• Qualcomm Incorporated / Advanced Micro Devices, Inc. et al. v. Monterey Research, LLCAll claims unpatentable
  PTAB · Mar 4, 2022 · IPR2021-00704 · APJ John F Horvath · IPR · Final written decision

  Qualcomm proved claims 7–32 and 53–61 unpatentable; AMD and STM proved claims 7, 9, 11, 13–15, 17, 19–21, 24–32, and 53–61 unpatentable, principally over Oh-based obviousness grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for patent owner

    “(“AMD”) and STMicroelectronics, Inc. (“STM”) were joined as parties to this proceeding. See Papers 22, 25. Moreover, in Advanced Micro Devices, Inc. v. Monterey Research, LLC, IPR2020-00990, Paper 45 (PTAB, Nov. 23, 2021), we determined AMD and STM showed by a preponderance of evidence that claims 8, 10, 12, 16, 18, 22, and 23 of the ’805 patent are unpatentable. Thus, AMD and STM are estopped from challenging the patentability of those claims in this proceeding. See 35 U.S.C. § 315(e)(1) (2018). Nonetheless, to challenge the patentability of claims 9, 11, 13–15, 17, 19–21, and 24–26, AMD and STM must demonstrate in this proceeding how the prior art maps to the limitations of claims 8, 10, 12, 16, 18, 22, and 23, from which these claims depend. Unless noted otherwise, we collectively refer to Qualcomm, AMD, and STM as “Petitioner.”” slip op. at 2

  • Skill levelSkill level board ownDecided for petitioner

    “of the invention as someone that would have had “a bachelor’s degree in electrical engineering, computer engineering, applied physics, or a related field, and at least two years of experience in design, development, and/or testing of memory circuits, related hardware design, or the equivalent.” Pet. 12 (citing Ex. 1019 ¶¶ 50–53). In our Institution Decision, we adopted this description as our own. See Dec. Inst. 15–16. Neither party disputes that preliminary finding, which we maintain for purposes of this decision. See PO Resp. 14; Pet. Reply 1–29.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundMixed

    “define the shapes of “substantially oblong active regions” was clearly erroneous. First, the quoted passage uses permissive rather than definitional language. See, e.g., Ex. 1001, 7:18–21 (“in an embodiment” and “an NMOS active region may be considered to be substantially oblong if . . .”) (emphasis added). Second, the quoted passage only describes the shapes of NMOS active regions. Elsewhere, the Specification discloses that PMOS active regions may be substantially oblong if they are “substantially rectangular,” i.e., if they “have a length that is substantially constant across the width . . . [and] a width that is substantially constant across the length.” Compare id. at 6:65–7:4, with id. at 7:20–34. Third, rather than limiting the plain and ordinary meaning of “substantially oblong,” the quoted passage describes NMOS active regions that can be considered “substantially oblong” even though they are non-rectangular. See id. at 7:4–6 (“an NMOS active region . . . may have some variation in width”), 7:20–24 (“an NMOS active region may be considered to be substantially oblong . . . if the width of the region varies by approximately 1/3 or less along the length”) (emphasis added), 7:24–28 (“an NMOS active region may be considered substantially oblong . . . if the width of the region by design varies only with the respective widths of the access and latch transistors”) (emphasis added), 7:28–30 (disclosing “‘substantially oblong’ may refer to any structure width,” implying a variable width having a maximum) (emphasis added). For the reasons discussed above, we find a person of ordinary skill in the art would have known the quoted passage of the Specification does not define the shape of substantially oblong active regions. Therefore, the patentee’s prosecution history statement to that effect did not disavow the plain and ordinary meaning of that term, which includes substantially rectangular active regions. See Biotec, 249 F.3d at 1348. Instead, because the quoted passage describes active regions that can be considered “substantially oblong” even though they are not rectangular and the patentee argued that Kim’s L-shaped active regions could not be considered “substantially oblong,” the patentee’s statement was a disavowal of non-rectangular active regions that do not have one of the shapes described at column 7, lines 20–34 of the Specification. For the reasons discussed above, we construe a “substantially oblong active region” to mean “(1) a substantially rectangular active region or (2) a non-rectangular active region that has (a) a substantially constant length and a width that varies by approximately 1/3 or less along its length, (b) a substantially constant length and a width that varies only by the widths of the access and latch transistors, or (c) a length that is greater than or equal to approximately three times its maximum width.”” slip op. at 13

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

    “For the reasons discussed above, we construe a “substantially oblong active region” to mean “(1) a substantially rectangular active region or (2) a non-rectangular active region that has (a) a substantially constant length and a width that varies by approximately 1/3 or less along its length, (b) a substantially constant length and a width that varies only by the widths of the access and latch transistors, or (c) a length that is greater than or equal to approximately three times its maximum width.”” slip op. at 14

  Patent outcomesUS 6,534,805 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,534,805
• Qualcomm Incorporated / Advanced Micro Devices, Inc. et al. v. Monterey Research, LLCAll claims unpatentable
  PTAB · Mar 4, 2022 · IPR2020-01491 · APJ John F Horvath · IPR · Final written decision

  Qualcomm proved claims 7–32 and 53–61 unpatentable; AMD and STM proved claims 7, 9, 11, 13–15, 17, 19–21, 24–32, and 53–61 unpatentable, principally over Oh and combinations with Lee or Nii.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for patent owner

    “(“AMD”) and STMicroelectronics, Inc. (“STM”) were joined as parties to this proceeding. See Papers 22, 25. Moreover, in Advanced Micro Devices, Inc. v. Monterey Research, LLC, IPR2020-00990, Paper 45 (PTAB, Nov. 23, 2021), we determined AMD and STM showed by a preponderance of evidence that claims 8, 10, 12, 16, 18, 22, and 23 of the ’805 patent are unpatentable. Thus, AMD and STM are estopped from challenging the patentability of those claims in this proceeding. See 35 U.S.C. § 315(e)(1) (2018). Nonetheless, to challenge the patentability of claims 9, 11, 13–15, 17, 19–21, and 24–26, AMD and STM must demonstrate in this proceeding how the prior art maps to the limitations of claims 8, 10, 12, 16, 18, 22, and 23, from which these claims depend. Unless noted otherwise, we collectively refer to Qualcomm, AMD, and STM as “Petitioner.”” slip op. at 2

  • Skill levelSkill level board ownOther

    “of the invention as someone that would have had “a bachelor’s degree in electrical engineering, computer engineering, applied physics, or a related field, and at least two years of experience in design, development, and/or testing of memory circuits, related hardware design, or the equivalent.” Pet. 12 (citing Ex. 1019 ¶¶ 50–53). In our Institution Decision, we adopted this description as our own. See Dec. Inst. 15–16. Neither party disputes that preliminary finding, which we maintain for purposes of this decision. See PO Resp. 14; Pet. Reply 1–29.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “meaning, that meaning may not apply “when a patent applicant surrender[s] claim scope during prosecution.” Elbex Video, Ltd. v. Sensormatic Electronics Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007). The doctrine of prosecution history disclaimer ensures that “[a] patentee may not state during prosecution that the claims do not cover a particular device and then change position and later sue a party who makes that same device for infringement.” Springs Window Fashions LP v. Novo Industries, L.P., 323 F.3d 989, 995–96 (Fed. Cir. 2003). Importantly, however, this doctrine does not apply when “the alleged disavowal is ambiguous” to one of ordinary skill in the art. Omega Eng’g Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003). This can happen, for example, when the patentee makes a statement during prosecution that is clearly erroneous. See Biotec 1341, 1348 (Fed. Cir. 2001) (finding no estoppel when “a person of reasonable intelligence would not be misled into relying on the erroneous statement, for it [was] contrary not only to the plain language of the claims and the specification, but also to other statements in the same prosecution document.”). The patentee’s claim that the quoted passage from the Specification define the shapes of “substantially oblong active regions” was clearly erroneous. First, the quoted passage uses permissive rather than definitional language. See, e.g., Ex. 1001, 7:18–21 (“in an embodiment” and “an NMOS active region may be considered to be substantially oblong if . . .”) (emphasis added). Second, the quoted passage only describes the shapes of NMOS active regions. Elsewhere, the Specification discloses that PMOS active regions may be substantially oblong if they are “substantially rectangular,” i.e., if they “have a length that is substantially constant across the width . . . [and] a width that is substantially constant across the length.” Compare id. at 6:65–7:4, with id. at 7:20–34. Third, rather than limiting the plain and ordinary meaning of “substantially oblong,” the quoted passage describes NMOS active regions that can be considered “substantially oblong” even though they are non-rectangular. See id. at 7:4–6 (“an NMOS active region . . . may have some variation in width”), 7:20–24 (“an NMOS active region may be considered to be substantially oblong . . . if the width of the region varies by approximately 1/3 or less along the length”) (emphasis added), 7:24–28 (“an NMOS active region may be considered substantially oblong . . . if the width of the region by design varies only with the respective widths of the access and latch transistors”) (emphasis added), 7:28–30 (disclosing “‘substantially oblong’ may refer to any structure width,” implying a variable width having a maximum) (emphasis added). For the reasons discussed above, we find a person of ordinary skill in the art would have known the quoted passage of the Specification does not define the shape of substantially oblong active regions. Therefore, the patentee’s prosecution history statement to that effect did not disavow the plain and ordinary meaning of that term, which includes substantially rectangular active regions. See Biotec, 249 F.3d at 1348. Instead, because the quoted passage describes active regions that can be considered “substantially oblong” even though they are not rectangular and the patentee argued that Kim’s L-shaped active regions could not be considered “substantially oblong,” the patentee’s statement was a disavowal of non-rectangular active regions that do not have one of the shapes described at column 7, lines 20–34 of the Specification.” slip op. at 12

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

    “The patentee’s claim that the quoted passage from the Specification define the shapes of “substantially oblong active regions” was clearly erroneous. First, the quoted passage uses permissive rather than definitional language. See, e.g., Ex. 1001, 7:18–21 (“in an embodiment” and “an NMOS active region may be considered to be substantially oblong if . . .”) (emphasis added). Second, the quoted passage only describes the shapes of NMOS active regions. Elsewhere, the Specification discloses that PMOS active regions may be substantially oblong if they are “substantially rectangular,” i.e., if they “have a length that is substantially constant across the width . . . [and] a width that is substantially constant across the length.” Compare id. at 6:65–7:4, with id. at 7:20–34. Third, rather than limiting the plain and ordinary meaning of “substantially oblong,” the quoted passage describes NMOS active regions that can be considered “substantially oblong” even though they are non-rectangular. See id. at 7:4–6 (“an NMOS active region . . . may have some variation in width”), 7:20–24 (“an NMOS active region may be considered to be substantially oblong . . . if the width of the region varies by approximately 1/3 or less along the length”) (emphasis added), 7:24–28 (“an NMOS active region may be considered substantially oblong . . . if the width of the region by design varies only with the respective widths of the access and latch transistors”) (emphasis added), 7:28–30 (disclosing “‘substantially oblong’ may refer to any structure width,” implying a variable width having a maximum) (emphasis added). For the reasons discussed above, we find a person of ordinary skill in the art would have known the quoted passage of the Specification does not define the shape of substantially oblong active regions. Therefore, the patentee’s prosecution history statement to that effect did not disavow the plain and ordinary meaning of that term, which includes substantially rectangular active regions. See Biotec, 249 F.3d at 1348. Instead, because the quoted passage describes active regions that can be considered “substantially oblong” even though they are not rectangular and the patentee argued that Kim’s L-shaped active regions could not be considered “substantially oblong,” the patentee’s statement was a disavowal of non-rectangular active regions that do not have one of the shapes described at column 7, lines 20–34 of the Specification. For the reasons discussed above, we construe a “substantially oblong active region” to mean “(1) a substantially rectangular active region or (2) a non-rectangular active region that has (a) a substantially constant length and a width that varies by approximately 1/3 or less along its length, (b) a substantially constant length and a width that varies only by the widths of the access and latch transistors, or (c) a length that is greater than or equal to approximately three times its maximum width.”” slip op. at 13

  Patent outcomesUS 6,534,805 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,534,805
• Advanced Micro Devices, Inc. v. Monterey Research, LLCAll claims unpatentable
  PTAB · Feb 22, 2022 · IPR2020-01315 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1–14 are unpatentable: claims 7, 8, 10, and 13 are anticipated by Ozguc; claims 1–6, 9, and 14 are obvious over the stated combinations.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill “would have had a bachelor’s degree in electrical or computer engineering, applied physics, or a related field, and at least two years of experience in design, development, and/or testing of circuits, related hardware design.” Pet. 13–14 (citing Ex. 1002 ¶ 52). Patent Owner adopts that definition. PO Resp. 13. We adopt the agreed upon 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.” slip op. at 7

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

    “difference across the device. See Ex. 1002 ¶ 19; Pet. Reply 5–6.7 We agree with Petitioner that a transistor does not have “zero impedance” simply because it has no source-drain voltage difference, and that a “low impedance path” does not require a transistor with zero impedance.” slip op. at 10

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

    “We decline to construe “driver transistor” because, as explained below, we do not agree that the prior art lacks a “low impedance path” as we have construed it above. Thus, whether a driver transistor must provide a low-impedance path has no bearing on our unpatentability determination.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We do not agree with Patent Owner. There is no requirement, in the claim language or in our construction for “low impedance path,” that a transistor provide its lowest-possible impedance. Dr. Baker refers to a PMOS transistor conducting when its gate voltage is “low,” and explained that means “generally ground.” Ex. 2003, 39:4–24. We find nothing inconsistent between Dr. Baker’s explanation and Ozguc’s disclosures. Although Ozguc’s current source 122 may result in MP1’s gate having a slight voltage difference from ground, Ozguc discloses that, “[w]hen the input signal 101 is high, switch 128 is turned off, allowing the charging transistor MP1 to conduct.” Ex. 1006, 2:24–26. When MP1 conducts, it creates a “low impedance path” as claimed. See supra at 7–11. We agree with Petitioner that Patent Owner’s argument would require a claim construction that we have not adopted. See Pet. Reply 17–18.10” slip op. at 16

  Patent outcomesUS 8,373,455 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,373,455
• Advanced Micro Devices, Inc. v. Monterey Research, LLCAll claims unpatentable
  PTAB · Jan 21, 2022 · IPR2020-01124 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–19 are unpatentable as anticipated by Joshi under § 102(b); the Board did not reach the alternative Chang grounds and dismissed the motion to exclude as moot.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A POSITA [person of ordinary skill in the art] as of December 8, 2000, would have had a bachelor of science degree in computer science, electrical engineering, computer engineering, or a related field, and approximately two years of experience in the design, development, and/or testing of systems with memory devices, related hardware design, or the equivalent, with additional education and/or research substituting for experience and vice versa. Pet. 19–20 (citing Ex. 1003 ¶¶ 24–25). Patent Owner adopts Petitioner’s definition of a person of ordinary skill in the art. See PO Resp. 11 (citing Pet. 19–20; Ex. 2003 ¶¶ 71–72). We adopt Petitioner’s definition of a 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. §§ 102, 103 effective March 16, 2013. Because the filing date of the ’226 Patent is prior March 16, 2013, we refer to the pre-AIA versions of §§ 102, 103. 2 Ex. 1007, US 4,949,301 A, issued Aug. 14, 1990 (“Joshi”). 3 Ex. 1006, US 5,367,643 A, issued Nov. 22, 1994 (“Chang”). 4 Admitted Prior Art (“APA”) person of ordinary skill in the art, as it is consistent with the level of skill reflected by the Specification and the asserted prior art references.” slip op. at 7

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

    “multiqueue FIFO 102 that may include address circuit 152 and controller circuit 156. See PO Resp. 7–9; PO Sur-reply 2–3; Ex. 1001, Figs. 3–5, 4:51–59, 5:10–20, 5:31–6:55. Although the ’226 Patent discloses a multiqueue storage device that itself (i.e., internally) includes circuits that organize, manage, and control access to the data in multiqueue storage device, we decline to import limitations into the claim from the ’226 Patent Specification that would require the multiqueue storage device to include internal management, organization, access control, and control of reading and writing of data in the multiqueue storage device. Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); see also Leibel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004) (when the patent specification discloses a single embodiment, the claims of a patent will not be read constrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction.). Turning to the extrinsic evidence, we agree that a multiqueue storage device implicitly requires some component or logic that organizes or manages the queues. See Ex. 1003 ¶¶ 53, 67, 104, 144, 145, 171; Ex. 2005, 54:22–55:6, 55:16–20; Ex. 2018, 82:4–10. The evidence, however, does not support Patent Owner’s position that the multiqueue storage device itself is required to contain the logic or component that manages or organizes queues in the storage device. Patent Owner and Dr. Bagherzadeh acknowledge, and Dr. Melvin confirms, that queues within a FIFO memory device may be internally managed by the FIFO memory device, or externally managed by logic or a component outside the memory device. See PO Resp. 10; PO Surreply 3; Ex. 2005, 53:24–55:20; Ex. 2003 ¶ 41; see also Tr. 30:1–19 (similar assertion by Patent Owner’s counsel). For this same reason, Patent Owner’s arguments that the multiqueue storage device itself must control access to and reading and writing data to the queues in the multiqueue storage device are not supported by the extrinsic evidence. See id. For the foregoing reasons, we agree with neither Patent Owner’s implicit constructions nor Petitioner’s witness Dr. Melvin’s explicit construction for “multiqueue storage device.” Instead, we construe a multiqueue storage device as “a storage device having data organized into multiple queues,” without any limitation on the logic or component that organizes or manages the queues––whether that logic or component is internal or external to the multiqueue storage device.” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction needed

    “As demonstrated in the analysis below, we need not provide explicit claim construction for the means-plus-function limitations beyond the undisputed corresponding structures of an “interface” offered by both parties. 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 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We find Petitioner has shown how Joshi meets this limitation for the reasons stated in the Petition and Petitioner’s Reply. We do not agree with Patent Owner’s arguments. Patent Owner’s arguments focus on whether Joshi discloses “variable size data packets,” instead of the full claim language “configured to transfer variable size data packets,” and “configured to allow . . . reads of variable size data packets,” as pointed out by Petitioner. The claim language requires RBC 44, FORMAC 34, DPC 43, and BM 38 to be configured, or have the capacity, to transfer or allow reads of variable size data packets. Petitioner’s showing that Joshi’s algorithm for storing normally received packets allows status and length information to be written to the memory location preceding the first byte of the received packet, regardless of how long the packet is or whether the length is known, and that Joshi discloses receiving and transmitting packets that could contain one or more bytes of data is sufficient to demonstrate that Joshi’s RBC 44, FORMAC 34, DPC 43, and BM 38 are configured to transfer and allow reads of data packets that can have variable size. See Ex. 1007, 5:31–35, 11:1–4, 16:6–9, 20:18–21, 23:7–11, 23:14–16, Fig. 1. Based on the entire trial record, we find that Joshi discloses “wherein said multiqueue storage device and said interface are configured to transfer variable size data packets,” as recited in claim 1.” slip op. at 27

  Patent outcomesUS 6,629,226 unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 6,629,226
• Unified Patents, LLC v. Voice Tech CorporationAll claims unpatentable
  PTAB · Dec 13, 2021 · IPR2020-01018 · APJ John F Horvath · IPR · Final written decision

  Claims 1–8 are unpatentable as obvious over Wong and Beauregard; the Board did not reach the Ben-Efraim and Balakrishnan ground.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerNot time barredDecided for petitioner

    “an unnamed RPI, we are not persuaded by Patent Owner’s argument that this proceeding should be terminated for failure to identify all RPIs. First, Patent Owner’s argument is based on an incorrect premise that 35 U.S.C. § 312(a) is a jurisdictional statute that must be satisfied to give the Board jurisdiction. This premise is contrary to the Board’s precedential decision in Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38, 5 (PTAB Mar. 4, 2016) (precedential) (“§ 312(a) is not jurisdictional”). may rectify non-compliance with the statute. Id., Paper 38 at 5. The Federal Circuit has upheld the Board’s finding that § 312(a) 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.”).” slip op. at 5

  • Strike new argumentGranted

    “Petitioner moved to strike Exhibits 2038–2041 as against Board policy and to deny consideration of those portions of the Sur-Reply that rely on these Exhibits. See Paper 39, 1; see also Patent Trial and Appeal Board Consolidated Trial Practice Guide at 73 (Nov. 2019)2 (“The sur-reply may not be accompanied by new evidence other than the deposition transcripts of the cross-examination of any reply witness.”). Patent Owner opposed. See Paper 40. We granted Petitioner’s motion, and expunged Exhibits 2038– 1 Unless noted otherwise, we cite to the public versions of the papers filed by the parties. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated to any arguments first presented in Patent Owner’s Sur-Reply that rely on any of Exhibits 2038–2041. An oral hearing was held on September 21, 2021, and the hearing transcript is included in the record. See Paper 45 (“Tr.”).” slip op. at 2

  • Skill levelSkill level board ownOther

    “[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The level of skill in the art should be commensurate with the problems and solutions disclosed in the prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). For the reasons discussed in § II.F.3, infra, we find the field of invention is voice in the art would have had a bachelor’s degree in electrical engineering, computer science, or a related field, and three years of experience working on voice activated computing. slip op. at 11

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

    “We agree with Petitioner. Neither the Specification nor the prosecution history defines or limits the plain and ordinary meaning of an audio command interface; nor do any of the passages cited by Patent Owner. 4 Patent Owner cites to pages 476–492 of Exhibit 1002. See PO Resp. 9; Ex. 1002. The subject matter Patent Owner describes, however, can be found in Exhibit 1008, the prosecution history of the parent to the ’679 patent. See Ex. 1008, 476–492. We correct the citation here. Although the Specification describes audio command interface 108 as a component of system 100 “implemented in hardware, software, or a suitable combination of hardware and software,” system 100 is an “exemplary” embodiment rather than a limiting embodiment. Ex. 1001, 2:21–24, 2:38– 45. In any event, all computer components can be implemented as hardware, software or suitable combinations of hardware and software. Similarly, although the Specification distinguishes system 100 over prior art systems requiring “voice command interoperability,” it does not identify audio command interface 108 as the component that distinguishes system 100 over the prior art. Id. at 4:45–57. Regardless, as discussed above, system 100 is described as an “exemplary” rather than a limiting embodiment. Id. at 2:21–24. Moreover, contrary to Patent Owner’s contention, the prosecution history did not limit the plain and ordinary meaning of an audio command interface. See PO Resp. 9. Although the applicant amended claims to recite an audio command interface and argued the audio command interface eliminated the need for “voice command interoperability,” the amended claims were subsequently abandoned after further rejection by the Examiner. See Ex. 1008, 477–486 (amending claims 1–12 to recite an audio command interface); id. at 416 (continued rejection of claims 1–12), id. at 304 (cancellation of claims 1–12). Finally, although the Specification discloses “system 300 provides an audio command interface that allows a person to use voice commands from mobile device 102 to access and control native applications or operating system functions,” it does not limit the audio command interface to one that receives voice commands from a mobile device. Ex. 1001, 7:36–49. First, like system 100, system 300 is an “exemplary” rather than a limiting” slip op. at 13

  Patent outcomesUS 10,491,679 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,491,679
• Advanced Micro Devices, Inc. v. Monterey Research, LLCAll claims unpatentable
  PTAB · Dec 8, 2021 · IPR2020-01017 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–5 and 7–17 are unpatentable under § 103 over Saulsbury and Cullison; claim 5 is also unpatentable over Saulsbury, Cullison, and Gupta.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner asserts: [a] person of ordinary skill in the art (“POSITA”) of the ’807 patent would have been a person with a bachelor’s degree in electrical or computer engineering, computer science, applied physics, or a related field, and at least two years of experience in design, development, and/or testing of integrated circuits, 6 Patent Owner does not present evidence of secondary considerations. See generally PO Resp. computer systems, or memory circuits, or the equivalent, with additional education substituting for experience and vice versa. Pet. 10 (citing Ex. 1003 ¶¶ 22–25). Patent Owner adopts Petitioner’s definition of a person of ordinary skill in the art. See PO Resp. 12. We adopt Petitioner’s definition of a person of ordinary skill in the art as it is consistent with the evidence of the level of ordinary skill in the art provided by the prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 6

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

    “applied in federal courts. See 37 C.F.R. § 42.100(b). The claim construction standard used in a civil action under 35 U.S.C. § 282(b) is generally referred to as the Phillips standard. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under the Phillips standard, “words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips, 415 F.3d at 1312 (quoting Vitrionics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The parties do not provide explicit claim constructions for any claim term or phrase. See Pet. 10; PO Resp. 12. As demonstrated in the analysis 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because the ’807 Patent has an effective filing date prior to the effective date of the applicable AIA amendment, we refer to the pre-AIA versions of § 103. 2 Ex. 1004, US 2002/0087821A1, published July 4, 2002 (“Saulsbury”). 3 Ex. 1005, US 5,155,833 A, issued Oct. 13, 1992 (“Cullison”). 4 Ex. 1006, US 5,970,069 A, issued Oct. 19, 1999 (“Kumar”). 5 Ex. 1007, US 5,996,083 A, issued Nov. 30, 1999 (“Gupta”). below, we need not expressly construe any claim terms or phrases. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 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 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “We do not agree with Patent Owner’s arguments because any differences in the teachings of the references do not necessarily constitute a teaching away from the claimed invention. “Under the proper legal standard, a reference will teach away when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the applicant’s invention.” Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). “A reference does not teach away, however, if it . . . 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)). We also do not agree with Patent Owner’s contentions that Saulsbury and Cullison teach away from and do not meet the ’807 Patent’s goal of providing greater flexibility. “In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.” KSR, 550 U.S. at 419 (finding that the Court of Appeals for the Federal Circuit erred by holding that courts and patent examiners should only look to the problem the patentee was trying to solve).” slip op. at 20

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

    “We do not agree with Patent Owner’s arguments. To the extent that Patent Owner asserts that a prior art reference must identify a problem (i.e., a boot program too large for the instruction cache) in order to provide a reason to combine it with the teachings of additional references, we do not agree. The Supreme Court instructs: “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” KSR, 550 U.S. at 417. In addition, the preponderance of the evidence supports Petitioner’s position that, in 2002, cache memory was on the order of a few kilobytes and boot programs were on the order of hundreds of kilobytes. See Ex. 1006, Fig. 3, 6:26–27, 8:63–65; Ex. 1014, 2, 25 (Table 1); Ex. 1015, 2; Ex. 1016, 2–3; Ex. 1017, 1; Ex. 1020, 68:13–69:15. We cannot agree with Patent Owner’s contention and Dr. Brogioli’s testimony that boot programs in 2002 were “only on the order of a few kilobytes” because Dr. Brogioli’s testimony is not supported by a sufficient underlying factual basis, and, thus, is entitled to little weight. See Ex. 2003 ¶ 114; Ex. 2008, 1; 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Also unsupported by a sufficient underlying factual basis is Patent Owner’s contention that a person or ordinary skill in the art would not have been motivated to execute the boot procedure from DRAM because boot programs were typically executed by instruction caches from external non-volatile memory, not DRAM, as Dr. Abonesis admits. See PO Resp. 29–30 (quoting Ex. 2005, 149:25–150:8; citing Ex. 2003 ¶ 114). Dr. Albonesi’s deposition testimony, cited by Patent Owner, does not address typical execution of boot programs. See Ex. 2005, 149:25–150:8. Instead, Dr. Albonesi testifies that, in the case when a system is shut down and the power is removed, restarting the system would involve executing a boot procedure through an external, non-volatile memory. See id. at 148:7– 151:20. We also are not swayed by Patent Owner’s following unsupported attorney arguments that: (1) Saulsbury’s disclosures teach a person of ordinary skill in the art that Saulsbury’s instruction cache can store the entire boot program; and (2) should a larger boot program be stored in Saulsbury’s PROM, a person of ordinary skill in the art would have simply understood to appropriately size Saulsbury’s instruction cache to the boot program and maintain Saulsbury’s simple boot process. Argument of counsel cannot take the place of objective evidence. See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (unsworn attorney argument is not evidence).” slip op. at 25

  Patent outcomesUS 6,961,807 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,961,807
• Advanced Micro Devices, Inc. v. Monterey Research, LLCAll claims unpatentable
  PTAB · Nov 30, 2021 · IPR2020-00989 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1–3, 6–10, 13–17, and 20 are unpatentable as obvious over Vorbach; the Board did not reach the Mitra-based grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill “would have had a bachelor’s degree in electrical or computer engineering, or a similar field with at least two years of experience in digital circuit and computer design, or a person with a master’s degree in electrical or computer engineering, or a similar field with a specialization in digital circuit and computer design.” Pet. 11 (citing Ex. 1003 ¶¶ 28–30). Patent Owner does not dispute this definition of a person of ordinary skill. See generally PO Resp. We adopt Petitioner’s proposed level of ordinary skill as it is consistent with the level of skill reflected by the specification and in the asserted prior art references.” slip op. at 5

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

    “Patent Owner submits that a “programmable digital circuit block” means “digital circuit resources where a substantial amount of circuit resources can be reused to perform a limited number of digital functions.” PO Resp. 7–10. According to Patent Owner, that construction would distinguish the claimed programmable digital circuit block from the circuit blocks used in FPGAs. Id. at 7. Petitioner submits that no construction is required, that Patent Owner attempts to import limitations from a preferred embodiment, and that the proposed construction would be indefinite for lacking any objective boundaries. Pet. Reply 5–7. Patent Owner’s arguments against Petitioner’s unpatentability assertions help explain the proposed construction. Regarding Vorbach, Patent Owner argues that because the asserted circuit block uses function units performing unique functions (those functional units are not combined but rather one is selected), Vorbach’s function units are not “reused” to perform a set of predetermined functions. PO Resp. 71–72. Thus, Patent Owner uses the term “reused” to mean that the claimed predetermined digital functions must be performed using multiple resources within the programmable digital circuit block. Patent Owner does not assert that its proposed claim construction affects Petitioner’s assertions based on Mitra. See id. at 14–69. We determine it is not necessary to resolve whether Patent Owner’s construction is correct because Petitioner shows that Vorbach discloses a programmable digital circuit block such that a substantial amount of digital circuit resources can be reused to perform a limited number of digital functions. See infra at 11; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that claims need be construed only to the extent a construction is material to a dispute).” slip op. at 5

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

    “In sum, for the reasons discussed above, we agree with Petitioner that Vorbach teaches configuring the PAE using a single register write operation, namely, a single write to F-PLUREG.” slip op. at 15

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersObjective indicia no nexusDecided for petitioner

    “Petitioner asserts that, because Vorbach provided the same solution and benefits that the ’407 patent purports to provide, there was no unmet need by the time of the ’407 patent. Pet. Reply 41. As discussed above, we agree with Petitioner that Vorbach discloses configuration of a programmable digital circuit block using a single register write operation. See supra at 11–15. Vorbach therefore solved the need that Patent Owner asserts, prior to invention of the ’407 patent.7 4. Conclusion As discussed, and based on Petitioner’s contentions (see Pet. 56–73), we find that Vorbach teaches all limitations of claim 1. We have considered Patent Owner’s assertions regarding objective indicia of nonobviousness, together with Petitioner’s submissions regarding Vorbach, and conclude that the subject matter of claim 1 would have been obvious over Vorbach. As discussed, we find that Vorbach teaches the additional limitations of claims 7 and 14. We have considered Patent Owner’s assertions regarding 7 Even if we had not concluded that Patent Owner’s asserted need was already met before the challenged patent, Patent Owner has not identified objective evidence to support its view. Citations to the challenged patent’s specification do not offer a reliable basis on which to conclude that the claims were nonobvious, and Patent Owner’s declarant provides no additional evidence to support his statements. See Ex. 2002 ¶¶ 183–188; 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Pet. Reply 41. objective indicia of nonobviousness, together with Petitioner’s submissions regarding Vorbach, and conclude that the subject matter of claims 7 and 14 would have been obvious over Vorbach.” slip op. at 17

  Patent outcomesUS 6,765,407 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,765,407
• Advanced Micro Devices, Inc. / Stmicroelectronics, Inc. v. Monterey Research, LLCAll claims unpatentable
  PTAB · Nov 30, 2021 · IPR2021-00355 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1–21 are unpatentable, principally as obvious over Wada and Barrett, alone or with Fujioka, Reeves, or Lysinger.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill “would have had a bachelor’s degree in electrical or computer engineering, applied physics, or a related field, and at least two years of experience in design, development, and/or testing of memory circuits, related hardware design, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 11 (citing Ex. 1002 ¶ 43). Patent Owner does not dispute this definition of a person of ordinary skill. See generally PO Resp. We adopt Petitioner’s proposed level of ordinary skill as it is consistent with the level of skill reflected in the specification and in the asserted prior art references.” slip op. at 7

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

    “We note that the claim itself requires certain external signals for the claimed address generation. Claim 1 recites a logic circuit configured to generate address signals “in response to (i) an external address signal, (ii) a clock signal and (iii) one or more control signals.” Ex. 1001, 5:22–32. Those three recited external signals may influence the circuit’s ability to generate internal addresses as claimed. For example, stopping the clock signal or removing power from the circuit would prevent (or interrupt) address generation. See Pet. Reply 12; Tr. 19:17–22. Doing so, however, would prevent all operation by the circuit. This, in our view, would not represent an interrupted burst, which we determine requires interruption during continued circuit operation, such as interruption to generate a new burst or to accept another command. Thus, as a matter of logic, the need to maintain the clock signal does not render address generation interruptible. Further, we agree with Patent Owner that the claimed “external address signal” need only be provided at the beginning of the process, not maintained throughout, for the circuit to generate a burst of address signals. See Tr. 54:11–13. As the specification instructs, that external address signal provides an “initial address” to “determine the initial location where data transfers to and from the memory 104 will generally begin.” Ex. 1001, 2:66– 3:4.” slip op. at 9

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

    “We do not understand any dispute raised by the parties to turn on whether we adopt Petitioner’s view that the predetermined number must be fixed at manufacture time. Moreover, such a construction would not appear to be consistent with dependent claim 5, which recites that the “fixed burst length is programmable.” Ex. 1001, 5:40–41. Thus, we do not adopt Petitioner’s proposed construction and proceed with no express construction for “predetermined number.” 3.” slip op. at 11

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Decided for petitioner

    “The parties agree that the structure corresponding to the means for reading data is “memory array 104.” Pet. 13; PO Resp. 21. The parties appear to agree that the structure corresponding to the means for generating a predetermined number of internal address signals is “burst address counter/register 102,” which may take the form shown in either Figure 2 or Figure 3. Pet. 14–15; PO Resp. 21. We proceed with both proposed constructions.” slip op. at 11

  Patent outcomesUS 6,651,134 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,651,134
• Advanced Micro Devices, Inc. / Stmicroelectronics, Inc. v. Monterey Research, LLCAll claims unpatentable
  PTAB · Nov 30, 2021 · IPR2020-00985 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1–21 are unpatentable: claims 1–17 over Wada and Barrett, and claims 4–7, 9–11, 14–15, and 18–21 over combinations adding Fujioka, Reeves, or Lysinger.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “e. Conclusion As discussed, we find that a person of ordinary skill in the art had reason to modify Wada’s system in light of Barrett, and that the combined teachings disclose all of claim 1’s limitations. We have considered Patent Owner’s assertions regarding objective indicia of nonobviousness together with Petitioner’s proofs regarding the combined teachings of Wada and Barret and find the subject matter of claim 1 would have been obvious over Wada and Barrett. For claims 2–4, 8, 12–14, 16, and 17, Petitioner provides contentions showing how the same combination of Wada and Barrett teach each of the elements recited in these claims. Pet. 17–53. Other than as addressed above regarding claim 1, Patent Owner does not challenge Petitioner’s contentions regarding Wada’s and Barrett’s disclosures with respect to claims 2–4, 8, 12–14, 16, and 17. See PO Resp. 22–50. We determine Patent Owner has waived any such argument regarding these claims. See Paper 14, 8 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”); In re NuVasive, Inc., 842 F.3d 1376, 1380–81 (Fed. Cir. 2016); Consolidated Trial Practice Guide 52 (Nov. 2019). We have reviewed the parties’ contentions and the evidence presented, including objective evidence of nonobviousness, and conclude that Petitioner has shown by a preponderance of the evidence that the subject matter of each of claims 2–4, 8, 12–14, 16, and 17 would have been obvious over Wada and Barrett. D. ADDITIONAL OBVIOUSNESS GROUNDS BASED ON WADA AND BARRETT” slip op. at 29

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill “would have had a bachelor’s degree in electrical or computer engineering, applied physics, or a related field, and at least two years of experience in design, development, and/or testing of memory circuits, related hardware design, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 11 (citing Ex. 1002 ¶ 43). Patent Owner does not dispute this definition of a person of ordinary skill. See generally PO Resp. We adopt Petitioner’s proposed level of ordinary skill as it is consistent with the level of skill reflected in the specification and in the asserted prior art references.” slip op. at 7

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

    “We note that the claim itself requires certain external signals for the claimed address generation. Claim 1 recites a logic circuit configured to generate address signals “in response to (i) an external address signal, (ii) a clock signal and (iii) one or more control signals.” Ex. 1001, 5:22–32. Those three recited external signals may influence the circuit’s ability to generate internal addresses as claimed. For example, stopping the clock signal or removing power from the circuit would prevent (or interrupt) address generation. See Pet. Reply 12; Tr. 19:17–22. Doing so, however, would prevent all operation by the circuit. This, in our view, would not represent an interrupted burst, which we determine requires interruption during continued circuit operation, such as interruption to generate a new burst or to accept another command. Thus, as a matter of logic, the need to maintain the clock signal does not render address generation interruptible. Further, we agree with Patent Owner that the claimed “external address signal” need only be provided at the beginning of the process, not maintained throughout, for the circuit to generate a burst of address signals. See Tr. 54:11–13. As the specification instructs, that external address signal provides an “initial address” to “determine the initial location where data transfers to and from the memory 104 will generally begin.” Ex. 1001, 2:66– 3:4.” slip op. at 9

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

    “We do not understand any dispute raised by the parties to turn on whether we adopt Petitioner’s view that the predetermined number must be fixed at manufacture time. Moreover, such a construction would not appear to be consistent with dependent claim 5, which recites that the “fixed burst length is programmable.” Ex. 1001, 5:40–41. Thus, we do not adopt Petitioner’s proposed construction and proceed with no express construction for “predetermined number.” 3.” slip op. at 11

  Patent outcomesUS 6,651,134 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,651,134
• Advanced Micro Devices, Inc. / Stmicroelectronics, Inc. v. Monterey Research, LLCAll claims unpatentable
  PTAB · Nov 23, 2021 · IPR2021-00356 · APJ John F Horvath · IPR · Final written decision

  Claims 8, 10, 12, 16, 18, 22, and 23 are unpatentable as obvious over Oh; the Oh and Baker ground was not reached.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner identifies a person of skill in the art (“POSITA”) at the time of the invention as someone that would have had “a bachelor’s degree in electrical engineering, computer engineering, applied physics, or a related field, and at least two years of experience in design, development, and/or testing of memory circuits, related hardware design, or the equivalent.” Pet. 16 (citing Ex. 1002 ¶¶ 25–40). In our Institution Decision, we adopted this description as our own. See Dec. Inst. 11–12. Neither party disputes that preliminary finding, which we maintain for purposes of this decision. See PO Resp. 14; Pet. Reply 1–33.” slip op. at 8

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

    “We agree with Petitioner that the local interconnect layer limitation should be construed to have its plain and ordinary meaning in view of the Specification. The Specification discloses that local interconnects are short conductors that “connect[] features within a circuit” rather than “much longer metal conductors used for global connections.” Ex. 1001, 11:18–21. The Specification discloses that a local interconnect layer is a deposited conducting layer that is “patterned and etched” and “a distinct process layer that exclusively performs such short [local] connections.” Id. at 11:22–23, 12:39–49 (emphasis added). This last disclosure distinguishes a local interconnect layer from other layers that may perform the interconnect function. For example, a polysilicon layer that “partially provide[s] local interconnect” functions but also “provid[es] transistor gate[]” functions is not a local interconnect layer because it does not exclusively perform the interconnect function. Id. at 11:23–27. Likewise, a dielectric layer having contacts or vias that connect structures in layers above and below it is not a local interconnect layer because it is not a conducting layer. Id. at 8:52–64 (disclosing a dielectric layer opening used to contact underlying layers is a “contact opening,” “contact hole,” or “via” rather than an “interconnect”). Moreover, although the Specification discloses an interconnect layer containing interconnects, a first metal layer containing bitlines, and a second metal layer containing a wordline, it fails to disclose how the bitlines and wordline are laid out in the first and second metal layer, i.e., it fails to show whether they require “laterally displacing” interconnects in the interconnect layer. Id. at 13:19–32. Given the Specification’s disclosures, we construe “a single local interconnect layer comprising local interconnects corresponding to bitlines and a global wordline” to mean “one conductive layer containing non-global interconnects, including interconnects for bitlines and a global wordline, that exclusively perform the function of connecting features within a circuit.” See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“[T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.”). We disagree with Patent Owner’s contention that the prosecution history requires a different construction. When claim 8 was initially rejected, Patent Owner amended it to recite “a local interconnect layer comprising local interconnects corresponding to bitlines and a global wordline.” Ex. 1007, 488. Patent Owner argued this distinguished claim 8 over Osada because it recited “the single [interconnect] layer of Fig. 3,” which has “all the runs for the bitlines, VCC, VSS and the wordline,” whereas Osada has “multiple layers for its runs.” Id. at 502. The Examiner suggested Patent Owner amend claim 8 to recite a single local interconnect layer, and when Patent Owner did, allowed claim 8. Id. at 1039, 1057–1058. In our view, the Examiner erred in finding claim 8’s recitation of a single local interconnect layer distinguished that claim over Osada. As we stated in our Institution Decision, we “do not see a meaningfully claimed distinction between the disclosures of the ’805 patent, Osada, and Oh, all of which disclose an SRAM having three metal layers, including a first metal layer having interconnects for upper layer bitlines and a wordline.” Dec. Inst. 10. It is this first metal layer that is the single local interconnect layer because it is the only conductive layer in the ’805 patent, Osada, and Oh that exclusively performs the interconnect function.” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “For the reasons discussed above, we find Petitioner has demonstrated that Oh discloses a plurality of substantially oblong active regions formed in a semiconductor substrate and arranged substantially parallel with one another as recited in claim 8.” slip op. at 25

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

    “F. Obviousness Over Oh and Baker As discussed in §§ II.E.2–II.E.8, supra, Petitioner has shown by a preponderance of evidence that claims 8, 10, 12, 16, 18, 22, and 23 of the ’805 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over Oh. This finding is dispositive of Petitioner’s challenge to the patentability of all of the challenged claims. Accordingly, we need not address whether Petitioner has further shown, by a preponderance of evidence, that these claims are also unpatentable as obvious over the combination of Oh and Baker. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative agency is at liberty to reach a decision based on a single dispositive issue because doing so “can not only save the parties, the [agency], and [the reviewing] court unnecessary cost and effort,” but also can “greatly ease the burden on [an agency] faced with a . . . proceeding involving numerous complex issues and required by statute to reach its conclusion within rigid time limits”).” slip op. at 44

  Patent outcomesUS 6,534,805 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,534,805

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.