- Innoscience (Zhuhai) Technology Company, Ltd / Innoscience America, Inc. v. Efficient Power Conversion CorporationAll claims unpatentablePTAB · Mar 18, 2025 · IPR2023-01381 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–3 and 7–9 are unpatentable as obvious over Uemoto and Smith; the motion to amend is granted, and proposed substitute claims 13 and 14 are not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In order to determine whether an invention would have been obvious at the time the application was filed, we consider the level of ordinary skill in the pertinent art. Graham, 383 U.S. at 17. In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation omitted). Petitioner contends a person of ordinary skill in the art “would have possessed at least a four-year degree in electrical engineering, chemical engineering, physics, or material science, or a closely related field, and at least two years of experience in semiconductor device design or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies.” Pet. 5–6. Petitioner contends “[a]dditional education could substitute for professional experience and vice versa.” Id. at 6. Patent Owner contends that a person of ordinary skill in the art would have had “at least a four-year degree in electrical engineering, physics, material science, or a closely related field, and three years of professional work experience in the epitaxial growth, design, and fabrication of semiconductor electronic devices, including those of GaN.” PO Resp. 7 (citing Ex. 2009 ¶ 82). Upon review of the evidence of record and the parties’ arguments, we adopt Petitioner’s definition of the person of ordinary skill in the art as it is consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). We note, however, that the conclusions reached in this Decision would be the same under either proposed definition of the ordinarily skilled artisan. See Ex. 2009 ¶ 83 (Dr. Schubert testifying that his opinions would be the same under either proposed definition); Ex. 1033 ¶ 9 (Dr. Shealy testifying that the differences in proposed definitions of the ordinarily skilled artisan “would not change the outcome of the invalidity analysis in any material manner”); PO Resp. 7; Pet. Reply 1.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“compensated GaN layer above the barrier layer, and a gate contact above the compensated GaN layer.” Ex. 1001, 5:12–18. Petitioner contends the term “compensated” indicates that the step of compensating the GaN layer has already occurred, such that the term “compensated GaN layer” should be construed as a “‘[d]oped GaN layer formed with a step to passivate its impurities’ which is a ‘product-by-process’ limitation.”5 Pet. 12–14. And, because compensation with hydrogen was the “critical step” distinguishing the claims from the prior art, and because hydrogenation in as-grown III-nitride materials had been well known for over a decade by 2009, Petitioner contends “compensated” “cannot be interpreted as mere hydrogen presence in as-grown material, a well-known property of doped GaN.” Id. at 15. Patent Owner contends “compensated GaN material” should be construed as “a semiconductor GaN gate material in which one type of impurity (for example, donor) cancels the electrical effects of the other type of impurity (for example, acceptor).” PO Resp. 11 (citing Ex. 2009 ¶ 92) (emphasis added). Patent Owner contends this construction is consistent with the IEEE dictionary, which defines “compensated semiconductor” as 5 Given that product-by-process steps in a device claim are not entitled to patentable weight, Petitioner contends “the prior art only need show a material with passivated impurities to show unpatentability, not the step to achieve it.” Pet. 15–16. “[a] semiconductor in which one type of impurity or imperfection (for example, donor) partially cancels the electric effects of the other type of impurity or imperfection (for example, acceptor).” PO Resp. 14 (quoting Ex. 2004). Patent Owner contends its construction is also consistent with the written description of the ’294 patent, which explains that a compensated GaN material is part of the gate and includes a p-type impurity that imparts an electrical effect (i.e., conductivity), as well as a second impurity, e.g., hydrogen, that partially cancels the electrical effect of the p-type impurity, rendering the layer semi-insulating. Id. at 14–15 (citing Ex. 1001, 3:10–13, 3:43–45). On this record, we construe “compensated GaN layer” as “a GaN layer in which one type of impurity (for example, donor) partially cancels the electric effects of the other type of impurity (for example, acceptor).” This is consistent with the disclosures of the ’294 patent, the IEEE dictionary definition, and the construction ultimately adopted by the ITC. Ex. 2004, 3; Ex. 1049, 16–17 (ITC construing “compensated GaN layer” to mean “a GaN layer in which one type of impurity partially cancels the electrical effects of another type of impurity”); Ex. 1001, 3:43–45 (explaining that the compensated GaN layer of the ’294 patent is formed through the “passivation of a p-type impurity using hydrogen”). For the reasons set forth below, however, we decline to construe “compensated GaN layer” as a product-by-process claim term (as asserted by Petitioner), or to limit the compensated GaN layer to a gate material (as asserted by Patent Owner).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“There are two exceptions to the general rule that we apply the ordinary and customary meaning of a claim term: (1) when a patentee sets out a definition and acts as his own lexicographer, or (2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution. See Thorner, 669 F.3d at 1365. The standards for lexicography and disclaimer, however, are “exacting.” Id. at 1366. There is no argument that the patentees acted as their own lexicographer to redefine the term “compensated GaN layer.” With respect to disavowal, a “patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Thorner, 669 F.3d at 1366 (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)). As noted by Patent Owner, the title of the ’294 patent is, in part, “Compensated Gate MISFET” and much of the discussion of the ’294 patent is of a compensated GaN layer that is directly below the gate contact and above a barrier layer and operates in conjunction with the gate contact to control the on/off state of the transistor. PO Resp. 12–14. We are presented with insufficient argument or evidence to conclude, however, that these disclosures rise to the level of a disclaimer. For example, although the title of the ’294 patent is directed to a “Compensated Gate MISFET,” claim 1 is more broadly directed to “[a] column III Nitride transistor.” Ex. 1001, 5:12, code (54). Nor are we directed to an expression or statement of manifest exclusion in the ’294 patent that would serve to disclaim any “compensated GaN layer” that is not directly below the gate and/or that does not function in concert with the gate electrode to control the on/off state of the transistor. See Thorner, 669 F.3d at 1366. With respect to the stated goals of the invention, as noted by Patent Owner, one of the primary purposes of the compensated GaN layer of the ’294 patent is to reduce gate leakage and gate capacitance. Ex. 1001, 2:13– 19, 3:18–21 (“[U]sing a compensated semiconductor layer 38 leads to low gate leakage during device operation.”). We cannot use the goals of the invention, however, to rewrite the claims or insert terms that are not present. See Thorner, 669 F.3d at 1366. Moreover, the prior art of record indicates that a compensated GaN layer that is below the gate contact and above a barrier layer, but not part of the active gate structure, may also “decrease the leakage current between the gate and the drain.” Ex. 1006 ¶¶ 44 (“Even when a positive bias of 5 V or higher is applied to the gate electrode, no significant gate-leakage current is observed.”), 61. As such, evidence of record suggests that a person of ordinary skill in the art would have understood that one of the primary goals disclosed in the ’294 patent is achieved regardless of whether the compensated GaN layer is part of the gate, or simply in close vicinity to the gate. In view of the foregoing, we are not persuaded that the written description of the ’294 patent indicates that the “compensated GaN layer” must be part of the gate structure.” slip op. at 17
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“To be probative, Patent Owner must prove there is a nexus between the presented evidence and the merits of the claimed invention. See Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). A rebuttable presumption of nexus applies when the “patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco, 851 F.2d at 1392). “That is, presuming nexus is appropriate ‘when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.’” Id. (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). If the praise is not limited to the features of the claimed invention, the patent owner may still prove nexus “by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. at 1373–74 (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). Patent Owner contends that the compensated gate of the ’294 patent “was a breakthrough invention and resulted in the first commercially viable enhancement-mode GaN transistor.” PO Resp. 60 (citing Ex. 2009 ¶¶ 192– 193, 197; Ex. 2021). Patent Owner further contends that this achievement required the counter-intuitive use of a compensated gate material in the gate structure, and represented “a technological leap that laid the foundation for viable enhancement-mode GaN transistors.” Id. at 61–62. For this achievement, Patent Owner contends the inventor, Dr. Alex Lidow, received the 2015 SEMI Award. Id. at 60 (citing Ex. 2021). Upon review of Patent Owner’s evidence and the parties’ arguments, we find that Patent Owner’s objective indicia evidence is entitled to little, if any, weight. The evidence of praise relied upon by Patent Owner is not clearly linked to the claimed invention or any particular product having each of the claimed features of the ’294 patent. Ex. 2021. For example, the 2015 SEMI award was provided to Dr. Lidow “for commercialization of GaN power devices.” Id. An article explaining the award indicates that “high cost” previously “limited [the] commercial success” of GaN technologies, but Dr. Lidow was able to overcome these issues, “from resolving packaging limitations to establishing a low-cost supply chain,” “through persistence.” Id. This praise is not demonstrably linked to the claimed invention or any particular device, and does not mention the use of a compensated gate, or any other relevant feature recited in the claims. In view of the foregoing, we determine that Patent Owner’s objective evidence of non-obviousness is entitled to little, if any, weight.” slip op. at 20
Patent outcomesUS 8,350,294 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 8,350,294 - PTAB · Oct 11, 2024 · IPR2024-00771 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted IPR on claims 1–6 of the ’195 patent on all asserted grounds and granted Texas Instruments’ motion to join the Cirrus IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the Preliminary Response in the instant case includes arguments pertaining to the sufficiency of the asserted prior art references, which were not raised in the preliminary response in the Cirrus IPR, we briefly address below the patentability of the challenged claims.” slip op. at 6
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“II. TIMELINESS OF THE PETITION UNDER 35 U.S.C. § 315(B) Pursuant to 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 10– 30. However, 35 U.S.C. § 315(b) also provides that the one-year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Because the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2024-00017), which we grant as further discussed below, Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, irrespective of whether Petitioner is in privity with time-barred entities.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“B. Whether to Join Petitioner as a Party to the Cirrus IPR Joinder may be authorized when warranted, but the decision to grant joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. A motion for joinder should (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC, IPR2013- 00004, Paper 15 (PTAB April 24, 2013). As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). As an initial matter, we find the Motion for Joinder meets the timing requirements of 37 C.F.R. § 42.122(b) because Petitioner filed it on April 4, 2024, no later than one month after the Cirrus IPR was instituted on May 1, 2024.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“5. “Aid the Movement of Minority Carriers” Patent Owner argues that the Petition fails to show that the applied prior art references disclose the claim limitations “requiring ‘aid the movement of minority carriers,’” as twice recited in claim 1. Prelim. Resp. 8. Patent Owner summarizes this dispute as follows: The challenged patent discloses and claims a semiconductor device with (among other things) a “drift layer having a graded concentration of dopants . . . [and] further having a first static unidirectional electric drift field to aid the movement of minority carriers.”[] The Petition should not be instituted, because (among other deficiencies) it fails to show that the prior art discloses the “aid the movement of minority carriers” claim limitation. Rather than pointing to anything in the prior art that would teach this claim limitation, the Petition assumes that any “graded concentration of dopants” would necessarily “aid the movement of minority carriers.” The Petition contains no analysis explaining why the “graded concentration of dopants” in the prior art meet the “aid the movement of minority carriers” limitation, apart from the fact that they are “graded concentration of dopants.” In other words, Petitioner reads the “aid the movement of minority carriers” limitation out of the claims completely. Id. at 1–2. Patent Owner includes additional details in support of its view that the asserted prior art fails to establish obviousness of the “aid carrier movement” limitations of claim 1. Prelim. Resp. 1–10.” slip op. at 8
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,421,195 - Vudu, LLC v. Ideahub, Inc.All claims unpatentablePTAB · Apr 14, 2022 · IPR2020-01688 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 3, 4, 6, 8, 11, 13, 15, 18, 19, 21, and 23 are unpatentable over DIS 23009-1; the revised contingent motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 18–19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor 6 Patent Owner does not present objective evidence of nonobviousness. does it present its own definition. We adopt Petitioner’s definition as it is consistent with the specification of the ’830 patent and the cited references.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes that we construe “adaptation set,” “SegmentBase,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in its briefing. We need not construe any claim term to resolve any issues before us, and therefore, do not expressly define any claim term in our Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
“not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely because paragraph 253 uses the term “[h]ereinafter” before it discloses “two simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited 8 Ex. 2005 is Application No. 16/168,933 (“the ’933 application”). in limitations [38.6], [40.6], and [46.6]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicates a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. MTA 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 38, 40, and 46 do not find sufficient written description support in the ’644 application nor in the ’933 application, whether considered individually or collectively, and thus, these claims contain new matter.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“rationale for combining DIS 23009-1 with M20060, Petitioner persuasively contends that: A POSA would have been motivated to add the additional “metadata” described in M20060 to the MPDs described in the DIS 23001-6 or DIS 23009-1 references in order to enable the client to choose the most suitable version of media content among alternative versions of media content. For example, M20060 describes that the additional metadata (e.g., the extended accessibility element and the usedWith, equivalentTo, bitDepth, minBitDepth, and maxBitDepth attributes) helps “both users and clients to select appropriate representations” by, for example, “1) supporting accessibility, 2) describing relationships of representations, and 3) describing media’s bit depth.” Moreover, a POSA would have had an expectation of success in modifying the MPDs in DIS 23001-6 or DIS 23009-1 to include the additional metadata described below because it simply would have been a matter of adding additional metadata to the MPD XML schemas described in DIS 23001-6 or DIS 23009-1. Id. (citing Ex. 1094 ¶ 33; Ex. 1097 § 1, 1). Dr. Bestavros persuasively explains that “M20060 expressly references the DIS 23001-6 reference and proposes specific modifications to the MPEG DASH metadata included in the MPD XML schema.” Ex. 1094 ¶ 34 (citing Ex. 1097 § 1, 1 (introduction of M20060); Ex. 1097, 7 (references cited by M20060)).” slip op. at 41
Patent outcomesUS 10,270,830 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,270,830 - Vudu, Inc. v. Ideahub, Inc.All claims unpatentablePTAB · Apr 14, 2022 · IPR2020-01689 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 11, 25, 27, and 29 are unpatentable as anticipated by and obvious over DIS 23009-1; the revised contingent motion to amend proposing claims 31–35 is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level Of Ordinary Skill In The Art Petitioner contends that: A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor does it present its own definition in any of its briefing. We adopt Petitioner’s definition as it is consistent with the Specification of the ’414 patent and the cited references.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner proposes that we construe “adaptation set,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in any of its briefing. 6 Patent Owner does not present objective evidence of nonobviousness. and therefore, do not expressly define any claim term in our Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot shown unpatentable
“The newly-cited portion in paragraph 232 does not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited in limitations [31.11], [32.12], and [35.7]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicate a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 31, 32, and 35 do not have sufficient written description support in the ’644 application and the ’092 application, either individually or collectively, and as such, contain new matter.” slip op. at 29
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“are not entitled to a priority date earlier than March 16, 2012 (the filing date of PCT ’922), because the disclosure of KR10-2011-0023271 does not support at least the limitations of: “the adaptation set includes one or more attributes or elements that are common to each of the representations for that adaptation set,” as recited in independent claims 1 and 11, and the “SegmentTemplate” recited in independent claims 25. Patent Owner has not asserted, after institution, that the challenged claims are entitled to an earlier date. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327–28 (Fed. Cir. 2008) (indicating that patent owner bears a burden of production in arguing that the asserted references are not prior art based on entitlement to an earlier priority date). As such and for the reasons discussed below, Petitioner has persuasively demonstrated that DIS 23001-6, DIS 23009-1, and 3GPP TS 26.247 qualify as prior art to the challenged claims, because Petitioner has sufficiently demonstrated that the references were publicly accessible prior to the applicable priority date of March 16, 2012.” slip op. at 12
Patent outcomesUS 10,313,414 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,313,414 - Power Integrations, Inc. v. Semiconductor Components Industries, LLCSome claims unpatentablePTAB · May 23, 2019 · IPR2018-00180 · APJ Kamran Jivani · IPR · Final written decision
Claims 4–7, 9–16, and 18 are unpatentable over Hwang or Hwang and Balakrishnan; claim 17 was not shown unpatentable over Hwang.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Although the parties formulate slightly differently their respective assessments of the skill level, neither party disputes directly the other’s assessment nor makes any arguments related to the assessments. See generally Pet.; PO Resp. The ’221 patent states its disclosure “relates, in general, to integrated circuits and, more particularly, to power converter integrated circuits.” Ex. 1001, 1:9–11. In view of the foregoing, we adopt Patent Owner’s formulation of the level of ordinary skill in the art. Further, this level of ordinary skill is reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“construction must begin with the words of the claims themselves.”); In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)) (“As with any claim construction analysis, we begin with the claim language.”). None of the challenged claims (nor even unchallenged claim 8) recites the claimed disabling or terminating occurs in response to the detect signal independent of other circuit conditions or in response only to the detect signal. See Ex. 1001, 12:5–14:36. For instance, independent claim 4 merely recites, “wherein the control circuit disables the switched drive control signal in response to the detect signal.” Id. at 12:49–51. Independent claim 7 similarly recites, “wherein the gating circuit disables the drive control signal in response to the detect signal.” Id. at 13:11–13. Independent claim 9 discloses only, “a first comparator . . . having an output for disabling the pulse generator.” Id. at 13:27–30. Finally, independent claim 15 requires, “comparing the error signal to a reference signal . . . to terminate the step of generating in response to the error signal.” Id. at 14:21–23. Therefore, the plain language of the challenged claims does not, standing alone, support adoption of Patent Owner’s proposed construction.” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“testimony from their respective declarants on whether one of ordinary skill in the art would understand “in response to” as requiring “independent of other circuit conditions.” Compare Reply 2–3 (citing Ex. 1016 ¶¶ 18–21, 26–30; Ex. 2003, 43:16–45:1) with PO Resp. 14–15, 17 (citing Ex. 2001 ¶¶ 42, 44–45.) and Sur-Reply 11–12 (citing Ex. 2001 ¶ 45). Patent Owner further directs our attention to a single sentence of deposition testimony in which Petitioner’s declarant Dr. Szepesi appears to agree with Patent Owner’s construction by stating, in the context of claim 9, that “the output signal of this first comparator disables the output pulses driving the gate of that independent of anything else.” PO Resp. 8 (citing Ex. 2003, 44:16– 45:1). Petitioner rebuts Patent Owner’s arguments by identifying additional deposition testimony and statements made in a second declaration offered by Dr. Szepesi opposing Patent Owner’s construction. Reply 2–3 (citing Ex. 1016 ¶¶ 18–21, 26–30; Ex. 2003, 43:16–45:1). For instance, immediately before the statement Patent Owner cites, Dr. Szepesi testified: Q: “So is it your opinion that an output for disabling the pulse generator must disable the pulse generator regardless of the other conditions in the circuit?” . . . A: “I don't understand your question. I said disabling the pulse generator means that the output of the pulse generator which is providing the pulses to the gate of the main switch, those pulses are disabled. That’s what it means in my opinion in this context.” Ex. 2003, 43:24–44:9. And, in his supplemental declaration, Dr. Szepesi states: As a first matter, I opined during my deposition that “an output disabling a pulse generator” means that “the output signal of this first comparator disables the output pulses driving the gate of that independent of anything else.” But, at the time of my deposition I had not done a focused claim construction analysis of the limitation “a first comparator […] having an output for disabling the pulse generator.” This is because I hadn’t anticipated there being a dispute relevant to the validity analysis in view of what I understood as the plain meaning of the language. Despite the quote that Patent Owner relied upon, I believe now that a POSITA would not understand the claim language to require the first comparator to disable the output pulses independent of anything else. This belief is consistent with my responses to the first two of three successive questions in which I was asked about “disabling the pulse generator.” It is my opinion that the operation of the disclosed embodiment requires the presence of other conditions precedent before the first comparator can disable the drive pulses and this requirement is not excluded by the claim language. Ex. 1016 ¶ 18 (emphasis added). Our reviewing court has made clear that extrinsic evidence “is generally of less significance than the intrinsic record” in matters of claim construction. Wi-LAN, Inc. v. Apple Inc., 811 F.3d 455, 462 (Fed. Cir. 2016) (citation omitted). Here, beyond competing declarant testimony, neither party has entered into the record extrinsic evidence, such as dictionary definitions or contemporaneous usage in the art, addressing the scope of “in response to.” Having considered the testimony upon which Patent Owner relies and weighing it against the claim language itself, the Specification’s disclosures set forth above, and the contrary testimony of Petitioner’s declarant, we find on balance that it does not warrant departing from the plain and ordinary meaning of “in response to” as Patent Owner urges. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (holding that an inventor may define specific terms used to describe invention, but must do so “with reasonable clarity, deliberateness, and precision”) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88 (Fed. Cir. 1992)).” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Claim 4 further recites, “a control circuit having an input coupled for receiving the detect signal, wherein the control circuit disables the switched drive control signal in response to the detect signal.” Patent Owner’s sole contention with respect to claim 4 is that “[t]he alleged detect signal in Hwang does not satisfy this limitation” because “unlike the ’221 patent, the alleged ‘control circuit’ does not disable the switched drive control signal ‘in response to the detect signal’ independent of other circuit conditions.” PO Resp. 15–16. As discussed above, we decline to import into claim 4 a requirement that the claimed disabling must occur independent of other circuit conditions. See supra Section III.C.1. Because Patent Owner’s argument relies on a claim construction that we rejected above, we are not persuaded that Hwang fails to meet the limitations of claim 4. Rather, having reviewed the evidence cited by Petitioner, we agree with Petitioner that Hwang discloses the limitations of independent claim 4, arranged as recited in the claim. Petitioner’s analysis, as supported by the Szepesi Declaration, further demonstrates where Petitioner contends each element of dependent claims 5 and 6 is disclosed in Hwang. Pet. 21–24. Patent Owner does not dispute Petitioner’s analysis beyond the argument raised with respect to claim 4. See PO Resp. 17. Having reviewed the evidence cited by Petitioner, we agree with Petitioner that Hwang discloses the limitations of dependent claims 5 and 6, arranged as recited in these claims, and we adopt that analysis as our own. Accordingly, for the foregoing reasons, we find Petitioner has shown by a preponderance of the evidence that Hwang anticipates claims 4–6.” slip op. at 25
Patent outcomesUS 6,597,221 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,597,221 - Saudi Arabian Oil Company v. SK Innovation Co., Ltd.All claims unpatentablePTAB · May 9, 2019 · IPR2018-00159 · APJ Monté T Squire · IPR · Final written decision
Claim 2 was held unpatentable as anticipated by Novomer 1; the contingent motion to amend was granted, substituting claim 5.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we granted Petitioner’s request and instituted an inter partes review for challenged claim 2. Paper 9 (“Institution Dec.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner agrees with Petitioner’s assessment regarding the level of ordinary skill in the art. Mot. Amend 7. We determine the level of ordinary skill proposed by Petitioner is consistent with the ’979 patent and the asserted prior art, and we adopt that level in construing and deciding the patentability of claim 2.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Institution Decision, we determined that the phrase “A poly(alkylene carbonate) represented by Formula 10” did not require construction at that stage. Institution Dec. 9; see also id. at 7 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms which are in controversy need be construed and only to the extent necessary to resolve the controversy)). Neither party has argued post-institution that this phrase of claim 2 needs be construed. See PO Resp. 2; Pet. Reply 1–3. We conclude that no further construction of this phrase is necessary.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In the Institution Decision, we agreed with Petitioner that the variable construction of the phrase “each independently” is the broadest reasonable interpretation in light of the specification, and construed the phrase to mean that “each variable R81, R82, R83, and R84 is independent from one instance to another throughout the polymer.” Institution Dec. 13–14. Based on that construction, we also determined in the Institution Decision that claim 2 encompasses the following genera: (1) “Genus A,” which includes a poly(ethylene glycol) chain transfer agent flanked by poly(ethylene carbonate) chains (Pet. 24); (2) “Genus B,” which includes a poly(propylene glycol) chain transfer agent flanked by poly(propylene carbonate) chains (id. at 25–26); (3) “Genus C,” which includes a poly(propylene glycol) chain transfer agent flanked by poly(ethylene carbonate) chains (id. at 26); and (4) “Genus D,” which includes a poly(ethylene glycol) chain transfer agent flanked by poly(propylene carbonate) chains (id. at 27). Institution Dec. 12–13. Neither party opposes adopting the variable construction of the phrase “each independently” and the determination that, under the variable construction, claim 2 encompasses Genus A, Genus B, Genus C, and Genus D. PO Resp. 2; Pet. Reply 1–3. We maintain the variable construction of the phrase “each independently” on the complete record.” slip op. at 11
Patent outcomesUS 9,023,979 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,023,979 - National Oilwell Varco, L.P. v. Technical Industries, Inc.All claims unpatentablePTAB · Jul 18, 2018 · IPR2017-00699 · APJ Jacqueline T Harlow · IPR · Final written decision
Claims 6 and 20 are unpatentable as anticipated by Assanelli; claims 4, 6, 9, 11, 14, 16, 18, and 20 are unpatentable over Kiefer and Assanelli; claims 6 and 20 are unpatentable over Lam and …
RulingsFinal written decision- Adverse judgmentAdverse judgmentGranted
“In addition, on April 5, Patent Owner filed a Request for Adverse Judgment seeking cancelation of claims 1–3, 5, 7, 8, 10, 12, 13, 15, 17, and 19 of the ’518 patent (Paper 44), which we granted (Paper 50). Claims 4, 6, 9, 11, 14, 16, 18, and 20 of the ’518 patent remain in trial. Id.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In view of the evidence described above, including the sophistication of the technology at issue, and the problems encountered and solutions disclosed in the prior art, we do not find persuasive either Mr. Webre’s or Mr. Sfeir’s opinions concerning the level of ordinary skill in the field. Mr. Webre’s opinion that a relevant skilled artisan would have been “a person that was exposed to tubular inspection methods and equipment that was in commercial use by providers of tubular inspection services or as a user of pipe inspection services” (Ex. 2002 ¶ 11) is based on the faulty premise that an ordinarily skilled artisan would have been one who uses tubular inspection techniques, rather than one who develops them. Furthermore, Dr. Webre’s opinion does not comport with the level of sophistication of the ’518 patent or the prior art, each of which addresses the development of improved methods of pipe inspection, not the rote use of commercially available products. Mr. Webre’s reference to the purported educational criteria for obtaining nondestructive testing certification does not cure the defects in his opinion, as Mr. Webre does not explain what such certification entails, or whether one so certified would be an artisan of” slip op. at 13
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“In view of the evidence described above, including the sophistication of the technology at issue, and the problems encountered and solutions disclosed in the prior art, we do not find persuasive either Mr. Webre’s or Mr. Sfeir’s opinions concerning the level of ordinary skill in the field. Mr. Webre’s opinion that a relevant skilled artisan would have been “a person that was exposed to tubular inspection methods and equipment that was in commercial use by providers of tubular inspection services or as a user of pipe inspection services” (Ex. 2002 ¶ 11) is based on the faulty premise that an ordinarily skilled artisan would have been one who uses tubular inspection techniques, rather than one who develops them. Furthermore, Dr. Webre’s opinion does not comport with the level of sophistication of the ’518 patent or the prior art, each of which addresses the development of improved methods of pipe inspection, not the rote use of commercially available products. Mr. Webre’s reference to the purported educational criteria for obtaining nondestructive testing certification does not cure the defects in his opinion, as Mr. Webre does not explain what such certification entails, or whether one so certified would be an artisan of 13 ordinary skill in the relevant field, i.e., the development of tubular inspection techniques. In addition, Mr. Webre’s unsupported, conclusory testimony that Assanelli was “inconsistent” with the “then-current industry standard” screening (Ex. 2002 ¶ 16) is unpersuasive, entitled to little weight (37 C.F.R. § 42.65(a)), and seemingly beyond the scope of his engagement to testify regarding the level of ordinary skill in the art at the time of invention of the ’518 patent (Ex. 2002 ¶¶ 1–2). Mr. Sfeir’s opinion, which expressly excludes those with “the education, training, experience or motivation to attempt to develop a new, allegedly better, way to calculate pipe collapse pressure” as ordinarily skilled artisans (Ex. 2003, 3) suffers from the same shortcomings as Mr. Webre’s opinions, in that it ignores the level of sophistication of the technology and prior art at issue. In addition, Mr. Sfeir does not provide evidentiary support for his opinions; as such, we give them little weight (37 C.F.R. § 42.65(a)).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“to . . . compute the effect of stressors on the wall of said tubular good” (Ex. 1001, 10:4–7), and that requirement is captured by our construction of that claim phrase to mean “causing a computer to use at least some of the information contained in the computer readable recording to compute the effect, on the strength of the tubular, of stressors applied to the tubular” 18 (Inst. Dec. 8). To the extent Patent Owner contends that the term “computer” should be understood in accordance with its plain and ordinary meaning, i.e., as referring to a device for performing calculations on data, we agree, and observe that such understanding is captured by our original construction. Accordingly, for the reasons above, as well as those set forth in the Decision to Institute (id.), we construe the phrase “causing a computer means to use at least some of the information contained in said computer readable recording to compute the effect of stressors on the wall of said tubular good” to mean “causing a computer to use at least some of the information contained in the computer readable recording to compute the effect, on the strength of the tubular, of stressors applied to the tubular.”” slip op. at 18
Patent outcomesUS 7,401,518 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,401,518 - National Oilwell Varco, L.P. v. Technical Industries, Inc.All claims unpatentablePTAB · Jul 18, 2018 · IPR2017-00648 · APJ Jacqueline T Harlow · IPR · Final written decision
Claim 4 was held unpatentable as anticipated by Assanelli and obvious over Kiefer and Assanelli and over Lam and Assanelli.
RulingsFinal written decision- Adverse judgmentAdverse judgmentGranted
“On April 5, 2018, Patent Owner filed a Request for Adverse Judgment, disclaiming and canceling claims 1–3 of the ’887 patent (Paper 41), which was granted on July 11, 2018 (Paper 44).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In view of the evidence described above, including the sophistication of the technology at issue, and the problems encountered and solutions disclosed in the prior art, we do not find persuasive either Mr. Webre’s or Mr. Sfeir’s opinions concerning the level of ordinary skill in the field. Mr. Webre’s opinion that a relevant skilled artisan would have been “a person that was exposed to tubular inspection methods and equipment that was in commercial use by providers of tubular inspection services or as a user of pipe inspection services” (Ex. 2002 ¶ 11) is based on the faulty premise that an ordinarily skilled artisan would have been one who uses tubular inspection techniques, rather than one who develops them. Furthermore, Dr. Webre’s opinion does not comport with the level of 11 sophistication of the ’887 patent or the prior art, each of which addresses the development of improved methods of pipe inspection, not the rote use of commercially available products. Mr. Webre’s reference to the purported educational criteria for obtaining nondestructive testing certification does not cure the defects in his opinion, as Mr. Webre does not explain what such certification entails, or whether one so certified would be an artisan of ordinary skill in the relevant field, i.e., the development of tubular inspection techniques. In addition, Mr. Webre’s unsupported, conclusory testimony that Assanelli was “inconsistent” with the “then-current industry standard” screening (Ex. 2002 ¶ 16) is unpersuasive, entitled to little weight (37 C.F.R. § 42.65(a)), and seemingly beyond the scope of his engagement to testify regarding the level of ordinary skill in the art at the time of invention of the ’887 patent (Ex. 2002 ¶¶ 1–2). Mr. Sfeir’s opinion, which expressly excludes those with “the education, training, experience or motivation to attempt to develop a new, allegedly better, way to calculate pipe collapse pressure” as ordinarily skilled artisans (Ex. 2003, 3) suffers from the same shortcomings as Mr. Webre’s opinions, in that it ignores the level of sophistication of the technology and prior art at issue. In addition, Mr. Sfeir does not provide evidentiary support for his opinions; as such, we give them little weight (37 C.F.R. § 42.65(a)). Accordingly, we find that Petitioner’s description of a relevant skilled artisan as possessing at least a Bachelor of Science degree in mechanical, petroleum, or chemical engineering, and having at least 2–3 years of experience with pipe testing technology is supported by the record as a” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“In view of the evidence described above, including the sophistication of the technology at issue, and the problems encountered and solutions disclosed in the prior art, we do not find persuasive either Mr. Webre’s or Mr. Sfeir’s opinions concerning the level of ordinary skill in the field. Mr. Webre’s opinion that a relevant skilled artisan would have been “a person that was exposed to tubular inspection methods and equipment that was in commercial use by providers of tubular inspection services or as a user of pipe inspection services” (Ex. 2002 ¶ 11) is based on the faulty premise that an ordinarily skilled artisan would have been one who uses tubular inspection techniques, rather than one who develops them. Furthermore, Dr. Webre’s opinion does not comport with the level of 11 sophistication of the ’887 patent or the prior art, each of which addresses the development of improved methods of pipe inspection, not the rote use of commercially available products. Mr. Webre’s reference to the purported educational criteria for obtaining nondestructive testing certification does not cure the defects in his opinion, as Mr. Webre does not explain what such certification entails, or whether one so certified would be an artisan of ordinary skill in the relevant field, i.e., the development of tubular inspection techniques. In addition, Mr. Webre’s unsupported, conclusory testimony that Assanelli was “inconsistent” with the “then-current industry standard” screening (Ex. 2002 ¶ 16) is unpersuasive, entitled to little weight (37 C.F.R. § 42.65(a)), and seemingly beyond the scope of his engagement to testify regarding the level of ordinary skill in the art at the time of invention of the ’887 patent (Ex. 2002 ¶¶ 1–2). Mr. Sfeir’s opinion, which expressly excludes those with “the education, training, experience or motivation to attempt to develop a new, allegedly better, way to calculate pipe collapse pressure” as ordinarily skilled artisans (Ex. 2003, 3) suffers from the same shortcomings as Mr. Webre’s opinions, in that it ignores the level of sophistication of the technology and prior art at issue. In addition, Mr. Sfeir does not provide evidentiary support for his opinions; as such, we give them little weight (37 C.F.R. § 42.65(a)).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Claim 4 expressly requires the use of a “computer means to compute the effect of stresses on the wall of said tubular good” (Ex. 1001, 10:36–38), and that requirement is captured by our construction of that claim phrase to 16 mean “using a computer to compute the effect, on the strength of the tubular, of stressors applied to the tubular” (Inst. Dec. 8). To the extent Patent Owner contends that the term “computer” should be understood in accordance with its plain and ordinary meaning, i.e., as referring to a device for performing calculations on data, we agree, and observe that such understanding is captured by our original construction. Accordingly, for the reasons above, as well as those set forth in the Decision to Institute (Inst. Dec. 8–9), we construe the phrase “using a computer to compute the effect of stresses on the wall of said tubular good” to mean “using a computer to compute the effect, on the strength of the tubular, of stressors applied to the tubular.” We further note that there is no meaningful dispute between the parties concerning the interpretation of “computer,” as Petitioner contends that Assanelli discloses the use of a computer to perform calculations, i.e., finite element analysis (“FEA”) or finite element modeling (“FEM”),2 using data obtained from inspection of a tubular good in order to model the effect of various stresses on that tubular good. See, e.g., Pet. 23–24 (describing the data acquisition and FEA modeling steps disclosed by Assanelli).” slip op. at 16
Patent outcomesUS 7,263,887 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,263,887 - Microsoft Corporation v. Enfish, LLCSome claims unpatentablePTAB · Mar 2, 2015 · IPR2013-00560 · APJ Barbara A Parvis · IPR · Final written decision
Claims 47–48 are unpatentable as anticipated by Visual Basic, and claims 49–50 as obvious over Visual Basic and Jensen; claims 51–53 were not shown unpatentable, and claims 17–23 were terminated.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for patent owner
“Enfish contends that our construction for “object identification number” is incomplete. PO Resp. 15. We evaluate Enfish’s contention below. Enfish also provides a proposed construction for “anchor,” recited in claims 21 and 51. PO Resp. 22. Because we determine that Microsoft has not met its burden with respect to these claims for other reasons, no construction of this term for the purposes of this Decision is necessary. We discern no reason, based on the complete record now before us, to change our constructions in the Decision to Institute of “logical table,” “object identification number,” and “attribute set.”” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“evidence, and the detailed claim analysis, which reads persuasively all elements of claim 47 onto the disclosure of Visual Basic. Pet. 33–46 (citing Ex. 1104, LR 162, 185, 280, 425, 484, 532, 558, PF 1, 3, 18, 37–39, 40, 47, 76, 80, PG 453, 471, 481, 482 ; Ex. 1119 ¶¶ 67–98). For example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses configuring memory according to a logical table, as recited in claim 47. In the cited portions above, Visual Basic discloses storing data in a computer formatted as a table object, which is “a logical representation of a physical table.” Ex. 1104, LR 558. The table object comprises “records (rows) and fields (columns).” Id.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed
“2007 ¶ 231. In contrast to Dr. Jagadish’s statement, however, Jensen teaches an object-oriented application for managing information retrieved from a structured database, such as a relational database. Ex. 1106, Abstract. Enfish further contends that Microsoft does not explain why one of ordinary skill in the art would have been motivated to apply the pointers of Jensen to the indexing structure in Visual Basic. PO Resp. 35. We, however, are persuaded that Microsoft has shown a sufficiently articulated reason with rational underpinning to support obviousness (Pet. 48–49 (citing Ex. 1119 ¶¶ 387–404)). Microsoft, for example, states “[i]t was well known in the art at the time that indexes such as the index disclosed in [Visual Basic], maintain object identification numbers of the cell for locating data.” Pet. 49 (emphasis added). Microsoft continues, “Jensen discloses containing the address in a pointer, e.g., a physical memory address (i.e., OIDs).” Id. (citing Ex. 1106, 7:29–35). Dr. Hosking testifies “[i]t was well known in the art at the time that Index Objects locate data by maintaining object identification numbers in the internal pointers as disclosed in Jensen.” Ex. 1119 ¶ 403 (emphasis added). Dr. Hosking further testifies “[a] person of ordinary skill in the art would be motivated to combine Jensen’s teaching of maintaining the OIDs in a pointer with [Visual Basic’s] disclosure of identifying the logical columns / rows with the OIDs.” Ex. 1119 ¶ 404. The predictable use of familiar prior art elements according to their established functions renders the recited invention obvious. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).” slip op. at 19
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“invention, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that the claimed invention would not have been obvious to one with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). However, to accord substantial weight to objective evidence requires the finding of a nexus between the evidence and the merits of the claimed invention. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“success is relevant in the obviousness context only if there is proof that the sales were a direct result of the unique characteristics of the claimed invention.”). Enfish contends that the claimed invention received industry accolades, including praise from Microsoft, satisfied a long-felt need, resulted in success where others had failed, as well as commercial success. PO Resp. 42–47. Enfish points to features of claim 17, which Enfish contends are the features of the claimed invention that resulted in the objective indicia of success to which Enfish refers. Id. at 43–44. Claim 17 of the ’775 patent, however, is challenged on the basis that it is anticipated by Visual Basic. Secondary considerations do not weigh into determinations regarding anticipation. Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008). Because we conclude that Microsoft has not shown that claims 51–53 of the ’775 patent are unpatentable for other reasons, the only claims that we need to evaluate are dependent claims 49 and 50 of the ’775 patent. Microsoft asserts that claims 49 and 50 are obvious over the combination of Visual Basic with a reference that teaches referencing objects through two-way pointers. Pet. 49 (citing Ex. 1106, 7:29–35). Enfish has not shown a nexus between any of the accolades or successes it says occurred and the use of two-way pointers.” slip op. at 24
Patent outcomesUS 6,163,775 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,163,775
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.