accordingly, we are persuaded that Dr. Mahon’s testimony confirms the understanding of the plain and natural reading of the claim language to require a causal relationship between the conditions and the functions.” slip op. at 31

  Patent outcomesUS 10,725,581 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,725,581
• LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Multimedia Technologies Pte. Ltd.No claims unpatentable
  PTAB · Apr 29, 2025 · IPR2024-00696 · APJ St John Courtenay III · IPR · Final written decision

  Claims 1–14 were not shown unpatentable under any of four §103 grounds because the cited combinations did not teach the claimed content-dependent first panel.

  RulingsFinal written decision

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

    “Accordingly, we find: (1) the temporal “currently” (shown or displayed television content) term recited in steps 1.3 and 1.4.2, and (2) the associated temporal dependency resulting from the antecedent basis requirements of step 1.5.1, weigh strongly in favor of Patent Owner’s claim construction of claim 1 for the disputed step 1.5.1 claim terms “the application panel interface” and “based on” (emphases added).” slip op. at 15

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

    “We find Patent Owner thus correctly concludes that “[o]ptions region[] 1020 [in Woods’ Figure 10] (which Petitioner corresponds to the step 1.5.1 “first content panel” Pet. 43) is not displayed based on the currently-displayed content, even if the displayed content happens to correspond to the selected program listing.” Sur-reply 7 (citing Ex. 1005 ¶ 174; PO Resp. 26–28; Ex. 2011 ¶ 148) (emphasis added). We find Options region 1020 in Woods’ Figure 10 is instead based on user selection as argued by Patent Owner. Sur-reply 7.” slip op. at 35

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

    “We agree with Patent Owner on this point regarding Petitioner’s proposed combination of Woods and Machida, given that neither of the proposed versions of Woods’ options region 1020 (displaying general “cast information” in Figure 10), nor Woods’ options region 1020 (alternatively displaying “detailed information” about cast member “Milo” (as depicted in Fig. 11) when the “DETAIL INFO” tab is selected by the user in functions menu bar 1010 of Fig. 10), performs playback of content display in media region 1030. See also Ex. 1005, Fig. 11.” slip op. at 53

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Based upon our review of the complete record, we credit Dr. Surati’s testimony that the information in Woods’ options region 1020 (i.e., the first content panel as mapped by Petitioner (Pet. 43; Pet. Reply 16–17)), is determined independently of any currently displayed program content, and what is displayed (e.g., the cast of “Heroes” as depicted in Figure 10) is in fact based on the selected program listing, which does not teach or suggest 1.5.1 (nor recitation 1.5.2 “wherein the first content panel is a first type of application panel”). Ex. 2011 ¶ 143. We find persuasive Dr. Surati’s testimony that “a POSITA would readily understand that the information displayed [in Woods’] region 1020 [of Figure 10] is based on the selected program listing (e.g., Heroes 912) made by the user in Figure 9, not the currently-displayed content in media region 1030 of Figure 10.” Id. (emphases added). In support, Dr. Surati further testifies that “[i]n fact, region 1020 of Figure 10 presents information about the selected program listing for Heroes and is not based on the Mercedes advertisement displayed in media region 1030.” Id.; see also id. at ¶ 144 (depicting Ex. 1005, Fig. 10 above paragraph 144) (emphasis added).” slip op. at 37

  Patent outcomesUS 9,247,174 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,247,174
• LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Multimedia Technologies Pte. Ltd.No claims unpatentable
  PTAB · Apr 29, 2025 · IPR2024-00352 · APJ St John Courtenay III · IPR · Final written decision

  Claims 1–14 were not shown unpatentable because Woods, alone or combined with Istvan and/or Machida, did not teach the claimed content panel based on currently displayed content.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the declaration testimony of Dr. Lippman, Petitioner contends that an ordinarily skilled artisan for the ’174 patent “would have had a bachelor’s degree in Electrical Engineering, Software Engineering, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television systems and networking, human-computer interaction, or related technologies,” and that a “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 10 (citing Ex. 1003 ¶¶ 18–20). Patent Owner indicates it “accepts the Petitioner’s definition of the POSITA.” PO Resp. 9–10. Based on the final record before us, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the final record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’174 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect appropriate level of ordinary skill in art).” slip op. at 8

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

    “Accordingly, we find: (1) the temporal “currently” (shown or displayed television content) term recited in steps 1.3 and 1.4.2, and (2) the associated temporal dependency resulting from the antecedent basis requirements of step 1.5.1, weigh strongly in favor of Patent Owner’s claim construction of claim 1 for the disputed step 1.5.1 claim terms “the application panel interface” and “based on” (emphases added). We emphasize that we are not reading a “dependency” from the ’174 patent specification into the claim. Rather, we conclude a temporal antecedent basis under the plain language of the claim for step 1.5.1 and “wherein” clause 1.5.2.” slip op. at 15

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

    “region[] 1020 [in Woods’ Figure 10] (which Petitioner corresponds to the step 1.5.1 “first content panel” Pet. 43) is not displayed based on the currently-displayed content, even if the displayed content happens to correspond to the selected program listing.” Sur-reply 7 (citing Ex. 1005 ¶ 174; PO Resp. 26–28; Ex. 2011 ¶ 148) (emphasis added). We find Options region 1020 in Woods’ Figure 10 is instead based on user selection as argued by Patent Owner. Sur-reply 7.” slip op. at 35

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner

    “But Patent Owner disagrees: A POSITA would readily understand that the two user operation panels of Machida are for playback/navigation of content presented in the content display area. The operation panels are very distinct from the function options menu 1020 of Woods’ Figure 10 that the Petitioner alleges to be the claimed “first content panel” (when displaying “cast information” for a selected program listing like Heroes) and the claimed “second content panel” (when displaying “detailed information” for the same selected program listing). PO Resp. 67–68 (citing Ex. 1011 ¶ 250). Patent Owner additionally argues that a “POSITA would not modify Woods’ options region 1020 displaying ‘cast information’ with either of Machida’s operational panels for playback of content.” PO Resp. 68. In support, Patent Owner emphasizes that “Woods’ options region 1020 displaying ‘cast information’ does not perform playback of content displayed in media region 1030. Likewise, Woods’ options region 1020 displaying ‘detailed information’ about a selected program listing does not perform playback of content displayed in media region 1030.” PO Resp. proposed combination.” PO Resp. 69 (citing Ex. 2011 ¶ 252). We agree with Patent Owner on this point regarding Petitioner’s proposed combination of Woods and Machida, given that neither of the proposed versions of Woods’ options region 1020 (displaying general “cast information” in Figure 10), nor Woods’ options region 1020 (alternatively displaying “detailed information” about cast member “Milo” (as depicted in Fig. 11) when the “DETAIL INFO” tab is selected by the user in functions menu bar 1010 of Fig. 10), performs playback of content display in media region 1030. See also Ex. 1005, Fig. 11.” slip op. at 52

  Patent outcomesUS 9,247,174 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,247,174
• Innoscience (Zhuhai) Technology Company, Ltd. / Innoscience America, Inc. v. Efficient Power Conversion CorporationNo claims unpatentable
  PTAB · Mar 18, 2025 · IPR2023-01383 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claims 1–5 were not shown unpatentable because Petitioner did not sufficiently establish a reason to modify the asserted prior art.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We disagree with Petitioner’s argument because it fails to address Dr. Schubert’s academic and other experience with GaN transistors. Dr. Schubert is currently a tenured full professor in the Department of Electrical Computer, and Systems Engineering at Rensselaer Polytechnic Institute and was previously a tenured full professor in the Department of Electrical and Computer Engineering at Boston University. Ex. 2001, 129. Additionally, Dr. Schubert was the director of Boston University’s Semiconductor Devices Research Laboratory. Ex. 2001, 129. Dr. Schubert persuasively explains that his general expertise is in the field of electrical engineering and applied physics, including semiconductors, processing, and devices and his specific expertise is in the field of semiconductor materials (such as GaN), semiconductor devices, semiconductor integrated circuits, ohmic contacts, Schottky contacts, HEMTs, and optoelectronic devices such as light-emitting diodes (LEDs). Ex. 2001 ¶ 11, App’x A pp.129–137. His experience includes “the design, growth, fabrication, and testing of semiconductor devices as well as the employment of these devices in a variety of applications” and he is “familiar with both the design of such transistors [HEMTs] and the manufacturing processes used for FETs. Ex. 2001 ¶ 11, App’x A, pp. 129–137. He is an author or co-author of numerous text books and articles, and co-inventor of numerous patents, including those dealing with HEMT transistors and GaN devices. Ex. 2001 ¶ 13, App’x A, pp. 129–137. Petitioner fails to present any persuasive argument or evidence that Dr. Schubert’s extensive education and experience regarding GaN transistors is insufficient or lacking such that his testimony should be given little weight. Finally, we disagree with Petitioner’s additional argument that that its expert’s testimony (Dr. Shealy) should be given more weight than Patent Owner’s expert’s testimony (Dr. Schubert) because “[u]nlike Dr. Schubert, Dr. Shealy is one of the pioneer scientists in the field of GaN transistors.” Reply 34 (stating that Dr. Shealy’s research lab built the first GaN HEMT device on silicon in 1999 and citing Ex. 2002, 87:19–238). Obviousness is determined through the lens of a “person of ordinary skill in the art,” not through the lens of a person with extraordinary skill or a pioneer in the field. Given Dr. Schubert’s extensive relevant education and experience, Petitioner does not persuasively explain why Dr. Shealy’s testimony on any specific topic, or his testimony in general, should be given more weight than Dr. Schubert’s.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham, , 383 U.S. at 17–18. Petitioner argued that a person of ordinary skill in the art would have had a “at least a four-year degree in electrical engineering, chemical engineering, physics, or material science or a closely related field and at least two years of experience in semiconductor device design or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies. Additional education could substitute for professional experience and vice versa.” Pet. 11 (citing Ex 1003 ¶ 69). Patent Owner did not dispute this proposed definition prior to institution. See generally Prelim. Resp. In our Decision on Institution, we adopted Petitioner’s proposal. After institution, Patent Owner asserted a slightly different definition of a POSITA, namely someone who “would have possessed at least a four-year degree in electrical engineering, physics, material science, or a closely related field, and three years of professional work experience in the epitaxial growth, design, and fabrication of semiconductor electronic devices, including those of GaN.” Resp. 17. Relevant graduate education could substitute for the professional work experience. Id. Upon review of the full record, we see no reason to modify, and we thus maintain, the definition of a POSITA applied in our Decision on Institution. We also determine that our decision would be the same under either of the parties’ proposed definitions.” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached

    “During the proceeding, the parties also dispute the proper construction of “etching away the doped GaN layer, except a portion of the doped GaN layer beneath the gate contact” as recited in step [1e4] and provided briefing on this issue. Papers 35, 36, 37, 38. Because, as explained below, our determination rests upon Petitioner’s failure to show a sufficient reason to modify the asserted art, which is not dependent upon any particular claim construction, we need not, and do not, address these claim construction issues. 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)) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 13

  • ExcludeDenied

    “III. PETITIONER’S MOTION TO EXCLUDE EXHIBIT 2008 Petitioner filed a Motion to Exclude (Paper 25, “Mot.”) Exhibit 2008, which is a hearing transcript from the parallel ITC investigation. Mot. 1. Because we do not rely upon Exhibit 2008 in our Decision, we dismiss Petitioner’s motion as moot.” slip op. at 47

  Patent outcomesUS 8,404,508 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,404,508
• Commscope Technologies LLC v. Belden, Inc.No claims unpatentable
  PTAB · Dec 11, 2024 · IPR2023-01056 · APJ Kimberly Mcgraw · IPR · Final written decision

  CommScope did not prove claims 1–3, 9–14, and 16–18 unpatentable; the asserted anticipation and obviousness grounds failed on the barrier tape’s conductive material extending to the lateral edges.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “would have had a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in connection with designing, manufacturing, and testing of twisted-pair data cables,” and an “individual with a master’s degree in electrical engineering would require less industry experience (e.g., 1-2 years).” Pet. 15 (citing Ex. 1006 ¶ 12). Prior to institution, Patent Owner’s declarant asserted that a POSITA would have had at least a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in the telecommunications industry and disagreed that industry experience specifically with respect to twisted-pair data cables was necessary to qualify as having ordinary skill in the art. Ex. 2001 ¶ 26 (cited at Prelim. Resp. 22 n.6). Patent Owner stated, however, that any differences between the parties’ proposed definitions “are insubstantial and do not impact the analysis of the issues presented.” Prelim. Resp. 22 n.6. In our Decision on Institution, we adopted Petitioner’s proposal of a person of ordinary skill in the art (POSITA) as someone that “would have had a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in connection with designing, manufacturing, and testing of twisted-pair data cables,” and an “individual with a master’s degree in electrical engineering would require less industry experience (e.g., 1-2 years).” Inst. Dec. 7–8. During the trial, neither party disputed our definition of a POSITA nor argued that the outcome of this case would differ based upon our adoption of any particular definition of a POSITA. See generally Reply; PO Resp. 12 n.4 (agreeing the POSITA definition does not impact analysis of issues presented). Upon review of the full record, we see no reason to modify, and we thus maintain, the definition of a POSITA applied in our Decision on Institution.” slip op. at 10

  • Expert testimonyDecided for patent owner

    “Petitioner’s arguments are not persuasive. Mr. Cornelison’s testimony that a POSITA would understand that the tape shown in Figure 13C “has three layers aligned along the side edges” is not credible. See, e.g., Ex. 1006 ¶ 138. Mr. Cornelison’s testimony that Figure 13C is only “intended to identify and illustrate the three different layers of the multi-layer tape,” not to show the relative positions of the layers relative to each other (id. ¶ 137), is belied by his own testimony, in which he states that Figure 13C shows “metallic layer 133 extends to the front edges of dielectric layers 135 and 137 (id. ¶ 136). Additionally, neither Petitioner nor Mr. Cornelison provide persuasive evidence to support the contention that it would take “much more time and be more complex to make all three layers” in Figure 13C offset from each other or that it would be more costly to make than using the customary slitting processes. See Ex. 1006 ¶ 138. Although Mr. Cornelison provides evidence as to how the slitting process can be used to manufacture barrier tape, he does not provide any evidence to support his contention that the proposed slitting processes is in fact less expensive or complex than other methods. See Ex. 1006 ¶ 138. Indeed, Mr. Cornelison does not address the particular methods disclosed in Glew to manufacture the disclosed multi-layer tapes nor persuasively explain why these disclosed methods would be more costly or complex as compared to the “slitting” process. Ex. 1008 ¶¶ 199–201 (stating the multi-layer tapes can be manufactured in a “variety of ways” including bonding the various layers using adhesive or other bonding agents,” mechanically affixing or bonding the layers, needlepunching, thermal bonding, ultrasonic welding, or calendar bonding). We determine that this portion of Mr. Cornelison’s testimony is conclusory and unsupported and is entitled to little weight. Accordingly, Petitioner has not sufficiently shown that Glew discloses conductive material that extends to the lateral edges of the dielectric material as required by claims 1 and 18. As such, Petitioner has not shown a by a preponderance of the evidence that Glew anticipates independent claims 1 or 18 or the challenged claims that depend therefrom.” slip op. at 42

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

    “Thus, although the Specification does not use the term “lateral edge,” the Specification and figures of the ’030 patent make clear, that in the embodiments having a conductive layer that extends to the edges of the dielectric layers of the tape, the referred to “edge” is the edge of the “long side” of the tape that extends in the longitudinal direction. See, e.g., Ex. 1001, 7:49–51 (stating in some embodiments conductive layer 302 may not extend to the edge of tape 110), 8:1–25 (stating, inter alia, pairs 102 could electrically couple to the corresponding edge 306 resulting in increased ANEXT), 8:41–46, 10:30–36 (stating that the tape edge lies over a pair of conducts and the pair generates more ANEXT). Our construction of term “lateral edge” is supported by Roberts, which also refers to the edges of the long side of the tape extending in the longitudinal direction as the “lateral edges.” See, e.g., Ex. 1009, 2:20–24 (“a shield made from a plurality of tapes helically disposed, the lateral edges of which overlap adjacently lying tapes”), 2:42–46 (“a shield composed of a plurality of …, the lateral edges of which overlap adjacently disposed tapes”), 4:27–33 (“the plastic-coated metal foil shield (15) [FIG. 2] has lateral edges that overlap,” “the lateral edges of the shield overlapping one another”), 4:34–40 (“The lateral edges of the helically disposed tapes [of FIG. 3] overlap adjacently lying tapes.”), 5:65-75 (“the shield (15) [of FIG. 10] is made up of a plurality of tapes, the lateral edges of which overlap adjacently disposed like tapes”), Figs. 2, 3, 10. We credit Dr. Eldering’s testimony that these disclosures of Roberts shows that a POSITA would understand that a tape’s “lateral edges” are the edges running along the sides of the tape parallel to the longitudinal direction. See Ex. 2001 ¶¶ 64–65; see also Thales Visionix, Inc. v. United States, 415 F.3d 1335, 1348 (Fed. Cir. 2020) (considering whether the proposed claim construction is “consistent with the prior art’s usage of that term”).” slip op. at 19

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

    “contentions set forth in its Petition are insufficient to show that Cook discloses a barrier tape having a conductive material contained between two layers of dielectric material where the conductive material extends to each lateral edge of the two layers of the dielectric material, as required by claims 1 and 18, and further that the conductive material be continuous as required by claim 1. We agree with Patent Owner that Petitioner relies on multiple disparate embodiments of Cook for each of these limitations without sufficiently articulating how a single embodiment satisfies the requirements of claim 1 or 18 or articulating how the disparate embodiments may be combined to arrive at claim 1 or 18. See, e.g., PO Resp. 18–25; Pet. 18–21; see also NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (stating in order to establish anticipation, “it is not enough that the prior art reference . . . include multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention” and that the “reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference”).” slip op. at 29

  Patent outcomesUS 9,991,030 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,991,030
• Intel Corporation v. Besang Inc.No claims unpatentable
  PTAB · Dec 11, 2024 · IPR2023-00991 · APJ Jon B Tornquist · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

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

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

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

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

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

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

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

  Patent outcomesUS 7,378,702 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,378,702
• Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Besang Inc.No claims unpatentable
  PTAB · Nov 13, 2024 · IPR2023-00900 · APJ Jon B Tornquist · IPR · Final written decision

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

  RulingsFinal written decision

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

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

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

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

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

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

  • Expert testimonyPatent owner expert creditedOther

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

  Patent outcomesUS 7,378,702 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,378,702

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.