• Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.Some claims unpatentable
  PTAB · Jul 6, 2026 · IPR2025-00191 · APJ Michael T Cygan · IPR · Final written decision

  Claims 3, 8, 11, 12, and 19 are unpatentable under §103; Petitioner did not show claims 6, 9, 10, 13–18, and 20 unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “at the critical time “would have had a Bachelor of Science degree in electrical engineering or a similar discipline, along with 2–3 years of professional experience working with (e.g., researching, designing, or teaching) monolithic 3D structures and NAND memory devices, or an equivalent level of skill, knowledge, and experience (e.g., an advanced degree may replace some of the professional experience).” Pet. 27 (citing Ex. 1003 ¶¶34–38). Petitioner further asserts that a POSITA “would have been aware of and generally knowledgeable about 3D NAND’s structure, how it is manufactured, and its component parts.” Id. Patent Owner does 5 Neither party presents evidence or arguments regarding objective evidence of non-obviousness. Pet. 100; PO. Resp. circuit design. PO Resp. 9–10 (citing Ex. 2021 ¶ 35). Neither Patent Owner nor Dr. Campbell considers the obviousness of the claims to turn on the precise definition of the level or ordinary skill in the art. PO Resp. 10; Ex. 2021 ¶ 35. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’322 patent and the prior art of record.” slip op. at 7

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

    “C. Claim Construction Neither party proposes any express claim construction. Pet. 27 (stating claims should receive their “plain and ordinary meaning”); PO Resp. 10 (stating that Petitioner’s challenges fail “under any reasonable construction”). In an inter partes review, we construe a patent claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). We determine no terms require express construction for purposes of this Decision.” slip op. at 8

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

    “We determine that such a configuration would be neither inoperable nor significantly undesirable. Dr. Campbell testified that he does not argue that this configuration would be inoperable. Ex. 1106, 74:12–17; Ex. 2021 ¶60. Dr. Lee testifies that this configuration is “consistent with Nishikawa[123]’s Figure 14B.” Ex. 1105 ¶ 13. Dr. Lee further testifies that this configuration would not necessarily require a larger footprint, but instead, “could simply replace the trenches, abutting the device edge.” Id. Dr. Campbell testified that if the circular TAC replaced the rectangular trench, “I don’t know what it would be or exactly where it would be,” and therefore, “I can’t say what the size of the red circle would have to be.” Ex. 1106, 83:19–84:3. Therefore, the record does not support finding a circular TAC to have a larger footprint. Absent a larger footprint, there is no evidence that the end-connected TAC would be undesirable.” slip op. at 15

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “nor significantly undesirable. Dr. Campbell testified that he does not argue that this configuration would be inoperable. Ex. 1106, 74:12–17; Ex. 2021 ¶60. Dr. Lee testifies that this configuration is “consistent with Nishikawa[123]’s Figure 14B.” Ex. 1105 ¶ 13. Dr. Lee further testifies that this configuration would not necessarily require a larger footprint, but instead, “could simply replace the trenches, abutting the device edge.” Id. Dr. Campbell testified that if the circular TAC replaced the rectangular trench, “I don’t know what it would be or exactly where it would be,” and therefore, “I can’t say what the size of the red circle would have to be.” Ex. 1106, 83:19–84:3. Therefore, the record does not support finding a circular TAC to have a larger footprint. Absent a larger footprint, there is no evidence that the end-connected TAC would be undesirable.” slip op. at 15

  Patent outcomesUS 11,581,322 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,581,322
• Advancell Pty Ltd. v. Sciencons As And Artbio, Inc.Instituted
  PTAB · Nov 6, 2025 · PGR2025-00040 · APJ Kimberly Mcgraw · PGR · Institution

  The Board instituted PGR on claims 1–9, 11–33, and 35–38 on all petition grounds, finding it more likely than not that Hassfjell-Hoff anticipates at least claim 1.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 324(a), a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Post-grant review is available for patents that issue from applications that at one point contained at least one claim with an effective filing date on or after March 16, 2013. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), §§ 3(n)(1), 6(f)(2)(A). After considering the briefing and the evidence of record, for the reasons set forth below, we determine that Petitioner has shown that the ’437 patent is eligible for post-grant review and that it is more likely than not that at least one challenged claim of the ’437 patent is unpatentable under § 324(a). Accordingly, we institute a post-grant review of all challenged claims of the ’437 patent.” slip op. at 2

  • Adverse judgmentAdverse judgmentOther

    “Here, Patentee Sciencons AS filed a statutory disclaimer of claims 10 and 34 of the ’437 patent. Ex. 2001; Prelim. Resp. 43. Based on our review of Exhibit 2001 and the Office’s public records, we find that the disclaimer of claims 10 and 34 complies with the above-listed requirements of 37 C.F.R. § 1.321(a). Accordingly, we treat claims 10 and 34 as having never been part of the ’437 patent. See Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in [35 U.S.C.] § 253 to mean that the patent is treated as though the disclaimed claims never existed.”). Because post-grant review cannot be instituted based on disclaimed claims, claims 10 and 34 are outside the scope of this proceeding. 37 C.F.R. § 42.207(e) (“No post-grant review will be instituted based on disclaimed claims.”); General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution in view of a statutory disclaimer of all the challenged claims). Thus, we confine our analysis in this Decision to claims 1–9, 11–33, and 35– 38, the remaining challenged claims that have not been disclaimed.” slip op. at 6

  • PTAB / AIA Trials › Real party in interest / privityGranted

    “Sciencons AS also states that ARTBIO, Inc. is responsible for defending the ’437 patent in this proceeding and requests that ARTBIO, Inc. be included in the caption for this proceeding.2 Paper 4, 1. ARTBIO, Inc. has signed powers of attorney appointing the same practitioners that were appointed by Sciencons AS to transact all business associated with the instant post-grant review review of the ’437 patent. See Paper 3. To date, no objection has been raised to Patent Owner’s request. Given Sciencons AS’s representation that ARTBIO, Inc. is currently the exclusive licensee of the ’437 patent and is responsible for defending the ’437 patent, we grant Sciencons AS’s unopposed request that ARTBIO, Inc. be included in the caption. For convenience we refer to Sciencons AS and the purported exclusive licensee ARTBIO, Inc. collectively as “Patent Owner.” As stated supra, to the extent any party disputes ARTBIO, Inc.’s right to participate in this proceeding or to be included in the caption, the party shall request authorization to brief the issue within 10 business days of this Decision.” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “nuclear chemistry, radiochemistry, or materials science, or a comparable field of study, plus approximately two to three years of professional experience with radioisotope generators, radiopharmaceutical chemistry, nuclear medicine, or other relevant industry experience” and that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Pet. 2–3 (citing Ex. 1002 ¶ 33; Ex. 1019 ¶ 27). At this stage of the proceeding, Patent Owner does not dispute Petitioner’s proposed definition nor provide a proposed definition of its own. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s undisputed proposed definition of a POSITA.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 12,249,437
• Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.Some claims unpatentable
  PTAB · Oct 23, 2025 · IPR2024-00790 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 1–3 are unpatentable as obvious over Kim; claims 4 and 5 were not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

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

    “SuperGuide, 358 F.3d at 875 (“We review the patent’s written description and drawings to confirm that the patentee’s own use of the disputed term is consistent with the meaning given to it by the court.”). The ’031 patent teaches that dielectric pairs of different tiers are etched to form staircases extending along the x-y plane. Ex. 1001, 13:27–28. As described above (§ I.D, supra), dielectric filling structure 311 is formed by depositing a dielectric filling material to fill the space remaining after portions of dielectric stack 203 are removed to form staircase structure 303. Id. at 13:36–41; see also id. at 22:63–65 (“Memory structure 1200 can be formed by forming dielectric filling structure 1201 to fill the space formed by the removal of portions of dielectric stack 1003.”) The ’031 patent then teaches that excess dielectric filling material overlying the topmost surface of staircase structure 303 is removed using a suitable planarization method. Id. at 13:41–44; see also 22:67–23:5 (performing a planarization process to remove excess dielectric filling structure 1201 over the top surface of memory structure 1200). According to the ’031 patent, the portion of the deposited dielectric filling material that remains “over staircase structure 303 and isolation layer 109” forms “dielectric filling structure 311 that surrounds staircase structure 303.” Id. at 13:44–48 (emphasis added); see also id. at 1:56–58 (stating in “some embodiments, the memory device also includes a filling structure surrounding the multiple-stack staircase structure”). structure is etched along the x-, y-, and z-axes, and the dielectric filling structure fills the spaces in the x-, y-, and z-directions created when the staircase structure is etched. Because the excess portion of the dielectric filling structure overlying the top of the staircase structure is removed, what remains is dielectric filling structure in the spaces around the staircase structure in the x-, y-, and z-planes. In this way, the ’031 patent teaches that the dielectric filling structure surrounds, i.e., is all around or encircles, the staircase structure.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) would have had “a bachelor of science degree in electrical engineering or a similar discipline” with “2–3 years of professional experience working with (e.g., researching, designing, or teaching) monolithic 3D structures and NAND memory devices,” or “an equivalent level of skill, knowledge, and experience (e.g., an advanced degree may replace some of the professional experience).” Pet. 22–23. Petitioner further contends that a “POSITA would have been aware of and generally knowledgeable about 3D NAND’s structure, its component parts, how it operates, and how it is controlled.” Id. at 23 (citing Ex. 1003 ¶¶ 41–44). Patent Owner states that it does not object to the definition of a POSITA proffered by Petitioner. PO Resp. 13–14 (citing Pet. 22). In the Institution Decision, we adopted the assessment offered by Petitioner. Dec. 7. Because Petitioner’s definition of the level of skill in the art is consistent with the ’031 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir 2001).” slip op. at 7

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

    “Dr. Banerjee adequately explains why a POSITA would have been motivated to make dummy structures DS with a conductive core as Petitioner proposes. In an obviousness analysis, some kind of reason must be shown as to why a POSITA would have thought of combining or modifying the prior art to achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008). Here, Petitioner offers only the general proposition that pillar support structures comprising electrically conductive material were known in the art, but this does not provide a reason why a POSITA would have been motivated to modify Kim’s dummy structures. Pet. 55–56; Ex. 1003 ¶¶ 156–157. Petitioner’s arguments and Dr. Banerjee’s testimony with respect to the modification of Kim leaves an analytical gap that does not apprise us of why a POSITA would have modified Kim’s dummy structures to include a conductive core as the pillar-support material recited in claim 4. Instead, Petitioner attempts to imbue a POSITA with the knowledge of the claimed invention, when no prior art reference, references of record, or other evidence conveys or suggests that knowledge. Petitioner’s argument that a POSITA would have modified Kim in this way appears to be premised on Petitioner’s knowledge of the ’031 patent disclosure. This is improper hindsight reasoning. Petitioner needed to explain sufficiently what invention to consider modifying Kim’s dummy structures to include a conductive core. Petitioner fails to provide such an explanation. See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (In an obviousness analysis, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the thenaccepted wisdom in the art.”).” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableDecided for patent owner

    “Dr. Banerjee adequately explains why a POSITA would have been motivated to make dummy structures DS with a conductive core as Petitioner proposes. In an obviousness analysis, some kind of reason must be shown as to why a POSITA would have thought of combining or modifying the prior art to achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008). Here, Petitioner offers only the general proposition that pillar support structures comprising electrically conductive material were known in the art, but this does not provide a reason why a POSITA would have been motivated to modify Kim’s dummy structures. Pet. 55–56; Ex. 1003 ¶¶ 156–157. Petitioner’s arguments and Dr. Banerjee’s testimony with respect to the modification of Kim leaves an analytical gap that does not apprise us of why a POSITA would have modified Kim’s dummy structures to include a conductive core as the pillar-support material recited in claim 4. Instead, Petitioner attempts to imbue a POSITA with the knowledge of the claimed invention, when no prior art reference, references of record, or other evidence conveys or suggests that knowledge. Petitioner’s argument that a POSITA would have modified Kim in this way appears to be premised on Petitioner’s knowledge of the ’031 patent disclosure. This is improper hindsight reasoning. Petitioner needed to explain sufficiently what invention to consider modifying Kim’s dummy structures to include a conductive core. Petitioner fails to provide such an explanation. See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (In an obviousness analysis, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the thenaccepted wisdom in the art.”).” slip op. at 23

  Patent outcomesUS 10,868,031 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,868,031
• Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.Some claims unpatentable
  PTAB · Oct 22, 2025 · IPR2024-00794 · APJ Michael T Cygan · IPR · Final written decision

  Claims 1 and 6 are unpatentable over Park; claims 2–5 and 7–11 were not shown unpatentable on the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the critical time “would have had a bachelor’s degree in electrical engineering or a similar discipline, along with 2-3 years of professional experience working with (e.g., researching, designing, or teaching) NAND flash memory devices, or an equivalent level of skill, knowledge, and experience (e.g., an advanced degree may replace some of the professional experience).” Pet. 19 (citing Ex. 1003 ¶¶ 36–37). Petitioner further asserts that a POSITA “would have been aware of and generally knowledgeable about 3D NAND’s structure, its component parts, how it operates, and how it is controlled.” Id. Patent Owner does not object to this assessment, arguing that its claims are valid regardless of the precise definition. PO 3 Neither party presents evidence or arguments regarding objective evidence of non-obviousness. skill, as it appears to be consistent with the specification of the ’623 patent and the prior art of record.” slip op. at 5

  • Expert testimonyPetitioner expert discountedMixed

    “the Petition, Petitioner’s approach to Shibata’s drive circuit and Park’s dummy channel/open region teachings results in a deficiency in its showing of reasonable expectation of success for its expressed combination of extending Park’s insulative trenches to replace some of its common source lines. Petitioner relies solely on the fact that the references are capable of performing the relied-upon functions or could possess the relied-upon structure. See, e.g., Pet. Reply 19–20 (stating, “If Shibata accommodates this type of trench . . . there is no reason Park cannot as well,” and “Park itself already presents a variety of ways to minimize any etching problem that may be encountered when using wet etching”). But Park does not describe its dummy channel or open region teachings as generally applicable to all of its embodiments. And Petitioner needs to show a reason why the application of Shibata would be reasonably expected to have been successfully applied in Park, not merely state that there is “no reason” to expect that it would not be successful. See DSS Tech. Mgmt., Inc. v. Apple Inc., 885 F.3d 1367, 1377 (Fed. Cir. 2018) (finding that even where two structures have “the same physical structure,” applying the teachings of one structure to the other requires “additional, reasoned analysis.”). The knowledge of one skilled in the art cannot bridge this gap, because these are inventive features of Park and Shibata. Furthermore, Petitioner also has not sufficiently explained, for any of its proposed augmentations, how metal gate deposition would occur sufficiently in the most remote regions of the long, parallel insulating layers in Petitioner’s Park-Shibata combination of such regions to avoid the risk of incomplete gate electrode layers in the final memory device that Patent Owner argues would result in a significant trade-off in memory device accuracy, and device scalability. PO Resp. 68 (citing Ex. 2010 ¶ 145). For example, Dr. Lee addresses only etching issues, not deposition issues. Ex. 1025, ¶¶ 32–47.” slip op. at 46

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

    “We agree with Petitioner. As pointed out by Patent Owner, the “trenches formed in the BSG” language of claim 1 reflects specific description of the gate-first method of manufacturing, but not the gate-last method of manufacturing. Ex. 1001, 7:17–19 (“referring to Fig. 1A, one or more first dielectric trenches . . . are formed in the one or more BSGs”). However, as Petitioner points out, the claims are to a memory “device,” not to a method of manufacturing or a device produced by specific manufacturing steps. Pet. Reply 1. During prosecution of the application that matured into the ’623 patent, the Examiner determined that the device of claim 1 was distinct from a separately claimed method of manufacturing and The Examiner’s requirement stated that the memory device of claim 1 is not limited by the disclosed process of manufacture because “the process claims require . . . deposition steps of polysilicon whereas the product claims do not require any polysilicon.” Id. Applicant agreed “without traverse” with the Examiner’s determination and selected to pursue only the “device” claims. Id. at 596 (“Applicant elects, without traverse, Invention I, Claims 1–11, drawn to a device”).4 The distinctiveness is also supported by the discussion in the ’623 patent of “formed in the BSG” that describes its device separately from its method of formation. The ’623 patent describes that “[i]n the disclosed memory device, one or more first dielectric trenches are formed in the BSG and extend in a length direction of the substrate to separate the BSG into a plurality of sub-BSGs.” Ex. 1001, 2:25–28. This description precedes, and is separate from, its description of an aspect of a process for manufacturing a memory device in which the BSG layer is formed and then “dielectric trenches are formed” that may “pass through the BSG layer” so that the “BSG layer is separated by the one or more first dielectric trenches into a plurality of sub-BSG layers.” Id. at 3:30–45. The description of the device having trenches formed in the BSG, which is not limited to a particular manufacturing process, further supports Petitioner’s contention that the “formed in the BSG” language is not limited to a particular manufacturing embodiment.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for patent owner

    “We do not agree that such arguments support Patent Owner’s conclusion. Patent Owner acknowledges that two portions of a BSG that are connected at a small opening are not separated because both portions remain electrically connected to each other. Id. at 17 (stating, “common source regions 52a is merely in the middle of a single sub-BSG 2 (‘SUB-BLK2’) and does not divide it into further sub-BSGs because there is an H-cut 72 that connects the two sides of the common source region such that both regions are part of the same sub-BSG”) (citing Ex. 1001, 9:15–19, 9:41–44) (emphasis omitted); Ex. 1026, 34:4–15, 41:23–42:16 (Dr. Kuhn attesting that common source regions may isolate adjacent BSGs). Patent Owner considers other portions of the BSG to be separated into sub-BSGs because there is no such connection between the sub-BSG portions. Id. at 17–18 (annotating Ex. 1001, Fig. 1B). Under such reasoning, the addition of a trench closing a gap between two neighboring BSG portions, thereby breaking the electrical connection therebetween, would “separate” the two BSG portions into further sub-BSGs. In its obviousness assertions, Petitioner argues for such an interpretation of the claim. See Pet. Reply 10 (“Park’s layers 111 electrically separate its BSG”). Based on the above, we determine that the phrase “dielectric trenches formed in the BSG and extending in a length direction of the substrate to perform electrical separation between sub-BSGs, but does not require that the trenches act alone, extending from one end of the device to the other across the entire BSG. Similarly, the trenches need not have any particular length, and need only to have some length that performs that separation.” slip op. at 13

  Patent outcomesUS 10,950,623 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,950,623
• Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.All claims unpatentable
  PTAB · Oct 7, 2025 · IPR2024-00795 · APJ Michael T Cygan · IPR · Final written decision

  Claims 1–9 and 11–19 are unpatentable as obvious over Lee or Zhao and Lee; the Board did not find claims unpatentable over Zhao or Yang alone.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the critical time would have had a bachelor’s degree in electrical engineering or a similar discipline, along with 2-3 years of professional experience working with (e.g., researching, designing, or teaching) NAND memory devices (including issues relating to the operation, e.g., programming, of said devices), or an equivalent level of skill, knowledge, and experience (e.g., an advanced degree may replace some of the professional experience). Pet. 18 (citing Ex. 1003 ¶¶ 35–38). Petitioner further asserts that a POSITA “would have been aware of and generally knowledgeable about NAND memory’s structure, its component parts, how it operates, and how it is controlled. Id. (citing Ex. 1003 ¶ 38). Patent Owner does not object to this assertion. PO Resp. 12. We adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’822 patent and the prior art of record.” slip op. at 6

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

    “1. Word line pre-pulse signal Patent Owner argues that such a signal “must increase in value and then decrease in value (or vice versa).” PO Resp. 13; PO Sur-Reply 1. Petitioner agrees with this construction. Pet. Reply. 3. Patent Owner further argues that the pre-pulse signal “prepares the word line before the programming step.” PO Resp. 13. We agree that Petitioner applies its teachings with the same understanding of “pre-pulse signal” as Patent Owner. See, e.g., Pet. 38–39 (asserting that Lee teaches, or that that Lee would make obvious, pre-bias signals applied as pulses). Because both parties agree that a pre-pulse signal “must increase in value and then decrease in value (or vice versa),” and apply this construction in their assertions and arguments, no dispute as to the meaning of this phrase exists in a manner that would affect the outcome of this decision. Therefore, we do not need to determine a particular construction. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7

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

    “with the plain language of the claims, each claim states “disposed.” Patent Owner provides dictionary definitions for “disposed,” which is described as a verb. See, e.g., Ex. 2016, 3. When described as a verb in these definitions, “disposed” is the action of the actor; i.e., “the chief disposed his attendants in a circle” (Ex. 2019, 3); “She disposed of her estate among her heirs” (Ex. 2018, 3); “disposed of the matter efficiently” (Ex. 2017, 3); “troops disposed for withdrawal” (Ex. 2016, 3). Petitioner offers no contrary definition from either the Specification or any extrinsic source for that term. We agree with Patent Owner’s construction of “disposed” as “put in place” or “arranged in a particular position.” Nevertheless, the construction of “disposed” does not resolve the controversy over the language of claims 2, 3, 12, and 13. The claims recite “are disposed.” For example, claim 2 recites, “wherein the [first through third groups] of the plurality of word lines are disposed in an order of distance from the selected word line.” Under Patent Owner’s construction, this reads as, “wherein the [first through third groups] of the plurality of word lines are arranged in a particular position in an order of distance from the selected word line.” But claim 2 does not recite that the word lines are arranged “based on” the selected word line, or that the arrangement occurs only after a word line is selected, as argued by Patent Owner. We agree with Petitioner that the express language of claim 2 does not recite any limitation as to how or when the groups of word lines are disposed. Both parties point to the same language in the ’822 patent Specification in support of their position: “the word lines disposed between the selected word line and the top select gate TSG can be divided into multiple groups of the word lines.” PO Sur-Reply 2 (citing Pet. Reply 11 requires the recited arrangement to exist, at some point. But we determine that none of claims 2, 3, 12, or 13 require a step of arrangement, or an action to change the arrangement of grouped word lines.” slip op. at 9

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

    “not based on the location of the source or bit lines. Instead, Petitioner relies upon the distance from the selected word line and the drain-side of the string. See Pet. 66 (“the channel length between the drain-side of the string and word line selected for programming would be quite long, resulting in a relatively high channel resistance” (citing Ex. 1003 ¶ 360)). Petitioner asserts that Lee’s application of higher pre-charge voltages to the drain-side word lines “offset the channel resistance effect.” Id. (citing Ex. 1003 ¶ 361). Lee and Zhao both admittedly have “typical memory strings, which are a ‘vertical column’ of memory cells arranged in series between a source side select transistor and a drain side transistor.” PO Resp. 53 (emphasis omitted). Petitioner asserts that applying pre-charging to mitigate program disturb (sought by both Lee and Zhao) relies on the creation of a potential difference to facilitate electron redistribution. Pet. Reply 17–18 (citing Ex. 1004, 1:52–56; Ex. 1005, 17:4–12; Ex. 1021 ¶¶ 72–78). Petitioner asserts that the application of voltage can be performed from either end of the channel so long as it targets the portion of the channel desired to be pre- charged. Id. at 18 (citing Ex. 1021 ¶¶ 77–78; Ex. 1010, 17:16–23). Although Patent Owner points to Yang as showing different “biasing schemes” based upon whether the bit line, source line, or both are used for pre-charging, each of the cited Figures 8–10 of Yang indicates that Vbypass (Yang’s uncontested pre-pulse signal) is applied to at least some word lines between the selected word line and the drain-side SGD0. Ex. 1010, Figs. 8C, 9C, 10C; see PO Resp. 25–28 (“a ‘bypass voltage’ (‘Vbypass’) is applied to ‘not yet programmed’ memory cells during the ‘pre-charge phase’” (citing Fig. 8C) (emphasis omitted)). We do not discern in Patent Owner’s arguments, or in the evidence provided during trial, sufficient reasons why applying voltage from either source or bit line disturbs Petitioner’s asserted advantage of offsetting the resistance of the channel between a selected word line and the drain side of the string. Patent Owner further argues that Lee discusses a “wholly disparate approach” for mitigating program disturb than Zhao and that a POSITA would not have been motivated to apply Lee’s teaching to Zhao. PO Resp. 56–58. Patent Owner contends that because Zhao does not conduct current when applying its bypass voltage to equalize charges, but Lee does conduct current when doing so, Lee need only compensate for insufficient charge boosting due to the increased resistance component between source and drain and does not need to compensate for “resistance” effects creating voltage differences along the length of the memory string channel. Id. at 56. Dr. Przybylski’s supporting testimony is based upon such differences in the resistance components. See, e.g., Ex. 2011 ¶ 128. However, we have credited Dr. Liu’s testimony that a chain of transistors in both systems creates a resistance effect regardless of current flow in the steady state. Supra § II.F.1.b.2. We further agree with Petitioner that applying pre- on the creation of a potential difference to facilitate electron redistribution. Pet. Reply 17–18 (citing Ex. 1004, 1:52–56; Ex. 1005, 17:4–12; Ex. 1021 ¶¶ 72–78). We further credit Dr. Liu’s testimony that Zhao’s use of the same pre-charge voltages to not-yet-programmed word lines presents an issue of inadequate pre-charging that Lee addresses. Ex. 1021 ¶¶ 55–56; Pet. Reply 22–23. Consequently, we are persuaded by Petitioner that the chain resistance effects in Zhao and Lee permit the application of Lee’s method of pre-charging to mitigate program disturb to be applicable and desirable in Zhao’s method of applying pre-charging to mitigate program disturb. Consequently, we determine that Petitioner has shown persuasive motivation for its combination.” slip op. at 45

  Patent outcomesUS 11,501,822 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,501,822
• Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.Instituted
  PTAB · Jul 25, 2025 · IPR2025-00191 · APJ Michael T Cygan · IPR · Institution

  The Board instituted review on all challenged grounds for non-disclaimed claims 3, 6, 8–20; it found a reasonable likelihood of success for claims 8–12 and 19.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons discussed below, we determine that Petitioner has sufficiently shown a reasonable likelihood that it will prevail as to the unpatentability of claims 8–12 and 19 of the ’322 patent but has not sufficiently shown a reasonable likelihood that it will prevail as to the unpatentability as to claims 3, 6, 13–17, and 20. Because Petitioner has sufficiently shown a reasonable likelihood that at” slip op. at 2

  • Adverse judgmentAdverse judgmentOther

    “B. Patent Owner’s Disclaimer of Claims 1, 2, 4, 5, and 7 As indicated above, Patent Owner filed a statutory disclaimer of claims 1, 2, 4, 5, and 7 of the ’322 patent. See Ex. 2006. In view of Patent Owner’s statutory disclaimer, we treat claims 1, 2, 4, 5, and 7 as having never been part of the ’322 patent. See Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in [35 U.S.C.] § 253 to mean that the patent is treated as though the disclaimed claims never existed.”). Because inter partes review cannot be instituted based on disclaimed claims, claims 1, 2, 4, 5, and 7 are outside the scope of this proceeding. 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”); General Elec. Co. v. United Techs. Corp., IPR2017- 00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution in view of a statutory disclaimer of all the challenged claims). Thus, we confine our analysis in this Decision to claims 3, 6, and 8–20, the challenged claims that have not been disclaimed.” slip op. at 3

  • Other 314aDenied

    “Patent Owner filed a Brief on Discretionary Denial, and Petitioner filed a brief in opposition. Papers 10 and 18. The Director considered the briefing and determined that discretionary denial was not warranted. Paper 21.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “at the critical time “would have had a Bachelor of Science degree in electrical engineering or a similar discipline, along with 2–3 years of professional experience working with (e.g., researching, designing, or teaching) monolithic 3D structures and NAND memory devices, or an equivalent level of skill, knowledge, and experience (e.g., an advanced degree may replace some of the professional experience).” Pet. 27 (citing Ex. 1003 ¶¶ 34–38). Petitioner further asserts that a POSITA “would have been aware of and generally knowledgeable about 3D NAND’s structure, how it is manufactured, and its component parts.” Id. Patent Owner does not provide any such assessment in its Preliminary Response. Prelim. Resp. 8; Ex. 2007 ¶ 22 (reserving the right to opine as to an alternative level of a POSITA). For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’322 patent and the prior art of record.” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 11,581,322
• Innoscience (Zhuhai) Technology Company, Ltd / Innoscience America, Inc. v. Efficient Power Conversion CorporationAll claims unpatentable
  PTAB · Mar 18, 2025 · IPR2023-01381 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–3 and 7–9 are unpatentable as obvious over Uemoto and Smith; the motion to amend is granted, and proposed substitute claims 13 and 14 are not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In order to determine whether an invention would have been obvious at the time the application was filed, we consider the level of ordinary skill in the pertinent art. Graham, 383 U.S. at 17. In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation omitted). Petitioner contends a person of ordinary skill in the art “would have possessed 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.” Pet. 5–6. Petitioner contends “[a]dditional education could substitute for professional experience and vice versa.” Id. at 6. Patent Owner contends that a person of ordinary skill in the art would have had “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.” PO Resp. 7 (citing Ex. 2009 ¶ 82). Upon review of the evidence of record and the parties’ arguments, we adopt Petitioner’s definition of the person of ordinary skill in the art as it is consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). We note, however, that the conclusions reached in this Decision would be the same under either proposed definition of the ordinarily skilled artisan. See Ex. 2009 ¶ 83 (Dr. Schubert testifying that his opinions would be the same under either proposed definition); Ex. 1033 ¶ 9 (Dr. Shealy testifying that the differences in proposed definitions of the ordinarily skilled artisan “would not change the outcome of the invalidity analysis in any material manner”); PO Resp. 7; Pet. Reply 1.” slip op. at 9

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

    “compensated GaN layer above the barrier layer, and a gate contact above the compensated GaN layer.” Ex. 1001, 5:12–18. Petitioner contends the term “compensated” indicates that the step of compensating the GaN layer has already occurred, such that the term “compensated GaN layer” should be construed as a “‘[d]oped GaN layer formed with a step to passivate its impurities’ which is a ‘product-by-process’ limitation.”5 Pet. 12–14. And, because compensation with hydrogen was the “critical step” distinguishing the claims from the prior art, and because hydrogenation in as-grown III-nitride materials had been well known for over a decade by 2009, Petitioner contends “compensated” “cannot be interpreted as mere hydrogen presence in as-grown material, a well-known property of doped GaN.” Id. at 15. Patent Owner contends “compensated GaN material” should be construed as “a semiconductor GaN gate material in which one type of impurity (for example, donor) cancels the electrical effects of the other type of impurity (for example, acceptor).” PO Resp. 11 (citing Ex. 2009 ¶ 92) (emphasis added). Patent Owner contends this construction is consistent with the IEEE dictionary, which defines “compensated semiconductor” as 5 Given that product-by-process steps in a device claim are not entitled to patentable weight, Petitioner contends “the prior art only need show a material with passivated impurities to show unpatentability, not the step to achieve it.” Pet. 15–16. “[a] semiconductor in which one type of impurity or imperfection (for example, donor) partially cancels the electric effects of the other type of impurity or imperfection (for example, acceptor).” PO Resp. 14 (quoting Ex. 2004). Patent Owner contends its construction is also consistent with the written description of the ’294 patent, which explains that a compensated GaN material is part of the gate and includes a p-type impurity that imparts an electrical effect (i.e., conductivity), as well as a second impurity, e.g., hydrogen, that partially cancels the electrical effect of the p-type impurity, rendering the layer semi-insulating. Id. at 14–15 (citing Ex. 1001, 3:10–13, 3:43–45). On this record, we construe “compensated GaN layer” as “a GaN layer in which one type of impurity (for example, donor) partially cancels the electric effects of the other type of impurity (for example, acceptor).” This is consistent with the disclosures of the ’294 patent, the IEEE dictionary definition, and the construction ultimately adopted by the ITC. Ex. 2004, 3; Ex. 1049, 16–17 (ITC construing “compensated GaN layer” to mean “a GaN layer in which one type of impurity partially cancels the electrical effects of another type of impurity”); Ex. 1001, 3:43–45 (explaining that the compensated GaN layer of the ’294 patent is formed through the “passivation of a p-type impurity using hydrogen”). For the reasons set forth below, however, we decline to construe “compensated GaN layer” as a product-by-process claim term (as asserted by Petitioner), or to limit the compensated GaN layer to a gate material (as asserted by Patent Owner).” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “There are two exceptions to the general rule that we apply the ordinary and customary meaning of a claim term: (1) when a patentee sets out a definition and acts as his own lexicographer, or (2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution. See Thorner, 669 F.3d at 1365. The standards for lexicography and disclaimer, however, are “exacting.” Id. at 1366. There is no argument that the patentees acted as their own lexicographer to redefine the term “compensated GaN layer.” With respect to disavowal, a “patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Thorner, 669 F.3d at 1366 (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)). As noted by Patent Owner, the title of the ’294 patent is, in part, “Compensated Gate MISFET” and much of the discussion of the ’294 patent is of a compensated GaN layer that is directly below the gate contact and above a barrier layer and operates in conjunction with the gate contact to control the on/off state of the transistor. PO Resp. 12–14. We are presented with insufficient argument or evidence to conclude, however, that these disclosures rise to the level of a disclaimer. For example, although the title of the ’294 patent is directed to a “Compensated Gate MISFET,” claim 1 is more broadly directed to “[a] column III Nitride transistor.” Ex. 1001, 5:12, code (54). Nor are we directed to an expression or statement of manifest exclusion in the ’294 patent that would serve to disclaim any “compensated GaN layer” that is not directly below the gate and/or that does not function in concert with the gate electrode to control the on/off state of the transistor. See Thorner, 669 F.3d at 1366. With respect to the stated goals of the invention, as noted by Patent Owner, one of the primary purposes of the compensated GaN layer of the ’294 patent is to reduce gate leakage and gate capacitance. Ex. 1001, 2:13– 19, 3:18–21 (“[U]sing a compensated semiconductor layer 38 leads to low gate leakage during device operation.”). We cannot use the goals of the invention, however, to rewrite the claims or insert terms that are not present. See Thorner, 669 F.3d at 1366. Moreover, the prior art of record indicates that a compensated GaN layer that is below the gate contact and above a barrier layer, but not part of the active gate structure, may also “decrease the leakage current between the gate and the drain.” Ex. 1006 ¶¶ 44 (“Even when a positive bias of 5 V or higher is applied to the gate electrode, no significant gate-leakage current is observed.”), 61. As such, evidence of record suggests that a person of ordinary skill in the art would have understood that one of the primary goals disclosed in the ’294 patent is achieved regardless of whether the compensated GaN layer is part of the gate, or simply in close vicinity to the gate. In view of the foregoing, we are not persuaded that the written description of the ’294 patent indicates that the “compensated GaN layer” must be part of the gate structure.” slip op. at 17

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

    “To be probative, Patent Owner must prove there is a nexus between the presented evidence and the merits of the claimed invention. See Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). A rebuttable presumption of nexus applies when the “patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco, 851 F.2d at 1392). “That is, presuming nexus is appropriate ‘when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.’” Id. (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). If the praise is not limited to the features of the claimed invention, the patent owner may still prove nexus “by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. at 1373–74 (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). Patent Owner contends that the compensated gate of the ’294 patent “was a breakthrough invention and resulted in the first commercially viable enhancement-mode GaN transistor.” PO Resp. 60 (citing Ex. 2009 ¶¶ 192– 193, 197; Ex. 2021). Patent Owner further contends that this achievement required the counter-intuitive use of a compensated gate material in the gate structure, and represented “a technological leap that laid the foundation for viable enhancement-mode GaN transistors.” Id. at 61–62. For this achievement, Patent Owner contends the inventor, Dr. Alex Lidow, received the 2015 SEMI Award. Id. at 60 (citing Ex. 2021). Upon review of Patent Owner’s evidence and the parties’ arguments, we find that Patent Owner’s objective indicia evidence is entitled to little, if any, weight. The evidence of praise relied upon by Patent Owner is not clearly linked to the claimed invention or any particular product having each of the claimed features of the ’294 patent. Ex. 2021. For example, the 2015 SEMI award was provided to Dr. Lidow “for commercialization of GaN power devices.” Id. An article explaining the award indicates that “high cost” previously “limited [the] commercial success” of GaN technologies, but Dr. Lidow was able to overcome these issues, “from resolving packaging limitations to establishing a low-cost supply chain,” “through persistence.” Id. This praise is not demonstrably linked to the claimed invention or any particular device, and does not mention the use of a compensated gate, or any other relevant feature recited in the claims. In view of the foregoing, we determine that Patent Owner’s objective evidence of non-obviousness is entitled to little, if any, weight.” slip op. at 20

  Patent outcomesUS 8,350,294 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 8,350,294
• 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
• Elastic N.V. / Ohio Farmers Insurance Company et al. v. Guada Technologies LLCAll claims unpatentable
  PTAB · Oct 24, 2022 · IPR2021-00875 · APJ Matthew J Mcneill · IPR · Final written decision

  Claims 1–7 are unpatentable under § 103 over Wesemann, Wesemann and Rajaraman, Fratkina, or Fratkina and Rajaraman, as applicable.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “Ohio Farmers Insurance Company and Pregis LLC filed a Petition requesting inter partes review of claims 1‒7 of the ’379 patent and a motion for joinder to this proceeding in IPR2022-00217. We granted the motion for joinder and joined Ohio Farmers Insurance Company and Pregis LLC as Petitioners in this proceeding. See IPR2022-00217, Paper 9.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioners state a person of ordinary skill in the art at the time of the alleged invention would have had a “bachelor’s degree in computer science or electrical engineering and at least one year of work on information retrieval and database searching, or the equivalent experience and education.” Pet. 9. Dr. Smyth’s testimony supports Petitioners’ position. See Ex. 1007 ¶¶ 28‒30. Patent Owner does not explicitly refute these assertions. See generally PO Resp. We adopt Petitioners’ definition of the level of ordinary skill in the art because it aligns with the technology of the ’379 patent and the descriptions of the art in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (stating that the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown).” slip op. at 8

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

    “Petitioners propose construing five claim terms. Pet. 13‒16. First, Petitioners propose construing “node” to mean “a specific choice or option in a hierarchy.” Id. at 13. Second, Petitioners propose construing “vertex” to mean “a specific choice or option in a hierarchy that can be represented in a graph.” Id. at 13‒14. Third, Petitioners propose construing “keyword” to mean “one or more words or pieces of information, such as a specific data pattern, that is associated with at least one node or vertex.” Id. at 14‒15. Fourth, Petitioners propose construing “jumping”3 to mean “a direct traversal from one node or vertex to another node or vertex that is not directly connected to it (i.e., without traversal through any intervening nodes or vertices or to a node or vertex whose only least common ancestor with that node or vertex is the root node or vertex).” Id. at 15. Petitioners assert that the Applicant defined “jumping” in this manner during prosecution of 3 Independent claim 1 recites “jumping to the at least one node” and independent claim 7 recites “jumping to the vertex.” Ex. 1001, 22:57, 24:11. the ’379 patent. Id. at 15. Fifth, Petitioners propose construing “verbal description” to mean “a set of words relating to the subject matter whether presented audibly or in written form.” Id. at 15‒16. Patent Owner did not explicitly propose construing any claim terms in its Preliminary Response. See generally Prelim. Resp. In our Decision on Institution, we adopted Petitioners’ proposed construction of the term “jumping”: “a direct traversal from one node or vertex to another node or vertex that is not directly connected to it (i.e., without traversal through any intervening nodes or vertices or to a node or vertex whose only least common ancestor with that node or vertex is the root node or vertex).” Inst. Dec. 8. We determined that no other terms required explicit construction. Id. The parties do not dispute the constructions of these terms in their briefing. See PO Resp. 6; Reply 11–12. Upon considering the complete record, we see no reason to deviate from our preliminary determination for this Final Written Decision and adopt Petitioner’s construction of the term “jumping.” For the purposes of this Final Written Decision, no other terms require explicit construction. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for petitioner

    “As admitted by Patent Owner, this argument was not raised in the Patent Owner Response. Tr. 16:17–20, 23:11‒14. Instead, this argument was raised for first time at the hearing, during which Petitioners timely objected. Tr. 27:17–28:5. Because Patent Owner did not raise this argument timely and in a substantive brief, this argument is deemed waived. See Paper 10 (Scheduling Order), 8 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”); see also See Novartis AG v. Torrent Pharm. Ltd., 853 F.3d 1316, 1330 (Fed. Cir. 2017); In re NuVasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016).” slip op. at 15

  Patent outcomesUS 7,231,379 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,231,379
• Netapp, Inc. v. Kom Software, Inc.Some claims unpatentable
  PTAB · Jul 28, 2020 · IPR2019-00603 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–7, 45, 49–51, 55–57, and 59 are unpatentable as obvious over Blickenstaff and Crouse; claims 46–48 and 52–54 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Although the parties articulate different levels of skill for a POSA, neither party explains how its recited level of skill impacts the obviousness analysis such that application of one proposal versus the other would lead to different ultimate outcomes. Based on the record before us, including the types of problems and solutions described in the ’234 patent and the cited prior art, we determine that a person of ordinary skill in the art would have had a bachelor’s degree in a technical field such as computer engineering, computer science, electrical engineering, electronics engineering, applied mathematics, or their equivalent, with two years of experience in the field of computing systems development, including fields of data storage management or file storage and manipulation; a master’s degree in such a technical field; or comparable computing systems work experience. We further note that our analysis would be the same under either parties’ definition.” slip op. at 9

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

    “Thus, the actual dispute centers around whether or not transparent access requires a user to know or believe that the file is located in a particular location. For the reasons discussed below, we determine that though transparent access allows for the user to falsely believe the file is located in a particular location, it does not require such belief.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner

    “that the last storage medium associated with the archived files must be part of the virtual storage. See Reply 21–22. Rather, Petitioner responds by changing its position that retirement layer 315 is the last storage layer within the virtual storage to stating that shelf layer 314 is the last storage layer within the virtual storage and that shelf layer 314 is associated with archived files. Compare Pet. 36 with Reply 21–22 (citing Ex. 1005, 6:61–7:3, 8:2–4; Pet. 35–37, 50, 57). Petitioner cites the Petition and Dr. Long’s Declaration for support that “Blickenstaff discloses successive migration through the layers of its hierarchy based on activity, including to layer 314.” Reply 21 (citing Pet. 50, 57; Long Decl. ¶ 76). Neither the Petition nor Dr. Long’s declaration, however, discusses shelf layer 314, let alone asserts that shelf 12 Petitioner’s contentions for claims 46 and 52 refer to the contentions for claim 3, which, according to Petitioner, “addresses identical language,” and provide no additional explanation. Pet. 50, 57. layer 314 is associated with archived files. See Pet. 50, 57; Long Decl. ¶ 76. In fact, a word search of the Petition and Dr. Long’s Declaration reveal that shelf layer 314 is not discussed in either document, though it is shown in Blickenstaff’s Figure 3, which is reproduced in the documents. The Petition does include some general statements about moving files between layers, but when discussing Blickenstaff’s embodiment in Figure 3 there is no mention of shelf layer 314, even though layers 311, 312, 313, and 315 are explicitly mentioned. See Pet. 35–36; Long Decl. ¶¶ 74–75. We determine that Petitioner’s argument that shelf layer 314 is the claimed last storage medium that is associated with archived files is an improper argument because a “Petitioner may not submit new . . . argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019, 73. In its Reply, Petitioner also belatedly attempts to explain how Blickenstaff’s retirement layer, although not considered to be part of Blickenstaff’s virtual storage, is nonetheless part of “virtual storage” as that term is used in the ’234 patent. Reply 22. This argument also is not grounded in Petitioner’s original assertions and is improper in a reply.” slip op. at 39

  Patent outcomesUS 7,392,234 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,392,234

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