- NXP USA, Inc. v. Bell Semiconductor, LLCInstitution deniedPTAB · May 15, 2024 · IPR2024-00142 · APJ John D Hamann · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–16 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 314 (2018) and 37 C.F.R. § 42.4(a). An inter partes review may be instituted if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the papers, we determine that the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that at least one challenged claim is unpatentable. Accordingly, we deny the Petition and do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art at the time of the invention of the ’330 patent “would have had at least the equivalent of a bachelor’s degree in electrical engineering and one to two years of experience in the field of circuit design, particularly the design of circuits operating at high frequencies.” Pet. 4 (citing Ex. 1002 ¶ 29). Patent Owner does not identify a level of skill in the art that one would have had at the time of the invention of the ’330 patent or identify any specific shortcoming in Petitioner’s definition. See Prelim. Resp. 7. For purposes of this Decision on Institution, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 4. This definition is consistent with the ’330 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther
“Petitioner argues that “no express constructions of the claims are necessary to assess whether the prior art reads on the challenged claims.” Pet. 8. However, Petitioner also cites to a Special Master Report and Recommendation on Claim Construction where “node” was construed to mean “a point of connection or intersection in an electrical circuit.” Id. at 9 (quoting Ex. 1015, 29). Patent Owner adopts this construction for purposes of this Decision on Institution. Prelim. Resp. 8. We find that this construction is consistent with the plain and ordinary meaning of the term “node.” We thus apply the construction as such to our analysis below, and we determine that we need not provide an express construction of any other claim term for purposes of this institution decision.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“[claim] limitation is found either expressly or inherently in a single prior art reference.” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 1273 (Fed. Cir. 2017). “A claim limitation is inherent in the prior art if it is necessarily present in the prior art, not merely probably or possibly present.” Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003) (citing Rosco, Inc. v. Mirror Lite, Co., 304 F.3d 1373, 1380 (Fed. Cir. 2002)). Moreover, “[t]o anticipate, the reference must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.” Sanofi-Synthelabo v. Apotex, Inc., 550 F. 3d 1075, 1083 (Fed. Cir. 2008) (internal quotation marks omitted). In other words, it is not enough to be able to find all of the pieces of the claimed invention somewhere in a prior art reference; rather, those elements must be set out in the prior art reference in the same way they are in the claimed invention. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (“Because the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,535,330 - NXP USA, Inc. v. Bell Semiconductor, LLCInstitution deniedPTAB · May 13, 2024 · IPR2024-00167 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood that any challenged claim was unpatentable over the asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Upon consideration of the Petition, the Preliminary Response, and the evidence presented, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of any challenged claim based on any ground asserted in the Petition. IV. ORDER For the reasons given, it is: ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is denied, and no inter partes review is instituted.” slip op. at 22
- BurdenDecided for patent owner
“For all of the foregoing reasons, Petitioner has failed to demonstrate sufficiently that Okabe discloses a semiconductor integrated circuit package with a first layer that includes “a first ground plane enabling electrical connection with low speed electronic circuitry” and a “second ground plane enabling electrical connection with high speed electronic circuitry.” Ex. 1001, 9:25–36.” slip op. at 16
- 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 would have had a “bachelor’s degree in a field relating to the integrated circuit package manufacturing process like materials science, physics, electrical engineering, or other related subjects, and at least two to three years of experience with fabrication and packaging of integrated circuits.” Pet. 4 (citing Ex. 1002 Preliminary Response. Prelim. Resp. 7. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art.” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner’s arguments are not persuasive. As Patent Owner and Dr. Bernstein point out, Petitioner does not specify the frequencies at which duplexer 45 and VCO 70 operate in Okabe. Prelim. Resp. 20; Ex. 2001 ¶ 79. Nor does Petitioner direct us to any criteria for classifying circuitry as “high speed” or “low speed.” Prelim. Resp. 20; Ex. 2001 ¶ 79. As a result, we are left with only the assertion of what a person of ordinary skill in the art would have understood about duplexer 45 and VCO 70. To support this assertion, Petitioner directs us to statements in Dr. Baker’s declaration that mirror the Petition. Pet. 26–27 (citing Ex. 1002 ¶¶ 71–73). Dr. Baker, however, does not cite to any supporting evidence or provide any technical reasoning to support his statements. Ex. 1002 ¶¶ 71–73. “Thus, the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential); see also 37 C.F.R. § 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.”). Accordingly, Petitioner has failed to demonstrate sufficiently that Okabe discloses a second layer that includes a “third ground plane configured for electrical connection with low speed electronic circuitry” and a “fourth ground plane configured for electrical connection with high speed electronic circuitry.” Ex. 1001, 9:37– 43.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,646,091 - NXP USA, Inc. v. Bell Semiconductor, LLCInstitutedPTAB · May 8, 2024 · IPR2024-00168 · APJ Brian D Range · IPR · Institution
Instituted inter partes review of claims 1–6 and 8 on all petition grounds addressing those claims, based on a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–6 and 8 of the ’245 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in a field relating to the semiconductor manufacturing process, such as materials science, physics, electrical engineering, and/or other related subjects, and at least two to three years of experience with fabrication of integrated circuits.” Pet. 4 (citing Ex. 1002 ¶ 20). Petitioner also contends “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 4–5. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’245 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Claim 1 affirmatively recites, for example, “a plurality of layers under the top layer.” Ex. 1001, 4:13. Claim 1 also affirmatively recites that the “plurality of layers compris[es] a bottom routing layer having signal traces thereon.” Id. at 4:14–15. So, claim 1 requires a bottom routing layer having signal traces. Claim 1 then recites “where[] none of the signal traces of the bottom routing layer are located over ball pads of the ball pad layer which are disposed in an area within two ball pad pitches of the corner of the die.” Id. at 4:17–20. This recitation serves to describe the “signal traces of the bottom routing layer.” The recitation does not affirmatively recite a required location of any ball pads. Likewise, the claim as a whole also does not state that the ball pad layer comprises ball pads disposed within two ball pad pitches of the corner of the die. Rather, the claim recites “said ball pad layer having a plurality of ball pads” without affirmatively indicating where those ball pads must be located within the ball pad layer. Thus, on the present record, we interpret claim 1’s recitation of “none of the signal traces . . . within two ball pad pitches of the corner of the die” as requiring that no signal traces of the bottom routing layer be located over ball pads of the ball pad layer disposed within two ball pad pitches of the corner of the die if any such ball pads exist in this location. We do not interpret claim 1 as affirmatively requiring ball pads disposed within two ball pad pitches of the corner of the die. To the extent Patent Owner maintains arguments regarding this recitation in a Patent Owner Response, we invite the parties to further address this claim construction issue at trial to the extent permitted by our rules.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We have reviewed Petitioner’s contentions for all of the elements of independent claim 1, as well as the supporting evidence. Pet. 45–55. Based on the record before us, we are persuaded that Petitioner’s discussion of the particular structures and methods in Chung and Celeron establishes a reasonable likelihood of prevailing at trial on the issue of whether the combined teachings of Chung and Celeron teach or suggest all of the limitations of independent claim 1. Id. Also, based on the present record, we are persuaded that Petitioner adequately establishes that a person having ordinary skill in the art would have had reason to combine the teachings of Chung and Celeron.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,345,245 - PTAB · Apr 2, 2024 · IPR2023-01414 · APJ Jeffrey W Abraham · IPR · Institution
The Board instituted IPR on claims 1–4 and 9–12 across all asserted grounds, finding a reasonable likelihood that claims 1–4 and 9–12 are obvious over Li-748, Tong, and Mao.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a Bachelor’s degree in Electrical Engineering, Computer Engineering, Computer Science, or a related field, and at least 2 years of experience in the field of wireless communication, or had equivalent education, work, or” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“After considering the arguments and information presented in the Petition, we determine that it is not necessary to construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). We do note, however, that limitation [9f] refers to producing “the transmitter beamforming information,” but the phrase “transmitting beamforming information” does not appear earlier in claim 9. We, therefore, question whether there is proper antecedent basis for “the transmitter beamforming information” in [9f]. We invite the parties to address this issue to clarify the language in claim 9 during the course of the proceeding.” slip op. at 9
Claim constructioncites PhillipsPatents in suitUS 8,416,862 - PTAB · Mar 26, 2024 · IPR2023-01382 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted IPR of claims 1–3 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 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 the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of all challenged claims of the ’347 patent on all grounds asserted in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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 and/or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies.” Pet. 19 (citing Ex. 1003 ¶¶ 52–53). Petitioner also contends that “[a]dditional education could substitute for professional experience and vice versa.” Pet. 19. Patent Owner does not challenge Petitioner’s definition or offer its own. See generally Prelim. Resp. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’347 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’347 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”)” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“type gate material of independent claim 1 requires that the “bottom of the ptype gate material is more than 10% wider than the top of the material.” Pet. 19. We begin our analysis with the language of the claims themselves. See Phillips, 415 F.3d at 1312. Here, the claims do not recite any numerical degree of horizontal extension, let alone a requirement that the bottom of the p-type gate material must be more than 10% wider than the top of the material. Thus, the plain language of the claims themselves do not support Petitioner’s proposed construction. Of course, the claims do not stand alone, but rather, must be read in view of the specification, of which they are part. Phillips, 415 F.3d at 1313. Petitioner relies on a numerical value for horizontal extension disclosed in Lidow, which is incorporated by reference in the ’347 patent. Pet. 20 (citing Ex. 1011 ¶¶ 41–42, Fig. 8; Ex. 1003 ¶¶ 70–74). But Lidow’s disclosure of a numerical value (10%) is made in the context of discussing a single embodiment. Ex. 1011 ¶ 41. Lidow does not include a numerical value in its disclosure of other embodiments. See, e.g., Ex. 1011 ¶¶ 43–51.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Again, Patent Owner’s arguments raise issues that are best resolved on a full record. While we do have some concern’s regarding Petitioner’s asserted reasons to combine all of the prior art references, Petitioner has provided sufficient argument and evidence for purposes of institution that a POSITA would have had reason to manufacture the modified Figure 1A of Saxler by using Beach’s self-aligned technique with Shenoy’s isotropic etching process, and would have had a reasonable expectation of success. Pet. 32 (citing Ex. 1003 ¶¶ 60–62, 93; Ex. 1014 (Xu); Ex. 1021 (Sheppard); Ex. 1015 (Smith); Ex. 1018 (Hu); Ex. 1009 (Shenoy); Widmann (Ex. 1023); Ahn (Ex. 1010); see also Pet. 31–35. For example, Dr. Shealy testifies that a POSITA would have recognized that using Beach’s self-aligned techniques and Shenoy’s isotropic etching process to arrive at Saxler’s non-recessed gate structure would have been a simple and predictable combination in view of Smith’s use of self-alignment techniques to create its stacked gate structure and would have done so to reduce steps and costs while improving reproducibility. Ex. 1003 ¶ 93. We also note that we understand Petitioner’s proposed combination uses a single photomask when etching both the gate metal and the p-type gate material layer, including when etching the gate metal to form a pair of ledges on the p-type gate material below the gate metal. See, e.g., Pet. 48 (stating that it would have been obvious to use one mask to etch the gate metal and cap layer and further stating that using Shenoy’s method of isotropically etching the gate metal would form symmetric undercuts of the photomask). To the extent, the Board’s understanding of Petitioner’s argument is not correct, the parties are urged to address this issue. Finally, Patent Owner asserts that Shenoy is non-analogous art and may not be combined with Saxler or Beach because Shenoy involves electrochemical etching, a highly specialized etching method with little relevance to the process described in the ’347 patent or Saxler. Prelim. Resp. 27.” slip op. at 32
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,748,347 - PTAB · Mar 26, 2024 · IPR2023-01384 · APJ Jeffrey W Abraham · IPR · Institution
The Board instituted IPR on claims 1–7 and all petitioned grounds, finding a reasonable likelihood that claims 1, 3, and 4 are unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because Petitioner has demonstrated a reasonable likelihood that at least one challenged claim of the ’335 patent is unpatentable over the prior art of record, we institute an inter partes review of all challenged claims. And because we find some grounds sufficient for institution, we institute on all grounds in the petition. See SAS, 138 S. Ct. at 1353 (2018); PGS Geophysical, 891 F.3d at 1360. determination with respect to the patentability of any challenged claim or any underlying factual or legal issue, including claim construction. IV. ORDER For the reasons given, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–7 of the ’335 patent is instituted with respect to all grounds of unpatentability asserted in the Petition, commencing on the entry date of this Decision; and FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of trial.” slip op. at 54
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had “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 and/or 1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, took effect on March 16, 2013. Because the ’335 patent has an effective filing date prior to the effective date of the applicable AIA amendments, the pre-AIA version of § 103 applies. 2 US 2006/0108606 A1, published May 25, 2006 (Ex. 1007). 3 JP H11-261053, published Sept. 24, 1999 (Ex. 1005 (original language); Ex. 1006 (certified English translation)). 4 US 2007/0007547 A1, published Jan. 11, 2007 (Ex. 1008). 5 R.V. Shenoy, et. al, Effect of Mask Wall Angle on Shape Evolution during Through-Mask Electrochemical Micromachining, J. ELECTROCHEM. SOC., Vol. 143, No. 2, 544, Feb. 1996 (Ex. 1013). device operation, or the development of new device topologies.” Pet. 18 (citing Ex. 1003 ¶¶ 52–53). Petitioner also contends that “[a]dditional education could substitute for professional experience and vice versa.” Pet. 18. Patent Owner does not challenge Petitioner’s definition or offer its own. See generally Prelim. Resp. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’335 patent and the prior art of record, at this stage of the proceeding we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’335 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“type gate material of independent claims 1 and 5 requires that the “bottom of the p-type gate material is more than 10% wider than the top of the material.” Pet. 19. We begin our analysis with the language of the claims themselves. See Phillips, 415 F.3d at 1312. Here, the claims do not recite 7 Patent Owner cites to the Lidow-508 patent itself, instead of the published application included in the record as Ex. 1011, which Petitioner cites to. The parties have not identified any difference between the two references. the bottom of the p-type gate material must be more than 10% wider than the top of the material. Ex. 1001, 5:5–6:30. Thus, the plain language of the claims themselves does not support Petitioner’s proposed construction.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“As discussed above, however, we are persuaded, at this stage, by Petitioner’s argument that that Saxler teaches or suggests an operable enhancement-mode device. See § II.D.1.a.i, supra. Additionally, Patent Owner’s argument regarding modifications that “could be detrimental” to certain devices is not only speculation, but also comprised entirely of attorney argument. Finally, Patent Owner does not directly address Petitioner’s arguments and accompanying evidence that a person of ordinary skill in the art would have had reason to combine the teachings of Saxler and Yoshida to take advantage of simplified manufacturing steps and reduced costs. Based on the present record, Petitioner has sufficiently shown that Saxler and Yoshida disclose or suggest all of the limitations in claims 1, 3, and 4, and that a person of ordinary skill in the art would have had a reason to combine the teachings of Saxler and Yoshida with a reasonable expectation of success. Accordingly, we determine Petitioner has established a reasonable likelihood of prevailing on its challenge that claims 1, 3, and 4 are unpatentable as obvious in view of Saxler and Yoshida. For the same reasons as noted above, we decline to address Petitioner’s challenge of claims 2 and 5–7 based on Saxler and Yoshida alone at this stage. See § II.D.1.c, supra.” slip op. at 44
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,312,335 - PTAB · Mar 20, 2024 · IPR2023-01381 · APJ Jon B Tornquist · IPR · Institution
Instituted IPR of claims 1–12 on all petition grounds; the Board found a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail on at least one of the challenged claims of the ’294 patent. Accordingly, we institute an inter partes review as to all of the challenged claims of the ’294 patent on all of the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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. Patent Owner does not address the knowledge or education of a person of ordinary skill in the art. On this record, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it appears consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner contends the terms “compensated GaN layer” and “above” require construction. Pet. 12–17; Prelim. Reply 1–5. Patent Owner contends only the term “compensated GaN layer” requires construction. Prelim. Resp. 5–15; Prelim. Sur-reply 1–3. Upon review of the parties’ arguments and evidence, we determine that only the term “compensated GaN layer” requires construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Claims Claim terms are generally given their ordinary and customary meaning, which is the “meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips, 415 F.3d at 1313. Patent Owner does not present evidence that the ordinary meaning in the art of a “GaN layer” is “GaN gate material.” Indeed, the prior art of record discloses multiple GaN layers that do not appear to be “gate material.” Ex. 1006 ¶ 32; Ex. 1005 ¶ 74 (“the channel layer 20 is GaN”); Ex. 1008 ¶¶ 24–25 (noting that the buffer layer and semiconductor layer are GaN). Nor does Patent Owner contend that the term “compensated” requires or implies a particular orientation or location with respect to the gate contact. Thus, by itself, the term “compensated GaN layer” does not require a “compensated GaN gate material.” Rather, Patent Owner contends that given the placement of the “compensated GaN layer” above the barrier layer and below the gate contact, one of ordinary skill in the art would have understood that the claimed “compensated GaN layer” is a “compensated GaN gate material.” Prelim. Resp. 7. We are not persuaded by this argument, at this stage of the proceeding, because the prior art (Uemoto) discloses a compensated GaN layer that is above a barrier layer and below a gate contact, as recited in claim 1, and Patent Owner contends this layer is not a “compensated GaN layer.” Ex. 1006, Fig. 7; Prelim. Resp. 31–32. This tends to suggest that the placement of a “compensated GaN layer” above a barrier layer and below a gate contact, without more, does not necessarily indicate that said layer is part of the gate. In view of the foregoing, on this record, we determine that the language and structure of claim 1 does not support a construction requiring that the “compensated GaN layer” be a “compensated GaN gate material.”” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,350,294 - PTAB · Mar 20, 2024 · IPR2023-01383 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted review of claims 1–5 on all asserted grounds after finding a reasonable likelihood that claim 1 would have been obvious over Yoshida, Beach, and Sheppard.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 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 the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine that Petitioner has sufficiently shown a reasonable likelihood that it would prevail with respect to at least one claim of the ’508 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’508 patent on all grounds asserted in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), includes revisions to Section 103 that became effective on March 16, 2013. Because the challenged claims issued from an application filed before March 16, 2013, we apply the pre-AIA law to the challenges. See Ex. 1001, code (30). 2 JP H11-261053, published Sept. 24, 1999 (Ex. 1004, pp. 8–11 (original language), pp. 1–7 (certified English translation), p. 12 (certification) “Yoshida”)). All references are to the English translation portion of Ex. 1004. 3 US 2007/0057624, published June 23, 2005 (Ex. 1005, “Beach”). 4 US 7,238,560, issued July 3, 2007 (Ex. 1006, “Sheppard”). 5 US Pub. App. No. 2006/0273347, published Dec. 7, 2006 (Ex. 1007, “Hikita-347”). 6 US Pub. App. No. 2008/0079023, published Apr. 3, 2008 (Ex. 1008, “Hikita-023”). education could substitute for professional experience and vice versa.” Pet. 11 (citing Ex 1003 ¶ 69). Patent Owner does not challenge Petitioner’s definition or offer its own. See generally, Prelim. Resp. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’508 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’508 patent and the prior art.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“At this stage of the proceeding, based on the present record, we determine that the claims require that the dielectric layer steps of [1f] must occur before the ohmic contact steps of [1g] but that the claims do not require that the gate structure be formed before the source and drain contacts. Step [1f] recites depositing a dielectric layer; applying a contact photo resistant pattern; etching the dielectric layer to open the drain and source contact area; and removing the contact photo resistant pattern. Ex. 1001, 7:5–9. Thus, it appears that the drain and source contact area recited in step [1f3] is the area where the drain and source contacts are formed. The ohmic contact steps of [1g] are directed to forming the drain and source contacts. As a matter of logic, the drain source contact area must be opened before the drain and source contacts are formed. As such, the dielectric layer steps of and removal of the contact photo resistant pattern––must be performed before the ohmic contact steps of [1g] to form the Ohmic drain and source contacts are performed. Petitioner does not dispute this construction. See Reply 1–9 (disputing whether the gate must be formed before the source and drain, but not disputing that the dielectric layer [1f1] must be deposited before forming the source and drain contacts [1g]).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“contact is formed after the source and drain contacts are formed––differs from Beach’s process––which appears to form the gate contact at the same time as the ohmic (source/drain). We also acknowledge Patent Owner’s arguments that these two methods are inconsistent and contrary to each other. Prelim. Resp. 20–22. However, Petitioner has provided evidence and argument, supported by declaration testimony, that it would have been obvious to combine Yoshida and Beach to arrive at the subject matter of claim 1. For example, Petitioner asserts that a POSITA would have been motivated to use Beach’s resist pattern 13 as a single gate photo resistant pattern to etch away both Yoshida’s gate contact layer and doped GaN layer in order to remove the second mask step to decrease costs and simplify the manufacturing process, as well as improve gate alignment. Pet. 21 (citing, inter alia, Ex. 1003 ¶¶ 125–126). Petitioner has also provided evidence and arguments, supported by declaration testimony, that a POSITA would have been motivated to use Beach’s resist pattern 13 as a metal photo resistant pattern to etch away Yoshida’s metal Al (ohmic contact metal) deposited on layer 4. Pet. 35 (citing Ex. 1004 ¶¶ 10, 22; Ex. 1003 ¶ 135). These contentions are sufficient, for purposes of institution, to show that a POSITA would have had reason to combine Yoshida and Beach in the manner and arguments, supported by declaration testimony, that a POSITA would have had a reasonable expectation of success in combining the teachings of the prior art to arrive at the claimed invention. Pet. 20. We have considered all of Patent Owner’s arguments to the contrary, and determine they raise issues best resolved on a full record. For all of the foregoing reasons, we determine that Petitioner has sufficiently shown that Yoshida, Beach, and Sheppard teach or suggest all of the limitations of claim 1 and that a person of ordinary skill in the art would have had reason to combine the teachings of the asserted art. Accordingly, we determine that Petitioner has demonstrated a reasonable likelihood of showing that claim 1 would have been obvious over Yoshida, Beach, and Sheppard.” slip op. at 29
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,404,508 - Wenzhou Xin Xin Sanitary Ware Co., Ltd. v. Delta Faucet CompanyInstitution deniedPTAB · Feb 7, 2024 · IPR2023-01332 · APJ Jane E Inglese · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–7, 10–17, 20, 21, 23, and 24 were unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“C. Principles of Law “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). When an obviousness challenge asserts a combination of identified prior art, “it [is] important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The relevant inquiry is “whether ‘a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention.” Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (internal citations omitted) (emphasis added); Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (“Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination.”).” slip op. at 12
- BurdenDenied
“We are unable to discern how the Petitioner proposes modifying Van Der Linden’s vessel rinsing apparatus “to incorporate the longitudinal mounting member (body 3) and mounting method of Shen Wei,” however. Neither the Petitioner nor Mr. Cook describes the proposed modifications with sufficient particularity to allow us to understand the specific nature of the proposed modifications. Pet. 9; Ex. 1005 ¶ 59. Furthermore, the Petitioner does not provide any objective evidence to support the Petitioner’s assertions that modifying Van Der Linden’s vessel rinsing apparatus as the Petitioner proposes would minimize the number of components in the apparatus “for cost and reliability,” and would provide “increased standalone stability.” Pet. 9. Although the Petitioner cites the Cook Declaration when making these assertions, the cited paragraph of the Declaration simply mirrors the Petitioner’s conclusory statements without providing any objective, supporting evidence. Ex. 1005 ¶ 59. In contrast, as discussed above, Van Der Linden explicitly describes advantages associated with the approach Van Der Linden uses to mount its washing device. Specifically, Van Der Linden discloses that mounting the washing device to the base of a kitchen faucet permits a common channel to be used for the tap of the kitchen faucet and for a supply line of the washing device, which advantageously reduces the number of bores in a kitchen worktop required to mount the washing device. Ex. 1006 ¶¶ 17, 39, Fig. 5. Van Der Linden further discloses that positioning the abutment surface defined by the abutment member of the device at “an angle of about 45 degrees with the vertical” directs the washing device “towards the user . . . which is advantageous for ergonomic reasons.” Id. ¶ 32. Due to the absence of any objective evidence to support the” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not found
“Due to the absence of any objective evidence to support the Petitioner’s asserted advantages of modifying Van Der Linden’s washing device “to incorporate the longitudinal mounting member (body 3) and mounting method of Shen Wei,” and Van Der Linden’s disclosure of advantages associated with its mounting approach, the Petitioner’s rationale for the proposed modifications appears to be based on impermissible hindsight. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). Simply because Van Der Linden’s washing device could be modified as the Petitioner proposes,7 in the absence of reasoning supported by objective evidence that explains why one of ordinary skill in the art actually would have so modified the device, the Petitioner does not establish that the proposed modification would have been obvious under section 103. This is because “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015).” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“B. Claim Interpretation We interpret claims “using the same claim construction standard that would be used to construe the claims in a civil action held under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b). Under this standard, claim terms generally are given their plain and ordinary meaning as would have been understood by the ordinarily skilled artisan at the time of the invention when read in the context of the specification and prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). We construe terms in controversy only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,473,277 - The Noco Company, Inc. v. Pilot, Inc.All claims unpatentablePTAB · Feb 6, 2024 · IPR2022-01417 · APJ Jeffrey W Abraham · IPR · Final written decision
Claims 1–27 are unpatentable: claims 1, 2, 5–12 and 13, 14, 17–19, 22–24, 27 are anticipated; the remaining claims are obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a Bachelor’s Degree in a relevant engineering discipline such as electrical engineering and at least two years of relevant experience in the design and/or development of automotive electrical systems, or a Masters or more advanced degree in a relevant engineering discipline such as electrical engineering.” Pet. 6–7 (citing Ex. 1003 ¶ 46). Patent Owner does not challenge Petitioner’s definition or offer its own. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’236 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’236 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “[a]ll of the claim terms are given their plain meaning, as understood by the [person of ordinary skill in the art], unless indicated otherwise.” Pet. 9. After considering the arguments and information Petitioner presents, we determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“with Petitioner that the ’236 patent is not entitled to the 2014 priority date of the original application, or any date earlier than April 21, 2021, which is the filing date of the ’236 patent. Whether the Specification complies with the written description requirement calls for a comparison of the scope of the claim with the scope of the description to determine whether the inventor has demonstrated possession of the claimed invention. See Ariad, 598 F.3d 1336 at 1353; Power Oasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). The independent claims of the ’236 patent each require (1) a load detection sensor “configured to detect presence of a vehicle battery” and (2) a reverse polarity sensor “configured to detect polarity of a vehicle battery.” Ex. 1001, 5:16–27 (claim 1), 6:7–22 (claim 13), 6:65–7:13 (claim 18), 8:1– 15 (claim 23). The Specification of the ’236 patent does not expressly disclose both a load detection sensor and reverse polarity sensor configured to perform the recited functions. Instead, the Specification identifies a single circuit, the “automatic detection module,” that “can automatically detect[] whether the load is detected” and “whether the electrode is connected with the automobile storage battery reversely.” Ex. 1001, 2:51–54. We are persuaded by Petitioner’s arguments that the disclosure of a single circuit capable of performing two functions does not demonstrate the inventors had possession of an invention that requires two separate sensors configured to perform separate functions as recited in the claims. See Ariad, 598 F.3d 1336 at 1352 (“[A] description that merely renders the invention obvious does not satisfy the [written description] requirement.”); Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (holding that “the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue,” but that “one skilled in the art, reading the original disclosure, must immediately discern the limitation at issue in the claims”); cf. PIN/NIP, Inc. v. Platte Chem. Co., 304 F.3d 1235, 1248 (Fed. Cir. 2002) (finding a claim for a method involving sequential application of two chemicals was invalid for lack of adequate written description where the specification indicated that the invention was a method of applying a “composition” containing the two chemicals). For all of the foregoing reasons, we agree with Petitioner that the Specification of the ’236 patent does not provide adequate written description support for distinct “load detection” and “reverse polarity” sensors, and, therefore, the challenged claims are not entitled to a priority date earlier than April 21, 2021, the filing date of the ʼ236 patent.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“demonstrating that Nook-015 discloses the limitations in claim 1. After reviewing the undisputed evidence and arguments Petitioner presents in the Petition regarding claim 1, we agree, for the reasons stated by Petitioner and supported by Dr. Wood’s testimony, that Nook-015 discloses an internal power supply, output port, load detection sensor, reverse polarity sensor, power switch, and microcontroller, all connected and configured as claim 1 requires. Ex. 1004, 3:17–26, 3:67–4:2, 4:20–38, 5:35–37, 5:50–54, 8:4–37; Ex. 1003 ¶¶ 78–79; Pet. 25–29. b. Claims 2 and 5–12 Claims 2 and 5–12 depend directly or indirectly from claim 1. Petitioner directs us to portions of Nook-015 that disclose the additional limitations in these claims. Pet. 29–33. Patent Owner does not dispute Petitioner’s arguments or evidence regarding these dependent claims. For the reasons stated by Petitioner and supported by Dr. Wood’s testimony, we agree that Nook-015 discloses the limitations recited in these claims, as discussed below.” slip op. at 20
Patent outcomesUS 11,104,236 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,104,236
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.