- Salesforce.Com, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentInstitution deniedPTAB · Jul 13, 2022 · IPR2022-00357 · APJ John A Hudalla · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show Fox was a publicly accessible printed publication before the critical date.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and 7 We note that Petitioner does not attempt to establish that Fox was publicly accessible based on other theories such as, for example, actual dissemination. circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018) (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (internal quotation omitted). Evidence of cataloging and indexing can sometimes play a significant role in determining whether a library reference qualifies as a printed publication. See In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). In assessing public accessibility, our reviewing court considers whether a reference is “meaningfully indexed such that an interested artisan exercising reasonable diligence would have found it.” Acceleration Bay, 908 F.3d at 774 (citing In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989)).” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018) (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (internal quotation omitted). Evidence of cataloging and indexing can sometimes play a significant role in determining whether a library reference qualifies as a printed publication. See In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). In assessing public accessibility, our reviewing court considers whether a reference is “meaningfully indexed such that an interested artisan exercising reasonable diligence would have found it.” Acceleration Bay, 908 F.3d at 774 (citing In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989)).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Schmidt, Petitioner contends a person of ordinary skill in the art (“POSITA”) would have had “a Bachelor of Science degree in computer science, or a related subject matter, plus at least two years of professional experience in the field of computer networks, wireless communications, or a similar field.” Pet. 8 (citing Ex. 1003 ¶¶ 32–34). Patent Owner does not offer a different definition, and Patent Owner” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 6
Claim construction§ 102 anticipationcites Phillips · KSR · GrahamPatents in suitUS 8,209,411 - Salesforce.Com, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentInstitution deniedPTAB · Jul 13, 2022 · IPR2022-00428 · APJ John A Hudalla · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not establish that Erdogan was publicly accessible before the critical date and thus prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018) (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (internal quotation omitted). Evidence of cataloging and indexing can sometimes play a significant role in determining whether a library reference qualifies as a printed publication. See In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). In assessing public accessibility, our reviewing court considers whether a reference is “meaningfully indexed such that an interested artisan exercising reasonable diligence would have found it.” Acceleration Bay, 908 F.3d at 774 (citing In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989)).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018) (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (internal quotation omitted). Evidence of cataloging and indexing can sometimes play a significant role in determining whether a library reference qualifies as a printed publication. See In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). In assessing public accessibility, our reviewing court considers whether a reference is “meaningfully indexed such that an interested artisan exercising reasonable diligence would have found it.” Acceleration Bay, 908 F.3d at 774 (citing In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989)).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art (“POSITA”) would have had “a Bachelor of Science degree in electrical engineering or computer science or related field plus at least two years of professional experience in the field of relational databases and/or user interfaces thereto.” Pet. 7 (citing Ex. 1003 ¶ 36). Patent Owner does not offer a different definition, and Patent Owner contends that Petitioner has not met the “reasonable likelihood” standard for institution even if we were to apply Petitioner’s definition. Prelim. Resp. 1. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’928 patent and the asserted prior art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“37 C.F.R. § 42.100(b). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 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.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). We determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
Claim construction§ 102 anticipationcites Phillips · KSR · GrahamPatents in suitUS 8,280,928 - Dell Technologies Inc. / Dell Inc. et al. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Jun 27, 2022 · IPR2021-00272 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1–3, 5–9, 11–17, 19, and 20 are anticipated by Narayanan; all claims are also held obvious on the grounds stated.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedOther
“Patent Owner acknowledges that Narayanan discloses executing a spanning tree protocol, but contends that “there is no disclosure in Narayanan of the required initiating a spanning tree protocol in one or more of the first set of port interfaces.” PO Resp. 11–12 (emphasis omitted in part). Patent Owner’s argument is unavailing. We agree with Petitioner that, when taking over the active role, Narayanan’s Slave Chassis initializes and begins running bridging and routing protocols, such as the STP. See Reply 10 (citing Ex. 1005, 7:48–59, 5:12–15). Here, Petitioner cites its expert’s unrebutted testimony that the STP would be initiated specifically for the port interfaces that were reconfigured. Id. (citing Ex. 1004, Bambos Decl. ¶ 101). Petitioner also notes the similarity between the Narayanan’s teachings and the disclosure in the ’489 patent that, when an aggregation switch recognizes a connection failure of the VFL, it reconfigures its set of member ports into at least one link aggregate coupled to the edge node and enables a spanning tree protocol or other similar network protocol for alleviating packet loops on the link aggregate. Id. (citing Ex. 1001, 19:11–18).” slip op. at 23
- Skill levelOther
“1. Introduction The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, the obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG v. C. H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)). An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Instead, Petitioner must articulate a reason why a person of ordinary skill in the art would have combined the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016).” slip op. at 28
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Having reviewed the evidence and arguments of record, we agree with Petitioner that “a connection failure of the virtual fiber link to the remote aggregation switch,” as recited claim limitation [1.D], is not limited solely to failures of the VFL itself. We find that Petitioner has demonstrated that Narayanan discloses this limitation because in Narayanan processing module 216 is configurable to determine VSL 136 fails when it stops receiving communications from switch 110.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“2. Apparatus Claims 1–3, 5–9, and 11–14 Petitioner notes that Narayanan incorporates Smith and Chin by reference. Pet. 43 (citing Ex. 10056, 4:12–15, 5:33–37). Petitioner argues that, to the extent we do not consider Smith and Chin to be part of Narayanan’s disclosure, in view of Narayanan’s explicit reference to Smith and Chin, a person of ordinary skill would have had reason to combine their teachings with those of Narayanan. Id. Petitioner notes that Narayanan cites Smith as providing details for a suitable design of switch 132, including components such as forwarding engines, filtering databases, and spanning tree engines. Id. (citing Ex. 10057, 4:17–18). Petitioner also notes Narayanan’s explanation that Chin discloses details of an illustrative embodiment of PAgP as run by link aggregations engines 222 and 310 disposed in virtual switch 132 and access switches 105, 106. Id. (citing Ex. 10058, 5:32–39). Having reviewed the evidence and arguments of record, we are persuaded that Petitioner has demonstrated a person of 6 The Petition cites Ex. 1004, but it is clear from the context Petitioner means tocite Ex. 1005. 7 Ibid. 8 Ibid. ordinary skill would have had reason to combine the teachings of Smith and Chin with those of Narayanan.” slip op. at 29
Patent outcomesUS 8,913,489 unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,913,489 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Scramoge Technology Ltd.InstitutedPTAB · Jun 23, 2022 · IPR2022-00385 · APJ Jameson Lee · IPR · Institution
The Board instituted review of claims 1, 4, 5, 8–13, and 17–22 on all petitioned grounds, finding a reasonable likelihood of unpatentability based on Hiroki anticipation and Hiroki–Akiho obviousness.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“the petitioner in IPR2022-00117. Petitioner here also represents that none of its real parties in interest is related in any way to the petitioner in IPR2022- 00117. Prelim. Reply 5. Petitioner further represents that it has not coordinated in any way with the petitioner in IPR2022-00117 with regard to challenging the ’215 patent before the Board. Id. Petitioner additionally notes that it and the petitioner in IPR2022-00117 are not even codefendants in the same district court litigation, were not sued by the Patent Owner at the same time, and were sued on the basis of each’s own separate products. Id. at 6.6 With respect to such lack of relationship, Patent Owner makes no contention to the contrary. For the foregoing reasons, General Plastic Factor 1 weighs very strongly against exercising discretion to deny the Petition. 2. Factors 2–5 Regarding Factor 2, Patent Owner points to no evidence that as of the filing of the petition in IPR2022-00117 on November 3, 2021, Petitioner knew of any of the references applied in the Petition at issue in this proceeding. General Plastic Factor 2 weighs against exercising discretion to deny the Petition. Regarding Factor 3, the Petition here was filed on December 31, 2021, prior to the filing of Patent Owner’s preliminary response and the Board’s institution decision in IPR2022-00117. Patent Owner points to no evidence of Petitioner using any Board decision or Patent Owner submission as a roadmap to prepare the Petition. General Plastic Factor 3 weighs against exercising discretion to deny the Petition.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“2. Fintiv Factor 2 It is undisputed by the parties that the district court has now scheduled trial in both the parallel litigation involving Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., and the parallel litigation involving Google LLC for March 6, 2023. Prelim. Reply 2–3; Ex. 1031. The trial date of March 6, 2023 is approximately four months prior to the expected time of a final written decision in this proceeding. Fintiv factor 2 weighs in favor of exercising discretion to deny the Petition.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“e) Conclusion Petitioner has shown a reasonable likelihood that it would prevail in establishing that claim 1 is anticipated by Hiroki.” slip op. at 37
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“crystalline alloy, as claimed. Ex-1002, ¶¶ 115–116; Ex-1015, 1:13–15; Ex- 1007, [0015]; Ex-1018, 1:38–39.” Pet. 29. However, paragraph 41 of Sakuma, cited by Petitioner, describes Sakuma’s embodiment as shown in Figure 7, not Sakuma’s embodiment as shown in Figure 2A. Ex. 1005 ¶ 41. As discussed above in Section II.C.2, the embodiment disclosed by Sakuma with respect to its Figure 2A is structurally different from the embodiment disclosed by Sakuma in Figure 7. Whereas in the Figure 2A embodiment soft magnetic sheet 11 comprises separate magnetic tile pieces 311 arranged in a single loop and a single layer, in the Figure 7 embodiment soft magnetic sheet 11 comprises not magnetic pieces arranged in one layer but two stacked magnetic sheets. Ex. 1005 ¶¶ 28, 29, 40, 41. Sakuma does not identify “sendust” as usable material for magnetic pieces 311 in the Figure 2A embodiment. Id. ¶ 42. Petitioner does not provide any reason why one with ordinary skill in the art would have read Sakuma’s disclosure of “sendust” as also describing any magnetic piece 311 in the Figure 2A embodiment of Sakuma. We are not sufficiently persuaded, for institution purposes, that Sakuma discloses using “sendust” as the material for any magnetic piece 311 in Figure 2A. d) Conclusion Petitioner has not shown a reasonable likelihood that it would prevail in establishing anticipation of claims 1 and 13 by Sakuma. 4. Dependent Claims 8, 9, 11, 17, 19, and 21 Claims 8, 9, and 11 each depend directly from claim 1. Ex. 1001, 10:46–61. Claims 17, 19, and 21 each depend directly from claim 13. Id. at 12:10–28. Each dependent claim incorporates all the limitations of the claim on which it depends. For the same reasons discussed above in the context of claims 1 and 13 regarding limitation 1[i] and limitation 13[j], Petitioner has not sufficiently shown that Sakuma discloses those limitations. Accordingly, Petitioner has not shown a reasonable likelihood that it would prevail in establishing anticipation of claims 8, 9, 11, 17, 19, and 21 by Sakuma. D.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,843,215 - Maxlite, Inc. v. Jiaxing Super Lighting Electric Appliance Co., Ltd.All claims unpatentablePTAB · Apr 29, 2022 · IPR2020-00208 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 7, and 12–18 are unpatentable as anticipated by Duan under § 102(a)(1).
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“a B.S. degree in electrical engineering, or an equivalent field, as well as at least 2-4 years of academic or industry experience in lighting design, including knowledge of LEDs and related technology for driving LEDs. A person of ordinary skill in the art with a higher level of education may have fewer years of academic or industry experience, or vice versa. Pet. 22 (citing Ex. 1002 ¶ 10). Patent Owner does not contest Petitioner’s articulation of the level of skill in the art. PO Resp. 4–5. We regard Petitioner’s definition as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, we adopt Petitioner’s proposal.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“embodiments that operate with a low frequency driving signal in a double-ended configuration, Patent Owner did not recite “low frequency” or “double-ended” in its claims and instead chose the broader term “first driving mode.” See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). The fact that a limitation in the specification may define over the prior art does not justify importing that limitation into the claims unless a term is expressly defined such that the patentee becomes his own lexicographer or there is an express disavowal of claim scope. See GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1308–09 (Fed. Cir. 2014). There is no evidence of an express disavowal here. As to lexicography, we disagree with Patent Owner’s contention that the Specification defines the phrase “first driving mode.” Patent Owner relies on the mere fact that the specification describes an embodiment with a first driving mode that has a low frequency driving signal and is in a “double-ended” configuration, but this is not sufficient to define the term. The specification does not require that a low frequency driving signal must necessarily be used. In fact the specification, although not entirely clear, suggests that the driving signal may be from a high frequency ballast. Ex. 1001, 51:8–14. Thus, the fact that the patent here discloses a low frequency driving signal does not mean that all the claims are directed to such a driving signal. See E-Pass Tech., Inc. v. 3Com Corp., 343 F.3d 1364, 1368–69 (Fed. Cir. 2003). Indeed, dependent claim 15 recites “the first driving mode is performed when the external driving signal is a relatively low frequency or voltage signal,” while the independent claims were directed to a more general driving signal. The doctrine of claim differentiation suggests that the independent claims here should not include explicit limitations of a dependent claim. See Phillips, 415 F.3d at 1315 (“[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.”); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“We determine that Patent Owner has not shown sufficiently that the Chinese priority patent applications it relies on—the ’636 Chinese Application and the ’586 Application—provide written description support for the limitation of “a mode determination circuit, configured to generate a first determined result signal based on the external driving signal” and “a mode switching circuit, coupled to the filter circuit and the driving circuit, configured to determine whether to perform a first driving mode or a second driving mode based on the first determined result signal,” recited in claim 1. PO Resp. 31–34, 60–67. Specifically, Patent Owner relies on structures in the ’636 Chinese Application and the ’586 Application that are not sufficiently similar to structures in the ’826 patent i.e., DR Circuit 140, excluding diodes D5 and D6, as shown in Figs. 24i-j and 29b. Id. at 27 (citing Ex. 2001, 23–24, 29, and 33, Fig. 24i–j and 29b).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“For the reasons above, Patent Owner has not established that claim 1 of the ’826 patent is entitled to the effective filing date of the ’636 Chinese Application (i.e., June 10, 2015) or the ’586 Application (i.e., March 26, 2015). Because the remaining asserted claims are dependent claims, Patent Owner has also not established that claims 7 and 12–18 of the ’826 patent are entitled to the effective filing date of the ’636 Chinese Application or the ’586 Application. The application that led to the ’826 patent was filed on March 25, 2016. The ’826 patent claims it is a continuation-in-part of application No. 15/055,630 (“the ’630 Application”), filed on February 28, 2016. So, even if the challenged claims were entitled to the earlier February 28, 2016 filing date, Duan issued on July 1, 2015, and is, thus, prior art to the challenged claims of the ’826 patent under 35 U.S.C. § 102(a)(1).” slip op. at 18
Patent outcomesUS 9,807,826 unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites PhillipsPatents in suitUS 9,807,826 - PTAB · Apr 19, 2022 · IPR2022-00007 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–13 and 20, finding a reasonable likelihood of success on each asserted ground in the petition.
RulingsInstitution decision- Parallel petitionsOther
“We decline Petitioner’s invitation to provide advisory opinions by entertaining different Petitions advancing alternative claim constructions. As Petitioner has expressed its preference for Petition 1, which cites Tracy as the primary reference, we exercise our discretion to entertain Petition 1. We decline to institute inter partes review based on Petitions 2 and 3.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“XI. CONCLUSION For the reasons discussed above, we find that Petitioner has demonstrated a reasonable likelihood that it will succeed on the following challenges to patentability: Claims 1–3 and 8–10 as anticipated by Tracy; Claims 1–3 and 8–10 as obvious over Tracy; Claims 4 and 11 as obvious over Tracy and Fujimoto; Claims 6 and 20 as obvious over Tracy and De; Claim 7 as obvious over Tracy and Bond; XII. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes review of the ’822 patent is hereby instituted, commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial;” slip op. at 50
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). construed as means plus function terms: DC to AC converter, switch[ing] controller, AC ground leak detector, bi-directional DC-to-DC converter, common-mode filter. Pet. 17–21. Although Petitioner states these terms “could be construed as means-plus-function limitations,” Petitioner states that if the panel does not construe them as such, these terms should be construed according to their ordinary and customary meaning. Id. at 17. According to Petitioner, whether these limitations are construed as means plus function terms or according to their ordinary and customary meaning, the prior art discloses the limitations of the challenged claims. Petitioner does not explain why terms that have an ordinary and customary meaning should be construed as means-plus-function limitations in the context of the ’822 patent. Therefore, we apply the ordinary and customary meaning to each limitation. Vivid Techs., 200 F.3d at 803.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VIII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that at the time of the patent application, a person of ordinary skill “would have had a bachelor’s degree in electrical engineering or a similar discipline and three years of design experience with power electronics, including experience designing power converters.” Pet. 17 (citing Ex. 1002, Declaration of Dr. R. Joseph Baker (“Baker Decl.”)). Patent Owner does not discuss the level of ordinary skill. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); of ordinary skill is consistent with the subject matter of the claims and references, we apply Petitioner’s proposed level of skill in this Decision.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,937,822 - Samsung Electronics Co., Ltd. v. Acorn Semi, LLCSome claims unpatentablePTAB · Feb 9, 2022 · IPR2020-01207 · APJ John R Kenny · IPR · Final written decision
Claims 1–6, 8–10, 15, and 16 are unpatentable as anticipated by Grupp ’483; claims 11, 12, and 14 were not shown unpatentable because Grupp ’483 is not prior art to them.
RulingsFinal written decision- BurdenNot shown unpatentable
“We agree with Patent Owner. “[A p]etitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” Consolidated Trial Practice Guide5 73; see also 37 C.F.R. § 42.23(b). Here, Petitioner’s breadth challenge to the written description support for the genus of “the metal oxide of the interface layer comprises an oxide of 5 Consolidated Office Trial Practice Guide (Nov. 2019), available at https://www.uspto.gov/about-us/news-updates/consolidated-trial-practice-guide-november-2019. titanium” recited in claims 6, 8, 10, 11, and 14–16, was part of Petitioner’s prima facie case, which could have, and should have, been presented with the Petition. Thus, Petitioner could not properly wait until its Reply to specifically challenge the description support for the breadth of that class in the pre-2011 priority applications. See Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016); Ariosa Diagnostics v. Verinata Heath, Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015). Accordingly, we will not consider the breadth challenge to a metal oxide comprising an oxide of titanium that Petitioner presented for the first time in its Reply. As for the breadth challenge presented in the Petition—that the pre- 2011 priority applications do not describe the breadth of the class of metal oxides, that challenge is inapplicable here because claims 11, 12, and 14 narrow the recited class to comprising an oxide of titanium, which is a far narrower class. Dr. Schubert provides examples of numerous metal oxides that do not comprise oxides of titanium. Ex. 1022, Schubert Decl. ¶ 94 (hafnium oxide and zirconium oxide); Ex. 1053, Schubert Reply Decl. ¶¶ 18, 19 (see the compounds identified in that paragraph beyond titanium dioxide), 20. Petitioner does not dispute that the pre-2011 priority applications disclose a species within the scope of the recited genus. Pet. 18–22. To the contrary, Petitioner relies on one of the pre-2011 priority applications (Grupp ’483) as disclosing a species (with TiO2) as proof that claims 11, 12, and 14 are anticipated. See id. at 40–44. Thus, we determine that Petitioner has not proven that the pre-2011 priority applications fail to describe the genus of the metal oxide of the interface layer comprises an oxide of titanium. Therefore, Petitioner has not proven that Patent Owner is not entitled to the benefit of the pre-2011 priority applications for claims 11, 12, and 14 due to a lack of written description support. Accordingly, Petitioner has not proven that Grupp ’483 is prior art for those claims.” slip op. at 27
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedPriority date awardedMixed
“2. Analysis We agree with Petitioner that the pre-2011 priority applications do not describe the recited genus. To support a claim to a genus, a specification must disclose “either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010) (en banc). Here, the recited genus is an interface layer comprising a metal oxide. Ex. 1001, 18:45–52. It is undisputed that the only species the pre- 2011 priority applications disclose is TiO2, as set forth in the following passage: Two other properties of the dielectric deserve mention. First is the property of the height of the barrier compared to the semiconductor conduction band (for electrons). In making the barrier thinner than a silicide barrier, the tradeoff may be a higher tunnel barrier (e.g., 2 eV for nitride, compared with about half the gap of 0.6 eV for silicide). Spacer layers may be used with lower barriers (e.g., TiO2 has a barrier of less than 1 eV). Nevertheless, even with the higher barrier to electrons, the present inventors have determined that the resistance can still be one hundred times lower than a contact to silicon with a silicide barrier. Id. at 18:1–11 (emphasis added). The pre-2011 priority applications incorporate by reference U.S.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“As set forth below, we find that Petitioner has proven that Grupp ’483 anticipates claims 1–6, 8–10, 15, and 16. a. Claim 1 Petitioner argues that Grupp ’483 discloses an electrical junction, citing Grupp 483’s disclosure that “the present invention provides an electrical junction.” Pet. 27 (citing Ex. 1021, Grupp ’483, 3:44–47). Petitioner further argues that Grupp ’483 discloses a region in a semiconductor substrate by describing a source or drain of a transistor. Id. at 28 (citing Ex. 1022, Schubert Decl. ¶ 110). According to Petitioner, Grupp ’483 discloses a metal electrical contact to said region by describing “an electrical device in which an interface layer is disposed between and in contact with a metal and a semiconductor.” Id. (quoting Ex. 1021, Grupp ’483, 4:21–23) (emphasis omitted). Petitioner asserts that Grupp ’483 discloses “said region being electrically connected to said metal electrical contact through said interface layer” by describing “the present invention provides an electrical device in which an interface layer is disposed between and in contact with a metal and a semiconductor and is configured to depin the Fermi level of the semiconductor while still permitting current flow between the metal and the semiconductor . . . .” Id. at 29 (quoting Ex. 1021, Grupp ’483, 4:21–26) (emphasis omitted). Petitioner further argues that Grupp ’483 discloses “said interface layer comprising a metal oxide and a semiconductor oxide” by describing an interface layer that includes (1) a passivation layer, which can be a semiconductor oxide; and (2) a separation layer, which can be titanium dioxide, a metal oxide. Pet. 29 (citing Ex. 1022, Schubert Decl. ¶ 114). Petitioner further asserts that Grupp ’483 discloses “being in contact with said region in the semiconductor substrate and said metal electrical contact” by describing “an interface layer is disposed between and in contact with a metal and a semiconductor.” Id. (quoting Ex. 1021, Grupp ’483, 4:21–23) (emphasis omitted). After reviewing Petitioner’s arguments and evidence, we find that Petitioner has proven that Grupp ’483 anticipates claim 1.” slip op. at 40
- ExcludeOther
“We dismiss Patent Owner’s Motion to Exclude as moot in light of our determination regarding Petitioner’s written description challenge to Patent Owner’s benefit of its pre-2011 priority applications for claims 11, 12, and 14. In particular, Petitioner relies on the testimony at issue to support its belated challenge to the breadth of written description support in the pre- 2011 priority applications for the class of comprising an oxide of titanium that is recited by those claims. Reply Br. 7–12. Because we decided not to consider that belated challenge (see Section III.A.1.b above), the Motion to Exclude is moot.” slip op. at 47
Patent outcomesUS 10,090,395 mixed§ 102 anticipationcites PhillipsPatents in suitUS 10,090,395 - Samsung Electronics Co., Ltd. v. Acorn Semi, LLCSome claims unpatentablePTAB · Feb 9, 2022 · IPR2020-01282 · APJ John R Kenny · IPR · Final written decision
Claims 1–5 and 8–10 are unpatentable: claims 1–3 and 8–10 are anticipated by Goodnick, and claims 4 and 5 are obvious. The other challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The Patent Owner Preliminary Response did not comment on the level of ordinary skill in the art. In our Institution Decision, we were persuaded that Petitioner’s description of the level of ordinary skill is appropriate for the subject matter of the ’395 patent and applied it in that Decision. Inst. Dec. 9–10. The Patent Owner Response does not comment on the level of ordinary skill in the art. See generally PO Resp. Thus, we apply the description of the level of ordinary skill set forth in the Petition in this Decision. Ex. 1126, Schubert Decl. ¶ 66.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“Petitioner’s proposed construction by providing the following definition for the phrase “depinning the Fermi level”: By depinning the Fermi level, the present inventors mean a condition wherein all, or substantially all, dangling bonds that may otherwise be present at the semiconductor surface have been terminated, and the effect of MIGS has been overcome, or at least reduced, by displacing the semiconductor a sufficient distance from the metal. Ex. 1101, 3:36–41. In view of this definition in the Specification and the parties’ agreement in pre-institution briefing, we construed the phrase “depin a Fermi level of the metal electrical contact in the vicinity of the junction” as “passivate the semiconductor surface and reduce the effects of metal-induced gap states in the semiconductor” in our Institution Decision. Patent Owner has not requested that we modify that construction. See generally PO Resp. Thus, we maintain it.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
“C. An Interface Layer Comprising a Metal Oxide and a Semiconductor Oxide In its Preliminary Response, Patent Owner argued that, in the related litigation, Petitioner and Patent Owner agreed to construe the phrase an “interface layer comprising a metal oxide and a semiconductor oxide” as “said interface layer comprising a layer of a metal oxide and a distinct layer of a semiconductor oxide.” Prelim. Resp. 35 (citing Ex. 2009). Patent Owner asserted that the district court adopted that construction. Id. (citing Ex. 2053, 27). In our Institution Decision, we found that the record supported Patent Owner’s arguments. Inst. Dec. 13 (citing Ex. 2009; Ex. 2053, 27). Further, in our Institution Decision, we noted that no party argued that we should construe the phrase differently than the district court. Id. Thus, we construed “an interface layer comprising a metal oxide and a semiconductor oxide” as “said interface layer comprising a layer of a metal oxide and a distinct layer of a semiconductor oxide.” Id. No party has requested that we modify this construction. See generally PO Resp., Pet. Reply. Thus, we maintain it.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Taken in context, we agree with Dr. Schubert that an ordinarily skilled artisan would have understood Goodnick to refer to Al2O3 as a distinct layer. Ex. 1126, Schubert Decl. ¶ 85; Ex. 1173, Schubert Reply Decl. ¶ 86. Referring to Fig. 8(a), Goodnick states that in an unheated sample with an air grown oxide “[i]t appears that Si has diffused into the Al and collected at the Al2O3-Al interface at the surface. No buildup of Al2O3 is seen at the Al- Si interface.” Ex. 1121, 5. Noting that Fig. 8(b) is a profile of an unheated sample with 30Å of SiO2 at the interface, Goodnick states “[i]n contrast to the air exposed sample, an Al2O3 layer exists at the Al-SiO2-Si interface.” Id. Petitioner notes that, on cross-examination, Dr. Goodnick acknowledged (i) that the Al metal layer would diffuse into the SiO2 interface layer and reduce the portion of the SiO2 layer nearest the Al layer to Al2O3, (ii) that once the Al2O3 layer forms, it would be difficult for aluminum atoms to diffuse through the Al2O3 layer to continue reaction with the SiO2 layer, and (iii) because the reaction is self-limiting, a portion of the original SiO2 layer would remain once the reaction forming the Al2O3 layer stopped. Pet. Reply 6–7 (citing Ex. 1168, Goodnick Tr. 55:5–25, 57:19– 58:8, 59:24–60:7, 81:4–8). In view of, inter alia, Dr. Goodnick’s cross- examination testimony, we are persuaded by Dr. Schubert’s testimony that an ordinarily skilled artisan would have understood that distinct layers of Al2O3 and SiO2 are formed. Ex. 1173, Schubert Reply Decl. ¶¶ 85–98.” slip op. at 25
Patent outcomesUS 10,090,395 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,090,395 - Samsung Electroncis Co. Ltd. v. Acorn Semi, LLCAll claims unpatentablePTAB · Feb 9, 2022 · IPR2020-01183 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–3, 17–18, and 21–24 are unpatentable: claims 1–3 and 17–18 are obvious over Jammy, and claims 21–24 are anticipated by Grupp ’483 and Jammy.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“mental steps that an ordinarily skilled artisan theoretically might have taken after reviewing the minimal disclosure in the ’423 patent. The ’423 patent does not discuss any properties of metal oxides (other than the lower barrier of the metal oxide TiO2) or design considerations concerning the selection of particular oxides to use in the claimed structure, particularly in the context of MIGS separation. Dr. Kuhn cites very little, if any, evidence to support her testimony regarding the knowledge of an ordinarily skilled artisan. Thus, we do not credit this analysis as showing that an ordinarily skilled artisan would have found that the inventors of the pre-2011 priority applications possessed the recited genus. See Ariad, 593 F.3d at 1352 (a description that merely renders the invention obvious does not satisfy the written description requirement); PowerOasis Inc. v. T-Mobile USA, 522 F.3d 1299, 1306 (Fed. Cir. 2008) (“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.”) (quoting In re Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002),” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“As discussed above, Petitioner has demonstrated Grupp ’483 is prior art to challenged claims 1–3, 17–18, and 21–24 of the ’261 patent. It is undisputed that the priority applications disclose at least some group IV semiconductors. Thus, claims reciting the metal oxide interface layer and Group IV semiconductor are anticipated under In re Slayter, 276 F.2d 408, 411 (CCPA 1960) (“It is well settled that a generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus; in other words, whatever would infringe if subsequent will anticipate if prior.”) and In re Gosteli, 872 F. 2d 1008, 1010 (Fed. Cir. 1989). The additional limitations of the challenged dependent claims are also disclosed in Grupp ’483. See Pet. 25–26. For the reasons discussed above, we conclude that Petitioner has demonstrated by a preponderance of the evidence that claims 1–3, 17–18, and 21–24 are anticipated by Grupp ’483.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“On this record Patent Owner has not provided sufficient evidence of a nexus between the long felt and the specific limitations recited in claims 1–3 and 17–18, e.g., the structure recited in independent claim 1, in which a metal oxide interface layer interposed between a metal and a group IV semiconductor comprising the source or drain of a transistor has a thickness between 0.1 nm and 5 nm.” slip op. at 39
Patent outcomesUS 9,209,261 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,209,261 - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Jan 18, 2022 · IPR2021-01113 · APJ Thu A Dang · IPR · Institution
The Board denied institution of IPR challenging claims 14–16 and 20–25 under § 325(d), finding the same or substantially the same arguments were previously presented and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Under § 325(d), in “determining whether to institute [an inter partes review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Here, Petitioner has the burden to show that the Examiner erred in determining that Chu ’330 incorporated by reference the ’886 provisional. Advanced Bionics, Paper 6 at 8.” slip op. at 17
§ 102 anticipationDiscretionary denial
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.