• Xilinx, Inc. v. Godo Kaisha IP Bridge 1No claims unpatentable
  PTAB · Aug 27, 2018 · IPR2017-00842 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 1, 5, 7, and 11 were not shown unpatentable because the asserted references did not establish the equal CTE limitation or a sufficient motivation and basis to optimize it.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have a Bachelor’s degree from an accredited institution in [] electrical engineering, mechanical engineering, materials science and engineering, physics, or the equivalent, working knowledge of semiconductor processing technologies for integrated circuits, and at least three years of experience in semiconductor processing analysis, design, and development. Graduate education could substitute for professional experience, and significant work experience could substitute for formal education. Pet. 20–21 (citing Ex. 1003 ¶ 11). Patent Owner “does not dispute Petitioner’s asserted level of ordinary skill in the art.” PO Resp. 22; see also Ex. 2011 ¶ 29 (Dr. Darveaux agreeing with Petitioner’s and Dr. Qu’s description of a person of ordinary skill in the art). For purposes of this Final Written Decision, and based on the complete record now before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. The level of ordinary skill in the art in this case further 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 10

  • ExcludeMotion to exclude, deniedDenied

    “1 JP Patent Appl. No. 2001-007248, published Jan. 12, 2001 (Ex. 1006). Ex. 1006 includes both the original Japanese application and the certified English translation thereof. We cite to the English portion of the exhibit throughout. Patent Owner filed a Motion to Exclude Exhibit 1006, and portions of Exhibit 1003 based thereon. Paper 18. This Motion has been denied. Paper 36. 2 U.S. Patent No. 6,617,681 B1, issued Sept. 9, 2003, filed June 28, 1999 (Ex. 1007). See Paper 8 (“Inst. Dec.”). Subsequent to institution, Patent Owner filed a Patent Owner Response (Paper 12, “PO Resp.”), along with a Declaration of Robert Darveaux, Ph.D. (Ex. 20113) to support its positions. Petitioner filed a Reply (Paper 14, “Pet. Reply”) to the Patent Owner Response. 3 Petitioner filed a Motion to Exclude Exhibit 2011. Paper 17. This Motion has been denied. Paper 37. Petitioner also argues in its Reply that “[t]he Board should give no weight to [Dr.] Darveaux’s Declaration because of [his] refusal to answer questions regarding the dispositive issue in this proceeding – including the very issue upon which he opined in his declaration – thus disqualify his opinion from having any evidentiary weight.” Pet. Reply 17; see id. at 17–24. In particular, Petitioner contends that Dr. Darveaux “flatly refused to construe, define or even address what he meant by the crucial claim term ‘equal.’” Id. at 18. Petitioner contends:” slip op. at 2

  • Expert testimonyPetitioner expert discountedDecided for patent owner
  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Claims 1 and 7 recite, “wherein a thermal expansion coefficient of the monolithic base substrate is equal to a thermal expansion coefficient of the semiconductor chip” (the “equal CTEs limitation”). The parties dispute whether the asserted references disclose or render obvious this claim limitation. The Decision on Institution did not construe the term “equal to” in the equal CTEs limitation of claims 1 and 7. In discussing the asserted grounds, however, the Decision cited to dictionary definitions of “equal” and “match” as relevant to the equal CTEs limitation. Specifically, the Decision cited to a dictionary defining “equal” as “1a(1): ‘of the same measure, quantity, amount, or number as another;’ or 1a(2): ‘identical in mathematical value or logical denotation’” (Inst. Dec. 18 (quoting Equal Definition, MERRIAM-WEBSTER.COM (available at https://www.merriam-webster.com/dictionary/equal))), and defining “match” as “1a: ‘a person or thing equal or similar to another’” (id. at 23 (quoting Match Definition, MERRIAM-WEBSTER.COM (available at https://www.merriam-webster.com/dictionary/match))). In the post-institution briefing, neither party proffered an express construction for the term “equal to,” nor provided declaratory expert testimony for the construction of that term. See generally PO Resp.; Pet. Reply; Ex. 1003; Ex. 2011; see also Tr. 20:9–21:6 (Petitioner’s counsel indicating, “[t]here is no definition, I guess, necessarily on the record for ‘equal.’ What we know, or what we put forth in our petition, is that equal is narrower than matched. . . . And so once Hirose’s matched is -- you know, once Hirose teaches matched, from there you can, you can optimize to whatever the appropriate definition of equal is.” (emphases added)), 46:17– 21 (Patent Owner’s counsel, in response to the question “What does ‘equal’ . . . mean?”, indicating, “[s]o that’s an issue that hasn’t been raised in the proceeding and nobody has answered it and you asked the same question to petitioner. They didn’t answer it.”). For purposes of this Final Written Decision, we apply the plain meaning of the term equal, and use the dictionary definitions discussed above as evidence of the plain meaning. As discussed below in more detail in our analysis of the asserted grounds, we agree with Patent Owner that further express construction of the term “equal to” is unnecessary to assess the sufficiency of Petitioner’s contentions. See Tr. 47:1–11.” slip op. at 12

  Patent outcomesUS 7,728,439 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,728,439

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.