- Samsung Electronics Co., Ltd. / Samsung Display Co., Ltd et al. v. Surpass Tech Innovation LLCAll claims unpatentablePTAB · Sep 6, 2016 · IPR2015-00887 · APJ Beth Z Shaw · IPR · Final written decision
Claims 1–5 are unpatentable under § 103 as obvious over the instituted combinations of Janssen ’708 with Horii or APA, and Kubota for claims 4–5.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“We adopt Petitioner’s proposed constructions for the terms “date lines” and “insulated with each other,” as we determine them to be consistent with the broadest reasonable construction. See Pet. 14–15. We interpret “date lines” as “data lines.” Id. We interpret “insulated with each other” to mean “spaced apart from and parallel to each other.” Id. We preliminarily interpreted these phrases the same way when we instituted trial. Dec. 7. These interpretations are consistent with the Specification’s figures and description of gate lines and data lines being orthogonally crossed. Ex. 1001, 1:45–45, Figs. 1A, 1B, 4–7; Ex. 1013 ¶¶ 33–34. We agree that when reading the description of gate lines and data lines being “orthogonally crossed,” and when viewing the figures of the ’550 patent, a person of ordinary skill in the art would understand that because of the insulation, these lines are not in physical contact with each other. Pet. 15 (citing Ex. 1013 ¶¶ 33–34). We determine that we need not construe any other limitations of the challenged claims.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“As stated in KSR, “the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). Here, a person of ordinary skill in the art would have recognized that the gate drivers of Horii would have made the device of Janssen ’708 functional. Thus, we agree with and adopt Petitioner’s reasoning for the combination of Horii and Janssen ’708. See Pet. 41–42; Ex. 1013 ¶ 60.” slip op. at 11
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Thus, based on the totality of the evidence before us, we are not persuaded that Janssen ’708 is directed to a lamp display as Patent Owner argues. See PO Resp. 15–28. We find that Janssen ’708 is relevant prior art to the field of LCD technology.” slip op. at 15
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We give Dr. Liu’s testimony substantial weight because this testimony is consistent with both Janssen ’708’s disclosure of video displays and with other evidence of record. As Dr. Liu explains, and as disclosed by Exhibits 1005, 1007, 1022–1024, 1026, 1027, and 1029–1031, thin film transistors are predominantly used to electronically access individual pixels (to charge or discharge the voltages on the pixel electrodes and thereby adjust their brightness) in a LCD device. Ex. 1020 ¶ 11. The amount of current that a thin film transistor conducts in the ON state (or conductive state) is very low (less than one thousandth of an ampere). Id. This very low amount of current is only adequate to charge or discharge a small capacitive load, such as a liquid crystal cell capacitance, and is insufficient to adequately drive a resistive load, such as an incandescent lamp. Id. Incandescent lamps are resistive devices that inherently require a relatively large amount of current (from a few tenths of amperes to tens of amperes) to produce a suitable light output. Id. A single thin film transistor, or even multiple thin film transistors, cannot source such a high level of current. Id. We find that Dr. Liu’s testimony outweighs the other equivocal evidence presented by Patent Owner. In particular, Dr. Liu explains that a person of ordinary skill in the art would understand that Janssen ’708 shows an active matrix liquid crystal display (“AMLCD”) driving circuit for an LCD pixel because a person of ordinary skill in the art would have understood that, by the time the application underlying Janssen ’708 was filed in 2001, the “video display” disclosed in Janssen ’708 with a row-column matrix of pixels is an AMLCD display that uses thin-film transistors” slip op. at 16
Patent outcomesUS 7,420,550 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,420,550 - Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. et al. v. Home Semiconductor CorporationAll claims unpatentablePTAB · Jun 13, 2016 · IPR2015-00466 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1, 2, and 4–28 are unpatentable as obvious over Miyazaki and Jaeger, Miyazaki, Jaeger, Wolf, and Felix, or Miyazaki, Jaeger, and Wolf.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“As noted by Petitioner, the third, fourth, and fifth embodiments of Miyazaki disclose methods of modifying the deposition temperature and/or the WF6 flow rate to achieve a desired thickness and stress level for tungsten layers 15 and 16. Ex. 1005, 7:51–8:5, 8:27–46, 8:56–9:7. The sixth embodiment then teaches how to vary the thickness of tungsten layers 15 and 16 to obtain a desired stress level in the combined metal film as a whole. Id. at 9:35–51, 10:33–38. Given the interrelated nature of these embodiments, we agree with Petitioner and Dr. Rubloff that one of ordinary skill in the art would have understood that Miyazaki contemplates depositing tungsten layers 15 and 16 in the sixth embodiment—in either a single or multi-chamber fabrication tool—using the operating conditions described in either of the third, fourth, or fifth embodiments. Ex. 1005, 9:24–34; Pet. 20; Reply 19–20; Ex. 1003 ¶¶ A13–15; Ex. 1019 ¶¶ 5C–E.” slip op. at 19
Patent outcomesUS 6,030,893 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,030,893 - Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. et al. v. Home Semiconductor CorporationSome claims unpatentablePTAB · Jun 13, 2016 · IPR2015-00467 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–3, 5–9, 11–19, and 28 are unpatentable as obvious over Emesh and Mak; claim 10 was not shown unpatentable over Emesh, Mak, and Miyazaki.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“5 The level of ordinary skill in the art in this case is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Moreover, although the parties disagree slightly as to the precise education and experience level possessed by a person of ordinary skill in the art, neither party asserts that resolution of the level of skill in the art between these two competing definitions would impact the outcome of this case. See Ex. 1003 ¶ 11; Ex. 2002 ¶ 40.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“persuaded that the reference supports Dr. Rubloff’s testimony that one of ordinary skill in the art would have understood that two layers of tungsten could be deposited in a multi-chambered tool. See Ex. 1005, 9:55–58 (noting that the two tungsten layers could be formed in “different chambers or in different deposition machines”).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“On this record, Petitioner persuasively articulates—supported by the testimony of Dr. Rubloff—that one of ordinary skill in the art would have sought to implement Emesh’s two layer tungsten deposition process within two chambers of Mak’s multi-chamber fabrication tool in order to improve process stability and throughput. Pet. 13–15; Ex. 1003 ¶¶ B4–6, 29–30; Ex. 2005, 457:19–459–15. Petitioner also persuasively articulates that because Mak’s cold wall CVD chamber is similar to the Varian 5101 cold wall system used in Emesh, and because Mak discloses the deposition of tungsten over a broad range of pressures, one of ordinary skill in the art would have understood that Emesh’s tungsten deposition process could be performed in Mak’s multi-chamber tool. Pet. 13–15; Reply 12; Ex. 1003 ¶¶ B6–8 (citing Ex. 1010, 453–454; Ex. 1009, 4:66–5:8, 9:4–46); Ex. 1019 ¶ 2A.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“specifically requires a WF6 flow rate of 10–40 sccm,” see Ex. 2002 ¶¶ 89– 90, we note that the discussion of predetermined flow rates in Emesh is in relation to the “preferred embodiment,” and not the invention as a whole. Ex. 1009, 4:63–65, 5:36–42. Moreover, dependent claim 2 recites that “the flow rate of WF6 is maintained in the range 10 to 40 sccm,” raising a presumption that the WF6 flow rates of Emesh may be broader than 10 to 40 sccm. Id. at 12:39–41; see Bancorp Services v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1275 (Fed. Cir. 2012) (noting that “the presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim”). Thus, we are not persuaded that Emesh teaches away from, or would otherwise discourage one of ordinary skill in the art from modifying, the disclosed WF6 flow rate. Based on the foregoing, we credit the testimony of Dr. Rubloff and find that one of ordinary skill in the art would have sought to modify the WF6 flow rate of Emesh within the range of 40 to 133 sccm (while maintaining a H2/WF6 ratio of 6) with a reasonable expectation of success.” slip op. at 18
Patent outcomesUS 6,030,893 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,030,893 - Apple Inc. v. Far Stone Tech., Inc.All claims unpatentablePTAB · May 25, 2016 · IPR2015-00599 · APJ Howard B Blankenship · IPR · Final written decision
Claims 1–7 and 9–13 are unpatentable as obvious over Gold.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction neededDecided for patent owner
“For purposes of Institution, we adopted the District Court’s construction of “selecting means” as referring to an operation that does not require description of corresponding structure (such as an algorithm) in the Specification beyond a general purpose computer. Dec. on Inst. 7. Patent Owner acknowledges and does not dispute this construction. PO Resp. 16. We see no need to depart from this construction for purposes of this Final Written Decision.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“2. “Status” Consistent with the position taken by Patent Owner in the related District Court lawsuit, we interpret the term “status” as referring to a “state or condition.” See Ex. 2001, 17 (“Furthermore, the Court does not object to Farstone’s use of ‘state or condition’ as a substitute for ‘status’ in its proposed constructions.”). Patent Owner acknowledges and does not dispute this construction. PO Resp. 16. We see no need to depart from this construction for purposes of this Final Written Decision.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“2. Section 103(a) — Gold Petitioner applies the teachings of Gold to the requirements of claims 1–7 and 9–13, relying on the Declaration of Andrew Hospodor, Ph.D. (Ex. 1002). Pet. 15–26. Upon consideration of Petitioner’s explanations and supporting evidence, we are persuaded by Petitioner’s contentions. We adopt Petitioner’s contentions as our own. Patent Owner argues in its Patent Owner Response that Gold fails to teach certain claim limitations, which we address in turn.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“2. Section 103(a) — Gold Petitioner applies the teachings of Gold to the requirements of claims 1–7 and 9–13, relying on the Declaration of Andrew Hospodor, Ph.D. (Ex. 1002). Pet. 15–26. Upon consideration of Petitioner’s explanations and supporting evidence, we are persuaded by Petitioner’s contentions. We adopt Petitioner’s contentions as our own. Patent Owner argues in its Patent Owner Response that Gold fails to teach certain claim limitations, which we address in turn.” slip op. at 12
Patent outcomesUS 7,120,835 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,120,835 - Samsung Electronics Co. Ltd / Samsung Electronics America, Inc. et al. v. Home Semiconductor CorporationAll claims unpatentablePTAB · Apr 14, 2016 · IPR2015-00459 · APJ Joni Y Chang · IPR · Final written decision
Claims 1–20 are unpatentable under § 103 over Nakamura and Muller, with additional references applied to dependent claims.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“III. CONCLUSION For the foregoing reasons, we determine that Samsung has demonstrated by a preponderance of the evidence that claims 1–20 of the ’244 patent are unpatentable based on the following grounds: Challenged Claim(s) Basis References 1, 9, 11, 12, 14–16, § 103(a) Nakamura and Muller 19, and 20 2–4, 6–8, 17, and 18 § 103(a) Nakamura, Muller, and Mukherjee 5 § 103(a) Nakamura, Muller, and Wolf 10 § 103(a) Nakamura, Muller, and Ghandhi 13 § 103(a) Nakamura, Muller, and Pierret 47 IV. ORDER For the foregoing reasons, it is ORDERED that claims 1–20 of the ’244 patent are held unpatentable;” slip op. at 47
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“that “[i]f only a portion of the top surface were removed, the process would not result in a functioning device,” as they are predicated on the notion that a resist layer cannot be formed on a non-planarized surface, and that the deposition of the fourth dielectric layer produces an uneven surface. PO Resp. 14; Ex. 2002 ¶ 41. HSC, however, fails to provide credible evidence to show that forming a resist layer on a non-planarized surface would not produce a functional device. Although Mr. Maltiel’s testimony discusses the benefits of forming a resist layer on a planarized surface, as shown in the preferred embodiment, nothing in the “Description of the Prior Art” Section of the Specification indicates that the prior art devices were defective and non-functional devices. Ex. 1001, 1:11–2:9. Nor does Mr. Maltiel provide data or other objective evidence to support his assertion that forming a resist layer on a non-planarized surface would produce “a defective and non-functional device.” Ex. 2002 ¶ 41. Moreover, neither HSC nor Mr. Maltiel explains sufficiently why it is necessary to planarize the surface during the “removing” step. As evidenced by Nakamura, one of ordinary skill in the art would recognize that the fourth dielectric layer may be deposited by spin on glass, which produces a planarized surface. See Ex. 1004, 10:6–9, Fig. 1C. Mr. Maltiel’s testimony is entitled little, if any, weight, as it is inconsistent with the prior art of record. See 37 C.F.R. § 42.65(a) (“Expert testimony 11 that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In view of the foregoing, we decline to adopt HSC’s proposed claim construction. Rather, in light of the Specification, we agree with Samsung that the aforementioned “removing” limitations recited in claims 1 and 14 require no more than making a hole through a top portion of the fourth 12 dielectric layer to expose a portion of the third dielectric layer covering the gate electrode structure. Pet. 28–29.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Even if the claims require a continuous etching process for removing both the third and fourth dielectric layers with the resist layer in place, we are persuaded by Samsung’s assertion that it would have been obvious to modify Nakamura’s etching process in the third embodiment to leave the resist layer in place and continue the anisotropic etching process, in light of the teachings in the first embodiment of Nakamura, because “it would reduce the time necessary to complete the etching process and likely 42 eliminate the need to transport the substrate between different tools.” Pet. 37. Such modification would not conflict with the objective— improving depth of focus—Nakamura was trying to achieve, as alleged by HSC. PO Resp. 48–49. Nakamura also describes simplification of the fabrication process and reduction of cost as important objectives. Ex. 1004, 10:57–61. As Dr. Rubloff explains, the process, as modified in light of Nakamura’s first embodiment, would still improve depth of focus, which is only one of the objectives taught by Nakamura, as well as achieving efficiency. Ex. 1014 ¶¶ 14–20. Dr. Rubloff testifies that one of ordinary skill in the art would consider all of the goals described by Nakamura and, after weighing the costs and benefits of each known technique, would make adjustments accordingly to improve the process. Ex. 1014 ¶¶ 9–12. Indeed, the modified process would utilize the planarization CMP technique of Nakamura’s third embodiment to improve depth of focus (Ex. 1004, 13:10– 38), and the continuous etching technique (with the resist layer in place) of Nakamura’s first embodiment to remove the third and fourth dielectric layers over the contact regions to improve efficiency (id. at 10:17–61). Therefore, we are persuaded that Samsung has articulated reasoning with rational underpinnings for modifying Nakamura’s third embodiment in light of the first embodiment of Nakamura. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 42
Patent outcomesUS 6,150,244 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,150,244 - Avx Corporation / Avx Filters Corporation v. Greatbatch, LtdRehearing deniedPTAB · Jan 11, 2016 · IPR2014-00697 · APJ Jon B Tornquist · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 2, 4, 6, 7, 9, 11, 13–20, 23, 25, and 26 unpatentable as obvious over Stevenson and Hazzard.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. ANALYSIS In a request for rehearing, the dissatisfied party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or reply.” 37 C.F.R. § 42.71(d). “The burden of showing a decision should be modified lies with the party challenging the decision.” Id.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“extensive knowledge of electrical design concepts. Paper 19 (“PO Resp.”), 2–3. In the Final Decision, we rejected this identification of one of ordinary skill in the art as too narrow. Final Dec. 8. We noted that evidence of record supported Petitioner’s argument that a multidisciplinary team of professionals, including manufacturing, materials, and electrical design experts, would be involved in the development of EMI filters. Id. Thus, we concluded that a person of ordinary skill in the art “would have a degree in electrical engineering, chemistry, or physics, and would have work experience in the electrical or structural design of EMI filter capacitors or assemblies.” Id.” slip op. at 3
- Expert testimonyPetitioner expert creditedDecided for petitioner
“of ordinary skill in the art. Relying upon testimony from Mr. Galvagni and disclosures of the ’627 patent, we noted that expertise in the fields of structural and electrical design are both implicated in the design and construction of EMI filters. We did not conclude, however, that knowledge of structural design could substitute for electrical design expertise. Final Dec. 8. Indeed, as noted in the Final Decision, to the extent that Mr. Galvagni’s testimony is directed to electrical design concepts and not the structural or mechanical design of EMI filters, we took his relative lack of experience in electrical design into account when weighing his testimony. Final Dec. 25.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“B. KSR In the Final Decision we stated: Modifying a known device, using a known method, to achieve a predictable result, is obvious, even if one is willing to accept a known loss in performance others sought to avoid. KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”)” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 5,905,627 - Avx Corporation v. Greatbatch LtdAll claims unpatentablePTAB · Dec 30, 2015 · IPR2014-01361 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–43 are unpatentable under § 103; proposed substitute claims 44 and 45 are not shown patentable, and the Second Motion to Amend is denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In our Decision on Institution, we discussed the meaning of the transitional phrase “consisting essentially of,” but otherwise found that no claim terms required express construction. Dec. on Inst. 4. In its Second Motion to Amend, Patent Owner does not dispute our interpretation of “consisting essentially of,” or propose constructions for any additional claim terms. Upon review of Patent Owner’s evidence and arguments, we conclude that no explicit constructions are required in order to resolve the issues pending before the Board.” slip op. at 6
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“establishing that it is entitled to add proposed substitute claims 44 and 45. 37 C.F.R. § 42.20(c). As part of this showing, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; (3) the amendment proposes a reasonable number of substitute claims; and (4) the proposed claims are supported in the original disclosure. 37 C.F.R. § 42.121. Upon review of the Second Motion to Amend, we are persuaded that the requirements of 37 C.F.R. § 42.121 have been met. For example, Patent Owner seeks to add only two substitute claims, each of which serves to narrow the scope of original claim 18. Mot. 17–18. Patent Owner also identifies exemplary electrolytes disclosed in the originally-filed application that fall within the scope of proposed substitute claims 44 and 45. Id. at 9 (citing Ex. 1010, 33, 35–36 (disclosing an electrolyte containing ethylene glycol, water, isobutyric acid, and ammonium hydroxide (which results in an ammonium salt of the organic acid) with a pH of 4.9, a conductivity of 7.1 mS/cm, and an anode breakdown voltage of 395 volts)). Thus, we focus on whether Patent Owner has met its burden of proof to show that proposed substitute claims 44 and 45 are patentable over the prior art of record.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundNot shown unpatentable
“Clark, however, discloses successfully substituting acetic acid in an electrolyte solution with “other low molecular weight paraffin acids,” including butyric, propionic, and lactic acids, as well as forming corresponding ammonium salts of these organic acids. Ex. 1003, 2:40–46, 3:46–61. Likewise, GB 466,193 broadly discloses that acetic acid may be replaced in an electrolyte solution with organic acids of the aliphatic series, including butyric acid and isobutyric acid. Ex. 1015, 3:73–79. In its Second Motion to Amend, Patent Owner does not point to any persuasive evidence to support or explain why a person of ordinary skill in the art would not have considered isobutyric acid, as implied in Clark and expressly identified in GB 466,193, to be a suitable substitute for acetic acid in the electrolyte of Shah. Indeed, similar to the disclosures of Clark and GB 466,193, the ’117 patent discloses that “other relatively weak organic acids of the general formula cnH2+nO2 (where n=2 to 7) are acceptable.”9 Thus, we are not persuaded that Shah, Clark, and GB 466,193 fail to teach or suggest every limitation of proposed substitute claim 44.” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsObjective indicia no nexusNot shown unpatentable
“1 of Shah is ten times higher than electrolyte 2 of the ’117 patent, and the resulting conductivity (47.5 mS/cm) is 6.7 times higher than that of electrolyte 2 of the ’117 patent (7.1 mS/cm). First Mot. to Amend 9 (Table 3); Ex. 1001, 2:14–16 (confirming that the ammonium salt “provides electrical conductivity” in the electrolyte). Given the disclosure of Evans that anode breakdown voltage decreases with increasing conductivity (conductivity being the inverse of resistivity), Patent Owner does not explain persuasively why the 150 volt difference in anode breakdown voltage between electrolyte 1 of Shah and electrolyte 2 of the ’117 patent is “contrary to” the teachings of Evans. First Mot. to Amend 9 (Table 3),11; Ex. 2004, 3 (Figure 4). Nor does Patent Owner explain why a person of ordinary skill in the art could not use the disclosure of Evans to modify the resistivity of the electrolyte of Shah, Clark, and GB 466,193 to obtain an anode breakdown voltage within the 370 to 400 volt range of proposed substitute claim 45. Thus, we are not persuaded that the 150 volt difference between electrolyte 1 of Shah and electrolyte 2 of the ’117 patent is nonobvious or surprising. Patent Owner also contends that if acetic acid was equivalent to isobutyric acid, such that it could be replaced interchangeably, “a substantially similar anode breakdown voltage would have been achieved in both Shah’s electrolyte and the ’117 Patent electrolyte, both of which have almost identical pH~4.9.” First Mot. to Amend 11. We note, however, that, as set forth in Table 3 above, electrolyte 1 of Shah has a conductivity that is 6.7 times higher than electrolyte 2 of the ’117 patent, as well as ten times the ammonium constituent, two and a half times the acid constituent, half the ethylene glycol, and five times the phosphoric acid as compared to electrolyte 2 of the ’117 patent. In view of the wide difference in constituents and resulting conductivity levels between the two electrolytes, and in view of the teaching of Evans that anode breakdown voltage depends on the resistivity of the electrolyte, Patent Owner provides insufficient argument or evidence to explain why one of ordinary skill in the art would expect that “[i]f acetic acid were equivalent to isobutyric acid . . . a substantially similar anode breakdown voltage would have been achieved in both Shah’s electrolyte and the ’117 patent electrolyte . . . .” First Mot. to Amend 11. Accordingly, even if arguments made in the First Motion to Amend were considered, we would still not be persuaded that proposed substitute claim 45 is patentable over the prior art. Thus, we are not persuaded that Patent Owner has carried its burden to demonstrate, by a preponderance of the evidence, that proposed substitute claim 45 is patentable over the prior art of record.” slip op. at 16
Patent outcomesUS 6,687,117 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 6,687,117 - Avx Corporation / Avx Filters Corporation v. Greatbatch, LtdAll claims unpatentablePTAB · Oct 21, 2015 · IPR2014-00697 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1, 2, 4, 6, 7, 9, 11, 13–20, 23, 25, and 26 are unpatentable as obvious over Stevenson and Hazzard, with claims 6, 7, 18, and 19 also obvious over Colburn.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Mr. Galvagni’s testimony is consistent with Patent Owner’s argument that an electrical design expert would be involved in the design of the electrical connections of the feedthrough capacitor assembly, and with the prior art of record, which discloses various methods of connecting, arranging, and electrically coupling the components of the disclosed feedthrough filter capacitor assemblies. See, e.g., Ex. 1001, 1:6–8, 4:66–5:4, 10:14–28; Ex. 1012, 1:27–33, 4:36–43, Fig. 16. Thus, we conclude that a person of ordinary skill in the art would have a degree in electrical engineering, chemistry, or physics, or a related field, and would have work experience in the electrical or structural design of EMI filter capacitors or assemblies.4 4 Patent Owner asserts a level of ordinary skill in the art that is higher than that asserted by Mr. Galvagni, including “advance knowledge” of electrical filtering concepts. PO Resp. 3. We note that, in general, a lower level of skill in the art favors a determination of nonobviousness, while a higher level of skill favors a finding of obviousness. See Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“II. ANALYSIS A. Claim Construction In the Decision to Institute, we determined that resolution of the issues presented in the Petition did not require explicit construction of any claim terms. Dec. on Inst. 8. We did, however, provide guidance as to the scope of the term “feedthrough filter capacitor.” Id. at 8–9. During trial, neither party asserted that the Board’s prior discussion of “feedthrough filter capacitor” was in need of revision or that any claim terms required construction. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (noting that only claim terms that are in controversy need be construed, “and only to the extent necessary to resolve the controversy”).” slip op. at 6
- Expert testimonyPetitioner expert creditedDenied
“As discussed above, we are not persuaded that a person of ordinary skill in the art must be an electrical designer of EMI filter capacitors, as asserted by Patent Owner. Moreover, a declarant’s expertise and experience need not match perfectly the experience and education of a person of ordinary skill in the art to provide testimony. SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1373 (Fed. Cir. 2010). The declarant must, instead, have sufficient “knowledge, skill, experience, training, [and] education” of such specialized nature to assist the trier of fact to understand the evidence. Id. (quoting Fed. R. Evid. 702). Mr. Galvagni testifies that he has over 50 years of experience in the field of capacitors, including EMI filter capacitors, and has published numerous technical articles and papers in this field, including on the topics of “low inductance capacitors, actuators, and passive components.” Ex. 1002 ¶ 3. He also testifies that he is named as an inventor on at least 55 U.S. Patents related to capacitors, filters, or similar electronic structures, and has work experience in the design of filter capacitors similar to the ’627 patent, including capacitors with internally connected common ground planes, multiple capacitor access through vertical feeds, and non-circumferential terminations. Ex. 1002 ¶ 5; Ex. 1018 ¶ 8; Ex. 1024 ¶¶ 3, 6, 10. Petitioner contends this work experience in feedthrough filter capacitor construction and design would be helpful in understanding the construction and design of the EMI filter capacitor assemblies claimed in the ’627 patent. Resp. to Mot. to Excl. 3. The claims of the ’627 patent are directed to a feedthrough filter capacitor assembly constructed of various individual components. Ex. 1001, 10:64–11:8. Upon review of Mr. Galvagni’s work experience, including his experience relating to the construction and manufacture of EMI filters, we conclude that an adequate relationship exists between Mr. Galvagni’s education and work experience and the claimed invention. See SEB S.A., 594 F.3d at 1373 (finding no error in admitting testimony where the proffering party established an adequate relationship between the expert’s work experience and the claimed invention). Accordingly, we deny Patent Owner’s Motion to Exclude the testimony of Mr. Galvagni.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“The evidence of record, however, demonstrates that internally grounding a feedthrough capacitor was known in the art, as was the decreased attenuation from such a design. Modifying a known device, using a known method, to achieve a predictable result, is obvious, even if one is willing to accept a known loss in performance others sought to avoid. KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).” slip op. at 16
Patent outcomesUS 5,905,627 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 5,905,627 - Ubisoft Entertainment SA v. Princeton Digital Image CorporationAll claims unpatentablePTAB · Oct 16, 2015 · IPR2014-00635 · APJ Benjamin D M Wood · IPR · Final written decision
Claims 1–13, 15–18, and 21–23 are unpatentable based on the grounds decided in the final written decision.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“parenthetical statements of intent” into our construction, because the ’129 patent expressly defined “virtual environment” to include those statements. Dec. on Inst. 8. Petitioner fails to persuaded us to modify that construction; thus, as in the Decision on Institution, we adopt the Specification’s express definition of “virtual environment,” which is “a computer-simulated environment (intended to be immersive) which includes a graphic display (from a user’s first person perspective, in a form intended to be immersive to the user), and optionally also sounds which simulate environmental sounds.” Id. (quoting Ex. 1001, 1:22–33). However, we agree with Petitioner that the term should be construed to encompass the specific embodiments that the ’129 patent describes. As the Federal Circuit has noted, “the specification is always highly relevant to the claim construction analysis,” and, in fact, “is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (internal citation and quotation marks omitted). Here, given that the Specification does not elucidate what it means by “intended to be immersive to the user,” and given that the phrase is subjective, we find the specific embodiments discussed in the Specification to be particularly informative. As part of “the preferred VR program,” Figure 11 depicts a group of simple cylindrical objects that appear to change height in response to the sound of drums. Ex. 1001, 18:16–33. Also in the “preferred VR program embodiment,” words representing the lyrics of a song are displayed as the words are vocalized. Id. at 18:49–53. Further, as Petitioner notes, the Specification teaches that the graphic display generated by a VR system can be either two-dimensional or three-dimensional, and can be displayed on a single flat screen display that need not be stereoscopic. Pet. 4 (citing Ex. 1001, 1:34–35, 8:7–13).7 Given that a claim construction that excludes a preferred embodiment is “rarely, if ever, correct,” Vitronics, 90 F.3d at 1583, it is appropriate to construe “virtual environment” broadly enough to encompass these displays. slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for petitioner
“Having reviewed the ’129 patent, we determine that the Specification clearly associates the following structure with the first two recited functions: (1) a source of music and/or a control track, such as a four-track audio tape, video-game cartridge or compact disk (CD); and (2) a processor programmed to generate control signals from the input music and/or control track and send the control signals to the VR processor. For example, in discussing Figure 1, the Specification states: 10 The parties make essentially the same arguments with respect to two other means-plus-function limitations: “means for receiving said music signal in digital or analog form, and processing said music signal to produce control information for modification of objects in the virtual environment” (claim 13); and “means for supplying the music signal to the means for producing the virtual environment” (claim 18). See PO Resp. 15–16, 21–22; Pet. Reply 5–8. The analysis that follows applies equally to these limitations, and we determine that the structure that corresponds to the “supplying” function of claim 12 also corresponds to the functions recited in these limitations. An analog-to-digital conversion circuit within Acoustic Etch unit 3 receives and digitizes a music signal from source 1. The music signal is optionally accompanied by one or more prerecorded control tracks corresponding to the music signal. . . . Analyzer 5[11] within Acoustic Etch unit 3 receives the digitized output of [music source 1 via analog-to-digital converter 4], and generates control signals by processing the music signal (or both the music signal and the control tracks). The control signals output from analyzer 5 are supplied through interface 6 to VR processor 7 for use within processor 7 for controlling generation of the virtual environment.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“There is no dispute that Tsumura’s teaching of storing music data, including “stored pitch data” and other vocal data relating to the vocal features of the music, corresponds to claim 10’s step of “prerecording a control track having audio and/or control information corresponding to an audio signal;” stored music data constitute the control track, and the vocal data, including the pitch and strength data, constitute the claimed control information that corresponds to an audio signal. Further, we agree with Petitioner that Tsumura teaches operating the computer system in accordance with this control track, in that, among other things, the computer system will display messages to a user that depend on a comparison of the stored data and the user’s vocal performance. We have considered Patent Owner’s contrary evidence and arguments, but do not find them persuasive. Neither Patent Owner nor Dr. Kesan explains why generating and displaying messages to a user based on the comparison of stored music data and the user’s actual voice does not constitute ”operating the computer system in response to said prerecorded control track,” as recited in claim 10. Given Dr. Kesan’s failure to support his position with any analysis, we accord that position little weight. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (affirming the Board’s determination to give little weight to an expert’s “broad conclusory statements”).” slip op. at 23
- Expert testimonyPatent owner expert discountedDecided for petitioner
“We have considered Patent Owner’s contrary evidence and arguments, but do not find them persuasive. Neither Patent Owner nor Dr. Kesan explains why generating and displaying messages to a user based on the comparison of stored music data and the user’s actual voice does not constitute ”operating the computer system in response to said prerecorded control track,” as recited in claim 10. Given Dr. Kesan’s failure to support his position with any analysis, we accord that position little weight. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (affirming the Board’s determination to give little weight to an expert’s “broad conclusory statements”).” slip op. at 23
Patent outcomesUS 5,513,129 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 5,513,129 - PTAB · Oct 8, 2015 · IPR2015-01025 · APJ Justin Busch · IPR · Institution
The Board denied institution because Bruwer did not teach the claimed touch-sensor-triggered find-in-the-dark indication, and Petitioner gave no persuasive reason to modify it.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“evidence of record, and we determine Petitioner has not demonstrated a reasonable likelihood of prevailing in establishing that claims 1, 3, and 20 are unpatentable as obvious in view of Bruwer. Although Patent Owner does not specifically contest Petitioner’s assertions that Bruwer’s disclosures render the subject matter of the challenged claims obvious we find Petitioner has not met its burden of establishing that the subject matter of the challenged claims would have been obvious in view of Bruwer.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Figure 11 and its accompanying description, however, describe a circuit that activates the FITD indication either “when switch 1111 is closed by the user” or “[w]hen microchip 1113 pulls the line 1114 to high.” Ex. 1004, 13:29–30. Thus, contrary to Petitioner’s assertion, the portion of Bruwer cited by Petitioner and Dr. Horenstein does not disclose that the microchip activates the FITD indication in response to input from switch 1111, as required by claim 1. Although Petitioner provides a rationale as to why it would have been obvious to activate the FITD indication when the load is inactive, Petitioner provides no persuasive analysis or rationale for modifying Bruwer’s disclosed circuit to teach that the “microchip, in response to at least a signal from the touch sensor, is configured for activating a visible find-in-the-dark indication, when the load is not activated,” as recited in claim 1.” slip op. at 6
§ 103 obviousnessPatents in suitUS 7,265,494
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.