• Samsung Electronics Co., Ltd. / Taiwan Semiconductor Manufacturing Co. Ltd. v. Arbor Global Strategies LLCAll claims unpatentable
  PTAB · Nov 24, 2021 · IPR2021-00391 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1, 3, 5–9, 11, 13–17, 19–22, 25, 26, 28, and 29 are unpatentable as anticipated by Alexander or obvious over the stated prior-art combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We adopt Petitioner’s proposed level of ordinary skill in the art as we did in the Institution Decision, which comports with the teachings of the ’035 patent and the asserted prior art. See Inst. Dec. 19. Patent Owner’s proposed level is slightly lower than Petitioner’s but it overlaps with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level, the outcome would remain the same. C.” slip op. at 9

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

    “accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019). Under the same standard applied by district courts, claim terms acquire 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). Based on the current record, no terms require explicit construction. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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))). D.” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “does not support Patent Owner’s argument about “undue experimentation” with respect to how to combine the teachings of Koyanagi and Alexander to arrive at the claimed processor module. In the passage containing the quoted testimony that Patent Owner relies upon, Dr. Shanfield testifies as follows: You have obviously got to have a circuit in mind that you're wanting to create a system-level circuit, a module-level circuit; and so you’re going to need to consider which connections you want a TSV connecting to something below. So you don't just slap it together without worrying about what connects to what. On the other hand, the putting together of the -- in Bertin, he describes the putting together of these chips and how that can be done in detail. And that piece of it is -- I guess you could characterize that as something that comes with the process and in itself isn’t something you think specifically about every one of 50,000 connections. They’re all done by the process that he gives an example of. Ex. 2014, 82:4–19.13 Dr. Shanfield’s testimony indicates that artisans of ordinary skill readily would have been able to connect different die circuits together “obviously” with “a circuit in mind . . . to create a system-level circuit, [or] a module-level circuit . . . consider[ing] which [TSV] connections [she] 13 Bertin (Ex. 1009) is employed in the ground discussed below. See infra § II.G. want[s].” See id. As Petitioner similarly argues, “[n]othing in Dr. Shanfield’s testimony, however, suggests that Petitioner ‘slap[ped] together’ Koyanagi and Alexander.” Reply 14; Ex. 1030 ¶ 79 (testifying that Patent Owner quotes his testimony “out of context” and that “at the system or circuit design level, each TSV is an interconnection between specific circuits”).” slip op. at 34

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

    “Initially, Alexander, a prior art reference, carries a presumption of enablement. Antor Media, 689 F.3d at 1287–1288; Amgen, 314 F.3d at 1355. Patent Owner argues that the presumption does not apply because “for a non-patent publication, such as Alexander, to be presumptively enabling, it must have been “cited by an examiner . . . barring any showing to the contrary by a patent applicant or patentee.” PO Resp. 13 (quoting Antor Media, 689 F.3d at 1288. Patent Owner also argues that “[w]hile it is true that a ‘[e]nablement of an anticipatory reference may be demonstrated by a later reference,’ the Federal Circuit has made clear that the later reference ‘must show that the claimed subject matter was in possession of the public more than one year prior to the applicant’s filing date.’” Id. at 16 (quoting Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1379 (Fed. Cir. 2001)).8 Petitioner argues that Patent Owner “mispresents the law.” As Petitioner argues, ‘[a] prior art printed publication does not need to have been ‘cited by an examiner’ to be presumed enabling.” Reply 5. In Corephotonics, 2021 WL 2577597, at *4 (nonprecedential), in the context of AIA trial proceedings, the court held that “regardless of the forum, prior art patents and publications enjoy a presumption of enablement, and the patentee/applicant has the burden to prove nonenablement for such prior art” and that “[i]t was error for the Board to suggest otherwise.” The 1995 publication date of Alexander antedates the’035 patent’s effective filing date of December 5, 2001 by more than six years. See Ex. 1006, 1 (“0-7803-2702-1/95 $ 4.00 © IEEE-1995”); PO Resp. 4 (specifying “December 5, 2001” as “the earliest effective filing date of the ’035 Patent”); Inst Dec. 20–25 (finding the publication date of Alexander is 8 The “more than one year prior to the applicant’s filing date” requirement arises from “anticipation under 35 U.S.C. § 102(b).” See Bristol-Myers Squibb, 246 F.3d at 1379.” slip op. at 14

  Patent outcomesUS RE42,035 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
• Samsung Electronics Co., Ltd. / Taiwan Semiconductor Manufacturing Co. Ltd. v. Arbor Global Strategies LLCAll claims unpatentable
  PTAB · Nov 24, 2021 · IPR2020-01020 · APJ Karl D Easthom · IPR · Final written decision

  The Board held claims 1, 5, and 7 anticipated by Alexander, and all challenged claims unpatentable as obvious over the stated combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner contends that “a person of ordinary skill in the art . . . would have had a Bachelor’s degree in Electrical Engineering or a related and either (1) two or more years of industry experience; and/or (2) an advanced degree in Electrical Engineering or related field.” PO Resp. 4–5 (citing Ex. 2015 ¶ 33). We adopt Petitioner’s proposed level of ordinary skill in the art as we did in the Institution Decision, which comports with the teachings of the ’035 patent and the asserted prior art. See Inst. Dec. 19. Patent Owner’s proposed level is slightly lower than Petitioner’s but it overlaps with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level, the outcome would remain the same. C.” slip op. at 8

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

    “accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019). Under the same standard applied by district courts, claim terms acquire 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). Based on the current record, no terms require explicit construction. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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))). D.” slip op. at 9

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

    “In other words, contrary to Patent Owner’s arguments, Alexander need not enable “wafer-thinning technology,” because challenged claims 1, 5, and 7 at issue here do not require that technology. Even so, the ’035 patent admits the “wafer-thinning technology” was known and “developed by Tru-Sci Technologies” prior to the invention. See Ex. 1001, 2:20–30; Prelim. Resp. 18–19 (citing Ex. 1001, 2:20–30; Ex. 2008); Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1379 (Fed. Cir. 2001) (“Enablement of an anticipatory reference may be demonstrated by a later reference”). Accordingly, an artisan of ordinary skill reading Alexander 9 Patent Owner does not challenge this preliminary finding in its Response. After a full review of the record, we incorporate and adopt this finding as supported by a preponderance of the evidence. would have considered Alexander enabled for such known technology at the time of the invention.10” slip op. at 16

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

    “Contrary to these arguments, claim 9 does not recite or require a “stacked die hybrid,” “buffer cells,” any improvements in FPGA reconfiguration times, or a “3D IC.” Claim 9 recites a “reconfigurable computer system” in the preamble, but it does not even recite how the “memory” and “processor” functionally or structurally relate to the “first and second integrated circuit die elements” of the “processor module.” As indicated above, Alexander carries a presumption of enablement as a prior art reference. See Antor Media, 689 F.3d at 1288; Amgen, 314 F.3d at 1355. Alexander employs multi-chip module fabrication techniques “to establish electrical contacts between the interconnect substrate and pads on individual dies.” Ex. 1006, 4. As to obviousness, Petitioner relies on known systems that include a microprocessor, FPGA, and memory. Pet. 22–23 (citing “APA Figure 1”). Petitioner persuasively shows that an artisan of ordinary skill readily could have connected the known FPGA module in a processor and memory system as a substitute for a prior art FPGA, with the system performing as predicted, as evidenced by the block diagram wiring connections in admitted prior art Figure 1 of the ’035 patent, in order to save space and increase processing speed with a reasonable expectation of success. See Pet. 10–11, 21–25 (citing Ex. 1002 ¶¶ 85–93). Patent Owner also alleges thermal issues in Alexander render the claimed combination “inoperable.” PO Resp. 25–28. Again, however, Patent Owner relies on a module or stack of a “3D FPGA with other power hungry components, such as logic dies including microprocessors” to support its arguments. Id. at 27. This argument mischaracterizes the breadth of claims 9, 13, and 15, which do not require a stack that includes a 3D FPGA stack with a microprocessor and memory in that stack, as Petitioner shows and as outlined above. Based on the foregoing discussion, Petitioner shows persuasively that” slip op. at 25

  Patent outcomesUS RE42,035 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
• Samsung Electronics Co., Ltd. / Taiwan Semiconductor Manufacturing Co. Ltd. v. Arbor Global Strategies LLCAll claims unpatentable
  PTAB · Nov 24, 2021 · IPR2021-00394 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1, 4, 5, 8, 10, and 13–15 are unpatentable as obvious over Koyanagi and Alexander, and independently over Bertin and Cooke.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Relying on the testimony of Dr. Shanfield, Petitioner contends that [a] person of ordinary skill in the art (“POSITA”) at the time of the alleged invention would have been a person having a Master’s degree in Electrical Engineering, Computer Engineering, or Physics with three to five years of industry experience in integrated circuit design, layout, packaging or fabrication. Ex. 1002 ¶¶ 55–58. A greater level of experience in the relevant field may compensate for less education, and vice versa. Pet. 10.” slip op. at 7

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

    “the Board’s preliminary construction only adds ambiguity to the meaning of this term because it requires “a number of vertical contacts that . . . provide contacts on the surface of the memory die,” and further, claim 1 already recites that “‘a second integrated circuit functional element’ has ‘a number of contact points distributed throughout the surfaces of said functional element.’” See id. at 9 (emphasis added). Therefore, Patent Owner offers the following “suggest[ion]”: “To the extent that the Board finds it necessary to mention contacts in the context of the claimed ‘memory array,’ Patent Owner suggests that the Board use the term ‘a number of vertical contacts distributed throughout the surface of and traversing the memory die.’” PO Resp. 8 (emphasis added). For reasons discussed further below and in the Institution Decision, the record, including the specification, supports Patent Owner’s suggestion, and we determine that Patent Owner’s claim construction suggestion is materially the same as the preliminary claim construction set forth in the Institution Decision. See, e.g., Ex. 1001, 2:41–44 (“[S]ince these differing die do not require wire bonding to interconnect, it is now also possible to place interconnect pads throughout the total area of the various die rather than just around their periphery.”) (emphasis added); Inst. Dec. 24–25. In addition to Patent Owner’s suggestion above, Patent Owner also argues that “the term ‘a memory array functional to accelerate external memory references to the processing element’ means ‘a memory array that allows the parallel loading of data through buffer cells.’” PO Resp. 6 (emphasis added). Patent Owner asserts that “[i]n its preliminary response, Patent Owner advocated that this term should be accorded its plain and ordinary meaning.” PO Resp. 5. It is not clear if Patent Owner maintains (i.e., in its Response) that the phrase carries its plain and ordinary meaning.9 In any event, the record does not support Patent Owner’s proposed requirement for “buffer cells” under the plain and ordinary meaning of the “functional to accelerate” clause or under lexicography principles, prosecution history or otherwise, for the reasons advanced by Petitioner and as addressed below. In line with Patent Owner’s suggestion and as we similarly determined in the Institution Decision, the “functional to accelerate” limitations require “a number of vertical contacts distributed throughout the surface of and traversing the memory die in a vertical direction (vias) to allow multiple short paths for data transfer between the memory and processor.” See Ex. 1001, Fig. 4 (showing numerous contact points); Inst. Dec. 25 (materially similar construction); PO Resp. 8 (Patent Owner’s suggestion). We adopt and incorporate the claim construction findings in the Institution Decision, much of which we repeat here for completeness. See Inst. Dec. 19–25. slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “As Petitioner argues, the combined Koyanagi and Alexander system mimics the ’951 patent’s disclosure by employing stacked dies with a “large number of contact points distributed throughout the surfaces of the dies.” Pet. 29; see also supra notes 14, 16. Petitioner also provides evidence that an artisan of ordinary skill would have known of several advantages in stacking 3D chips with multiple vias including “high packing density,” “high speed,” “parallel signal processing,” and “integration of many functions on a single chip.” Id. at 4 (citing Ex. 1010, 1704; Ex. 1002 ¶ 39). Petitioner points to Koyanagi’s “key benefit” as “enab[ling]large data bandwidth in vertical data transfers” (Ex. 1007, 17) to mitigate bus bottlenecks, further showing that multiple vias provide for parallel signal processing and increased processing speed in stacked dies as found above. See Pet. 30 (citing Ex. 1007, 17, 19); supra § II.C (Claim Construction); supra notes 14, 16. In other words, Petitioner shows how the combined teachings of Koyanagi and Alexander teach or suggest to an artisan of ordinary skill the accelerate clause in the challenged claims by providing a large number of short parallel via connections, thereby functionally enabling large data bandwidths and parallel processing, as was well-known at the time of the invention. See Pet. 4, 17–23, 28–29; Ex. 1007, 17–18; supra notes 14, 16; Reply 15–17; In re Graves, 69, F.3d 1147, 1152 (Fed. Cir. 1995)(holding that “Rockwell . . . anticipates claim 4, even if it does not specifically disclose simultaneous monitoring of the output points, if simultaneous or parallel monitoring is within the knowledge of a skilled artisan”).” slip op. at 35

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

    “As Petitioner also argues and as summarized above, the Petition “provide[s] a detailed explanation of how Koyanagi and Alexander would have been combined to disclose each limitation of the Challenged Claims and why a POSITA would have been motivated to combine them––‘to create a 3D reconfigurable processor module with improved performance and areaefficiency.’” Reply 16 (quoting Pet. 17). By way of example, Petitioner’s annotated Figure 1M, which represents combined teachings of Koyanagi and Alexander, shows how to connect the dies together using conductive vias as challenged claim 1 requires. Petitioner also provides persuasive detail with respect to the remaining challenged claims at issue in this section (i.e., claims 4, 5, 8, 10, 13–15). See Pet. 31–46. By teaching similar stacking techniques for similar circuits including the use of conductive vias with logic dies including FPGAs, memory, and microprocessors, Koyanagi and Alexander collectively evidence a reasonable expectation of success without undue experimentation in arriving at the claimed invention. See Otsuka Pharm. Co., v. Sandoz, Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012) (“The inventor's own path itself never leads to a conclusion of obviousness; that is hindsight. What matters is the path that the person of ordinary skill in the art would have followed, as evidenced by the pertinent prior art.”). In other words, Petitioner shows that the claimed invention involves a routine combination of familiar elements to yield predictable results, namely combining Alexander’s known 2D-FPGA die with Koyanagi’s similar die stack, or simply substituting Alexander’s known 2D-FPGA die in place of a similar DRAM memory die in the die stack of Koyanagi, with the coupled circuits functioning with processing speed gains and other benefits as expected. See Pet. 27–29; Reply 14 (citing KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”)).” slip op. at 42

  Patent outcomesUS 7,282,951 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,282,951
• Samsung Electronics Co., Ltd. / Taiwan Semiconductor Manufacturing Co. Ltd. v. Arbor Global Strategies LLCAll claims unpatentable
  PTAB · Nov 24, 2021 · IPR2020-01021 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1, 4, 5, 8, 10, and 13–15 are unpatentable as obvious over Koyanagi and Alexander, and independently over Bertin and Cooke.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Relying on the testimony of Dr. Shanfield, Petitioner contends that [a] person of ordinary skill in the art (“POSITA”) at the time of the alleged invention would have been a person having a Master’s degree in Electrical Engineering, Computer Engineering, or Physics with three to five years of industry experience in integrated circuit design, layout, packaging or fabrication. Ex. 1002 ¶¶ 55–58. A greater level of experience in the relevant field may compensate for less education, and vice versa.” slip op. at 7

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

    “the Board’s preliminary construction only adds ambiguity to the meaning of this term because it requires “a number of vertical contacts that . . . provide contacts on the surface of the memory die,” and further, claim 1 already recites that “‘a second integrated circuit functional element’ has ‘a number of contact points distributed throughout the surfaces of said functional element.’” See id. at 9 (emphasis added). Therefore, Patent Owner offers the following “suggest[ion]”: “To the extent that the Board finds it necessary to mention contacts in the context of the claimed ‘memory array,’ Patent Owner suggests that the Board use the term ‘a number of vertical contacts distributed throughout the surface of and traversing the memory die.’” PO Resp. 8 (emphasis added). For reasons discussed further below and in the Institution Decision, the record, including the specification, supports Patent Owner’s suggestion, and we determine that Patent Owner’s claim construction suggestion is materially the same as the preliminary claim construction set forth in the Institution Decision. See, e.g., Ex. 1001, 2:41–44 (“[S]ince these differing die do not require wire bonding to interconnect, it is now also possible to place interconnect pads throughout the total area of the various die rather than just around their periphery.”) (emphasis added); Inst. Dec. 24–25. slip op. at 10

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

    “These claim construction arguments that rely on “buffer cells” fail for the reasons noted above, the challenged claims do not require buffer cells. See supra § II.C (Claim Construction). As summarized above, the ’951 patent describes in its abstract and other places, including in reference to Figure 4, providing accelerated data transfers and reconfiguration without buffer cells by using numerous short vias to connect circuits in the stacked dies. See id. As outlined above, Petitioner provides ample motivation supported by the record as to “how and why” an artisan of ordinary skill would have combined the stacked die features of Koyanagi with the similar features of Alexander, to include the well-known FGPA, and it shows how the vertical interconnections employed in both references track the disclosed invention to obtain the claimed acceleration. See, e.g., Pet. 29 (annotating Koyanagi’s Figure 1). Wiring similar well-known circuits with short conductive vias instead of long conventional conductors would have been obvious and well-within the ordinary skill of an artisan, motivated by many reasons (for example, speed/bandwidth gains, compactness, power consumption, FPGA design flexibility) as the Petition shows and as Koyanagi and Alexander suggest as discussed above. See, e.g., Ex. 1006, Abstract (describing a “fabrication technology” and “expected manufacturing yield”), 1 (describing “10,000 solder bumps” “to establish the vertical interconnections” and “enabling electrical interconnections between the two sides of the die,” by “adapting multi-chip module (MCM) fabrication technology”); Ex. 1007, 17 (similarly describing MCM technology and using 10,000 (105) “interconnections per chip” to make 3D MCMs “fabricated using our new integration technology”), Fig. 6 (showing “Fabrication sequence of 3D LSI”).” slip op. at 37

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “However, as Petitioner argues and as Dr. Chakrabarty confirms, using many short vertical conductive vias (e.g., TSVs) versus long conductive runs “reduces power consumption and improves heat removal (because TSVs also serve as heat pipes).” Reply 17 (citing Ex. 1007, 17). In other words, Dr. Chakrabarty acknowledges that [w]hat Koyanagi says is actually obvious to anybody who is skilled in the art. Anybody who is skilled in the art would know that via is conductive. It is a conductor for both electricity and for heat. And therefore, if you have lots of vias, you’re going to take out the heat. Ex. 1035, 256:9–15 (emphasis added); see Reply 17 (partially quoting Ex. 1035, 256:9–15). Therefore, as Petitioner persuasively argues, rather than ignoring thermal issues or deterring a person of skill in the art from combining Koyanagi and Alexander, “a POSITA would have been motivated to find a solution to the alleged thermal issues, and would have recognized that a large number of 3D interconnections between dies contribute to such a solution.” See Reply 21 (citing Ex. 1030 ¶ 53).” slip op. at 50

  Patent outcomesUS 7,282,951 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,282,951
• Samsung Electronics Co., Ltd. / Taiwan Semiconductor Manufacturing Co. Ltd. v. Arbor Global Strategies LLCAll claims unpatentable
  PTAB · Nov 24, 2021 · IPR2021-00393 · APJ Sharon Fenick · IPR · Final written decision

  Claims 13, 14, 16–23, and 25–30 are unpatentable as obvious over Koyanagi and Cooke and over Bertin and Cooke.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Relying on the testimony of Dr. Shanfield, Petitioner contends that [a] person of ordinary skill in the art (“POSITA”) at the time of the ’226 Patent would have been a person having a Master’s degree in Electrical Engineering, Computer Engineering, or Physics with three to five years of industry experience in integrated circuit design, layout, packaging or fabrication. Ex. 1002 ¶¶ 45–48. A greater level of experience in the relevant field may compensate for less education, and vice versa.” 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

    “13.4 in claim 13) and “means for updating the plurality of configuration logic cells within one clock cycle” (limitation 22.4 in claim 22) are means-plus-function limitations and should be construed as per 35 U.S.C. § 112, ¶ 6. Pet. 9; PO Resp. 6–7. Both of these limitations listed above recite “means” and further recite a function, thus creating a presumption that 35 U.S.C. § 112, ¶ 6 applies. See 35 U.S.C. § 112, ¶ 6 (“An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”); see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc in relevant part) (quoting Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703 (Fed. Cir. 1998)) (holding that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies”). We agree with the parties that these limitations are means-plus-function limitations subject to 35 U.S.C. § 112, ¶ 6.” slip op. at 9

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

    “Patent Owner, in focusing on this portion of the ’226 patent disclosure, does not adequately explain why buffer cells and configuration memory cells must be included in the proper construction of “wide configuration data port,” and seeks to import a functional description of the use of a wide configuration data port (“that allows parallel updating of logic cells in a programmable array through use of buffer cells”) into the claim construction. PO Resp. 11–14; PO Sur-reply 2–4. While the discussion in the ’226 patent describes an example of a wide configuration data port used in a specific way that aligns with Patent Owner’s proposal (Ex. 1001, 4:45– 59), other examples of the use of a wide configuration data port are included (id. at 4:59–65), and therefore we do not agree that one of ordinary skill would understand this use to be part of the construction of the term. We agree with Petitioner that the proper construction of the term does not require buffer cells to be specifically described. See Pet. Reply 6–9. Rather, we note that the specification of the ’226 patent contrasts loading of data to an FPGA in a byte serial fashion through a narrow port, which “results in [] long reconfiguration times,” with the use of a wide configuration data port, and therefore we determine that one of ordinary skill would understand the wide configuration data port, in contrast to the byte serial “relatively narrow” port, to include parallel connections between cells in the dies. See Ex. 1001, 4:3–9. This additionally is consistent with certain arguments by Patent Owner, for example in the Patent Owner’s Response, which opens with a discussion of the “inventive” processor’s arrangement of die-area contacts, such as through-silicon vias, “into a wide configuration data port” and we find that description more consistent with the proper construction of this term. PO Resp. 1–2; see also id. at 8 (“[T]he ’226 Patent specifically identifies that the wide configuration data port reconfigures both a programmable array and/or logic cells in one clock cycle because it can communicate with many cells (which form an ‘array’) in parallel, and is therefore considered ‘wide.’”)” slip op. at 14

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for petitioner

    “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). Conversely, structural features that do not actually perform the recited function do not constitute corresponding structure and thus do not serve as claim limitations. Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1308–09, (Fed. Cir. 1998); see B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997) (“[S]tructure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.”). Given our construction of wide configuration data port, Patent Owner’s argument that the corresponding structure for this limitation must require that buffer cells on one die element are connected in parallel to cells on another die element is based on the description of the use of buffer cells as used in the updating of the FPGA while it is in operation. PO Supp. Br. 3 (citing Ex. 1001, 4:50–54, Fig. 5). However, we note that this description is followed by the disclosure that “[t]he buffer cells 88 are preferably a portion of the memory die 66.” Ex. 1001, 4:50–54. It does not appear, therefore, that buffer cells are always a portion of the memory die, or are required when the FPGA is not in operation, and thus we decline to require in the corresponding structure that they be specified to be on a specific separate die element. Rather, we find that what is disclosed as actually performing the recited function of “reconfiguring the programmable array within one clock cycle” is “a wide configuration data port and contact points formed throughout the area of the first integrated circuit die element and another integrated circuit die element.” The support for this is found in the ’266 patent’s comparison of the long reconfiguration times through a narrow port (Ex. 1001, 4:3–9) with the time to reconfigure through a wide configuration data port with a significantly increased number of connections (id. at 4:45– 65), and the implementation of this in a module that has multiple dies “which have a number of corresponding contact points, or holes, 70 formed throughout the area of the [die] package” (id. at 4:9–20). The use of a wide configuration data port, as per our construction, implicates two die elements. This was reflected in our preliminary claim construction, for which the corresponding structure described “contact points distributed through the slip op. at 18

  Patent outcomesUS 6,781,226 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,781,226
• Samsung Electronics Co., Ltd. / Taiwan Semiconductor Manufacturing Co. Ltd. v. Arbor Global Strategies LLCAll claims unpatentable
  PTAB · Nov 24, 2021 · IPR2020-01022 · APJ Sharon Fenick · IPR · Final written decision

  Claims 13, 14, 16–23, and 25–30 are unpatentable as obvious over Koyanagi and Cooke, and over Bertin and Cooke.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Relying on the testimony of Dr. Shanfield, Petitioner contends that [a] person of ordinary skill in the art (“POSITA”) at the time of the ’226 Patent would have been a person having a Master’s degree in Electrical Engineering, Computer Engineering, or Physics with three to five years of industry experience in integrated circuit design, layout, packaging or fabrication. Ex. 1002 ¶¶ 45–48. A greater level of experience in the relevant field may compensate for less education, and vice versa. Pet. 7–8. Patent Owner asserts that [a] person of ordinary skill in the art (“POSITA”) around December 5, 2001 (the earliest effective filing date of the ’226 6 No argument or evidence regarding secondary considerations has been presented in this proceeding. Patent) would have had a Bachelor’s degree in Electrical Engineering or a related field, and either (1) two or more years of industry experience; and/or (2) an advanced degree in Electrical Engineering or related field. PO Resp. 5–6 (citing Ex. 2009 ¶¶ 31–34). As we did in the Decision on Institution, we adopt Petitioner’s proposed level of ordinary skill in the art, which comports with the teachings of the ’226 patent and the asserted prior art. See Dec. on Inst. 18–19. Patent Owner’s proposed level is lower but it overlaps with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level, the outcome would remain the same. C.” 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

    “Both of these limitations listed above recite “means” and further recite a function, thus creating a presumption that 35 U.S.C. § 112, ¶ 6 applies. See 35 U.S.C. § 112, ¶ 6 (“An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”); see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc in relevant part) (quoting Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703 (Fed. Cir. 1998)) (holding that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies”). We agree with the parties that these limitations are means-plus-function limitations subject to 35 U.S.C. § 112, ¶ 6.” slip op. at 9

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

    “Patent Owner, in focusing on this portion of the ’226 patent disclosure, does not adequately explain why buffer cells and configuration memory cells must be included in the proper construction of “wide configuration data port,” and seeks to import a functional description of the use of a wide configuration data port (“that allows parallel updating of logic cells in a programmable array through use of buffer cells”) into the claim construction. PO Resp. 11–14; PO Sur-reply 2–4. While the discussion in the ’226 patent describes an example of a wide configuration data port used in a specific way that aligns with Patent Owner’s proposal (Ex. 1001, 4:45– 59), other examples of the use of a wide configuration data port are included (id. at 4:59–65), and therefore we do not agree that one of ordinary skill would understand this use to be part of the construction of the term. We agree with Petitioner that the proper construction of the term does not require buffer cells to be specifically described. See Pet. Reply 6–9. Rather, we note that the specification of the ’226 patent contrasts loading of data to an FPGA in a byte serial fashion through a narrow port, which “results in [] long reconfiguration times,” with the use of a wide configuration data port, and therefore we determine that one of ordinary skill would understand the wide configuration data port, in contrast to the byte serial “relatively narrow” port, to include parallel connections between cells in the dies. See Ex. 1001, 4:3–9. This additionally is consistent with certain arguments by Patent Owner, for example in the Patent Owner’s Response, which opens with a discussion of the “inventive” processor’s arrangement of die-area contacts, such as through-silicon vias, “into a wide configuration data port” and we find that description more consistent with the proper construction of this term. PO Resp. 1–2; see also id. at 8 (“[T]he ’226 Patent specifically identifies that the wide configuration data port reconfigures both a programmable array and/or logic cells in one clock cycle because it can communicate with many cells (which form an ‘array’) in parallel, and is therefore considered ‘wide.’”)” slip op. at 14

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for petitioner

    “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). Conversely, structural features that do not actually perform the recited function do not constitute corresponding structure and thus do not serve as claim limitations. Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1308–09, (Fed. Cir. 1998); see B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997) (“[S]tructure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.”). Given our construction of wide configuration data port, Patent Owner’s argument that the corresponding structure for this limitation must require that buffer cells on one die element are connected in parallel to cells on another die element is based on the description of the use of buffer cells as used in the updating of the FPGA while it is in operation. PO Supp. Br. 3 (citing Ex. 1001, 4:50–54, Fig. 5). However, we note that this description is followed by the disclosure that “[t]he buffer cells 88 are preferably a portion of the memory die 66.” Ex. 1001, 4:50–54. It does not appear, therefore, that buffer cells are always a portion of the memory die, or are required when the FPGA is not in operation, and thus we decline to require in the corresponding structure that they be specified to be on a specific separate die element. Rather, we find that what is disclosed as actually performing the recited function of “reconfiguring the programmable array within one clock cycle” is “a wide configuration data port and contact points formed throughout the area of the first integrated circuit die element and another integrated circuit die element.” The support for this is found in the ’266 patent’s comparison of the long reconfiguration times through a narrow port (Ex. 1001, 4:3–9) with the time to reconfigure through a wide configuration data port with a significantly increased number of connections (id. at 4:45– 65), and the implementation of this in a module that has multiple dies “which have a number of corresponding contact points, or holes, 70 formed throughout the area of the [die] package” (id. at 4:9–20). The use of a wide configuration data port, as per our construction, implicates two die elements. This was reflected in our preliminary claim construction, for which the corresponding structure described “contact points distributed through the slip op. at 18

  Patent outcomesUS 6,781,226 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,781,226
• Unified Patents Inc. v. KCG Technologies LLCAll claims unpatentable
  PTAB · Feb 10, 2021 · IPR2019-01536 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 1–13 are unpatentable as obvious; the revised motion to amend is denied because proposed substitute claims 14–26 are unpatentable as obvious or indefinite.

  RulingsFinal written decision

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

    “We agree with Petitioner. Proposed substitute claim 24 recites “the handheld device” without antecedent basis. This lack of antecedent basis renders proposed substitute claim 24 indefinite, as we noted in our Preliminary Guidance. Pet. Opp. to RMTA 25; Prelim. Guidance 8 (“Proposed substitute claim 24 also recites ‘the handheld device’ and also suffers from the lack of antecedent basis). Despite having the opportunity to correct its error and amend proposed substitute dependent claim 24 when independent claim 14 was amended to remove the recitation of “a handheld device,” Patent Owner did not do so in its Contingent Revised Motion to Amend. RMTA 31. Proposed substitute claim 24 is indefinite because the claim “fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014); see USPTO Memorandum on the Approach to Indefiniteness Under 35 U.S.C. § 112 in AIA Post-Grant Proceedings (Jan. 6, 2021)13; see MPEP 2173.05(e) (9th ed., Rev. 08.2017, June 2020). This is because “the handheld device” is only recited in proposed substitute claim 24, and the proposed substitute claim fails to inform one skilled in the art the scope of invention related to synchronizing “data on the handheld device” “in the virtual smart phone.” Because proposed substitute claims 25 and 26 depend from proposed substitute claim 24, we similarly agree with Petitioner that claims 25 and 26 also are indefinite for lacking an antecedent basis for the term “handheld device.” Pet. Opp. to RMTA 25. Accordingly, we determine Petitioner has demonstrated by a preponderance of the evidence that proposed substitute claims 24–26 are unpatentable under 35 U.S.C. § 112 as indefinite.” slip op. at 40

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “Whether to treat a preamble term as a claim limitation is determined on the facts of each case in light of the claim as a whole and the invention described in the patent.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (quoting Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 831 (Fed. Cir. 2003) (internal quotation marks omitted). “Absent clear reliance on the preamble in the prosecution history, or in situations where it is necessary to provide antecedent basis for the body of the claim, the preamble generally is not limiting.” Symantec Corp. v. Computer Assoc. Int’l, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (internal quotation marks omitted). When the limitations in the body of the claim rely upon or derive essential structure from the preamble, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). A claim preamble also is limiting if the preamble is “necessary to give life, meaning, and vitality” to the claim. Pitney Bowes, Inc., 182 F.3d at 1305. We disagree with Patent Owner. Specifically, we do not agree that limitations in the body of the claims require the preamble to serve as an antecedent basis nor do they derive essential structure from the preamble. Rather, all of the elements recited in the body of claim 1 comprise a “virtual smart phone.” That is, we do not discern, and Patent Owner fails to persuasively point us to, any structure imparted by the preamble’s recitation of a “virtual smart phone.” See Pet. Reply 1–2. We similarly do not agree that the without the term “virtual smart phone” there would be no understanding of the “emulating” or “handheld device” limitations. Rather, the recited “software application executing on the processor” limitation provides the structure and meaning for the “emulating” of the “handheld device” features. Furthermore, we agree with the Petitioner that there is no evidence in the record that the prosecution history requires that the preamble is limiting, and the claims were distinguished during prosecution based on the recitation of a “virtual” smart phone. Id. at 2–3. Accordingly, we do not agree with Patent Owner that the preamble is limiting. slip op. at 7

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

    “on the process to . . . emulate features of a handheld device.” Ex. 1001, 12:58–60 (emphasis added). Patent Owner argues that the term “‘emulate’ has a meaning in the art that is common and understood to mean ‘to imitate.’” PO Resp. 18. Patent Owner provides a dictionary definition to support its contention. Ex. 2004 (defining “emulate” as “to imitate in an effort to equal or surpass”). Patent Owner contends the use of “emulate” in claim 1 comports with its commonly understood meaning as “to imitate,” as does the use of the term “emulate” in the written description. Pet. 18–20 (citing Ex. 1001, 1:66–2:3, 2:6–3:5, 12:54–13:2 (claim 1)). Petitioner argues that the term “emulate” should be given its plain and ordinary meaning and does not contest Patent Owner’s construction of the term “emulate” as “to imitate.” Pet. 6–7; Pet. Reply 7. Petitioner, however, contests Patent Owner’s application of that construction to the asserted prior art. Pet. Reply 4–7 (citing Ex. 1034 ¶¶ 24–26). Petitioner specifically argues that Patent Owner implies that “(1) the imitation must be an exact duplicate in display and manner of input . . . or (2) the imitation relates only to the display and touch screen aspects.” Pet. Reply 4–5. In support of its position that Patent Owner’s interpretation of “to imitate” improperly narrows the meaning of “emulate,” Petitioner contends the written description discloses “less than full replication as emulation” and “controlling the handheld device th[r]ough control of a projected image using a variety of control input mechanisms provides emulation.” Pet. Reply 5–6 (citing Ex. 1001, 2:2–5, 3:57–61, 4:63–66, 6:24–42). Petitioner also notes that the dictionary definition Patent Owner proffered indicates that an exact duplication is not required. Pet. Reply 7 (“The complete definition of emulate [as] ‘to imitate in an effort to equal or surpass.’ Ex. 1004, 3”). We conclude that a preponderance of evidence supports the construction of the term “emulate” to mean “to imitate,” without any further restriction such as exact duplication or only display or touch screen aspects. Accordingly, we construe the term “emulate” as “to imitate.”” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art at or before the priority date of the ’955 patent “would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, physics, or a related subject, and two to three years of work experience in the field of automotive information systems.” Pet. 6 (citing Ex. 1002 ¶¶ 38–39); Ex. 1034 ¶ 14 (Petitioner’s expert reiterating the same level of ordinary skill in the art). Patent Owner does not propose an ordinary level of skill in the art. We agree with and adopt the level of ordinary skill in the art as articulated by Petitioner.” slip op. at 10

  Patent outcomesUS 9,671,955 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,671,955
• Precision Planting LLC / Agco Corporation v. Deere & CompanyNo claims unpatentable
  PTAB · Dec 2, 2020 · IPR2019-01048 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–20 were not proven unpatentable over Hedderwick and Koning because Petitioner did not establish a persuasive motivation to combine the references as proposed.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Based on the prior art, Dr. Glancey’s opinion testimony and analysis, and providing some, but minimal, weight to Dr. Taylor’s opinion testimony, we determine that the evidence favors Patent Owner’s proposed level of skill, primarily based on Dr. Glancey’s analysis and reasons summarized above. Accordingly, we determine that a person of ordinary skill in a technology pertinent to the challenged claims would have had an undergraduate degree in mechanical engineering, agricultural engineering, or similar field, and two years of experience designing agricultural products or related machinery, or five years of experience designing agricultural products or related machinery, without a four-year undergraduate engineering degree. A recipient of other academic degrees may qualify as a person of ordinary skill if they have taken coursework or have experience in the pertinent technology. Additional education could offset less work experience; additional work experience could offset less education or coursework.” slip op. at 18

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

    “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that an explicit construction of the claims is not necessary for the purposes of determining whether the challenged claims are not patentable. slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “sufficiently persuasive evidence, even in combination, to establish why a person of ordinary skill would have modified Hedderwick by (1) selectively gleaning only a portion of Koning’s conveying system, i.e., belt 44 with bristles 45, (2) selectively excluding Koning’s belt 23, and then (3) modifying Koning’s brush belt by reversing its orientation so that it carries seeds deposited into the bristles, as in the ’906 patent, rather than covering and guiding seeds carried by a separate and distinct conveyor belt, as in Koning. See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (finding an absence of a motivation to reverse parts to an orientation that was “totally backwards” from what one of skill in the art would even attempt). Petitioner’s arguments do not acknowledge the different function of Koning’s brush belt, or explain why a person of ordinary skill would have been motivated to adapt Koning’s brush belt to such a use and reasonably expect success in doing so. We determine Petitioner fails to meet its burden of providing a sufficiently persuasive explanation or reason for concluding that one of skill in the art would have combined these particular references to produce the claimed invention. “Without any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias.” Metalcraft v. Toro, 848 F.3d at 1367. “[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.” Id.” slip op. at 30

  • ExcludeOther

    “II. MOTION TO EXCLUDE Petitioner and Patent Owner each move to exclude a substantial number of exhibits on a number of different evidentiary grounds. See Pet. Mot. Excl.; PO Mot. Exclude. As our analysis does not refer to any of those exhibits, we dismiss each motion as moot.” slip op. at 12

  Patent outcomesUS 9,686,906 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,686,906
• Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentable
  PTAB · Nov 30, 2020 · IPR2019-01044 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1–8 were not shown unpatentable under § 103 over Hedderwick, Koning, and Benac because Petitioner did not establish motivation to combine or a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedPetitioner expert discountedDecided for patent owner

    “have had either (1) a bachelor’s degree plus four years of experience in mechanical engineering, agricultural engineering, or a related field or (2) a master’s degree plus two years of experience in mechanical engineering, agricultural engineering, or a related field.” Pet. 42 (citing Ex. 1002 ¶¶ 19– 20). In the testimony the Petition cites in support of that proposal, Mr. Prairie lists factors that are typically considered in assessing the level of ordinary skill in the art, and then states “[b]ased on these factors together with my experience and expertise,” his opinion of the level of ordinary skill in the art is the same as Petitioner proposes. Ex. 1002 ¶¶ 19–20. This conclusory testimony is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 12

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

    “construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).6 That standard “includ[es] construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). V. OBVIOUSNESS OVER HEDDERWICK, KONING, AND BENAC” slip op. at 14

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Patent Owner’s expert, Dr. Glancey, explains that [i]f a wheel is used to load and place seeds within a moving belt with brush hairs, the wheel must be able to disengage from seeds while the seeds remain in between brush hairs. If the wheel maintains contact with the seed after the seed has moved into the brush hairs, the wheel will continue to apply force to the seed and eject or remove the seed from the profile of the brush hairs . . . . Ex. 2200 ¶ 223. Dr. Glancey testifies, credibly, that in Petitioner’s combination, seeds would have been rejected from the belt because, as the paddle wheel rotates, seeds “would be scooped through the belt.” Id. ¶ 225.” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “way the references use endless members in the form of brush belts and paddle wheels, versus the way Petitioner uses those components in the proposed combination. Contrary to Petitioner’s and Mr. Prairie’s assertions, the proposed combination does not merely apply known techniques to a known device, because none of the cited references use brush belts and paddle wheels in the manner Petitioner proposes. As discussed in greater detail below, Benac teaches that a paddle wheel can be used to ensure that seeds jammed in vacuum holes are released reliably, and then dropped to the ground. Benac does not address brush belts as an endless member and, therefore, does not teach that paddle wheels can be used to guide seeds into the bristles of a brush belt, as Petitioner proposes. See Pet. 64. And Koning does not teach a brush belt that captures seeds released from above, as Petitioner and Mr. Prairie propose. See Pet. 61–62; Ex. 1002 ¶ 104; Ex. 2193, 190:10–191:3; Ex. 2263, 167:21–170:9. Rather, Koning’s brush belt maintains the relative position of potatoes lying on a conveying surface by holding them from above while the conveyor moves them to the furrow. Ex. 1004, 3:16–24, 5:3–14, Fig. 4. Petitioner’s arguments do not adequately account for these differences between the references’ use of a brush belt as an endless member and paddle wheels versus the proposed combination. Moreover, Patent Owner points out problems ordinarily skilled artisans would have encountered in attempting to combine the references as Petitioner proposes. Petitioner does not persuasively explain how those issues could have been overcome, and instead simply asserts, essentially, that ordinarily skilled artisans could have figured it out. See, e.g., Ex. 1135 ¶ 80. It is Petitioner’s burden to establish that ordinarily skilled artisans would have been motivated to combine the success in doing so. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Petitioner’s arguments and evidence do not carry that burden.” slip op. at 28

  Patent outcomesUS 8,813,663 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,813,663
• Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentable
  PTAB · Nov 30, 2020 · IPR2019-01046 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1 and 3 were not shown unpatentable over Hedderwick, Koning, and Yamahata under § 103 because Petitioner did not establish motivation to combine or a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Based on the evidence and arguments of record, we determine that the evidence favors Patent Owner’s proposed level of skill. Our determination is primarily based on Dr. Glancey’s analysis and reasons summarized above, as well as the prior art of record and the sophistication of the technology of the ’199 patent. We have considered Mr. Prairie’s opinion, but we give that testimony minimal weight due to the lack of supporting explanation. Accordingly, we adopt Patent Owner’s proposed level of ordinary skill in the art. Specifically, we determine that a person of ordinary skill in agricultural engineering, or a similar field, and two years of experience designing agricultural products or related machinery. Alternatively, a person of ordinary skill in the art would have had five years of experience designing agricultural products or related machinery, without a four-year undergraduate engineering degree.” slip op. at 13

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

    “IV. CLAIM CONSTRUCTION “In an inter partes review proceeding, a claim of a patent . . . shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).7 That standard “includ[es] construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent” slip op. at 14

  • BurdenNot shown unpatentable

    “Ex. 1135 ¶ 51. Yet it is Petitioner’s burden to show motivation and reasonable expectation of success for the proposed combination, not Patent Owner’s burden to show that the prior art demonstrates the futility of the proposed combination. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Here, Petitioner’s affirmative showing on motivation and reasonable expectation of success for using Koning’s brush belt in the proposed combination is unpersuasive for the reasons discussed above. And Patent Owner’s evidence of difficulties an ordinarily skilled artisan would have expected to encounter in that proposal serves to highlight the issues that Petitioner’s showing ignores. Petitioner additionally contends that Patent Owner’s arguments are based on the erroneous premise that an ordinarily skilled artisan must be able to physically combine the references. See Pet. Reply 7 (citing In re Mouttet, 686 F.3d 1322, 1332–33 (Fed. Cir. 2012)). We disagree. Patent Owner’s arguments, summarized above, simply point out that an ordinarily skilled artisan would not have expected success in combining the references’ teachings in the way Petitioner proposes. Motivation to combine and reasonable expectation of success are properly assessed with reference to the combination as Petitioner has framed it. The Federal Circuit has explained that doing so is not inconsistent with Mouttet. See Samsung, 925 F.3d at 1382–83 (“We will not fault the Board for analyzing Petitioners’ obviousness grounds in the way presented in the Petition.”).” slip op. at 34

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner’s and Mr. Prairie’s analysis does not acknowledge, much less bridge, the gap between Koning’s use of a brush belt to hold potatoes from above as they lie on a conveying surface, versus the brush belt’s use in above.10 During his deposition, Mr. Prairie resisted agreeing that the potatoes are lying on the conveyor in Koning, testifying that he takes from Koning’s description that “they are captured within the belt with brush hairs. And that there is some weight that’s along the conveying member 23.” Ex. 2193, 96:24–99:25. Mr. Prairie testified that he “do[es]n’t believe the brush hairs support the full weight of the potatoes,” but that Koning did not provide him sufficient information to answer whether the conveying member supports the majority of the weight of the potatoes. Id. at 106:22–107:21. In our view, it is clear from Koning’s description that the potatoes lie on the conveyor and the purpose of the brush belt is to maintain their position relative to each other while they are moved by the conveyor. Ex. 1004, 3:16–24, 5:3–14, Fig. 4; see also Ex. 2205 ¶¶ 140–141 (Patent Owner’s expert, Dr. Glancey, testifying that a simple mechanical analysis shows that in Koning, about 87% of the potatoes’ weight is supported by the conveying member). Mr. Prairie’s refusal to acknowledge the differences between the brush belt’s function in Koning versus the proposed combination undermines the credibility of his testimony that the proposed combination would have been a simple application of a known technique to a known device. 10 See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (noting expert testimony that supported the absence of a motivation to combine: “[I]f I can equate this one to kind of a simple analogy, if you’re trying to build a piece of furniture. What’s a typical thing? You put on a piece of wood. You take a nail, and you hit the nail with a hammer. In control terms, what Mr. Phipps is suggesting is that you put the hammer on the workbench, pick up the piece of furniture and bash the piece of furniture onto the hammer. It’s totally backwards from what I believe one of skill in the art would even attempt . . . .”). have been simple for an ordinarily skilled artisan to adapt Koning’s brush belt for use in the proposed combination, where seeds are deposited onto the brush belt from above—is further undermined by his testimony that he “can’t recall a time where I’ve seen a seed being dropped into a brush belt.” Ex. 2193, 113:5–9; see also Ex. 2263, 81:2–12 (“Q. And you never attempted to drop a seed onto a moving brush belt to see whether that would be inserted into the brush belt, correct? A. As I stated, for the purposes of this case, I did not do any physical experimentation with a moving brush belt as I didn’t feel it was necessary. The prior art discloses sufficient information.”) (objection omitted). Mr. Prairie has “had some industrial design projects where we’ve had to utilize brushes for various applications,” but he “ha[s] not used a brush belt to convey seed.” Ex. 2194, 297:6–16. Mr. Prairie testified that “prior to writing this declaration, brush belt technology was not a specific area that I study, that I was researching.” Ex. 2263, 79:6–9. Indeed, during his initial deposition in this case, the only specific example of a moving brush belt Mr. Prairie could recall seeing was Patent Owner’s ExactEmerge product. Ex. 2193, 108:6–110:10. The basis for Mr. Prairie’s opinion, that a seed would be expected to enter a moving brush belt in the proposed combination, appears to only be Koning itself. Ex. 1002 ¶¶ 79–81; Ex. 2193, 116:12–19, 118:7–23; Ex. 2263, 159:5–160:2. When asked at his deposition, Mr. Prairie did not explain any other engineering analysis he performed to make that determination. Ex. 2193, 114:23–117:12. Mr. Prairie testified that he “did not operate a brush belt for this declaration because [he] didn’t feel it was necessary to make my assessments” and he “did not do study or experimentation on a brush belt as I did not feel it was necessary.” unpersuasive because, as discussed above, Koning does not teach using a brush belt to receive and convey seeds that have been dropped onto it from above. Mr. Prairie does not account for that difference by explaining why an ordinarily skilled artisan would expect Koning’s brush belt to effectively capture and carry seeds dropped from above, as in the proposed combination.” slip op. at 26

  Patent outcomesUS 9,480,199 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,480,199

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.