• Platform Science, Inc. v. Omnitracs, LLCRehearing granted
  PTAB · Sep 3, 2021 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Rehearing

  The Board granted rehearing and instituted IPR on all petition grounds for claims 1–4, 6–9, 11, 12, and 15, finding a reasonable likelihood of prevailing.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “preliminary stage, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to claim 1.” slip op. at 44

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

    “The only dispute pertaining to claim construction at this stage of the proceeding is whether the phrase “a process for creating said response message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6.6 Petitioner 6 As noted above, Petitioner raises a second claim construction issue in its Rehearing Request. See Req. Reh’g 12–15 (asserting that the claims require only one instance of copying information from a formatted message to a response message based on which formatted message was received). Petitioner did not raise this issue in the Petition, Patent Owner has not had an contends that the phrase should be interpreted as a means-plus-function limitation, whereas Patent Owner contends that it should not. Compare Pet. 2–7 (advocating for a means-plus-function construction), with Prelim. Resp. 9–11 (advocating for an ordinary and customary meaning). At this stage of the proceeding, the dispute between the parties regarding the construction of this claim phrase does not impact our Decision. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 17

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

    “VI. ANALYSIS Legal Standards – Anticipation “[A] claim is anticipated ‘if each and every limitation is found expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs., Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). Anticipation is a question of fact, In re Gleave, 560 F.3d 1331, 1334–35 (Fed. Cir. 2009), assessed from the perspective of one of ordinary skill in the art, see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference” (alteration in original) (quotation omitted)).” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,925,308
• Qualcomm Inc. v. Bandspeed, Inc.Some claims unpatentable
  PTAB · Sep 7, 2016 · IPR2015-01580 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 5, 6, 8, 17, 18, and 20 are unpatentable; claims 7 and 19 were not shown unpatentable because Cuffaro does not disclose a specified number of votes and the obviousness testimony was insufficient.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “After institution, Qualcomm Inc. filed substantially the same petition in IPR2015-01580 (IPR2015-01580, Paper 1), together with a Motion for Joinder of IPR2015-01580 with the instant proceeding (IPR2015-01580, Paper 2). On September 17, 2015, we granted a motion to terminate this proceeding with respect to MediaTek Inc. and MediaTek USA, Inc., but not as to Patent Owner, leaving only Patent Owner as a party to the proceeding. Paper 22. On November 16, 2015, we granted Qualcomm Inc.’s Motion for Joinder, joining Qualcomm Inc. to the instant proceeding. Paper 23. Qualcomm Inc. (“Petitioner”) is now the sole petitioner.” slip op. at 2

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

    “phrase “means for . . . .” Petitioner construes these terms in accordance with 35 U.S.C. § 112 ¶ 6, identifying an algorithm described in the specification corresponding to each “means” limitation. Pet. 7–9 (citing Ex. 1001, col. 8, l. 8–38, col. 8, ll. 49–col. 9, l. 16, col. 19, l. 25–col. 20, l. 67). Petitioner identifies a general purpose computer, processor 704 in Figure 7, as structure for “executing the instructions associated with the corresponding function” recited in each “means limitation,” except for the “means fro [sic] the first participant to communicate . . .” recited in claims 5 and 20. Pet. 7–9 (citing Ex. 1001, Fig. 7, col. 25, ll. 13–18). For the “means fro [sic] the first participant to communicate” limitation, Petitioner identifies transceiver 216, shown in Figure 2, reproduced supra. Pet. 9 (citing Ex. 1001, Fig. 2, col. 9, ll. 54–59). Patent Owner does not contest these identifications. We agree with Petitioner’s identifications and adopt them as our constructions of the means-plus-function limitations. Specifically, as to those means-plus-function limitations that correspond to processor 704 in Figure 7, Petitioner identifies in its claim chart the algorithm described in the specification for performing each function of these means. Pet. 8–9; See also Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013) (“When dealing with a ‘special purpose computer-implemented means-plus-function limitation,’ [the Federal Circuit] require[s] the specification to disclose the algorithm for performing the function.”); Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009) (“[W]hen a computer is referenced as support for a function in a means-plus-function claim, there must be some explanation of how the computer performs the claimed function.”).” slip op. at 8

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

    “We are not persuaded by this reasoning. As Petitioner observes, the embodiments of the ’624 patent identified by Patent Owner are characterized as “examples,” and a person of ordinary skill “would understand that the example scenarios of the specification are not necessarily limiting on the claims.” Reply 3 (citing Ding Supp. Decl. ¶ 6). In addition, Petitioner notes that claim language in related patents owned by Patent Owner explicitly refers to participants, evidencing Patent Owner’s understanding “how to expressly create participant-specific voting requirements in claims.” Id. at 3. At the oral hearing, Patent Owner suggested that explicit reference to participants in such other claim language “was because it wanted to clarify that each participant got a single vote,” and explained its position that, in the claims at issue in this proceeding, “participant is implicit in the claim language as it is.” Tr. 78:16–25. But the claims are directed to a “communications apparatus,” and recite “votes” in the context of what the “particular communications channel” “receives.” Nothing within the structure of the claims requires resolving the origin of such votes. Furthermore, Patent Owner’s proposed construction is inconsistent with the construction it agreed to before the district court in the Qualcomm Litigation. In that litigation, the parties agreed that the term “vote” should be construed as “a binary expression (to use or not to use),” a construction that makes no reference to the origin of the “vote” as from a participant or otherwise. Ex. 1014, 6. We see no compelling reason to excuse the inconsistency by adopting a narrower construction when the Board applies a claim-construction standard (broadest reasonable interpretation) that could only result in the same or a broader construction. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (“A patent may not, like a ‘nose of wax,’ be twisted one way to avoid anticipation and another to find infringement.” (quoting Sterner Lighting, Inc. v. Allied Elec. Supply, Inc., 431 F.2d 539, 544 (5th Cir. 1970))). Accordingly, we construe “votes to use a particular communications channel” as “expressions of preference for using the particular communications channel.”” slip op. at 10

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

    “Patent Owner responds that “the Gerten device is not capable of and expressly teaches away from performing this functionality.” PO Resp. 15 (citing Melendez Decl. ¶ 33). Patent Owner contends that “Gerten’s disclosure is directed toward eliminating channels for use in an entire piconet as opposed to eliminating channels for use by certain participants within a piconet.” Id. at 16 (emphasis added). Patent Owner argues that Gerten does not disclose a selection kernel capable of maintaining synchronization between a master and more than one slave in a piconet, with the master and one slave using a default set of channels while the same master and a different slave use a different set of channels. Id. We are not persuaded that the absence of a specific teaching of such a selection kernel supports the conclusion that one of skill in the art would understand Gerten to function in the manner Patent Owner suggests. In this instance, Petitioner refers to two embodiments of Gerten “in which a first participant communicates with a second participant via a normal sequence and with another participant via an adaptive hopping sequence.” Reply 5. First, Figure 3 of Gerten is reproduced below. Figure 3 illustrates “methodology for determining and communicating channels to be avoided to a remote device.” Ex. 1003, col. 2, ll. 4–6. As illustrated in the drawing, a master unit performs a discovery process (block 110) upon connecting with a new slave unit. Ding Decl. ¶¶ 60, 64. If the slave unit is capable of using interference avoidance, the master unit begins the process of determining a modified set of channels for use (block 120). Id. ¶ 45. If a second slave unable to use interference avoidance enters the piconet, standard frequency hopping is used. Supp. Ding Decl. ¶ 9. Under Patent Owner’s characterization of Gerten, entry of the second slave into the network would require the first slave necessarily to revert back to the default hopping sequence. Id. ¶ 10. But this would undermine the stated benefits of Gerten, which explicitly discloses: The above process can be applied to a Bluetooth example and includes identification of a Bluetooth device’s ability to support interference avoidance, the measurements of signal strength on all channels and identification of which channel should not be used without violating the FCC rules, a method of modifying the Bluetooth hop sequence so that it will avoid channels containing strong or fixed interferers while still supporting standard Bluetooth hopping with other non-enabled members of the piconet and a method of relating necessary interference avoidance information to the remote Bluetooth devices. Ex. 1003, col. 4, l. 66–col. 5, l. 9 (emphasis added).” slip op. at 17

  Patent outcomesUS 7,477,624 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,477,624
• Masterimage 3d, Inc. / Masterimage 3d Asia, LLC v. Reald Inc.No claims unpatentable
  PTAB · Apr 20, 2016 · IPR2015-00035 · APJ Bart A Gerstenblith · IPR · Final written decision

  The Board denied cancellation of claims 1–23 because Petitioner did not show Schuck was entitled to the provisional filing date, so it was not prior art.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “as those presented in Dynamic Drinkware, with a few exceptions. The main difference is that here, Patent Owner did not have the burden to antedate Schuck because the ’455 patent was filed before the actual filing date of Schuck. The result of that difference is that the burden of production started with Petitioner and remains with Petitioner to establish that Schuck is entitled to claim priority to the ’657 provisional. Dynamic Drinkware is clear in that Petitioner is required to “compare the claims of . . . [Schuck] to the disclosure in the . . . [’657] provisional application.” Dynamic Drinkware, 800 F.3d at 1381. The Federal Circuit explained: “A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Id. (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)). Petitioner acknowledges that the ’657 provisional fails to provide support under § 112, first paragraph, for Schuck’s claim 1. Supp. Reply 4. Petitioner’s claim chart, submitted as “Appendix 1” to its Supplemental Reply, indicates that the ’657 provisional refers to a “doublet lens” rather than a “telephoto lens pair.” Id. at App. 1, A-5. And Petitioner does not argue that the “doublet lens” provides support for the recited “telephoto lens pair.” See generally id.” slip op. at 14

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “It is only “confidential information” that may be protected from disclosure, 35 U.S.C. § 316(a)(7), and, even then, there is a public interest in “maintaining a complete and understandable file history” of the proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). The party moving to seal bears the burden of proof in showing entitlement to the requested relief. 37 C.F.R. § 42.20(c).” slip op. at 19

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for patent owner

    “as those presented in Dynamic Drinkware, with a few exceptions. The main difference is that here, Patent Owner did not have the burden to antedate Schuck because the ’455 patent was filed before the actual filing date of Schuck. The result of that difference is that the burden of production started with Petitioner and remains with Petitioner to establish that Schuck is entitled to claim priority to the ’657 provisional. Dynamic Drinkware is clear in that Petitioner is required to “compare the claims of . . . [Schuck] to the disclosure in the . . . [’657] provisional application.” Dynamic Drinkware, 800 F.3d at 1381. The Federal Circuit explained: “A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Id. (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)). Petitioner acknowledges that the ’657 provisional fails to provide support under § 112, first paragraph, for Schuck’s claim 1. Supp. Reply 4. Petitioner’s claim chart, submitted as “Appendix 1” to its Supplemental Reply, indicates that the ’657 provisional refers to a “doublet lens” rather than a “telephoto lens pair.” Id. at App. 1, A-5. And Petitioner does not argue that the “doublet lens” provides support for the recited “telephoto lens pair.” See generally id.” slip op. at 14

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “for multiple reasons. First, Petitioner acknowledges that what it refers to as “the Milburn doctrine” was codified in 35 U.S.C. § 102(e), and Petitioner does not show persuasively that we should read Milburn as requiring anything beyond application of that statutory section in light of the facts presented here. Supp. Reply 6. Second, Milburn did not address directly the question of whether an issued patent is entitled to claim priority to a provisional patent application, and, specifically, what must be shown in order to do so. Third, Schuck claims priority to not one, but three provisional applications, which was not the case in Milburn. Fourth, in Giacomini, the Federal Circuit expressly considered Milburn and stated: “An important limitation [on 35 U.S.C. § 119(e)(1)] is that the provisional application must provide written description support for the claimed invention.” Giacomini, 612 F.2d at 1383 (emphasis added). Although the Federal Circuit did not address the application of the argument—that the reference patent’s provisional application fails to provide written description support for the claimed subject matter—in Giacomini, because the appellant had waived it, the Federal Circuit’s decision acknowledges that there was an argument that could have been raised. Id. Finally, Dynamic Drinkware is directly on point and clearly establishes that Petitioner is required to show that the claimed invention of Schuck finds written description support in the ’657 provisional in order to rely on the ’657 provisional’s filing date. Dynamic Drinkware, 800 F.3d at 1381. It is undisputed that Petitioner has not done so. We find that Petitioner has not shown that claim 1 or any other claim of Schuck is supported by the ’657 provisional, and, thus, Petitioner has not shown that Schuck is entitled to claim priority to the ’657 provisional’s filing date. See Apple, Case IPR2015-00969, slip op. at 12–13. The result of our finding is that Schuck does not qualify as prior art, under § 102(e), to the ’455 patent, and, therefore, is not a reference which may be relied upon to establish the unpatentability of claims in an inter partes review. See 35 U.S.C. § 311(b) (“A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” (emphasis added)). Accordingly, Petitioner has not demonstrated, by a preponderance of the evidence, that: (1) claims 1–8, 10–14, and 16–22 are unpatentable as anticipated by Schuck and (2) claims 9, 15, and 23 are unpatentable as obvious over Schuck and APA.” slip op. at 16

  Patent outcomesUS 7,857,455 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 7,857,455
• The Gillette Company / Fujitsu Semiconductor Limited et al. v. Zond, LLCAll claims unpatentable
  PTAB · Oct 1, 2015 · IPR2014-00580 · APJ Joni Y Chang · IPR · Final written decision

  Claims 1–20 and 34–39 are unpatentable under § 103(a) over the five instituted grounds; the majority finds the Mozgrin Thesis publicly accessible, with a partial dissent on claim 2.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “Subsequent to institution, we granted the Motion for Joinder filed by Taiwan Semiconductor Manufacturing Company, Ltd., TSMC North America Corp. (collectively, “TSMC”), Fujitsu Semiconductor Limited, and Fujitsu Semiconductor America, Inc. (collectively, “Fujitsu”), joining Case IPR2014-01479 with the instant trial (Paper 20), and also granted a Joint Motion to Terminate with respect to TSMC (Paper 37).2 Zond filed a Response (Paper 32 (“PO Resp.”)), and Gillette filed a Reply (Paper 39 (“Reply”)). Oral hearing3 was held on June 16, 2015, and a transcript of the hearing was entered into the record. Paper 47 (“Tr.”).” slip op. at 2

  • Skill levelOther

    “B. Principles of Law A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). 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). In that regard, 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; Translogic, 504 F.3d at 1262. The level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 8

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

    “their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,”6 and “the standard was properly adopted by PTO regulation.”). Claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor may rebut that presumption by providing a” slip op. at 6

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

    “We are not persuaded by Zond’s arguments, as they narrowly focus on Mozgrin’s regime 3, and fail to consider Mozgrin’s regime 2 that is dedicated to sputtering. It is well-settled that, when evaluating claims for obviousness, “the prior art as a whole must be considered.” In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986). As Gillette points out (Pet. 13–14), Mozgrin explicitly states that, in regime 2, the voltage pulse that generates a strongly-ionized plasma from the weakly-ionized plasma is appropriate for sputtering. Ex. 1002, 402, 406, 409 (“The implementation of the high-current magnetron discharge (regime 2) in sputtering . . . provides an enhancement in . . . plasma density (exceeding 2 x 1013 cm-3).”), Figs. 1, 3). Mozgrin also discloses specific process parameter ranges that are more efficient for sputtering in regime 2. Id. Therefore, contrary to Zond’s assertion that Mozgrin’s voltage pulse creates a direct transition to regime 3, one of ordinary skill in the art reading Mozgrin would have been able to select the pulse characteristics and parameter ranges to generate a strongly-ionized plasma in regime 2 that is dedicated to sputtering. Upon consideration of Mozgrin and Fortov, as a whole, we do not share Zond’s view that there are contradictory teachings between Mozgrin and Fortov that would dissuade one of ordinary skill in the art from combining the prior art teachings to achieve Fortov’s non-linear increase in sputtering yield.” slip op. at 25

  Patent outcomesUS 6,896,773 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,896,773
• Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentable
  PTAB · Sep 28, 2015 · IPR2014-01057 · APJ Kevin F Turner · IPR · Final written decision

  Claims 2, 11, 13, 14, and 16 are unpatentable under § 103(a) over the asserted combinations of Wang, Lantsman, and the applicable additional reference.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “North America Corporation (collectively, “TSMC”) filed a Petition requesting an inter partes review of claims 2, 11, 13, 14, and 16 of U.S. Patent No. 6,853,142 B2 (Ex. 1101, “the ’142 Patent”). Paper 2 (“Pet.”). Patent Owner Zond, LLC (“Zond”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). We instituted the instant trial on October 20, 2014, pursuant to 35 U.S.C. § 314. Paper 9 (“Dec.”).” slip op. at 2

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “Subsequent to institution, we granted the revised Motions for Joinder filed by other Petitioners (collectively, “GlobalFoundries”) listed in the Caption above, joining Cases IPR2014-00863, IPR2014-01013, and IPR2014-01057 with the instant trial (Papers 12–14), and also granted a Joint Motion to Terminate with respect to TSMC (Paper 32). Zond filed a Response (Paper 26 (“PO Resp.”)), and GlobalFoundries filed a Reply (Paper 39 (“Reply”)). Oral hearing2 was held on June 12, 2015, and a transcript of the hearing was entered into the record. Paper 46 (“Tr.”).” slip op. at 2

  • Skill levelOther

    “B. Principles of Law A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). 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). In that regard, 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; Translogic, 504 F.3d at 1259. The level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We analyze the asserted grounds of unpatentability in accordance with the above-stated principles.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “plasma to generate a strongly-ionized plasma,” with independent claim 10 reciting a similar limitation. All of the challenged claims depend from claim 1 or 10. During the pre-trial stage of this proceeding, the parties submitted their constructions for the claim terms “a weakly-ionized plasma” and “a strongly-ionized plasma.” Pet. 14–15; Prelim. Resp. 20–22. In our Decision on Institution, we adopted Zond’s proposed constructions, in light of the Specification, as the broadest reasonable interpretation. Dec. 8–10. Upon review of the parties’ explanations and supporting evidence before us, we discern no reason to modify our claim constructions set forth in the Decision on Institution with respect to these claim terms. Id. Therefore, for purposes of this Final Written Decision, we construe, in light of the Specification, the claim term “a weakly-ionized plasma” as “a plasma with a relatively low peak density of ions,” the claim term “a strongly-ionized plasma” as “a plasma with a relatively high peak density of ions.”” slip op. at 7

  Patent outcomesUS 6,853,142 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,853,142
• Globalfoundries U.S., Inc. / Globalfoundries Dresden Module One LLC & Co. KG et al. v. Zond, LLCAll claims unpatentable
  PTAB · Sep 23, 2015 · IPR2014-01099 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 1–11 and 33 are unpatentable as anticipated by Wang under 35 U.S.C. § 102.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “Subsequent to institution, we granted a revised Motion for Joinder filed by The Gillette Company (“Gillette”), joining Case IPR2014-00972 2 U.S. Patent No. 6,413,382 B1, issued July 2, 2002 (Ex. 1004, “Wang”). with the instant trial (Paper 12).3 Patent Owner filed a Patent Owner Response (Paper 24, “PO Resp.”), along with a Declaration of Larry D. Hartsough, Ph.D. (Ex. 2004) to support its positions. Petitioner filed a Reply (Paper 30, “Reply”) to the Patent Owner Response, along with a supplemental Declaration of Dr. Kortshagen (Ex. 1025). An oral hearing4 was held on June 12, 2015. A transcript of the hearing is included in the record. Paper 39.” slip op. at 2

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

    “nor its expert witness, expressly challenged our claim constructions as to these terms (see, e.g., Ex. 2004 ¶ 21), Patent Owner improperly attempts to import extraneous limitations into the claim by arguing that a specific magnitude for the peak density of ions is required to disclose a strongly-ionized plasma, i.e., “equal to or greater than 1012 [cm-3]” (PO Resp. 3–4, 21). It is well settled that if a feature is not necessary to give meaning to a claim term, it would be “extraneous” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). Patent Owner relies only on testimony from Petitioner’s declarant, Dr. Kortshagen, to support this construction requiring a specific magnitude for the peak density of ions. PO Resp. 3 (citing IPR2014-00818, Ex. 2010, 44:13–58:12). Patent Owner, however, does not direct us to where the Specification provides an explicit definition for this claim term, nor do we discern one. See Paulsen, 30 F.3d at 1480. Moreover, Patent Owner’s newly proposed construction, requiring a specific ion density range, would render at least the limitation recited in dependent claim 24 superfluous. Ex. 1001, 21:45–47 (Claim 24 states “[t]he method of claim 14 wherein the peak plasma density of the strongly-ionized plasma is greater than about 1012 cm-3.”). It is well settled that “claims are interpreted with an eye toward 7 giving effect to all terms in the claim.” Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006); see also Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions which render phrases in claims superfluous). Further, “[i]t is improper for courts to read into an independent claim a limitation explicitly set forth in another claim.” Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 698, 699 (Fed. Cir. 1983). For the foregoing reasons, we decline to adopt Patent Owner’s newly proposed construction that requires a specific ion density. Rather, upon consideration of the parties’ explanations and supporting evidence before us, we discern no reason to change our claim constructions set forth in the Institution Decision with respect to these claim terms, which adopted Patent Owner’s originally proposed constructions. Inst. Dec. 8. Therefore, we construe, in light of the Specification, the claim term “a weakly-ionized plasma” as “a plasma with a relatively low peak density of ions,” and the claim term “a strongly-ionized plasma” as “a plasma with a relatively high peak density of ions.”” slip op. at 7

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

    “Petitioner identifies two claim elements recited in claim 33 as means-plus-function elements, invoking 35 U.S.C. § 112, ¶ 66: “means for ionizing a feed gas” and “means for supplying an electrical pulse.” Pet. 13– 15. We agree that those claim elements are written in means-plus-function form and fall under 35 U.S.C. § 112, ¶ 6, because: (1) each claim element uses the term “means for”; (2) the term “means for” in each claim element is modified by functional language; and (3) the term “means for” is not modified by any structure recited in the claim to perform the claimed function. See Personalized Media Commc’ns LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703–04 (Fed. Cir. 1998) (using the term “means for” in a claim creates a rebuttable presumption that the drafter intended to invoke § 112, ¶ 6); Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427–28 (Fed. Cir. 1997) (the presumption is not rebutted if the term “means for” is 6 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 112- 29, 125 Stat. 284, 296 (2011). Because the ’716 patent has a filing date before September 16, 2012 (effective date), we will refer to the pre-AIA version of § 112. 15 modified by functional language and is not modified by any structure recited in the claim to perform the claimed function); see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (confirming that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies” (citing Personalized Media, 161 F.3d at 703)). The first step in construing a means-plus-function claim element is to identify the recited function in the claim element. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003). The second step is to look to the specification and identify the corresponding structure for that recited function. Id. A structure disclosed in the specification qualifies as “corresponding” structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). “While corresponding structure need not include all things necessary to enable the claimed invention to work, it must include all structure that actually performs the recited function.” Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed. Cir. 2005).” slip op. at 15

  Patent outcomesUS 7,604,716 unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 7,604,716
• Groupon, Inc. v. Blue Calypso, LLCNo claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00044 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 4-9 were not shown unpatentable because Ratsimor was not established as prior art; cancellation of claims 1-3 and 10-13 was granted.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We construe the terms “incentive program,” “incentive,” and “incentivizing” in accordance with these principles.” slip op. at 9

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “C. Patent Owner’s Motion to Amend Patent Owner’s Motion to Amend (Paper 18) is before us for consideration. In the motion, Patent Owner requests cancellation of claims 1-3 and 10-13 of the ’646 patent. The cancellation of these claims is not based on any contingency. There is no indication, for example, that claims 1-3 and 10-13 should be cancelled only if the claims are determined unpatentable. Rather, the Motion to Amend leaves no doubt that Patent Owner unequivocally requests cancellation of claims 1-3 and 10-13. For these reasons, we grant Patent Owner’s request to cancel claims 1-3 and 10-13 of the ’646 patent. Because Patent Owner requested cancellation of claims 1-3 and 10-13, not based on any contingency, Patent Owner has waived any issues with respect to claims 1-3 and 10-13, and, therefore, we need not address the patentability of those claims.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable

    “prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been 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 . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009).” slip op. at 16

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “3. The Ratsimor Paper Is Not Prior Art For the foregoing reasons, we determine that Petitioner has not demonstrated, by a preponderance of the evidence, that the Ratsimor paper is a printed publication within the meaning of 35 U.S.C. § 102(b) and, therefore, the Ratsimor paper is not prior art to the claims of the ’646 patent. Therefore, Petitioner may not rely upon the Ratsimor paper for its asserted grounds of patentability under 35 U.S.C. § 103(a). Accordingly, we conclude that Petitioner has not demonstrated that (i) claims 4 and 5 would have been obvious over the Ratsimor paper and Paul, (ii) claims 6-8 would have been obvious over the Ratsimor paper, Paul, and Kitaura, or (iii) claim 9 would have been obvious over the Ratsimor paper, Paul, Hall, and MacEachren.” slip op. at 23

  Patent outcomesUS 8,452,646 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,452,646

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.