- PTAB · May 15, 2023 · IPR2023-00072 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on all challenged claims, finding a reasonable likelihood that Micron would prevail on its asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the information presented in the Petition, Preliminary Response, Reply, and Sur-reply, we determine that the information presented establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’806 patent, based on all grounds raised in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“words” and because “the numerous (8) independent claims recite two very different interconnection techniques for stacked multichip modules.” Id. Petitioner represents that The current Petition challenges independent claims 1, 2, 23, 24, and 30 in addition to dependent claims 6-7, 9-10, 12-13, 14-19, 25-26, and 32—all of which recite a wire bond interconnection technique. The first Petition (IPR 2023-00071) seeks cancellation of independent claims 3, 27, and 31 in addition to dependent claims 4-5, 8, 11, 20-22, 28, 29, and 33—all of which recite using a combination of flip-chip and wire bond interconnection techniques for stacked multichip modules. Id. at 2–3. Petitioner further states that “each claim is challenged only once.” Id. at 3. Patent Owner does not dispute Petitioner’s contentions that two petitions are necessary. See generally Prelim. Resp. On the present record, we see no reason to exercise our discretion to deny institution of either petition on the basis of Petitioner filing two petitions to address the large number of claims included in the ’806 patent. See Patent Trial and Appeal Board Consolidated Trial Practice Guide, 59–60 (Nov. 2019)2 (in determining whether multiple petitions are necessary, the Board may consider petitioner’s explanations regarding “the differences between the petitions, why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).”).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s declarant, Mr. Elenius, states that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical, mechanical or materials engineering and two to three years of experience in the design or development of semiconductor manufacturing, or the equivalent.” Ex. 2001 ¶ 32. Mr. Elenius further states that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Although the proposals for the level of skill in the art by the parties’ declarants have differences in wording, we do not find the proposals to be materially different. For purposes of this Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Thus, although we do not find the parties’ proposals for the level of skill in the art to be materially different, for purposes of this Decision, based on our review of the ’806 patent, the types of problems and solutions described in the ’806 patent, and cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner asserts that a person of ordinary skill in the art reading the ’806 patent would understand the claim term “electrode section” recited in the challenged claims to mean “electrical terminals, usually called bond pads, that are part of the substrate’s wiring layer.” Pet. 16–17 (citing Ex. 1002 ¶¶ 103–107). At this time, Patent Owner does not dispute Petitioner’s proposed construction of “electrode section.” See generally Prelim. Resp. For purposes of this Decision, we need not construe the term “electrode section” because the parties do not identify any material issue that would turn on the construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only 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). Patent Owner contends that the term “adhesion layer” recited in the challenged independent claims should be construed to mean “a pre-formed layer that is adhered.” Prelim. Resp. 13–15. Patent Owner argues that Ball, Fogal, and Mostafazadeh do not teach “adhesion layer” under Patent Owner’s proposed construction of the term. See, e.g., id. at 16–24. Although Patent Owner’s argument raises an issue of claim construction, we need not expressly construe “adhesion layer” for purposes of this Decision because, as discussed in Section III.D.5 below, Petitioner shows sufficiently that the asserted combination of Ball, Fogal, Mostafazadeh, and the knowledge of a skilled artisan teaches or suggests “adhesion layer” even under Patent Owner’s proposed claim construction. See Vivid Techs., 200 F.3d at 803.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham - PTAB · May 15, 2023 · IPR2023-00071 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on claims 3–5, 8, 11, 20–22, 27, 28, 31, and 33 on all petition grounds, finding a reasonable likelihood of unpatentability under the asserted obviousness combinations.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“On the present record, we see no reason to exercise our discretion to deny institution of either petition on the basis of Petitioner filing two petitions to address the large number of claims included in the ’806 patent. See Patent Trial and Appeal Board Consolidated Trial Practice Guide, 59–60 (Nov. 2019)3 (in determining whether multiple petitions are necessary, the Board may consider petitioner’s explanations regarding “the differences between the petitions, why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).”).” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the information presented in the Petition, Preliminary Response, Reply, and Sur-reply, we determine that the information presented establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’806 patent, based on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although the proposals for the level of skill in the art by the parties’ declarants have differences in wording, we do not find the proposals to be materially different. For purposes of this Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Thus, although we do not find the parties’ proposals for the level of skill in the art to be materially different, for purposes of this Decision, based on our review of the ’806 patent, the types of problems and solutions described in the ’806 patent, and cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Considering the claim language of claim 3 as a whole, see Hockerson- Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) (“Proper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.”), we agree with Petitioner that claim 3 does not recite when or how the “adhesion layer” is “adhered to [the first semiconductor chip’s] back surface.” Patent Owner appears to argue that the “first semiconductor chip” with “an adhesion layer adhered to its back surface,” as recited in claim 3, must have been created “in advance,” e.g., by a wafer-level fabrication process, before the chip is mounted in the recited semiconductor device. Patent Owner argues that the patentee recognized that applying a paste or thermo-compression sheet on individual chips during packaging (i.e., mounting of the chips during packaging) caused the “overflow” and “gap” problems. Sur-reply 2 (citing Ex. 1001, 2:16–24, 2:44–46). According to Patent Owner, “the patentee further recognized that merely switching to a pre-formed solid sheet alone would not solve the problem” because using a thermo-compression sheet on an individual chip for mounting during packaging “results in the same problem as using an adhesive due to the inability to place the chip accurately on the thermo-compression sheet.” Id. at 2–3 (citing Ex. 1001, 2:49–56). Thus, Patent Owner argues the ’806 patent proposes a two-fold solution: “Use a preformed solid sheet and attach that sheet to the back surface of the wafer first” during the wafer fabrication process “before cutting and placing the chip” in a multichip package. Id. at 3 (underlined emphases added). Patent Owner asserts, therefore, “a first semiconductor chip having . . . an adhesion layer adhered to its back surface,” as recited in claim 3, must have a pre-formed adhesion layer adhered to its back surface “in advance” before mounting in a multichip package, such as a solid thermo-compression sheet applied to the backside of a wafer during wafer-level fabrication processing before the chips are produced by dicing. Prelim. Resp. 13–14; Sur-reply 2–3. We note, however, that claim 3 does not recite a “wafer,” placing “an adhesion layer on a back surface of a wafer,” or producing semiconductor chips by dicing or cutting the wafer. See Ex. 1001, 14:14–32. Nor does the claim recite any limitation indicating when or how an “adhesion layer” is “adhered to [the first semiconductor chip’s] back surface.” Thus, at least based on the claim language, claim 3 does not require the recited semiconductor chips with an adhesion layer to have been produced “in advance” before being used for mounting in the recited semiconductor device. Nonetheless, for purposes of this Decision, we need not and do not” slip op. at 34
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham - Florida Food Products, LLC v. Kerry Group Services Int’L Ltd.All claims unpatentablePTAB · Apr 26, 2023 · IPR2022-00006 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1–5 are unpatentable as obvious over Voorde and Hara; the Board did not reach the remaining obviousness grounds.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“the invention would have had: a master’s or doctorate degree in food science, biology, chemistry, or a similar field; or a bachelor’s degree in food science, biology, chemistry, or a similar field along with at least 2-3 years of experience in food preservatives generally or more specifically 2-3 years of experience in the chemistry associated with food preservation and nitrates/nitrites [and] would have known that the USDA regulated nitrites for curing meat and would have been able to find these USDA regulations affecting meat products. Pet. 23–34 (citing Ex. 1002 ¶ 48). Kerry’s recitation of the level of ordinary skill in the art is nearly identical. Prelim. Resp. 13–14 (citing Ex. 2001 ¶¶ 43–44). To the extent the parties’ formulations of the level of skill differ, the differences do not appear to be material to any dispute between the parties or any issue of patentability that we must resolve. We determine that the level of ordinary skill the parties propose is consistent with the challenged patent and the asserted art, and adopt that level for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In the Petition, FFP addressed the construction of only one claim phrase, but also submitted that the construction of that phrase does not affect our decision in this case. Pet. 24. Specifically, FFP asked us to adopt a construction that “clarifies that the nitrite results from the added organism reducing the plant nitrate.” Id. at 25. Kerry does not address this construction, and we agree with FFP that construction of that claim phrase has no effect on our decision herein. Thus, we need not adopt it. See Nidec, 868 F.3d at 1017; Vivid Techs., 200 F.3d at 803.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Upon review, we do not believe it is proper to adopt a blanket approach that would assign weight to the entirety of Dr. Baldwin’s 12 In its Sur-Reply, Kerry raises for the first time that, under its definition of the level of skill in the art, Dr. Baldwin is not himself a person of ordinary skill and therefore is not allowed to offer expert testimony from the perspective of a skilled artisan, citing Kyocera Senco Indus. Tools Inc. v. ITC, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022). See Sur-Reply 15 n.1. To the extent that Kerry is seeking to disqualify Dr. Baldwin’s testimony in its entirety under Kyocera, we consider this to be a new argument that differs from Kerry’s initial argument that Dr. Baldwin’s testimony should be afforded little or no weight due to his lack of familiarity with the field of the ’304 patent. Because new arguments made for the first time in sur-reply are not permitted, we will only focus on Kerry’s initial challenge to the testimony of Dr. Baldwin. testimony, regardless of the subject of his particular opinions. It is clear that Dr. Baldwin has expertise in some areas of chemistry, while Dr. Milkowski’s experience is focused on other areas and emphasizes food chemistry. These differences in expertise may impact how we weigh the testimony of both witnesses, but that determination should be made in the context of a specific subject and based on the applicability of each witness’s background to the opinions. Therefore, we decline to adopt Kerry’s proposed approach of giving Dr. Baldwin’s testimony “little to no weight,” and instead will weigh the expertise of both witnesses in evaluating their testimony on specific areas of dispute, if necessary.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Upon review, we find that a person of ordinary skill in the art would have had reason to modify Voorde in the manner FFP suggests. Voorde explicitly discloses the advantages of heating the medium, and there is no disagreement that heating to 50–52°C would have resulted in at least some reduced microbial load, which is all that the claims require.13 Indeed, Voorde describes that as a result of heating to 50–52°C, its medium is “(partially) sterilized.” Ex. 1003, 7. Kerry’s argument that Voorde does not disclose starting with a “sterile medium” (PO Resp. 25) is unavailing; as discussed above, we do not interpret anything in claim 1 or the ’304 patent 13 At oral argument, Kerry raised for the first time a claim construction argument that “heat treating,” as recited in the claims, requires heating to a level in excess of what is required in Voorde, and a person of ordinary skill would have understood the term to refer to sterilization. Tr. 33:4–34:19, 55:3–9. We decline to address this late-arising argument fully, but note that we find that the ’304 patent does not support such a limited interpretation of the term “heat treating.” to require a sterile medium, and Kerry does not direct us to anything in the record that would persuade us otherwise.” slip op. at 18
Patent outcomesUS 11,071,304 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,071,304 - Scientific Design Company, Inc. v. Shell USA, Inc., F/K/A Shell Oil CompanyAll claims unpatentablePTAB · Mar 28, 2023 · IPR2022-00158 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1–28 are unpatentable: claims 1–14 and 17–28 as obvious over Lockemeyer and Liu, and claims 15–16 as obvious over Lockemeyer, Liu, Lockemeyer-II, and Kowaleski.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“contention that a person of ordinary skill in the art “would have held a Bachelor’s or Master’s degree in chemical engineering or a related discipline with five or more years of experience in the catalyst field.” Pet. 11 (citing Ex. 1014 ¶¶ 12–14); Dec. 6. Patent Owner represents that it “does not challenge Petitioner’s . . . POSA definition (Petition, 11).” PO Resp. 19. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Accordingly, we adopt Petitioner’s definition, because it is consistent with the cited prior art. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner proposes a construction for “non-platelet morphology” in claim 27 as “the morphology of the carrier when imaged by scanning electron microscopy at a magnification of 2000, and to the substantial absence in such images of structures having substantially flat surfaces.” Pet. 10–11 (citing Ex. 1001, 5:31–35). Patent Owner represents that it “does not challenge Petitioner’s proposed claim interpretations (Petition, 10–11).” PO Resp. 19. On this record, we determine that no claim terms require express construction. See, e.g., Vivid Techs., 200 F.3d at 803.” slip op. at 7
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We find credible Dr. Haller’s explanation that a person of ordinary skill “would have been motivated to use Liu to direct the pore size distribution, especially ones that are within the ranges taught by Lockemeyer” with “a reasonable expectation of success” (Ex. 1014 ¶¶ 193–197) and would have pursued Lockemeyer’s “invitation to optimize PSD, where Liu’s PSDs show outstanding performance” (Ex. 1038 ¶ 152). With regard to Patent Owner’s arguments, first, we do not find persuasive Patent Owner’s argument that different amounts of silver and promoters in Lockemeyer and Liu’s examples “eviscerate” a motivation to modify Lockemeyer’s PSD. See Sur-Reply 24. Regarding silver, we find more persuasive Petitioner’s argument that a person of ordinary skill would have understood the 35.5 wt% silver in Liu’s Example 1 catalyst to be within Lockemeyer’s preferred range of 1–50 wt% silver. See Reply 22 (citing Ex. 1003 ¶¶ 69–70; Ex. 1038 ¶¶ 135–139). We credit Dr. Haller’s testimony that one of ordinary skill in the art seeking to improve upon Lockemeyer’s carriers “would not have ignored the high performance of Liu’s exemplified carriers simply because they were used in catalysts with a higher amount of silver because the amount used in Liu’s examples are well within the preferred range taught by Lockemeyer.” Ex. 1038 ¶ 137. Further, Dr. Haller’s testimony is responsive to Patent Owner’s argument (see PO Resp. 56–57) and not improper new argument.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“limitations of the challenged claims, and secondarily on Liu’s Carriers S, T, and V to disclose the “nested range” limitations. Pet. 52–53. Contrary to Patent Owner’s claims that Petitioner is demonstrating a “modification” of Lockemeyer’s PSD, we find that Lockemeyer already discloses a PSD “such that the pores with diameters from 0.2–10 μm represent more than 75%, in particular more than 80% of the total pore volume” (id. at 52 (citing Ex. 1003 ¶ 26)), although Lockemeyer does not disclose a sub-PSD within that range. Accordingly, relying on Liu to disclose a sub-PSD range within the range of 0.2–10 μm where “at least 80% of the pore volume contained in the pores with diameters in the range of from 0.1 to 10 μm is contained in pores with diameters in the range of from 0.3 to 10 μm” is not so much a modification of Lockemeyer as an optimization of Lockemeyer’s PSD within the range of 0.2–10 μm. Lockemeyer discloses that PSD has “been found to play a significant role” in preparing carriers for catalysts with excellent properties. Ex. 1003 ¶ 5 (cited in Pet. 53). Liu presents a desirable PSD in carriers such as Carriers S, T, and V, which Liu describes through its results as making catalysts that are selective, active, and stable. See Pet. 47 (citing Ex. 1002, 6:1–2, 21:10–22:16). We are persuaded by Petitioner’s reasoning and supporting testimony regarding why one of ordinary skill in the art would have been motivated to make the combination with a reasonable expectation of success. Pet. 46–48 (citing Ex. 1014 ¶¶ 188–197). We find credible Dr. Haller’s explanation that a person of ordinary skill “would have been motivated to use Liu to direct the pore size distribution, especially ones that are within the ranges taught by Lockemeyer” with “a reasonable expectation of success” (Ex. 1014 ¶¶ 193–197) and would have pursued Lockemeyer’s “invitation to optimize PSD, where Liu’s PSDs show outstanding performance” (Ex. 1038 ¶ 152).” slip op. at 22
Patent outcomesUS 8,357,813 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,357,813 - Scientific Design Company, Inc. v. Shell USA, Inc., F/K/A Shell Oil CompanyAll claims unpatentablePTAB · Mar 28, 2023 · IPR2022-00159 · APJ Julia Heaney · IPR · Final written decision
Claims 1–28 are unpatentable under § 103: claims 1–14 and 17–28 over Lockemeyer and Liu, and claims 15–16 over those references with Lockemeyer-II and Kowaleski.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In our Institution Decision, we accepted Petitioner’s undisputed contention that a person of ordinary skill in the art “would have held a Bachelor’s or Master’s degree in chemical engineering or a related discipline with five or more years of experience in the catalyst field.” Pet. 12 (citing Ex. 1014 ¶¶ 12–14); Dec. 6. Patent Owner represents that it “does not challenge Petitioner’s . . . POSA definition.” PO Resp. 21. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of a person of ordinary skill in the art. Accordingly, we adopt Petitioner’s definition, because it is consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). Under that standard, claim terms “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303 at 1312–13 (Fed. Cir. 2005) (en banc). Petitioner argues the term “non-platelet morphology” as recited in claim 27 should be construed as “the morphology of the carrier when imaged by scanning electron microscopy at a magnification of 2000, and to the substantial absence in such images of structures having substantially flat surfaces,’” because of the description in the ’825 specification. Pet. 11 (citing Ex. 1001, 5:33–37). Otherwise, Petitioner argues that the challenged claims should be given their ordinary and customary meaning. Id. Patent Owner does not dispute Petitioner’s proposed claim construction. PO Resp. 21. On this record, we determine we need not explicitly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we 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))).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“limitations of the challenged claims, and secondarily on Liu’s Carriers S, T, and V to disclose the “nested range” limitations. Pet. 52–53. Contrary to Patent Owner’s claims that Petitioner is demonstrating a “modification” of Lockemeyer’s PSD, we find that Lockemeyer already discloses a PSD “such that pores with diameters from 0.2–10 μm represent more than 75%, in particular more than 80% of the total pore volume” (id. (citing Ex. 1003 ¶ 26)), although Lockemeyer does not disclose a sub-PSD within that range. Accordingly, relying on Liu to disclose a sub-PSD within the range of 0.2– 10 μm where “at least 80% of the pore volume contained in the pores with diameters in the range of from 0.1 to 10 μm is contained in pores with diameters in the range of from 0.3 to 10 μm” is not so much a modification of Lockemeyer as an optimization of Lockemeyer’s PSD within the range of 0.2–10 μm. Lockemeyer discloses that PSD has “been found to play a significant role” in preparing carriers for catalysts with excellent properties. Ex. 1003 ¶ 5 (cited in Pet. 53). Liu presents a desirable PSD in carriers such as Carriers S, T, and V, which Liu describes through its results as making catalysts that are selective, active, and stable. See Pet. 47 (citing Ex. 1002, 6:1–2, 21:10–22:16). We are persuaded by Petitioner’s reasoning and supporting testimony regarding why one of ordinary skill in the art would have been motivated to make the combination with a reasonable expectation of success. Id. at 46–48 (citing Ex. 1014 ¶¶ 196–202). We find credible Dr. Haller’s explanation that a person of ordinary skill “would have been motivated to use Liu to direct the pore size distribution, especially ones that are within the ranges taught by Lockemeyer” with “a reasonable expectation of success” (Ex. 1014 ¶¶ 198–202) and would have pursued Lockemeyer’s “invitation to optimize PSD, where Liu’s PSDs show outstanding performance” (Ex. 1038 ¶ 152).” slip op. at 23
- Obviousness (§103) › KSR rationalesMotivation foundUnpatentable
“claimed limitation that at least 80% of the total pore volume is contained in pores with diameters from 0.1–10 μm,” and a person of ordinary skill in the art “would have been motivated to modify the pore size distribution of carriers to optimize performance, as a matter of routine.” Pet. 43–45 (citing Ex. 1014 ¶¶ 182, 185–186) (emphasis added). We also credit Dr. Haller’s testimony: As I stated in my previous declaration, Lockemeyer discloses a PSD that encompasses the claimed distributions (as exemplified in Carriers A-C of the ’825 patent) and a process for making the carrier that is virtually identical to the process disclosed in the ’825 patent. EX1014, ¶¶ 184, 187–192. Accordingly, based on Lockemeyer’s disclosure, a POSA would have made the claimed carriers with routine experimentation. Ex. 1038 ¶ 163 (cited in Reply 25). Relatedly, the Petition relies on Federal Circuit precedent establishing that “a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art” (Pet. 15 (citing In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003))), and that once overlap of the claimed range and prior art are shown, a patentee must establish criticality of the claimed range to rebut a determination of obviousness. Id. (citing E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1006, 1008 (Fed. Cir. 2018); see also Tr. 6:5–6 (“There is no evidence that any of the claimed ranges exhibit any criticality or unexpected results, which should end the inquiry regarding obviousness.”), 76:18–77:2. Patent Owner does not carry its burden of producing evidence of criticality adequate to rebut the presumption of obviousness that is established by Petitioner’s information regarding the overlapping ranges.” slip op. at 27
Patent outcomesUS 8,357,825 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,357,825 - Scientific Design Company, Inc. v. Shell USA, Inc., F/K/A Shell Oil CompanyAll claims unpatentablePTAB · Mar 14, 2023 · IPR2021-01537 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1–28 are unpatentable as obvious over the Lockemeyer-based combinations in Grounds 4 and 5; the Board did not reach Grounds 1–3.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In our Institution Decision, we accepted Petitioner’s undisputed contention that a person of ordinary skill in the art “would have held a Bachelor’s or Master’s degree in chemical engineering or a related discipline with five or more years of experience in the catalyst field.” Pet. 10 (citing Ex. 1014 ¶¶ 12–14); Dec. 6. Patent Owner represents that it “does not challenge Petitioner’s . . . POSA definition (Petition, 10).” PO Resp. 19. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Accordingly, we adopt Petitioner’s definition, because it is consistent with the cited prior art. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner proposes a construction for “non-platelet morphology” in claim 22 as “the morphology of the carrier when imaged by scanning electron microscopy at a magnification of 2000, and to the substantial absence in such images of structures having substantially flat surfaces.” Pet. 10 (citing Ex. 1001, 5:27–31). Patent Owner represents that it “does not challenge Petitioner’s proposed claim interpretations (Petition, 9–10).” PO Resp. 19. On this record, we determine that no claim terms require express construction. See, e.g., Vivid Techs., 200 F.3d at 803.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Petitioner’s challenges rely primarily on Lockemeyer to meet the limitations of the challenged claims, and secondarily on Liu’s Carriers S, T, and V to disclose the “nested range” limitations. Pet. 47–48. Contrary to Patent Owner’s claims that Petitioner is demonstrating a “modification” of Lockemeyer’s PSD, we find that Lockemeyer already discloses a PSD “such that pores with diameters from 0.2–10 μm represent more than 75%, in particular more than 80% of the total pore volume” (id. (citing Ex. 1003 ¶ 26)), although Lockemeyer does not disclose a sub-PSD within that range. Accordingly, relying on Liu to disclose a sub-PSD within the range of 0.2– 10 μm where “at least 80% of the pore volume contained in the pores with diameters in the range of from 0.1 to 10 μm is contained in pores with diameters in the range of from 0.3 to 10 μm” is not so much a modification of Lockemeyer as an optimization of Lockemeyer’s PSD within the range of 0.2–10 μm. Lockemeyer discloses that PSD has “been found to play a significant role” in preparing carriers for catalysts with excellent properties. Ex. 1003 ¶ 5 (cited in Pet. 48). Liu presents a desirable PSD in carriers such as Carriers S, T, and V, which Liu describes through its results as making catalysts that are selective, active, and stable. See Pet. 42 (citing Ex. 1002, 6:1–2, 21:10–22:16). We are persuaded by Petitioner’s reasoning and supporting testimony regarding why one of ordinary skill in the art would have been motivated to make the combination with a reasonable expectation of success. Pet. 41–43 (citing Ex. 1014 ¶¶ 170–179). We find credible Dr. Haller’s explanation that a person of ordinary skill “would have been motivated to use Liu to direct the pore size distribution, especially ones that are within the ranges taught by Lockemeyer” with “a reasonable expectation of success” (Ex. 1014 ¶¶ 175–179) and would have pursued Lockemeyer’s “invitation to optimize PSD, where Liu’s PSDs show outstanding performance” (Ex. 1038 ¶ 152).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“limitations of the challenged claims, and secondarily on Liu’s Carriers S, T, and V to disclose the “nested range” limitations. Pet. 47–48. Contrary to Patent Owner’s claims that Petitioner is demonstrating a “modification” of Lockemeyer’s PSD, we find that Lockemeyer already discloses a PSD “such that pores with diameters from 0.2–10 μm represent more than 75%, in particular more than 80% of the total pore volume” (id. (citing Ex. 1003 ¶ 26)), although Lockemeyer does not disclose a sub-PSD within that range. Accordingly, relying on Liu to disclose a sub-PSD within the range of 0.2– 10 μm where “at least 80% of the pore volume contained in the pores with diameters in the range of from 0.1 to 10 μm is contained in pores with diameters in the range of from 0.3 to 10 μm” is not so much a modification of Lockemeyer as an optimization of Lockemeyer’s PSD within the range of 0.2–10 μm. Lockemeyer discloses that PSD has “been found to play a significant role” in preparing carriers for catalysts with excellent properties. Ex. 1003 ¶ 5 (cited in Pet. 48). Liu presents a desirable PSD in carriers such as Carriers S, T, and V, which Liu describes through its results as making catalysts that are selective, active, and stable. See Pet. 42 (citing Ex. 1002, 6:1–2, 21:10–22:16). We are persuaded by Petitioner’s reasoning and supporting testimony regarding why one of ordinary skill in the art would have been motivated to make the combination with a reasonable expectation of success. Pet. 41–43 (citing Ex. 1014 ¶¶ 170–179). We find credible Dr. Haller’s explanation that a person of ordinary skill “would have been motivated to use Liu to direct the pore size distribution, especially ones that are within the ranges taught by Lockemeyer” with “a reasonable expectation of success” (Ex. 1014 ¶¶ 175–179) and would have pursued Lockemeyer’s “invitation to optimize PSD, where Liu’s PSDs show outstanding performance” (Ex. 1038 ¶ 152).” slip op. at 21
Patent outcomesUS 8,084,390 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,084,390 - Allstate Insurance Company v. Atos, LLCSome claims unpatentablePTAB · Mar 7, 2023 · IPR2021-01449 · APJ Julia Heaney · IPR · Final written decision
Claim 5 is unpatentable as anticipated by Kim; claims 1–4 were not shown unpatentable under the asserted obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Having considered the parties’ arguments and evidence, we adopt the level of ordinary skill in the art proposed by Petitioner, because it is consistent with the disclosures of the ’174 patent and the prior art of record. We note, however, that neither party contends that any issue in this case turns on the differences between the parties’ definitions of one of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Having reviewed the parties’ arguments and evidence, we determine that Petitioner’s proposed construction of “rotation vector” is consistent with the ’174 patent’s usage of the term “rotation vector” (or “vector of rotation”). See Ex. 1001, 1:54–2:11. Dr. Kanellakopoulos’s opinion supports that “rotation vector” would be understood by a person of ordinary skill in the art to describe the motion of a body that is rotating around a point. As to the other aspects of Patent Owner’s proposed construction, describing the characteristics of magnitude and direction, we determine that those attributes are not necessary to interpreting how a skilled artisan would understand “rotation vector” in light of the claim language and specification. See Tr. 47:26–48:7 (in Patent Owner’s proposed construction of “rotation vector,” “the magnitude requirement is not particularly important”). We address the parties’ arguments as to differences between a rotation vector and angular momentum vector in Section II.D.2 below, because they underlie Petitioner’s challenges involving Kleppner.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“Having considered the parties’ positions as to construction of the term “movement vector” and applicability of the definition of “movement vector” set forth in the ’174 patent specification (Ex. 1001, 2:29–31), we construe the term “movement vector” to mean “a vector derived from the cross product of the centrifugal force vector and the rotation vector.” We adopt the definition set forth in the ’174 specification because we determine patentee acted as its own lexicographer. Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019) (citing Phillips, 415 F.3d at 1316) (“When the patentee acts as its own lexicographer, that definition governs.”). We agree with Petitioner that the words “while a vehicle is turning” would be superfluous in the construction, because the step of “detecting a movement vector during the turn” already recites that the vehicle is turning. Apple, Inc. v. Ameranth, 842 F.3d 1229, 1237 (Fed. Cir. 2016) (“Construing a claim term to include features of that term already recited in the claims would make those expressly recited features redundant.”)” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We decline to adopt Patent Owner’s construction because it improperly reads into claim 5 a requirement that the specification and claim language do not support. The specification passages relied on by Patent Owner do not expressly state that a vehicle independent state must be determined while the device is inside a vehicle, and contrary to Patent Owner’s argument, they also do not necessarily imply that. For example, the descriptions of “vehicle independent movement” and “vehicle independent event” in the specification (see Ex. 1001, 1:16, 42) refer to “phone falling to the ground.” “Falling to the ground” implies that the phone may be outside a vehicle, not inside. Further, the specification’s reference to detecting a vehicle dependent state “while also” recognizing a vehicle independent event does not necessarily imply that the vehicle dependent state and vehicle independent event are being detected simultaneously, as Patent Owner argues. In the language of claim 5, a “vehicle independent state” is recited in the determining step (step c), and the requirement that the portable device is located “inside a vehicle” relates to creation of an operation indicator, as part of the detecting step (step b). Patent Owner does not dispute this, and agrees that a portable device “not in the vehicle” can satisfy the determining step (step c). Tr. 73:5–8. Patent Owner, however, argues step c’s recitation that a “vehicle independent state” is based on step b’s “predetermined criteria” creates a link between “vehicle independent state” and step b, and thus an “express requirement” in step c that the device is located inside the vehicle. See Tr. 73:8–26, 76:1–3. We decline to read this requirement into the claim language. Although the claim language states that determining a “vehicle independent state” is based on “predetermined criteria,” and step b describes comparing “predetermined criteria” to an “operation indicator” that is created when the device is inside a vehicle, it does not limit the step of determining a vehicle independent state to a time when the portable device is inside a vehicle. Accordingly, we construe “vehicle independent state” to mean a state triggered when the portable device is moved independently of the movement of the vehicle.” slip op. at 23
Patent outcomesUS 9,846,174 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,846,174 - Sunspec Alliance v. Tigo Energy, Inc.No claims unpatentablePTAB · Jan 26, 2023 · IPR2021-01286 · APJ Julia Heaney · IPR · Final written decision
The Board held that claims 1, 5–7, 12, and 13 were not shown unpatentable because the cited art did not disclose the required predetermined number of allowed skips.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree or similar degree in electrical engineering and one year of experience in the design of solar power systems, power control systems, and/or power safety systems.” Pet. 3–4 (citing Ex. 1002 ¶ 17). Patent Owner does not challenge Petitioner’s proposed level of skill for a person of ordinary skill in the art. Ex. 2003 ¶ 25. Having considered the parties’ arguments and evidence, we adopt the level of ordinary skill in the art proposed by Petitioner, because it is consistent with the disclosures of the ’321 patent and the prior art of record.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“Having considered the parties’ positions as to construction of the term “skips” and applicability of the definition of “skips” set forth in the ’321 specification (Ex. 1001, 9:36–37), we construe the term “skips” to mean “the event of missing a communication or pulse.” We adopt the definition set forth in the ’321 specification because patentee acted as its own lexicographer. Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019) (citing Phillips, 415 F.3d at 1316) (“When the patentee acts as its own lexicographer, that definition governs.”). We determine that, for purposes of this Decision, no other claim term requires express construction. See, e.g., Vivid Techs., 200 F.3d at 803.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Having considered the record as a whole, we find that Moine does not disclose the “predetermined number of allowed skips” limitation. We do not agree with Petitioner that Moine’s disclosure of determining whether a “skip” (i.e., the event of missing a communication or pulse, as we have construed that term supra) has occurred, meets the challenged claims’ requirement of determining communication has been interrupted “for a time period longer than the predetermined number of allowed skips.” See Pet. Reply 14–15. As explained below, we determine that the “predetermined number of allowed skips” limitation does not encompass zero skips, or a mere interruption in communication from the controller, as described in Moine.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“2. Analysis Petitioner argues that to the extent the Board finds Moine’s receiver 5 is not a “watchdog unit,” Kronberg discloses a watchdog unit, as embodied in Figure 1. Pet. 25 (citing Ex. 1006, 2:30–32, Fig. 1). Petitioner contends a person of ordinary skill in the art would have been motivated to use Kronberg’s watchdog to implement Moine’s receiver to achieve a predictable outcome, because watchdog timers were a well-known technique for detecting malfunctions, and the output of Kronberg’s watchdog could be provided to the switch 4 of Moine, to open and power down Moine’s circuit. Id. at 26–28 (citing Ex. 1002 ¶¶ 79–85; Ex. 1006, 1:53–55, 3:38–42, 4:9–12; Ex. 1013, 1269). Petitioner “does not rely on Kronberg to remedy any failure of Moine to disclose the ‘skips’ limitations.” Pet. Reply 19. As discussed above, we find that Petitioner fails to adequately demonstrate that Moine discloses the “predetermined number of allowed skips” limitation of claims 1 and 12. See supra § II.D.2. Accordingly, because Petitioner does not rely on Kronberg to remedy this deficiency in Moine, Petitioner has not demonstrated by a preponderance of the evidence that claims 1 and 12 would have been unpatentable over the combination of Moine and Kronberg.” slip op. at 23
Patent outcomesUS 8,933,321 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,933,321 - Sunspec Alliance v. Tigo Energy, Inc.Some claims unpatentablePTAB · Jan 26, 2023 · IPR2021-01287 · APJ Kristina M Kalan · IPR · Final written decision
Claims 12–13 are unpatentable; claims 14–16 are not shown unpatentable because the asserted grounds fail to establish the required predetermined number of heartbeat skips or sensor-triggered skips.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“contention that a person of ordinary skill in the art “would have had a bachelor’s degree or similar degree in electrical engineering and one year of experience in the design of solar power systems, power control systems, and/or power safety systems” or “could have also obtained similar knowledge and experience through other means.” Dec. 6. Patent Owner does not appear to dispute this definition. See generally PO Resp; see also id. at 51 (employing Petitioner’s definition of a person of ordinary skill in the art in discussing Mr. Dunton’s testimony). In its Reply, Petitioner argues that “Patent Owner does not challenge but adopts Petitioner’s proposed level of skill for a POSITA for the relevant time period.” Reply 1 (citing Ex. 2003 ¶ 28; Ex. 1030, 119:25–120:14). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Accordingly, we adopt Petitioner’s definition, because it is consistent with the cited prior art. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We interpret the term “heartbeat signals” as “periodic signals.” The term “heartbeat” appears only once in the in the specification outside of the claims: “the ‘heartbeats’ of the ping are set at a high rate, such as 100 or even 1000 per second.” Ex. 1001, 18:7–13. The disclosure of “the heartbeats” having a “rate” defined in “per second” terms indicates that they are periodic, as is generally recognized for heartbeats, i.e. human heartbeats. The term “heartbeat signals” appears in the challenged claims in conjunction with the detection of an anomaly (claim 12, “wherein the controller detects an anomaly in heartbeat signals from the remote unit”) and in conjunction with “skips” (claim 13, “wherein the anomaly includes skips of heartbeat signals”; claim 14, “when the anomaly includes a predetermined number of skips of the heartbeat signals”; claim 15, “when skips of the heartbeat signals are less than the predetermined number”). Accordingly, the heartbeat signals allow for the detection of an anomaly therein, indicating that they are typically predictable, and for the detection of skips of heartbeat signals, indicating that they are periodic. In view of the specification and the claims, and the parties’ arguments, we find that the plain and ordinary meaning of “heartbeat signals” is “periodic signals.”” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“Because patentee has acted as its own lexicographer, and because the ’321 patent specification is incorporated by reference into the ’770 patent specification (Ex. 1001, 1:7–37; Tr. 9:10–22), we adopt the construction: “Skips refers to the event of missing a communication or pulse.” Ex. 2005, 9:36–37. Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019) (citing Phillips, 415 F.3d at 1316) (“When the patentee acts as its own lexicographer, that definition governs.”).” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“We agree with Patent Owner that the preamble of claim 12 is limiting. The body of claim 12 recites “photovoltaic panel” and thus refers back to the preamble, and other challenged claims use the term “photovoltaic panel” in the non-preamble portions of the claims. See, e.g., Ex. 1001, 20:51, 20:58, 20:67, 21:5, 21:10. Aside from the preamble issue, the parties do not dispute the meaning of “photovoltaic panel.” Accordingly, we need not expressly construe the term “photovoltaic panel” for the purposes of this Decision.” slip op. at 14
Patent outcomesUS 10,256,770 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,256,770 - The Noco Company, Inc. v. Pilot, Inc.InstitutedPTAB · Jan 23, 2023 · IPR2022-01237 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR of claims 1–24 on all asserted challenges, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). After considering the Petition and the evidence of record, and for the reasons explained below, we determine that Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–24 in the ’077 patent on all challenges included in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention would have had “at least a Bachelor’s Degree in a relevant engineering discipline such as electrical engineering and at least two years of relevant experience in the design and/or development of automotive electrical systems, or a Masters or more advanced degree in a relevant engineering discipline such as electrical engineering.” Pet. 5. Dr. Wood’s testimony supports Petitioner’s assertion. See Ex. 1003 ¶ 45. Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’077 patent and the asserted prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner identifies a reason that would have prompted an ordinarily skilled artisan to combine Baxter’s teachings with Krieger’s teachings. See Pet. 41. Additionally, Petitioner explains that combining those teachings would have yielded a predictable result. Id. Dr. Wood’s testimony supports Petitioner’s positions. See Ex. 1003 ¶ 114. For instance, Dr. Wood testifies that an ordinarily skilled artisan “would have been motivated to utilize a series-parallel MOSFET switch” as shown in Baxter’s Figures 7 and 12 in Krieger’s MOSFET-based switch 12 because the skilled artisan would have understood that Baxter’s series-parallel arrangement “blocks reverse current flow when the FETs are turned off” in contrast to “a single FET which always allows current flow in one direction, even when the FET is turned off.” Ex. 1003 ¶ 114. Dr. Wood also testifies that an ordinarily skilled artisan would have been motivated “to utilize a pair of series connected MOSFETs, as disclosed by Baxter, for each of the parallel-connected FETs 12a–12d in Krieger’s switch 12” to yield “the desirable and predictable result of preventing reverse current flow from the automobile battery 11 to the boosting battery 2 in Krieger’s jump starter.” Id. (emphases omitted). Based on the current record, Petitioner establishes sufficiently for purposes of institution that an ordinarily skilled artisan would have had a reason, e.g., as articulated by Dr. Wood, to combine Baxter’s teachings with Krieger’s teachings. See Ex. 1003 ¶ 114.” slip op. at 27
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,124,077
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.