- Yealink (USA) Network Technology Co. Ltd. / Yealink Network Technology Co., Ltd. v. Barco N.V.InstitutedPTAB · Apr 8, 2025 · IPR2024-01439 · APJ Frederick C Laney · IPR · Institution
The Board instituted IPR of claims 1–11 and 13–21 on all asserted grounds, finding a reasonable likelihood of prevailing on claim 1 over Uchida and Grimshaw.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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.” After considering the Petition and the evidence of record, and in the absence of any argument or evidence to the contrary, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’951 patent. Accordingly, we institute an inter partes review of claims 1–11 and 13–21 of the ’951 patent on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We do not agree that the references relied upon in the Petition are cumulative of the Banerjee and Epstein references previously considered by the Office. For example, during reexamination Patent Owner represented to the Office that neither Banerjee nor Epstein discloses or suggests “an actuator on the peripheral device, wherein said actuator is arranged in a way to enable the user to carry out a user action by actuating the actuator to trigger the processing device to transfer said user selected arbitrary media content to said wireless transmitter through said port to transmit said user selected arbitrary media content to the display node via the communications network” . . . . [T]he skilled person would have appreciated that Banerjee is directed to the plug-and-play device having code that is automatically executed when the plug-and-play device is connected to the remote computer and the remote computer sending a request to share the screen by the master computer, whereas Epstein is directed to a puck that sends an intention to the switching device or wirelessly through the laptop. Ex. 2001, 124–125 (emphasis added). Here, however, Petitioner relies primarily on the structures and operations disclosed by Ono, Ichieda, and Uchida to demonstrate it would have been known to include an actuator on a wireless peripheral device to trigger the transfer of a user selected arbitrary media content. See Pet. 31–33, 57–59, 77. Importantly, unlike Epstein or Banerjee, each of those references discloses display systems that include wireless peripheral devices that have actuators that are at least related to facilitating the transfer of image data from a personal computer to a projector for display. See id. As such, we find that Ono, Ichieda, and Uchida present information that is neither substantively similar nor cumulative of that disclosed or suggested by Banerjee and Epstein. Accordingly, we decline to exercise discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner contends that a person having ordinary skill in the art would have had at least a Master’s Degree in Electrical Engineering with . . . five years of work experience in computer science and embedded systems, or Master’s Degree in Computer Science with . . . five years of work experience in electrical and computer engineering and embedded systems. Additional educational experience could substitute for some of the work experience. Pet. 10 (citing Ex. 1002 ¶¶ 36–37). For purposes of this Decision, we adopt Petitioner’s proposed definition of a person of ordinary skill in the pertinent art, as it is consistent with the ’951 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- BurdenInstituted
“Patent Owner’s assertion fails to undermine Petitioner’s contention because it does not actually address Petitioner’s point, which is that a skilled artisan would recognize, when a user slides switch 140 back to the ‘OFF’ position to allow image transfer to resume, that action would trigger image data transmission of user selected arbitrary media content from wireless through the wireless communications network for display. Instead, Patent Owner’s argument only addresses when a user slides switch 140 to the “ON” position to stop image transmission. On this record, we determine that Petitioner’s evidence and analysis shows sufficiently that Uchida and Grimshaw disclose this last claim element of claim 1. 4. Conclusion After considering Petitioner’s evidence and argument, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of claim 1 based on the combination of Uchida and Grimshaw (Ground 2). We also note that both parties rely on substantially the same evidence and arguments to address independent claims 9, 16, and 21. See Pet. 49–59 (claim 9), 64–66 (claim 16), 67 (claim 21); Prelim. Resp. 34–47 (claims 9, 16, 21). Therefore, our determination for claim 1 applies equally to claims 9, 16, and 21.” slip op. at 16
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,422,951 - Innoscience (Zhuhai) Technology Company, Ltd. / Innoscience America, Inc. v. Efficient Power Conversion CorporationNo claims unpatentablePTAB · Mar 25, 2025 · IPR2023-01382 · APJ Kimberly Mcgraw · IPR · Final written decision
Claims 1–3 were not shown unpatentable under any of five § 103 grounds because Petitioner failed to establish sufficient motivation to modify or combine the prior art.
RulingsFinal written decision- BurdenNot shown unpatentable
“A petition must identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3) Here, Petitioner merely provides general assertions about multiple references, without clearly identifying how, or why a POSITA would have been motivated, to modify the processes disclosed in those references to arrive at the claimed invention. Thus, the Petition does not state with particularity that Saxler’s particular technique for etching is to be used instead of Beach’s etching step when substituting Beach’s self-aligned process for Saxler’s two mask process. Nor does the Petitioner provide a sufficient reason, absent hindsight, why a POSITA would have been motivated to combine the references to result in a process that forms Saxler’s Modified Figure 1A. Thus, for these additional reasons, Petitioner has not shown by a preponderance of the evidence that claim 1 would have been obvious over Saxler, Beach, and Shenoy.” slip op. at 34
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Both parties agree that the differences between the definitions do not impact the analysis. Resp. 11; Reply 2. 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. We also note that our Decision would be the same under either parties’ definition.” slip op. at 13
- Expert testimonyOther
“Petitioner’s expert, Dr. Shealy states that he understands paragraph 52 to mean that it is “fair game to pull the recess out of any of those figures [Figures 1A through 6].” Ex. 2004, 39:12–21. Dr. Shealy, however, also clarifies that “[a]s I said before, I think you could take all the embodiments and bring in which ones you want, depending on what you’re trying to accomplish.” Ex. 2004, 40:24–41:1. During the hearing, Petitioner admitted that Dr. Shealy’s “statement to modify the reference depending on what you're trying to accomplish” means that “a POSITA may modify with reason to do so. A POSITA would have removed Saxler’s recess to obtain the benefits of enhancement-mode.” Tr. 19:19–25. Again, the Petition does not provide a reason why a POSITA would have removed Saxler’s gate recess.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“remove the recess in Saxler Figure 1A to arrive at the allegedly enhancement mode transistor of Modified Figure 1A. Contrary to Petitioner’s assertions in its Reply and at the hearing, the Petition makes no argument that a POSITA would have removed the recess from Saxler Figure 1A to realize the benefits of an enhancement mode transistor. See Reply 4–5; Pet. 24–68. Rather, the Petition merely asserts that a POSITA would have understood that the gate recess of Figure 1A is optional without providing any persuasive reason why a POSITA would have removed the gate recess but retained the sloped sidewalls of Figure 1A. Pet. 25, 40, 45. For example, Petitioner asserts that Saxler’s gate contact may be “recessed or non-recessed” and that when the gate recess shown in Figure 1A is not utilized, Saxler would have the structure of Saxler Modified Figure 1A. Pet. 25 (citing Ex. 1003 ¶ 81; Ex. 1007 ¶ 52, 66); see also Pet. 40, 45 (citing Ex. 1007 ¶ 52). Neither of these paragraphs provide sufficient motivation to a POSITA to remove the gate recess from Saxler Figure 1A. Saxler paragraph 52 states: Exemplary devices according to some embodiments of the present invention are schematically illustrated in FIGS. 1A through 6. Thus, while embodiments of the present invention are described herein with reference to a recessed gate structure or a non-recessed gate structure, other embodiments of the present invention may include or not include a gate recess. Accordingly, embodiments of the present invention should not be construed as limited to the particular exemplary embodiments described herein but may include any suitable structure having a cap layer and/or passivation layer as described herein. Ex. 1007 ¶ 52. Petitioner’s expert, Dr. Shealy states that he understands paragraph 52 to mean that it is “fair game to pull the recess out of any of those figures [Figures 1A through 6].” Ex. 2004, 39:12–21. Dr. Shealy, however, also clarifies that “[a]s I said before, I think you could take all the embodiments and bring in which ones you want, depending on what you’re trying to accomplish.” Ex. 2004, 40:24–41:1. During the hearing, Petitioner admitted that Dr. Shealy’s “statement to modify the reference depending on what you're trying to accomplish” means that “a POSITA may modify with reason to do so. A POSITA would have removed Saxler’s recess to obtain the benefits of enhancement-mode.” Tr. 19:19–25. Again, the Petition does not provide a reason why a POSITA would have removed Saxler’s gate recess.” slip op. at 28
Patent outcomesUS 9,748,347 not shown unpatentable§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,748,347 - Innoscience (Zhuhai) Technology Company, Ltd. / Innoscience America, Inc. v. Efficient Power Conversion CorporationAll claims unpatentablePTAB · Mar 25, 2025 · IPR2023-01384 · APJ Jeffrey W Abraham · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Yoshida and Saxler; the Board did not reach the alternative grounds.
RulingsFinal written decision- Skill levelOther
“In light of the record before us, we determine that we do not need to reach a specific finding regarding the level of ordinary skill in the 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 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“In the Institution Decision, we declined to adopt Petitioner’s proposed construction of the “side surfaces” limitation and determined that it was not necessary to further construe this term because “[t]he parties do not dispute that the language ‘side surfaces extending horizontally’ encompasses a gate material with sloped side surfaces as depicted in Figure 5 of the ’335 patent.” Inst. Dec. 11–16 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); 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 invited the parties to address this limitation further during the course of this trial, but neither party provided additional evidence or argument regarding the “side surfaces” limitation. Inst. Dec. 16; see generally PO Resp.; Reply; Sur-reply. Accordingly, we maintain our determination from the Institution Decision that we do not need to construe the “side surfaces” limitation. Inst. Dec. 15– 16.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“This evidence, particularly the language in the ’335 patent itself, undermines Patent Owner’s argument that “[t]he process for forming gate ledges using separate masks instead of the self-aligned process disclosed in the ’335 patent cannot produce ledges that are ‘substantially symmetric.’” PO Resp. 39 (emphasis added); see also PO Resp. 42–43 (arguing that a gate structure with ledges having substantially equal widths is “not achievable” without using a single photo-mask process). We have considered the evidence presented by Patent Owner and Dr. Schubert in support of Patent Owner’s arguments. PO Resp. 38–43; Ex. 2005 ¶¶ 49–51. We, however, are unable to discern sufficient evidence supporting a conclusion that using separate masks cannot produce ledges that are substantially symmetric, particularly when the ’335 patent suggests otherwise. See Ex. 1001, 4:60– 63 (referring only to the “possibility of misalignment”). Even if, as Patent Owner and Dr. Schubert contend, misalignment “naturally” occurs when using a two-mask process, that does not foreclose the possibility that the” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“It is well settled that “[a] reference does not teach away . . . if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Furthermore, “teaching that a composition may be optimal or standard does not criticize, discredit, or otherwise discourage” slip op. at 31
Patent outcomesUS 10,312,335 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,312,335 - Innoscience (Zhuhai) Technology Company, Ltd. / Innoscience America, Inc. v. Efficient Power Conversion CorporationNo claims unpatentablePTAB · Mar 18, 2025 · IPR2023-01383 · APJ Kimberly Mcgraw · IPR · Final written decision
Claims 1–5 were not shown unpatentable because Petitioner did not sufficiently establish a reason to modify the asserted prior art.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedDecided for patent owner
“We disagree with Petitioner’s argument because it fails to address Dr. Schubert’s academic and other experience with GaN transistors. Dr. Schubert is currently a tenured full professor in the Department of Electrical Computer, and Systems Engineering at Rensselaer Polytechnic Institute and was previously a tenured full professor in the Department of Electrical and Computer Engineering at Boston University. Ex. 2001, 129. Additionally, Dr. Schubert was the director of Boston University’s Semiconductor Devices Research Laboratory. Ex. 2001, 129. Dr. Schubert persuasively explains that his general expertise is in the field of electrical engineering and applied physics, including semiconductors, processing, and devices and his specific expertise is in the field of semiconductor materials (such as GaN), semiconductor devices, semiconductor integrated circuits, ohmic contacts, Schottky contacts, HEMTs, and optoelectronic devices such as light-emitting diodes (LEDs). Ex. 2001 ¶ 11, App’x A pp.129–137. His experience includes “the design, growth, fabrication, and testing of semiconductor devices as well as the employment of these devices in a variety of applications” and he is “familiar with both the design of such transistors [HEMTs] and the manufacturing processes used for FETs. Ex. 2001 ¶ 11, App’x A, pp. 129–137. He is an author or co-author of numerous text books and articles, and co-inventor of numerous patents, including those dealing with HEMT transistors and GaN devices. Ex. 2001 ¶ 13, App’x A, pp. 129–137. Petitioner fails to present any persuasive argument or evidence that Dr. Schubert’s extensive education and experience regarding GaN transistors is insufficient or lacking such that his testimony should be given little weight. Finally, we disagree with Petitioner’s additional argument that that its expert’s testimony (Dr. Shealy) should be given more weight than Patent Owner’s expert’s testimony (Dr. Schubert) because “[u]nlike Dr. Schubert, Dr. Shealy is one of the pioneer scientists in the field of GaN transistors.” Reply 34 (stating that Dr. Shealy’s research lab built the first GaN HEMT device on silicon in 1999 and citing Ex. 2002, 87:19–238). Obviousness is determined through the lens of a “person of ordinary skill in the art,” not through the lens of a person with extraordinary skill or a pioneer in the field. Given Dr. Schubert’s extensive relevant education and experience, Petitioner does not persuasively explain why Dr. Shealy’s testimony on any specific topic, or his testimony in general, should be given more weight than Dr. Schubert’s.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham, , 383 U.S. at 17–18. Petitioner argued that a person of ordinary skill in the art would have had a “at least a four-year degree in electrical engineering, chemical engineering, physics, or material science or a closely related field and at least two years of experience in semiconductor device design or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies. Additional education could substitute for professional experience and vice versa.” Pet. 11 (citing Ex 1003 ¶ 69). Patent Owner did not dispute this proposed definition prior to institution. See generally Prelim. Resp. In our Decision on Institution, we adopted Petitioner’s proposal. After institution, Patent Owner asserted a slightly different definition of a POSITA, namely someone who “would have possessed at least a four-year degree in electrical engineering, physics, material science, or a closely related field, and three years of professional work experience in the epitaxial growth, design, and fabrication of semiconductor electronic devices, including those of GaN.” Resp. 17. Relevant graduate education could substitute for the professional work experience. Id. Upon review of the full record, we see no reason to modify, and we thus maintain, the definition of a POSITA applied in our Decision on Institution. We also determine that our decision would be the same under either of the parties’ proposed definitions.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“During the proceeding, the parties also dispute the proper construction of “etching away the doped GaN layer, except a portion of the doped GaN layer beneath the gate contact” as recited in step [1e4] and provided briefing on this issue. Papers 35, 36, 37, 38. Because, as explained below, our determination rests upon Petitioner’s failure to show a sufficient reason to modify the asserted art, which is not dependent upon any particular claim construction, we need not, and do not, address these claim construction issues. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 13
- ExcludeDenied
“III. PETITIONER’S MOTION TO EXCLUDE EXHIBIT 2008 Petitioner filed a Motion to Exclude (Paper 25, “Mot.”) Exhibit 2008, which is a hearing transcript from the parallel ITC investigation. Mot. 1. Because we do not rely upon Exhibit 2008 in our Decision, we dismiss Petitioner’s motion as moot.” slip op. at 47
Patent outcomesUS 8,404,508 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,404,508 - Innoscience (Zhuhai) Technology Company, Ltd / Innoscience America, Inc. v. Efficient Power Conversion CorporationAll claims unpatentablePTAB · Mar 18, 2025 · IPR2023-01381 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–3 and 7–9 are unpatentable as obvious over Uemoto and Smith; the motion to amend is granted, and proposed substitute claims 13 and 14 are not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In order to determine whether an invention would have been obvious at the time the application was filed, we consider the level of ordinary skill in the pertinent art. Graham, 383 U.S. at 17. In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation omitted). Petitioner contends a person of ordinary skill in the art “would have possessed at least a four-year degree in electrical engineering, chemical engineering, physics, or material science, or a closely related field, and at least two years of experience in semiconductor device design or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies.” Pet. 5–6. Petitioner contends “[a]dditional education could substitute for professional experience and vice versa.” Id. at 6. Patent Owner contends that a person of ordinary skill in the art would have had “at least a four-year degree in electrical engineering, physics, material science, or a closely related field, and three years of professional work experience in the epitaxial growth, design, and fabrication of semiconductor electronic devices, including those of GaN.” PO Resp. 7 (citing Ex. 2009 ¶ 82). Upon review of the evidence of record and the parties’ arguments, we adopt Petitioner’s definition of the person of ordinary skill in the art as it is consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). We note, however, that the conclusions reached in this Decision would be the same under either proposed definition of the ordinarily skilled artisan. See Ex. 2009 ¶ 83 (Dr. Schubert testifying that his opinions would be the same under either proposed definition); Ex. 1033 ¶ 9 (Dr. Shealy testifying that the differences in proposed definitions of the ordinarily skilled artisan “would not change the outcome of the invalidity analysis in any material manner”); PO Resp. 7; Pet. Reply 1.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“compensated GaN layer above the barrier layer, and a gate contact above the compensated GaN layer.” Ex. 1001, 5:12–18. Petitioner contends the term “compensated” indicates that the step of compensating the GaN layer has already occurred, such that the term “compensated GaN layer” should be construed as a “‘[d]oped GaN layer formed with a step to passivate its impurities’ which is a ‘product-by-process’ limitation.”5 Pet. 12–14. And, because compensation with hydrogen was the “critical step” distinguishing the claims from the prior art, and because hydrogenation in as-grown III-nitride materials had been well known for over a decade by 2009, Petitioner contends “compensated” “cannot be interpreted as mere hydrogen presence in as-grown material, a well-known property of doped GaN.” Id. at 15. Patent Owner contends “compensated GaN material” should be construed as “a semiconductor GaN gate material in which one type of impurity (for example, donor) cancels the electrical effects of the other type of impurity (for example, acceptor).” PO Resp. 11 (citing Ex. 2009 ¶ 92) (emphasis added). Patent Owner contends this construction is consistent with the IEEE dictionary, which defines “compensated semiconductor” as 5 Given that product-by-process steps in a device claim are not entitled to patentable weight, Petitioner contends “the prior art only need show a material with passivated impurities to show unpatentability, not the step to achieve it.” Pet. 15–16. “[a] semiconductor in which one type of impurity or imperfection (for example, donor) partially cancels the electric effects of the other type of impurity or imperfection (for example, acceptor).” PO Resp. 14 (quoting Ex. 2004). Patent Owner contends its construction is also consistent with the written description of the ’294 patent, which explains that a compensated GaN material is part of the gate and includes a p-type impurity that imparts an electrical effect (i.e., conductivity), as well as a second impurity, e.g., hydrogen, that partially cancels the electrical effect of the p-type impurity, rendering the layer semi-insulating. Id. at 14–15 (citing Ex. 1001, 3:10–13, 3:43–45). On this record, we construe “compensated GaN layer” as “a GaN layer in which one type of impurity (for example, donor) partially cancels the electric effects of the other type of impurity (for example, acceptor).” This is consistent with the disclosures of the ’294 patent, the IEEE dictionary definition, and the construction ultimately adopted by the ITC. Ex. 2004, 3; Ex. 1049, 16–17 (ITC construing “compensated GaN layer” to mean “a GaN layer in which one type of impurity partially cancels the electrical effects of another type of impurity”); Ex. 1001, 3:43–45 (explaining that the compensated GaN layer of the ’294 patent is formed through the “passivation of a p-type impurity using hydrogen”). For the reasons set forth below, however, we decline to construe “compensated GaN layer” as a product-by-process claim term (as asserted by Petitioner), or to limit the compensated GaN layer to a gate material (as asserted by Patent Owner).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“There are two exceptions to the general rule that we apply the ordinary and customary meaning of a claim term: (1) when a patentee sets out a definition and acts as his own lexicographer, or (2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution. See Thorner, 669 F.3d at 1365. The standards for lexicography and disclaimer, however, are “exacting.” Id. at 1366. There is no argument that the patentees acted as their own lexicographer to redefine the term “compensated GaN layer.” With respect to disavowal, a “patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Thorner, 669 F.3d at 1366 (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)). As noted by Patent Owner, the title of the ’294 patent is, in part, “Compensated Gate MISFET” and much of the discussion of the ’294 patent is of a compensated GaN layer that is directly below the gate contact and above a barrier layer and operates in conjunction with the gate contact to control the on/off state of the transistor. PO Resp. 12–14. We are presented with insufficient argument or evidence to conclude, however, that these disclosures rise to the level of a disclaimer. For example, although the title of the ’294 patent is directed to a “Compensated Gate MISFET,” claim 1 is more broadly directed to “[a] column III Nitride transistor.” Ex. 1001, 5:12, code (54). Nor are we directed to an expression or statement of manifest exclusion in the ’294 patent that would serve to disclaim any “compensated GaN layer” that is not directly below the gate and/or that does not function in concert with the gate electrode to control the on/off state of the transistor. See Thorner, 669 F.3d at 1366. With respect to the stated goals of the invention, as noted by Patent Owner, one of the primary purposes of the compensated GaN layer of the ’294 patent is to reduce gate leakage and gate capacitance. Ex. 1001, 2:13– 19, 3:18–21 (“[U]sing a compensated semiconductor layer 38 leads to low gate leakage during device operation.”). We cannot use the goals of the invention, however, to rewrite the claims or insert terms that are not present. See Thorner, 669 F.3d at 1366. Moreover, the prior art of record indicates that a compensated GaN layer that is below the gate contact and above a barrier layer, but not part of the active gate structure, may also “decrease the leakage current between the gate and the drain.” Ex. 1006 ¶¶ 44 (“Even when a positive bias of 5 V or higher is applied to the gate electrode, no significant gate-leakage current is observed.”), 61. As such, evidence of record suggests that a person of ordinary skill in the art would have understood that one of the primary goals disclosed in the ’294 patent is achieved regardless of whether the compensated GaN layer is part of the gate, or simply in close vicinity to the gate. In view of the foregoing, we are not persuaded that the written description of the ’294 patent indicates that the “compensated GaN layer” must be part of the gate structure.” slip op. at 17
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“To be probative, Patent Owner must prove there is a nexus between the presented evidence and the merits of the claimed invention. See Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). A rebuttable presumption of nexus applies when the “patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco, 851 F.2d at 1392). “That is, presuming nexus is appropriate ‘when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.’” Id. (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). If the praise is not limited to the features of the claimed invention, the patent owner may still prove nexus “by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. at 1373–74 (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). Patent Owner contends that the compensated gate of the ’294 patent “was a breakthrough invention and resulted in the first commercially viable enhancement-mode GaN transistor.” PO Resp. 60 (citing Ex. 2009 ¶¶ 192– 193, 197; Ex. 2021). Patent Owner further contends that this achievement required the counter-intuitive use of a compensated gate material in the gate structure, and represented “a technological leap that laid the foundation for viable enhancement-mode GaN transistors.” Id. at 61–62. For this achievement, Patent Owner contends the inventor, Dr. Alex Lidow, received the 2015 SEMI Award. Id. at 60 (citing Ex. 2021). Upon review of Patent Owner’s evidence and the parties’ arguments, we find that Patent Owner’s objective indicia evidence is entitled to little, if any, weight. The evidence of praise relied upon by Patent Owner is not clearly linked to the claimed invention or any particular product having each of the claimed features of the ’294 patent. Ex. 2021. For example, the 2015 SEMI award was provided to Dr. Lidow “for commercialization of GaN power devices.” Id. An article explaining the award indicates that “high cost” previously “limited [the] commercial success” of GaN technologies, but Dr. Lidow was able to overcome these issues, “from resolving packaging limitations to establishing a low-cost supply chain,” “through persistence.” Id. This praise is not demonstrably linked to the claimed invention or any particular device, and does not mention the use of a compensated gate, or any other relevant feature recited in the claims. In view of the foregoing, we determine that Patent Owner’s objective evidence of non-obviousness is entitled to little, if any, weight.” slip op. at 20
Patent outcomesUS 8,350,294 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 8,350,294 - Motorola Solutions, Inc. v. Sta Group LLCAll claims unpatentablePTAB · Mar 17, 2025 · IPR2023-01295 · APJ Kevin C Trock · IPR · Final written decision
Claims 1–5, 7–19, and 21–24 are unpatentable as obvious over Shaffer and Saylor; the Board did not reach the alternative Gogic and Opitz ground.
RulingsFinal written decision- Skill levelOther
“1. Shaffer (Ex. 1004) Shaffer is a U.S. Patent Application Publication published on” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“1. Rationale to Combine Shaffer and Saylor Petitioner contends that a person of ordinary skill in the art “would” slip op. at 23
- BurdenFwd all claims unpatentableUnpatentable
“For the foregoing reasons, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1–5, 7–19, and 21–24 of U.S. Patent 8,994,830 B2 are unpatentable on the bases set forth in the following table. Claim(s)” slip op. at 86
Patent outcomesUS 8,994,830 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,994,830 - Motorola Solutions, Inc. v. Sta Group LLCAll claims unpatentablePTAB · Mar 14, 2025 · IPR2023-01294 · APJ Michael J Fitzpatrick · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1, 2, 6–9, 11, 12, 15–17, and 20 as obvious over Kim; claims 3–5, 13, 14, 18, and 19 over Kim and Ishibashi; and claim 10 over Kim and Goss.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“patent “would have had a bachelor’s degree in computer science, electrical engineering, or a similar field, and would have had approximately two years industry experience in networking or communication systems.” Pet. 5; see also id. (“A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard.”). Patent Owner very similarly proposes that the skilled artisan “would have [had] a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and two to three years [of] experience in designing or developing telecommunication systems.” PO Resp. 24–25 (citing Ex. 2005 ¶42). Both of the parties’ proposals as to the level of ordinary skill in the art are consistent with the disclosure of the ’664 patent and the asserted prior art. The distinction between the parties’ proposals is minimal and would not change the outcome of this Decision. Thus, we adopt and apply Patent Owner’s proposal.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for patent owner
“16). We generally agree, with the one caveat acknowledged by counsel for Patent Owner during the hearing. The caveat is that, although step [a] must be performed before step [b], it is within the scope of claim 1 if step [a] continues to be performed even after step [b] begins. Tr. 25:25–26:3 (Mr. Engel: “Well, I think in practicality, there would always be monitoring because there’s multiple media streams. So, you could have multiple alerts come in and the system could decide which one is more important. So, I don’t think you stop monitoring per se.”). We agree that continued performance of step [a], even after step [b] begins, is within the scope of claim 1. Second, Patent Owner proposes that “endpoint” means “end-user device,” as agreed to in district court. PO Resp. 10 (citing Ex. 2004, 16). We adopt this construction. However, as will become evident below, this construction does little to address the actual dispute between the parties regarding application of “endpoint” to the prior art asserted in Ground 7 (Kim). Third, Patent Owner proposes that “media stream” means “audio or video or both, which may include associated data,” as adjudicated in district court. PO Resp. 11 (citing Ex. 2004, 42). We adopt this construction.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner argues that a person of ordinary skill in the art would have combined Kim and Ishibashi because the former teaches “that a goal of emergency warning broadcast systems is to ensure that the viewer receives the emergency warning information” and the latter teaches a means to achieving that goal. Pet. 80–81 (citing Ex. 1008, 3:13–19; Ex. 1002 ¶304; Ex. 1009 ¶¶5, 15, 17). More specifically, Petitioner argues that a person of ordinary skill in the art “would have been motivated to implement Ishibashi’s audio output-switchover circuit in Kim’s controller system . . . to ensure that an emergency warning broadcast is received by the viewer even in situations where a headphone jack is left plugged in but unattended (e.g., not being worn) by the viewer.” Pet. 81 (citing Ex. 1002 ¶305). Petitioner argues that the skilled artisan would have had a reasonable expectation of success in making such a combination and the result would have been predictable. Id. at 82 (citing Ex. 1002 ¶306). We are persuaded by Petitioner’s stated reasons for the combination as well as that there would have been a reasonable expectation of success in making the combination. Further, Patent Owner does not dispute these factual assertions underlying the obviousness analysis. PO Resp. 57.” slip op. at 29
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Analogous artUnpatentable
“2. Combination of Kim and Ishibashi Petitioner argues that both references are from the same field of endeavor as the ’664 patent, namely emergency communication systems. Pet. 80 (citing various portions of Exhibits 1001, 1008, and 1009). We are persuaded of this fact, which, in any event, Patent Owner does not dispute. See PO Resp. 57 (arguing against Ground 8 solely on the basis of its Ground 7 arguments). Petitioner argues that a person of ordinary skill in the art would have combined Kim and Ishibashi because the former teaches “that a goal of emergency warning broadcast systems is to ensure that the viewer receives the emergency warning information” and the latter teaches a means to achieving that goal. Pet. 80–81 (citing Ex. 1008, 3:13–19; Ex. 1002 ¶304; Ex. 1009 ¶¶5, 15, 17). More specifically, Petitioner argues that a person of ordinary skill in the art “would have been motivated to implement Ishibashi’s audio output-switchover circuit in Kim’s controller system . . . to ensure that an emergency warning broadcast is received by the viewer even in situations where a headphone jack is left plugged in but unattended (e.g., not being worn) by the viewer.” Pet. 81 (citing Ex. 1002 ¶305). Petitioner argues that the skilled artisan would have had a reasonable expectation of success in making such a combination and the result would have been predictable. Id. at 82 (citing Ex. 1002 ¶306). We are persuaded by Petitioner’s stated reasons for the combination as well as that there would have been a reasonable expectation of success in making the combination. Further, Patent Owner does not dispute these factual assertions underlying the obviousness analysis. PO Resp. 57.” slip op. at 29
Patent outcomesUS 8,831,664 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,831,664 - Motorola Solutions, Inc. v. Sta Group LLCSome claims unpatentablePTAB · Mar 6, 2025 · IPR2023-01292 · APJ David C Mckone · IPR · Final written decision
Claims 1–4, 6–10, and 17–21 are unpatentable over Ohel; claims 5 and 11–16 were not shown unpatentable over Ohel or Nigawara.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Skill in the Art Petitioner, relying on the testimony of Mr. Williams, contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science, electrical engineering, or a similar field, and would have had approximately two years industry experience in networking or communication systems.” Pet. 3 (citing Ex. 1002 ¶¶ 55–58). Patent Owner does not dispute Petitioner’s proposal. PO Resp. 9. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. On the complete record, we adopt this level of skill.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We have considered the parties’ citations to the specification and find examples that support Petitioner’s view that the term “entity” is broad enough to encompass dispatchers and individual users. See e.g., Ex. 1001, 3:52–4:5, 7:18–20, Fig. 1). However, we find no disclosure that redefines “entity” or excludes dispatchers and individual users from the category of “entity.” Patent Owner’s best examples (e.g., Ex. 1001, 1:15–21, 3:59–62) are no more than non-limiting examples. On the complete record, we conclude that “entity” is broad enough to include dispatchers and individual users.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“have used a queue with Ohel’s system. This is insufficient because it does not provide evidence of a reason why a skilled artisan would have implemented Ohel’s system with a queue. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))).” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached
“have used a queue with Ohel’s system. This is insufficient because it does not provide evidence of a reason why a skilled artisan would have implemented Ohel’s system with a queue. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))).” slip op. at 35
Patent outcomesUS 7,324,802 mixedClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,324,802 - Apple Inc. v. Proxsense LLCInstitution deniedPTAB · Feb 26, 2025 · IPR2024-01486 · APJ David C Mckone · IPR · Institution
The Board denied institution for claims 1–17 because Apple did not justify a second petition, and denied its motion to join IPR2024-00775.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherInstitution denied
“challenges a subset of the claims of the ’730 patent based on the prior art references Ludtke and Kon, while the instant Petition challenges all 17 claims of the ’730 patent based on the prior art references Burger and Robinson. Id. at 2–3. According to Petitioner, these are “significantly different invalidity grounds.” Id. at 3. However, Petitioner does not explain why challenging the same patent with different invalidity grounds, without more, justifies instituting both petitions.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we decline to institute an inter partes review of the ’730 patent. We also deny Petitioner’s Joinder Motion.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“IPR2024-00775. Joinder Mot. 1. As the moving party, Petitioner bears the burden of proving that it is entitled to joinder. See 37 C.F.R. § 42.20(c).” slip op. at 8
Discretionary denialPatents in suitUS 8,352,730 - Apple Inc. v. Proxsense LLCInstitution deniedPTAB · Feb 26, 2025 · IPR2024-01485 · APJ David C Mckone · IPR · Institution
The Board denied institution on claims 1–29 under § 314(a), finding insufficient justification for a second petition, and denied Apple’s motion for joinder.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“According to PTAB guidance, “[b]ased on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations.” Consolidated Trial Practice Guide (“TPG”) 59 (Nov. 2019), available at https://go.usa.gov/xpvPF. “Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner),” the situation we have here, “may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Id. Thus, “multiple petitions by a petitioner are not necessary in the vast majority of cases.” Id. That said, the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references. In such cases two petitions by a petitioner may be needed, although this should be rare. Id. In such situations, a petitioner is invited to identify, either in its petition or a separate ranking paper (Petitioner filed the Ranking Notice): (1) a ranking of the petitions in the order in which it wishes the Board to consider the merits, if the Board uses its discretion to institute any of the petitions, and (2) a succinct explanation of the differences between the petitions, why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we decline to institute an inter partes review of the ’954 patent. We also deny Petitioner’s Joinder Motion.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“(c) JOINDER.—If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter parties review under section 314. “To join a party to an instituted [inter partes review (IPR)], the plain language of § 315(c) requires two different decisions.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). “First, the statute requires that the Director (or the Board acting through a delegation of authority) . . . determine whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314.” Id. “Second, to effect joinder, § 315(c) requires the Director to exercise h[er] discretion to decide whether to ‘join as a party’ the joinder applicant.” Id. “The statute makes clear that the joinder decision is made after a determination that a petition warrants institution, thereby affecting the manner in which an IPR will proceed.” Id. (citing Thyrv, Inc. v. Click-to-Call Techs., LP, 140 S.Ct. 1367, 1377 (2020)). As we explain above, Petitioner has not shown that we should institute a second Petition by Petitioner challenging the ’954 patent. Instead, we determine that the Petition does not warrant institution. Accordingly, the Joinder Motion fails at the first step, whether the Petition warrants institution, and we need not evaluate further the second step, whether to join Petitioner as a party to IPR2024-00846. Petitioner’s Joinder Motion is denied.” slip op. at 8
Discretionary denialPatents in suitUS 8,886,954
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.