- PTAB · Oct 26, 2021 · IPR2021-00715 · APJ Christopher L Ogden · IPR · Institution
The Board instituted inter partes review of claims 8, 13–16, and 18 on both obviousness grounds because Roku showed a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“(see Prelim. Resp. 49), a decision instituting or denying inter partes review in this proceeding is due by October 28, 2021. See 35 U.S.C. § 314(b)(1). Because the trial date in the parallel district court proceeding is set for roughly six months before the Board’s statutory deadline for issuing a final written decision, this factor weighs in favor of denying institution.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“at this stage, that a person of ordinary skill in the art would have had reason to modify Larsson’s system by incorporating encryption as taught in Ortiz, to achieve limitation 8[m] with a reasonable expectation of success. And for all the above reasons, having considered Roku’s arguments and supporting declaratory testimony regarding claim 8 as a whole and Flexiworld’s responsive arguments and evidence, we determine that Roku has shown that there is a reasonable likelihood that it would prevail with respect to claim 8.” slip op. at 34
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field with at least two years of experience developing software,” and “[a] person with less education but more relevant practical experience may also meet this standard.” Pet. 12 (citing Ex. 1002 ¶¶ 24–25). Flexiworld does not address the level of ordinary skill in the art in its Preliminary Response. Because Roku’s uncontested articulation of that level of skill is supported by testimonial evidence and appears reasonable at this stage in light of the subject matter of the ’114 patent, we adopt it for this decision. If Flexiworld contests this articulation at trial, we will consider any evidence that Flexiworld submits, in light of the full trial record.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“dispute the construction of “one or more servers” and “one or more devices.” Pet. 11. But Roku argues that these constructions are irrelevant for this proceeding, and Roku “does not believe that any claim constructions are needed.” Id. Flexiworld also refers to this dispute in the Related Action, but does not propose explicit constructions for these or any other terms. See Prelim. Resp. 8 (citing Ex. 2010). We agree that the meaning of “one or more servers” and “one or more devices” is not pertinent to the outcome of our decision. To the extent any term needs construction, we address the term in the arguments below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,346,114 - Juniper Networks, Inc. v. Correct Transmission, LLCInstitution deniedPTAB · Oct 22, 2021 · IPR2021-00814 · APJ Stephen E Belisle · IPR · Institution
The Board denied institution on claims 1–3, 6, 7, 9–15, 18–24, 26, 27, and 30–32 because neither obviousness ground showed a reasonable likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2020). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Applying those standards, and upon consideration of the information presented in the Petition, Preliminary Response, and supplemental briefing, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of challenged claims 1–3, 6, 7, 9–15, 18–24, 26, 27, and 30–32 of the ’928 patent. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, constrained by the record before us, we deny institution of an inter partes review of the ’928 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a closely related field, and one to two years of experience in the design and development of network communication systems. Alternatively, a POSITA would have a Master’s degree or similar post-graduate work in electrical engineering, computer engineering, computer science, or a closely related field, and less years of design and development experience. Pet. 7 (citing Ex. 1003 ¶¶ 67–71). Patent Owner does not present an alternative definition at this stage of the proceeding. Prelim. Resp. 30. We regard Petitioner’s proposed definition as reasonable, and” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Petitioner does not propose any claim terms for construction. Pet. 7 (“For purposes of this proceeding, Petitioner construes each of the ’928 claim terms as having its ordinary and custom[ary] meaning.”). Although, Petitioner does submit that, “[f]or purposes of this IPR only, Petitioner relies on the claim scope positions Patent Owner has advanced in district court for ‘port definer module.’” Pet. 8. Similarly, Patent Owner argues each claim term should have its ordinary and customary meaning, except that, as in the parallel district court proceeding, the function of alleged means-plus-function term “port definer module” should be construed to be “designating any one physical link of the logical link and examining the designated link of the logical link.” Prelim. Resp. 11–12. We note that, in the Preliminary Response, Patent Owner does not appear to identify any structure in the Specification for performing that function. See generally Prelim. Resp. Regardless, we do not find that the express construction of any term is necessary for this decision. See 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.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner has not explained sufficiently, let alone with particularity, why the skilled artisan, but for hindsight, would have (1) taken Y.1731, which says nothing concerning aggregated physical links with a single logical link to which packets are directed; (2) then turned to the architectural basis for Y.1731, namely “Ethernet specification G.8010/Y.1306”; (3) then turned to standards “IEEE 802.1D, 802.1Q, and 802.3,” which are “account[ed] for” by G.8010/Y.1306, and specifically selected to pursue 802.3 from among those; (4) then, without any reference or indication in Y.1731 itself, turned specifically to standard IEEE 802.3ad within the set of 802.3 standards, and specifically to its disclosure of aggregated physical links with a single logical link; and then (5) upon making all of these connections, understood Y.1731 itself to disclose or teach aggregated physical links with a single logical link, particularly in the context of the Challenged Claims as a whole. See InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014) (“It appears that [the expert] relied on the [] patent itself as her roadmap for putting what she referred to as pieces of a ‘jigsaw puzzle’ together.”); Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)) (“To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.”). Although “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton” (KSR, 550 U.S. at 421), the Federal Circuit has observed that “‘the prejudice of hindsight bias’ often overlooks that the ‘genius of invention is often a combination of known elements which in hindsight seems preordained.’” Polaris Industries, Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068 (Fed. Cir. 2018).” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,768,928 - PTAB · Oct 13, 2021 · IPR2021-00713 · APJ Brent M Dougal · IPR · Institution
The Board instituted IPR on claims 7, 8, 10, 11, 14, 15, 17, and 19 on all petition grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“argue that the reason to combine Ikonen and Gu is insufficient. Prelim. Resp. 47–52. However, Patent Owner’s argument misidentifies the proposed combination. While Patent Owner argues that there is no reason “why a POSA would have been motivated to substitute Ikonen’s Bluetooth solution with Gu’s (HTTP and TCP/IP based) UPnP networking framework,” the actual combination appears to be to implement Gu’s UPnP framework on Ikonen’s wireless LAN. Pet. 42 (“UPnP relies on IP networking . . . which a POSA would have known to be compatible with Ikonen’s wireless LAN option.”); Ex. 1002 ¶ 140 (Petitioner’s declarant explaining that UPnP could be implemented over a wireless LAN); see also Pet. 40–42 (the section entitled “Motivation to Combine” includes no explicit references to Ikonen’s teaching of Bluetooth, but rather only discusses Ikonen’s wireless LAN). All of Patent Owner’s arguments over the reason to combine focus on Ikonen’s teaching of Bluetooth, rather than Ikonen’s wireless LAN. See Prelim. Resp. 47–52. But, as we view the Petition to clearly set forth a reasonable rationale to combine Gu’s UPnP with Ikonen’s wireless LAN, and to provide evidence in support, Patent Owner’s arguments do not identify any shortcomings that undermine Petitioner’s showing at this stage. We do note that the Petition often refers to both of Ikonen’s teachings of Bluetooth and wireless LAN when discussing Ikonen individually. But, the Petition only refers to Ikonen’s teachings of wireless LAN when discussing the combination with Gu.” slip op. at 14
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedReference not prior artDecided for patent owner
“the ’101 provisional for each claim element of claims 7, 8, 10, and 11 of the ’066 patent. Prelim. Resp. 39–40. In response to Petitioner’s arguments about the prior art status of Yamaguchi (Reply 1–5), Patent Owner offers the testimony of Todor Cooklev, Ph.D. (Ex. 2029) in support. Sur-reply 1–4. Patent Owner also relies on the testimony of Petitioner’s declarant Samrat Bhattacharjee, Ph.D. (Ex. 1002). Sur-reply 2. Based on the current record, and for the reasons discussed below, we agree with Patent Owner that claims 7, 8, 10, and 11 of the ’066 patent are supported by the ’101 provisional and therefore, Yamaguchi is not prior art.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“In essence, Petitioner has offered two positions as to the meaning of “wireless output device” in claim 7; one outlined in the Petition, supported by Petitioner’s declarant, Patent Owner, and Patent Owner’s declarant, and a second position outlined in the Reply that contradicts the Petition and is not supported by either of the declarants.10 It is on the basis of this new claim construction that Petitioner argues that the ’101 provisional does not provide support for this aspect of claim 7. As we reject Petitioner’s new claim construction as unsupported by the evidence, at this stage of the proceeding, it is unnecessary to review Petitioner’s argument that the wireless output device of claim 7 is unsupported by the ’101 provisional based on this claim construction.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 10,740,066 - Unified Patents, LLC v. Ideahub Inc.All claims unpatentablePTAB · Sep 15, 2021 · IPR2020-00702 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1 and 4 are unpatentable as obvious over Kalevo and Song; the revised contingent motion to amend with substitute claim 19 is denied for lack of written-description support.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityNot time barredDecided for petitioner
“On this record, we determine that we need not address whether the Unnamed RPIs were improperly excluded because, “even if [they] were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 32 (Oct. 6, 2020) (precedential) (“SharkNinja”). Like in SharkNinja, the Unnamed RPIs here are currently members of Unified. Unlike in SharkNinja, however, neither Petitioner nor any of the Unnamed RPIs were sued. Pet. Reply 18 (asserting that “[n]o Unified member is an RPI, especially because . . . to the best of Unified’s knowledge, none has been sued or threatened with suit by Ideahub,” and that thus, “there are no . . . time-bar issues”). Petitioner also asserts that none of the Unnamed RPIs have challenged the ’849 patent. Id. (asserting that “[n]o Unified member is an RPI, especially because . . . no Unified member has filed its own patent challenge to the ’849 patent” and that thus, “there are no estoppel . . . issues”). Accordingly, we determine that neither issues of time bar nor issues of estoppel are implicated. Under the Board’s precedential decision in Lumentum Holdings, Inc. v. Capella Photonics, Inc., the Board’s jurisdiction to consider a petition does not require a “correct” identification of all RPIs in a petition. IPR2015- 00739, Paper 38 at 6 (PTAB Mar. 4, 2016) (precedential); see also Blue Coat Sys., Inc. v. Finjan, Inc., IPR2016-01444, Paper 11 at 10 (PTAB July 18, 2017) (“Evidence [of failure to identify all RPIs] is, at best, suggestive of an issue that is not jurisdictional.”). The Federal Circuit has held that § 312(a)(2) is not jurisdictional. See Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019) (“[I]f a petition fails to identify all real parties in interest under § 312(a)(2), the Director can, and does, allow the petitioner to add a real party in interest.”) (quoting Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en banc)). In the present proceeding, there is no allegation that Petitioner’s exclusion of the Unnamed RPIs should result in termination of the proceeding or denial of institution of review for any reason other than for the alleged failure of a procedural requirement that can be corrected pursuant to Board precedent. Additionally, there is no allegation or evidence that any of the Unnamed RPIs is barred or estopped from this proceeding, or that Petitioner purposefully omitted any of the Unnamed RPIs to gain some advantage.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“After our Institution Decision, Patent Owner raised two claim construction issues in its Patent Owner Response: (1) “wherein the intra mode for the current block is determined by using a [first/second] set of one or more mathematical expressions, if the intra mode for the neighboring block is the [nondirectional/directional] mode” and (2) “wherein the second set of one or more mathematical expressions is different from the first set of one or more mathematical expressions.” PO Resp. 10–18. We determine that no construction of these terms is necessary for this Final Written Decision. 1. Other Claim Terms We discern no other terms in need of express interpretation. Accordingly, we apply the legal standards set forth above when reading the claims. C. THE PARTIES’ POST-INSTITUTION ARGUMENTS” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner proposes that a person of ordinary skill A person of ordinary skill in the art at the priority date for the ’849 Patent (“POSITA”) would have had a bachelor’s degree in electrical or computer engineering, or a closely related scientific field such as physics or computer science, and two years of work experience with video processing. A lack of experience can be remedied with additional education (e.g., a Master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 4–5 years). Pet. 10–11 (citing Ex. 1003 ¶ 48). Patent Owner does not dispute this definition of a person of ordinary skill. See generally PO Resp. Patent Owner’s expert, Dr. Reader, however, testifies that It is my opinion that one of ordinary skill in the art in the field of video compression in the 2009 time period, would have had a bachelor’s degree in electrical engineering or computer science, or an equivalent degree, and two to three years of experience in the field of video compression. Ex. 2001 ¶ 45. We see no meaningful distinction between these definitions relevant to the particular issues necessary to decide this case. We adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the level of skill reflected by the Specification and in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 13
- Strike new argumentNew argument consideredDecided for petitioner
“We do not agree with Patent Owner that Petitioner’s so-called “third” theory is untimely and should be disregarded. To begin with, there is no dispute that the theory is, at least, raised with respect to claim limitation [1.8]. See PO Sur-Reply 6. Patent Owner disputes the particularity of this contention, but we find that it is sufficiently clear. The theory is not complicated and the sentence, especially given the detailed explanation of the other theories and of how Kalevo works, is sufficient to provide notice. Moreover, the cited paragraph of Dr. Freedman’s First Declaration (Paragraph 140) provides additional detail to clarify the theory. Ex. 1003 ¶ 140. Petitioner’s reply does explain how this third theory fits into Patent Owner’s arguments and claim constructions, but Petitioner’s Reply does not expand the theory beyond the contours provided in the Petition. As for limitations [1.9] and [1.10], we also find that the third theory was disclosed. To begin with the cited sentence in limitation [1.8] and supporting paragraph from Dr. Freedman’s declaration discusses the mapping of both directional and non-directional modes to classes, thus including both limitations [1.8] and [1.9]. As Petitioner points out, the Petition’s analysis of limitation [1.9] repeatedly refers back the analysis for limitation [1.8] and explicitly describes on page 52 of the Petition that Additionally, as a further teaching of this limitation, for the above case in which block L is classified as context class C3 (mapped to from directional class D4) and block U is classified as context class C4 (mapped from any one of directional classes D5, D6, or D7), the determination of each neighboring block’s classification, and thus, the determination of the intra prediction mode for the neighboring block, is based on a second set of one or more mathematical expressions. Pet. 52. Finally, with respect limitation [1.10], we note that, although it is less clear, the analysis of limitation [1.10] does explain how classes C1–C6 are not the same in that they involve different underlying rules. Id. at 55–57. Finally, Patent Owner’s arguments that “the Petition provided no analysis as to how the mapping constitutes a mathematical expression that is used in the process of determining the current block’s intra mode” is belied by the Petition’s detailed explanation of how Kalevo operates. See Pet. 16–25. Although Petitioner supports this argument with new evidence in its Reply, the Reply does not raise a new issue or argument. See Chamberlain Group, Inc. v. One World Techs., Inc., 944 F.3d 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Moreover, Patent Owner has had an adequate opportunity to address this new evidence in its Sur-Reply. See In re NuVasive, Inc., 841 F.3d 966, 972 (Fed. Cir. 2016) (finding “an opportunity to respond was needed when the petitioner . . . newly pointed to a previously unmentioned portion of the . . . prior-art patent, even though it had earlier focused extensively on other portions of that prior-art patent”).” slip op. at 24
Patent outcomesUS 9,641,849 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,641,849 - NVIDIA Corporation v. Invensas CorporationAll claims unpatentablePTAB · Sep 1, 2021 · IPR2020-01735 · APJ Bryan F Moore · IPR · Final written decision
Claims 16–22 are unpatentable as obvious over Jaso and Stine1998, and over Jaso, Stine1998, and Pramanik1998.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner responds that, because Jaso discloses a damascene process with trenches, Patent Owner’s proposed claim construction is “unnecessary.” Reply 33. We agree that the damascene process of Jaso is the same damascene process to which Patent Owner seeks to limit this claim term. Patent Owner does not argue otherwise in its Sur-reply. See Sur-reply. Thus, we decline to construe the term “trenches in a dielectric layer.”” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“requirement that every claim directed to that invention be limited to encompass all of them.”) (citations omitted). Additionally, notwithstanding the importance of a specification, limitations in the specification must not be read into the claims absent lexicography or disclaimer/disavowal. Hill-Rom Services, Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention of the ’946 patent “would have had a Bachelor of Science degree in physics, chemistry, materials science, electrical engineering, mechanical engineering, or related discipline, in addition to 3–5 years of experience in the fabrication of integrated circuit devices. Additional years of experience could substitute for formal education, and vice versa.” Pet. 20 (citing Ex. 1002 ¶ 35).” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“look at Figure 8 and form any understanding of its structures at all” and thus, Dr. Boning’s opinions should be disregarded in their entirety. Id. at 43 (citing Ex. 2011 ¶¶ 181–189). We find that the explanations by Dr. Boning are a reasonable attempt to explain what one of ordinary skill in the art, with general background knowledge in the art, would glean from Figure 8 of Stine1998 and are supported by additional cited references, such as Maly1991 and the StineThesis. See, e.g., Ex. 1052 ¶¶ 72 (citing Maly Fig. 4), 92 (citing Ex. 2016 (StineThesis), 92 (Ex. 2016, 165), 93. “[A] skilled artisan’s background knowledge is relevant to the reading of the prior art on which the obviousness challenge is based and . . . it is permissible, and sometimes even necessary, to establish such background knowledge by pointing to other prior art. Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1027 (Fed. Cir. 2017). Despite Patent Owner’s criticism, Dr. Boning’s testimony cited by Patent Owner evidences Dr. Boning’s opinion that a person of ordinary skill in the art was aware of common artifacts and limitations in downscaled layouts. Reply 23 (citing PO Resp. 37–38; Ex. 1052 ¶¶ 65, 98).12 Dr. 12 Dr. Givens testifies that, because there is a discrepancy in Dr. Boning’s testimony regarding the inserts for various regions of Figure 8 of Stine1998 and the lack of any other inserts, one of ordinary skill would not assume the white areas contain no metal lines. Ex. 2011 ¶¶ 185–186. And, based on his magnification experiment, Dr. Givens testifies that Figure 4 of Maly1991 may contain metal lines. Id. We consider the fact that Dr. Givens testimony is largely based on what a person of ordinary skill could discern from Figure the general background knowledge of one of ordinary skill. Ex. 1002 ¶¶ 65 (citing Ex. 1009 (Mead Textbook)), 74 (citing Ex. 1010 (Rabaey Textbook)), 75, 76, 152–157. Thus, we credit Dr. Boning’s testimony and do not disregard his testimony wholesale based on those alleged inconsistencies. Below, we focus on the testimony that is at issue in this IPR.” slip op. at 35
Patent outcomesUS 6,849,946 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 6,849,946 - NVIDIA Corporation v. Invensas CorporationAll claims unpatentablePTAB · Sep 1, 2021 · IPR2020-00602 · APJ Bryan F Moore · IPR · Final written decision
Claims 16–22 are unpatentable as obvious over Jaso and Stine1998, and independently over Jaso, Stine1998, and Pramanik1998.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“requirement that every claim directed to that invention be limited to encompass all of them.”) (citations omitted). Additionally, notwithstanding the importance of a specification, limitations in the specification must not be read into the claims absent lexicography or disclaimer/disavowal. Hill-Rom Services, Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). Petitioner contends that the use of the transitional phrase term “comprising” in the claim means that the claim allows additional intervening structures. Reply 33 (citing Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997)). Additionally, Petitioner contends that specifying that the region to which the dummy trenches are added has no conductive structures would add a negative limitation to the claim and require “express disclaimer or independent lexicography in the written description that would justify adding [it].” See id. (citing Omega Engineering, Inc, v. Raytek Corp., 334 F.3d 1314, 1322–23 (Fed. Cir. 2003)) (quotation added here).” slip op. at 12
- 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 ’946 patent “would have had a Bachelor of Science degree in physics, chemistry, materials science, electrical engineering, mechanical engineering, or related discipline, in addition to 3–5 years of experience in the fabrication of integrated circuit devices. Additional years of experience could substitute for formal education, and vice versa.” Pet. 20 (citing Ex. 1002 ¶ 35). qualifications of a POSA for the purposes of this IPR.” PO Resp. 10. We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Therefore, for purposes of this Final Written Decision, we adopt Petitioner’s assessment of the level of skill in the art because it is consistent with the ’946 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Overall, we have considered all of Patent Owner’s arguments but do not find that they undermine the overall credibility of Dr. Boning. However, we will consider any question regarding his credibility on any specific issue raised by Patent Owner in the obviousness analysis below, where appropriate.” slip op. at 17
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“In addition, we are not persuaded by Patent Owner’s argument that Stine1998 is not “salient to the Relevant Problems disclosed in the ’946 patent” because Stine1998 “relates to oxide CMP in a subtractive process,” which, according to Patent Owner, is directed to different problems, and different CMP than the metal CMP in a damascene process. PO Resp. 35. As Petitioner points out, Jaso, Stine1998, and the ’946 patent each address the “erosion of dielectric and dishing of metal” during CMP, which gives rise to “a non-planar surface.” Pet. 6 (citing Ex. 1001, 3:25–44, Fig. 4), 30– 31 (citing Ex. 1004, 2:7–19), 36–37 (citing Ex. 1004, 3:29–64; Ex. 1005, 668). Patent Owner’s assertion that different issues cause dishing and erosion too narrowly confines the problem that the references address. See Unwired Planet v. Google, 841 F.3d 995, 1001 (Fed. Cir. 2016) (“The field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.”). Patent Owner also asserts “Jaso’s reference to ‘dishing’ is categorically different from the problems with which the ’946 patent is concerned: dishing of wide interconnect and erosion of oxide between dense narrow interconnect.” PO Resp. 63. We are not persuaded by this conclusory statement.10 Furthermore, to the extent Patent Owner argues the references are non-analogous art, all the references are directed to the creation of metal lines in chip manufacturing, as discussed above, and fall within the same field of endeavor.” slip op. at 31
Patent outcomesUS 6,849,946 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 6,849,946 - NVIDIA Corporation v. Invensas CorporationAll claims unpatentablePTAB · Sep 1, 2021 · IPR2020-01729 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–8 are unpatentable under §103 over the listed combinations of Jaso, Stine1998, Pramanik1997, and Robinson.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner responds that, because Jaso discloses a damascene process with trenches, Patent Owner’s proposed claim construction is “unnecessary.” Reply 32. We agree that the damascene process of Jaso is the same damascene process to which Patent Owner seeks to limit this claim term. Patent Owner does not argue otherwise in its Sur-reply. See Sur-reply. Thus, we decline to construe the term “etching . . . trenches into a dielectric layer.”” slip op. at 9
- 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 ’231 patent “would have had a Bachelor of Science degree in physics, chemistry, materials science, electrical engineering, mechanical engineering, or related discipline, in addition to 3–5 years of experience in the fabrication of integrated circuit devices. Additional years of experience could substitute for formal education, and vice versa.” Pet. 22 (citing Ex. 1002 ¶ 35). Patent Owner “does not dispute Petitioner’s description of the qualifications of a POSA for the purposes of this IPR.” PO Resp. 9. We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 Therefore, for purposes of this Final Written Decision, we adopt Petitioner’s assessment of the level of skill in the art because it is consistent with the ’231 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Overall, we have considered all of Patent Owner’s arguments but do not find that they undermine the overall credibility of Dr. Boning. However, we will consider any question regarding his credibility on any specific issue raised by Patent Owner in the obviousness analysis below, where appropriate.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Petitioner argues it would have been obvious to a person of ordinary skill in the art to combine Jaso and Stine1998 “to etch a plurality of dummy trenches in a dielectric layer between a first (wider) trench and a series of second (narrower) trenches.” Id. at 66 (citation omitted). Petitioner argues that a person of ordinary still in the art “would be motivated to combine the teachings in Jaso and Stine1998, as both references are directed to the addition of dummy conductors to equalize pattern density to improve CMP planarity.” Id. at 38–39 (citing Ex. 1004, code (57), 3:29–64; Ex. 1005, 668). In particular, Petitioner states that “Stine1998 enhances and improves upon the disclosure in Jaso by providing general teachings and specific methods that are widely applicable to dummy metal-fill techniques for addressing added capacitance.” Id. at 39 (citing Ex. 1005, 670–672). Petitioner points out that “Stine1998 expressly motivates a [person of ordinary skill in the art] to apply its teachings to a damascene process requiring dummy-fill to enhance planarity” because Stine1998 states its methodology can be extended to “inlaid metal techniques such as copper (emphasis omitted). Analysis of Patent Owner’s Arguments 1) Prior Art Does not “Look for” a Specific Configuration Patent Owner argues “Stine1998 does not tell the POSA to look for a specific configuration of structures, and then insert dummy metal into a particular location within that configuration (as the Relevant Solution does.)” PO Resp. 36–37. Patent Owner also argues that Jaso and Stine1998 “together accordingly tell the POSA to focus on pattern density, and to take steps to ensure that variations in pattern density across the chip are minimized” as opposed to looking for the particular configuration called out by the claims. Id. at 58. There is no requirement in the claims for the prior art to “look for” specific structures, but rather it must disclose those structure required by the claims. For the reasons articulated in the Petition, we agree that the combined teachings of Jaso and Stine1998 teach the structure required by claim 1. Pet. 38–39 (citing Ex. 1004, code (57), 3:29–64; Ex. 1005, 668), 50–52 (citing Ex. 1005, 670). We also credit Dr. Boning’s testimony that these references’ teachings “to locate dummies in sparse regions proximate to wide and narrow lines...would obviously include placing dummies in regions between such lines.” Ex. 1002 ¶ 183 (emphasis added). The fact that Jaso and Stine1998 may not purposefully seek out the configuration relied on by Patent Owner does not undermine Petitioner’s showing that the proper configuration would result from an obvious combination of the references. Thus, we are not persuaded by these arguments.” slip op. at 28
Patent outcomesUS 6,232,231 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 6,232,231 - NVIDIA Corporation v. Invensas CorporationAll claims unpatentablePTAB · Sep 1, 2021 · IPR2020-00603 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–8 are unpatentable under §103: claims 1–4 and 8 over Jaso and Stine1998, with alternative grounds adding Pramanik1997; claims 5–7 over combinations adding Robinson.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“Patent Owner is correct that “[a] patent’s statement of the described invention’s purpose informs the proper construction of claim terms.” Kaken Pharm. Co. v. Iancu, 952 F.3d 1346, 1352 (Fed. Cir. 2020). Nevertheless, a claim is not required to encompass all of the advantages or purposes of the invention. See Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1345 (Fed.Cir.2008) (“An invention may that every claim directed to that invention be limited to encompass all of them.”) (citations omitted). Additionally, notwithstanding the importance of a specification, limitations in the specification must not be read into the claims absent lexicography or disclaimer/disavowal. Hill-Rom Services, Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014).” slip op. at 11
- 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 ’231 patent “would have had a Bachelor of Science degree in physics, chemistry, materials science, electrical engineering, mechanical engineering, or related discipline, in addition to 3–5 years of experience in the fabrication of integrated circuit devices. Additional years of experience could substitute for formal education, and vice versa.” Pet. 22 (citing Ex. 1002 ¶ 35). Patent Owner “does not dispute Petitioner’s description of the qualifications of a POSA for the purposes of this IPR.” PO Resp. 9. We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 Therefore, for purposes of this Final Written Decision, we adopt Petitioner’s assessment of the level of skill in the art because it is consistent with the ’231 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“look at Figure 8 and form any understanding of its structures at all” and thus, Dr. Boning’s opinions should be disregarded in their entirety. Id. at 44 (citing Ex. 2011 ¶¶ 191–199). We find that the explanations by Dr. Boning are a reasonable attempt to explain what one of ordinary skill in the art, with general background knowledge in the art, would glean from Figure 8 of Stine 1998 and are supported by additional cited references, such as Maly1991 and the StineThesis. See, e.g., Ex. 1052 ¶¶ 72 (citing Maly Fig. 4), 92 (citing Ex. 2016 (StineThesis), 92 (Ex. 2016, 165), 93. “[A] skilled artisan’s background knowledge is relevant to the reading of the prior art on which the obviousness challenge is based and . . . it is permissible, and sometimes even necessary, to establish such background knowledge by pointing to other prior art.” Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1027 (Fed. Cir. 2017). Despite Patent Owner’s criticism, Dr. Boning’s testimony cited by Patent Owner evidences Dr. Boning’s opinion that a person of ordinary skill in the art was aware of common artifacts and limitations in downscaled Boning also relies on secondary references to support his testimony about the general background knowledge of one of ordinary skill in the art. Ex. 1002 ¶¶ 65 (citing Ex. 1009 (Mead Textbook)), 74 (citing Ex. 1010 (Rabaey Textbook)), 75, 76, 152–157. Thus, we credit Dr. Boning’s testimony and do not disregard his testimony wholesale based on those alleged inconsistencies. Below, we focus on the testimony that is at issue in this IPR. There are three main reasons why Figure 8 of Stine1998 is at issue. First, Petitioner asserts that the white areas in Figure 8 are open areas between a wide trench and narrow trenches with no metal lines into which dummy conductors would be placed. See Pet. 37–38; Ex. 1002 ¶¶ 112, 152, 157. Patent Owner opposes that contention (PO Resp. 56) but, as explained in association with claim construction, we do not rely on a construction that requires no intervening trenches or other structures between the wide trench and narrow trenches. Additionally, Petitioner relies on the typical layout of chips and the figures of Jaso to support its interpretation of Figure 8. Pet. 45–46, 52–53. 13 Dr. Givens testifies that, because there is a discrepancy in Dr. Boning’s testimony regarding the inserts for various regions of Figure 8 of Stine1998 and the lack of any other inserts one of ordinary skill in the art would not assume the white areas contain no metal lines. Ex. 2011 ¶¶ 195–196. And, based on his magnification experiment, Dr. Givens testifies that Figure 4 of Maly1991 may contain metal lines. Id. We consider the fact that Dr. Givens’s testimony is largely based on what a person of ordinary skill in the art could discern from Figure 8 of Stine1998 and Figure 4 of Maly1991 alone rather than what one or ordinary skill in the art may glean based on their background knowledge in the art—for example whether Figure 8 of Stine1998 is consistent with conventional chip designs as Dr. Boning testified. Thus, we give slightly more weight to Dr. Boning’s testimony.” slip op. at 35
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Analysis of Patent Owner’s Arguments 1) Prior Art Does not “Look for” a Specific Configuration Patent Owner argues “Stine1998 does not tell the POSA to look for a specific configuration of structures, and then insert dummy metal into a particular location within that configuration (as the Relevant Solution does.)” PO Resp. 36–37. Patent Owner also argues that Jaso and Stine1998 “together accordingly tell the POSA to focus on pattern density, and to take steps to ensure that variations in pattern density across the chip are minimized” as opposed to looking for the particular configuration called out by the claims. Id. at 58. There is no requirement in the claims for the prior art to “look for” specific structures, but rather it must disclose those structure required by the claims. For the reasons articulated in the Petition, we agree that the combined teachings of Jaso and Stine1998 teach the structure required by claim 1. Pet. 38–39 (citing Ex. 1004, code (57), 3:29–64; Ex. 1005, 668), 50–52 (citing Ex. 1005, 670). We also credit Dr. Boning’s testimony that these references’ teachings “to locate dummies in sparse regions proximate to wide and narrow lines...would obviously include placing dummies in regions between such lines.” Ex. 1002 ¶ 183 (emphasis added). The fact that Jaso and Stine1998 may not purposefully seek out the configuration relied on by Patent Owner does not undermine Petitioner’s showing that the proper configuration would result from an obvious combination of the references. Thus, we are not persuaded by these arguments. Dummy Trenches We also disagree with Patent Owner’s argument that “Stine1998 does not teach or suggest any ‘trenches in a dielectric layer.’” PO Resp. 47, 55– 56. Patent Owner argues that Stine1998’s “subtractive process used for the manufacture of the disclosed chip does not involve the formation of such trenches.” Id. at 47 (citing Ex. 2011 ¶ 171). That is, Patent Owner asserts Stine1998 deposits a dielectric layer around already-formed metal lines. This argument, however, is not commensurate with the scope of the claims as properly construed. As noted above, to the extent that a damascene process is required, Jaso teaches such a process. Pet. 44. Additionally, assuming arguendo Patent Owner’s argument is correct, it stands to reason that the spaces where dielectric is not deposited are free of dielectric (due to the presence of metal lines) and, therefore, the “trenches” are free of dielectric. Patent Owner also asserts Stine1998 does not disclose dummy trenches because it “states in passing that certain areas of its test chip would be ‘prime candidates’ for ‘metal-fill,’ but does not actually disclose the particular location of any alleged ‘dummy’ conductor.” PO Resp. 56 (citation omitted) (citing Ex. 2011 ¶ 205). Patent Owner’s argument improperly attacks Stine1998 alone when Petitioner argues that the combination of Jaso and Stine1998 teaches “trenches.” See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Petitioner points out that Jaso describes “a damascene method wherein, in general, a via or trench pattern is etched into a planar dielectric layer.” Pet. 44 (emphasis omitted) (citing Ex. 1004, 1:28– 31; 8:5–8; Ex. 1002 ¶¶ 142–144). Petitioner states that Figure 11B of Jaso includes “trenches (15a-d) [which] correspond to trenches for interconnects 45. Patent Owner does not address the trenches taught by Jaso, much less teachings of Jaso in combination with the teachings of Stine1998. See PO Resp. 33–36, 55–61. Accordingly, we are not persuaded that the combination of Jaso and Stine1998 fails to teach “trenches.”” slip op. at 29
Patent outcomesUS 6,232,231 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 6,232,231 - Juniper Networks, Inc. v. Correct Transmission, LLCInstitution deniedPTAB · Aug 30, 2021 · IPR2021-00571 · APJ Stephen E Belisle · IPR · Institution
Institution was denied for claims 1–6 and 10–15 because neither obviousness ground showed a reasonable likelihood of success on the required control traffic label limitation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Notably, although Petitioner understands that the Examiner allowed the Challenged Claims based on this “indicating” limitation (Pet. 33), Petitioner fails to direct us with particularity to any disclosure or teaching in Fine of a “control traffic label” itself “indicating” to LSRs that the STP is to be executed by the LSRs without transmission of the BPDU to the user equipment. See Pet. 33–35. As argued by Patent Owner (Prelim. Resp. 47– 48), Petitioner does not explain with particularity how or why Fine’s VLAN Tag field 304 or Destination Address field 306 (or both) indicates to LSRs that the STP is to be executed by the LSRs without transmission of the BPDU to user equipment (or teaches such “indicating”). Instead, Petitioner merely leaps from arguing that Fine teaches that tagged BPDUs do not reach user equipment (Pet. 34), to averring that this constitutes or teaches the claimed “indicating” limitation, without providing particular support and explanation for such a leap. See Pet. 33–35; 35 U.S.C. § 312(a)(3) (The petition must identify supporting evidence “with particularity.” (emphasis added)); 37 C.F.R § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art . . . .” (emphasis added)). For the foregoing reasons, and constrained by the Petition, we are not persuaded that the cited evidence adequately supports Petitioner’s contention that Fine discloses “the control traffic label indicating to the LSRs that the STP is to be executed by the LSRs without transmission of the BPDU to the user equipment,” as recited in independent claims 1 and 10.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Notably, although Petitioner understands that the Examiner allowed the Challenged Claims based on this “indicating” limitation (Pet. 33), Petitioner fails to direct us with particularity to any disclosure or teaching in Fine of a “control traffic label” itself “indicating” to LSRs that the STP is to be executed by the LSRs without transmission of the BPDU to the user equipment. See Pet. 33–35. As argued by Patent Owner (Prelim. Resp. 47– 48), Petitioner does not explain with particularity how or why Fine’s VLAN Tag field 304 or Destination Address field 306 (or both) indicates to LSRs that the STP is to be executed by the LSRs without transmission of the BPDU to user equipment (or teaches such “indicating”). Instead, Petitioner merely leaps from arguing that Fine teaches that tagged BPDUs do not reach user equipment (Pet. 34), to averring that this constitutes or teaches the claimed “indicating” limitation, without providing particular support and explanation for such a leap. See Pet. 33–35; 35 U.S.C. § 312(a)(3) (The petition must identify supporting evidence “with particularity.” (emphasis added)); 37 C.F.R § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art . . . .” (emphasis added)). For the foregoing reasons, and constrained by the Petition, we are not persuaded that the cited evidence adequately supports Petitioner’s contention that Fine discloses “the control traffic label indicating to the LSRs that the STP is to be executed by the LSRs without transmission of the BPDU to the user equipment,” as recited in independent claims 1 and 10.” slip op. at 14
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,127,523 - Metall Zug AG / Haag-Streit AG et al. v. Carl Zeiss Meditec AGSome claims unpatentablePTAB · Jun 17, 2021 · IPR2020-00300 · APJ Amber L Hagy · IPR · Final written decision
Claims 1 and 21–26 were held unpatentable as obvious over Huber, Everett, and Lexer; claims 2, 27, 40, and 42 were not shown unpatentable. Substitute claims 44 and 45 were entered.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“(7) Claim 1 Conclusion After having analyzed the entirety of the trial record and assigning” slip op. at 31
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“For the above reasons, Petitioner has not met its burden to” slip op. at 72
Patent outcomesUS 8,690,330 mixed§ 103 obviousnesscites Phillips · KSR · Graham · NautilusPatents in suitUS 8,690,330
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.