- Globalfoundries Inc. / Globalfoundries U.S. Inc. et al. v. Katana Silicon Technologies, LLCInstitution deniedPTAB · Oct 7, 2022 · IPR2022-00763 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“which is electrically coupled to the source/drain” that “is in contact with the source/drain at a source/drain surface.” Ex. 1001, 26:62–27:12. Claims 2– 12 and 16–18 all depend directly or indirectly from claim 1. Id. at 27:13– 28:31. Accordingly, all of the claims Petitioner challenges as obvious over combinations of prior art based on JP848 incorporate the limitations of claim 1. 37 C.F.R. § 1.75(c). Therefore, to show the obviousness of any of these claims, Petitioner must show that the asserted prior art teaches or suggests “a contact which is electrically coupled to the source/drain” that “is in contact with the source/drain at a source/drain surface.”” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“ANALYSIS A. Claim Construction Petitioner argues that no claim terms require express construction. Pet. 12. Patent Owner also does not propose express construction of any term. Prelim. Resp. 16–17. We agree with the parties that no terms in the challenged claims require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 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 5
Claim construction§ 103 obviousnessPatents in suitUS 6,291,861 - The Noco Company, Inc. v. Pilot, Inc.Some claims unpatentablePTAB · Oct 3, 2022 · IPR2021-00777 · APJ Jeffrey W Abraham · IPR · Final written decision
Claims 1, 4–9, 11–18, and 20 are unpatentable; claim 3 was not shown unpatentable, because the adopted construction foreclosed the asserted obviousness ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had an undergraduate degree in electrical engineering (or equivalent subject) together with two or three years of experience in [the] automotive electrical systems industry.” Pet. 11–12 (citing Ex. 1008 ¶ 13). Patent Owner does not challenge Petitioner’s definition or offer its own. Mr. McAlexander indicated that he adopted Petitioner’s definition for purposes of his declaration. Ex. 2005 ¶ 16. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’653 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’653 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level 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 petitioner constructionDecided for petitioner
“After considering the parties’ arguments and evidence, we adopt Petitioner’s proposed construction of the phrase “the switching circuit conducts power supply or power outage for the load through the microcontroller.” Petitioner’s construction is consistent with the plain language of the claim, and comports with the Federal Circuit’s decision in Chef America. Ex. 1001, 6:13–14; Chef Am., 358 F.3d at 1373–74 (holding that courts may not redraft claims to make them operable or sustain their validity, and construing the claims “based on the patentee’s version of the claim as he himself drafted it”). Additionally, the Specification of the ’653 patent states that “the automobile start control module conducts the power supply or power outage for the load module through the microcontroller.” Ex. 1001, 1:61–65. Furthermore, Patent Owner does not challenge Petitioner’s arguments or evidence, or present a competing construction. In view of this, we construe the phrase “the switching circuit conducts power supply or power outage for the load through the microcontroller” to mean “[t]he power for charging the load passes through the microcontroller.” Pet. 15; Reply 3–6.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that we do not need to expressly construe any other terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Ex. 1008 ¶ 12 (under the heading “Basis for My Opinion”). In addition to this general statement, Dr. Kattamis also cites to exhibits in specific paragraphs of the Kattamis Declaration to support the statements made therein. See, e.g., Ex. 1008 ¶ 18 (citing Ex. 1013), ¶ 22 (citing Ex. 1014), ¶¶ 63–68 (citing Krieger and Richardson), ¶¶ 70–74 (citing Baxter and Krieger), ¶¶ 76–79 (citing Richardson and George). In view of this, we consider Dr. Kattamis to have provided a sufficient disclosure regarding the basis for his opinions to at least avoid a determination that the Kattamis Declaration, in its entirety, is entitled to little or no weight. The fact that Dr. Kattamis, in preparing the Kattamis Declaration, re- used material he had previously written for an earlier proceeding involving a different patent does not justify a different outcome. To the extent Dr. Kattamis used previously prepared material in the Kattamis Declaration, he indicates that he “reviewed all of these passages in detail and confirmed that they were all still accurate and suitable for inclusion in his declaration in the current proceeding.” Reply 8; Ex. 1016 ¶ 6. Additionally, as Patent Owner demonstrates, Dr. Kattamis supplemented the re-used material by adding, where appropriate and necessary, language directed to the facts of this proceeding and specific citations to exhibits in this proceeding. See PO Resp. 8–9 (showing in redline the additions Dr. Kattamis included in the Kattamis Declaration).” slip op. at 17
Patent outcomesUS 10,046,653 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,046,653 - PTAB · Aug 15, 2022 · IPR2022-00381 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on claims 1–10 and 12–18 on all asserted grounds, finding a reasonable likelihood that the claims are unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . 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). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“Having reviewed the disclosures of the ’626 provisional application relied upon by Patent Owner, we do not agree that they would convey to a person of ordinary skill in the art that Mr. Niester had possession of using 222 or 282 nm wavelengths to disinfect human or animal skin. While they refer to human activity such as travel, surgery, and food preparation, the disclosures do not refer to disinfecting skin. Rather, they refer to sterilizing things in the presence of humans, such as surfaces and air, but not human or animal skin itself. Therefore, we determine that Petitioner has satisfied its initial burden of production on the effective-filing-date issue by identifying the absence of specific supporting disclosure for claim 1 from the ’626 provisional application. See Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1379–1380 (Fed. Cir. 2015) (discussing burden framework in inter partes review). Based on this record, we find that Petitioner has demonstrated a reasonable likelihood that it will prevail in establishing that challenged claims 1–10 are not entitled to an effective filing date earlier than the filing date of the PCT application. The parties will have an opportunity to develop their positions on the issue of the effective filing date of claims 1–10 during trial.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Having considered the evidence and arguments presented by both parties on the present record, we are persuaded Petitioner sufficiently shows that Eckhardt and Sosnin teach or suggest all of the limitations in claim 1, and sufficiently explains how a person of ordinary skill in the art would have used Eckhardt’s teaching of narrow spectrum light in the range of 220 to 310 nm to disinfect skin, with Sosnin’s implementation of excimer lasers including 222 and 282 nm to kill bacteria, to arrive at the method of claim 1 with a reasonable expectation of success. We disagree with Patent Owner’s argument that Eckhardt teaches away from the use of UV light on skin because it is based on a mischaracterization of Eckhardt, which does not teach bandages as a way to provide cover from direct UV light, but rather, compensates for application of UV light through a bandage by controlling the UV light intensity. Indeed, Eckhardt’s embodiment that Petitioner relies upon is titled “UV- Transmissive Bandage” and explains how to choose bandage materials that transmit UV-C light. See Ex. 1004 ¶¶ 69–72. We also disagree, on this record, with Patent Owner’s argument that Sosnin would dissuade a person of ordinary skill from using 222 or 282 nm wavelengths to disinfect skin . Although Patent Owner is correct that Sosnin refers to the need for additional testing before using its technology outside of a laboratory (Prelim. Resp. 31), Mr. Lawal directs us to evidence supporting his testimony that it was general knowledge in the art at the time of the invention that even though UV light poses safety risks to human skin, UV-C light of 222 nm on bare skin for disinfection was relatively safe. Ex. 1003 ¶¶ 88–91 (citing Exs. 1013, 1015, 1016, 1017). Patent Owner presents only attorney argument in response to Mr. Lawal’s testimony and supporting evidence. We invite the parties to continue to develop this issue during trial.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We disagree with Patent Owner’s argument that Eckhardt teaches away from the use of UV light on skin because it is based on a mischaracterization of Eckhardt, which does not teach bandages as a way to provide cover from direct UV light, but rather, compensates for application of UV light through a bandage by controlling the UV light intensity. Indeed, Eckhardt’s embodiment that Petitioner relies upon is titled “UV- Transmissive Bandage” and explains how to choose bandage materials that transmit UV-C light. See Ex. 1004 ¶¶ 69–72. We also disagree, on this record, with Patent Owner’s argument that Sosnin would dissuade a person of ordinary skill from using 222 or 282 nm wavelengths to disinfect skin . Although Patent Owner is correct that Sosnin refers to the need for additional testing before using its technology outside of a laboratory (Prelim. Resp. 31), Mr. Lawal directs us to evidence supporting his testimony that it was general knowledge in the art at the time of the invention that even though UV light poses safety risks to human skin, UV-C light of 222 nm on bare skin for disinfection was relatively safe. Ex. 1003 ¶¶ 88–91 (citing Exs. 1013, 1015, 1016, 1017). Patent Owner presents only attorney argument in response to Mr. Lawal’s testimony and supporting evidence. We invite the parties to continue to develop this issue during trial.” slip op. at 17
§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 9,700,642 - Jupiter Research, LLC v. VPR Brands, L.P.Institution deniedPTAB · Jul 12, 2022 · IPR2022-00299 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 13–18 were unpatentable over the asserted prior-art grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“It is the petitioner’s burden from the outset to show with particularity why a challenged claim is unpatentable. Harmonic Inc. v. Avid Tech. Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). In that regard, a petition for inter partes review must identify how the challenged claims are unpatentable, and must specify where each element of the claim is found in the relied-upon prior art. 37 C.F.R. § 42.104(b); see also 35 U.S.C. § 312(a)(3) (a petition must identify “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for challenge to each claim”). A petition must also include “a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). Here, Petitioner contends that the “airflow sensor having elements (401), (403), (404), (405), and (406)” is “electronic at least in that it includes contact piece (404) and piece (403) that is connected to the integrated circuit board (3),” but does not provide a detailed explanation of the significance of the location of contact pieces 403 and 404, or how elements 401, 403, 404, 405, and 406 form an electric airflow sensor. Pet. 47–48 (citing Ex. 1009, 8), 54–55 (same). Zhu teaches that “integrated circuit board 3 is provided with two fixed contact pieces 403 and 404 that extend toward the elastic ring 401.” Ex. 1009, 8. Zhu further teaches that elastic ring 401 is fixed in plastic base 405, and that “fixed contact pieces 403 and 404 are fixed outside the plastic base 405.” Id. Considering the disclosures in Zhu regarding the arrangement and operation of these elements, Petitioner’s conclusory statement that Zhu teaches an electric airflow sensor simply because contact” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Petitioner contends that a person having ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, mechanical engineering, chemical engineering, or a closely related field and one to two years of experience working in the consumer electronics or computer industry in the capacity of a design, application, customer marketing or technical marketing engineer.” Pet. 11 (citing Ex. 1004 ¶ 58). At this stage of the proceeding, Patent Owner neither responds to Petitioner’s proposed definition, nor provides a definition of its own. See generally, Prelim. Resp. Petitioner’s undisputed proposed definition appears to be consistent with the cited prior art and the disclosure of the ’622 patent, and we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level 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 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“The parties stipulated to the construction of many claim terms in their related litigation currently pending in the District of Arizona. Pet. 11–12; Prelim. Resp. 12; Ex. 1006. Based on the parties’ apparent agreement, and considering the record before us, we adopt the parties agreed-upon claim constructions for purposes of this Decision. See Ex. 1006 (stipulated claim construction proposed in the district court). We provide the constructions of “electric airflow sensor” and “detecting an airflow,” which are of particular relevance to this Decision, below. “electric airflow sensor” an electric sensor to detect air movement generated by a user’s inhaling or puffing act “detecting an airflow” determining that a user is inducing airflow into or out of the device Ex. 1006, 2, 3.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Here, Petitioner neither directs us to an express disclosure in Cox that air flow detecting device 51 is an electric airflow sensor as required by claim 13, nor adequately explains that a person of ordinary skill in the art would have understood Cox as disclosing an electric airflow sensor, and could have combined Cox’s disclosures with their own knowledge to make the claimed invention. See Helifix Ltd. v. Bloc-Loc, Ltd., 208 F.3d 1339, 1347 (Fed. Cir. 2000) (A reference that does not expressly disclose a claimed limitation “might nevertheless be anticipating if a person of ordinary skill in the art would understand [the reference] as disclosing [the limitation] and if such a person could have combined the [reference’s] description of the invention with his own knowledge to make the claimed invention.”). We also do not understand Petitioner to be arguing that Cox inherently discloses an electric airflow sensor. See In re Montgomery, 667 F.3d 1375, 1379 (Fed. Cir. 2012) (“A reference may anticipate inherently if a claim limitation that is not expressly disclosed is ‘necessarily present, or v. Fibernet Va., Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010))). For these reasons, we are not persuaded that Petitioner sufficiently establishes that Cox discloses “an electric air flow sensor that is used to turn on and off the electric power source by way of detecting an airflow” as recited in independent claim 13. Accordingly, we determine that the Petition does not establish a reasonable likelihood that Petitioner will prevail in showing that claim 13, and claims 14 and 15 that depend therefrom, are anticipated by Cox.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,205,622 - PTAB · Apr 26, 2022 · IPR2022-00006 · APJ Christopher L Crumbley · IPR · Institution
The Board instituted IPR on claims 1–5 over all asserted grounds, finding a reasonable likelihood of success on at least one claim and declining §325(d) denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the parties’ arguments and the evidence of record, we determine that, for the reasons discussed herein, FFP has established a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. KGSI has not persuaded us that we should exercise our discretion under 35 U.S.C. § 325(d) to deny institution. We thus institute an inter partes review on all challenged claims on all asserted grounds. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); see also Patent Trial and Appeal Board Consolidated Trial Practice Guide 64 (Nov. 2019)2 (“TPG”) (“The Board will not institute on fewer than all claims or all challenges in a petition.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“§ 325(d), the Board applies a two-part framework: (1) first, we determine whether the same or substantially the same art previously was presented to the Office, or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, we examine whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, 8.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Our preliminary construction at this stage of the proceeding is that claim 1 does contain a nested product-by-process limitation, which defines the claimed curing agent as containing a plant-based nitrite derived using a particular process involving heat treatment prior to introduction of the nitrite-producing organism. We are not persuaded on the current record, however, that this process imparts any structural or functional differences to the recited curing agent product, as opposed to curing agents produced by other means. KGSI contends that “the variations inherent in the biological processes for producing plant-derived nitrite, in addition to selecting the plant material and organism, result in qualitative differences in the curing agent that, when applied to meat, affect taste, smell, texture, and color, while also impacting the safety of the product.” Prelim. Resp. 23 (citing Ex. 2001 ¶¶ 127–131). But Dr. Milkowski does not provide any evidence of these “qualitative differences” beyond citations to FFP’s marketing materials. Ex. 2001 ¶ 129 n.23. On this preliminary record, therefore, we construe the product-by-process element of claim 1 to not be limited by the process steps recited.10” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Upon review, we are persuaded that FFP has set forth a sufficient rationale why a person of ordinary skill in the art would have modified Voorde’s process to use Hara’s sterilization step. We do not, on this record, believe the two disclosures to be incompatible or that application of Hara would render Voorde’s process inoperable. While recognize that Voorde warns against heating to 90°C as disclosed in Hara’s sterilization process, we note that the heating of Hara is at a different point in the curing process than Voorde’s heating. Specifically, Hara discloses heating prior to storage of the plant-derived solution, to sterilize it, whereas Voorde’s heating step is during treatment, to encourage the nitrate conversion process. We do not understand combining these two heating steps into one process to be incompatible. We do not understand Voorde’s disclosure to exclude processes in which the nitrite-generating microbes are added via starter culture, rather than naturally occurring in the plant material. Voorde does not express any preference for naturally-occurring microbes, or suggest that results are superior to processes in which a starter culture is added. Nor are we persuaded that a person of ordinary skill in the art, having used Hara’s sterilization step, would have been unaware that the sterilization would have reduced the microbial load of the plant material and that addition of a starter culture—which Voorde expressly suggests—would be beneficial.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,071,304 - Micron Technology, Inc. v. Flash-Control, LLCAll claims unpatentablePTAB · Apr 19, 2022 · IPR2020-01709 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 1–6 and 8–16 are unpatentable under § 103(a) over the listed Lee, Tsunoda/Kolokowsky, Li, and Miura grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find that Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record, and, therefore, adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Expert testimonyPatent owner expert discountedDecided for patent owner
“Patent Owner does not provide persuasive argument explaining why limitation 1.B requires a “read/modify/write operation.” See, e.g., Reply 9, 12. Rather, much of Patent Owner’s arguments simply assume that it does. See, e.g., PO Resp. 21 (“the proposed construction clarifies that the read/write/modify operation involves both non-volatile and volatile memory”); Sur-reply 5–7. Dr. Bagherzadeh’s testifies that “this claim requires a read/modify/write operation involving both non-volatile and volatile memory.” Ex. 2004 ¶ 31 (cited at Sur-reply 5, 8, 11). But this testimony is conclusory and entitled to little weight. See 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (nothing requires a fact finder to credit the inadequately explained testimony of an expert). According to Patent Owner, limitation 1.B “describes the capability wherein the memory system can command the” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We find that it is not. We find persuasive Petitioner’s arguments that limitations 1.C, 1.E, 1.F, and 1.G refer to “read operations” and “write operations,” whereas limitation 1.B does not refer to an “operation.” See Reply 12; see Acumed LLC v. Stryker Corp., 483 F.3d 800, 807 (Fed. Cir. 2007) (when “the specification . . . suggests that the patentees knew how to” use a particular term to restrict claim coverage, use of different term in the claims must have meaning). We note the difference in language used in limitation 1.H (“writ[ing] the digital information stored . . .”), as opposed to that used in limitations 1.E, 1.F, and 1.G (“perform a [read or write] operation”). Ex. 1001, 5:5–17. Similar to limitations 1.E, 1.F, and 1.G, Patent Owner’s proposed construction of limitation 1.B includes the language “the system is configured to perform a read/modify/write operation . . .” See PO Resp. 21. The language advanced by Patent Owner also changes the recited “modification,” which was passive, to an active “perform . . . modifying the read information,” similar to the language in limitations 1.E, 1.F, and 1.G. Nor do we find that the Specification supports Patent Owner’s position. The Specification is devoid of any description of a “read/write/modify operation” as advanced by Patent Owner in its proposed construction. Patent Owner argues that “[t]he specification also discloses that allowing for the performance of a read/modify/write operation involving nonvolatile memory, using coupled volatile memory, is an important aspect of the invention,” (PO Resp. 22, emphasis added) but Patent Owner lacks support for such an assertion. For example, we note that Dr. Bagherzadeh testifies that “[t]he ’184 patent is directed to novel systems and method coupling VM and NVM to improve performance by, inter alia, enhancing the random access performance of NVM systems allowing access at a more flexible and granular level than prior memory systems.” Ex. 2004 ¶ 42. This testimony is supported by the Specification, and says nothing about the “importance” of “performance of a read/modify/write operation involving nonvolatile memory using coupled volatile memory.” See Ex. 1001, Abstr., 1:59–66.” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“4. Conclusion Having considered the Graham factors,13 including the level of ordinary skill in the art, the scope and content of the prior art, and the differences between the prior art and the challenged claims, we are persuaded, based on the current record, that Petitioner has shown, by a preponderance of the evidence, that claims 1–3 and 9–16 would have been obvious over Lee.” slip op. at 45
Patent outcomesUS 9,257,184 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,257,184 - Micron Technology, Inc. v. Flash-Control, LLCAll claims unpatentablePTAB · Apr 19, 2022 · IPR2020-01710 · APJ Julia Heaney · IPR · Final written decision
Claims 1–5 and 7–13 are unpatentable under § 103 over the six instituted grounds, based on Lee, Tsunoda and Kolokowsky, and the specified combinations with Li or Miura.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We find that the language of claim 1 does not support an atomic read/modify/write operation, for several persuasive reasons argued by Petitioner. Specifically, although claim 1 recites “operation” or “operations” four times (limitations 1.B, 1.H, 1.I, and 1.J), the controller limitation 1.G does not refer to an “operation.” See Pet. Reply 12; see Acumed LLC v. Stryker Corp., 483 F.3d 800, 807 (Fed. Cir. 2007) (when “the specification . . . suggests that the patentees knew how to” use a particular term to restrict claim coverage, use of different term in the claims must have meaning). Similarly, limitation 1.J does not recite “modify,” nor does any other limitation in claim 1. Further, Patent Owner’s reliance on Dr. Levy’s deposition testimony concerning limitation 1.J (see PO Resp. 22, 30–31 (citing Ex. 2005, 96:1–18)) is not persuasive because that testimony did not address whether limitation 1.J would describe a “modify” as part of an atomic operation. In other words, the occurrence of a data modification step does not necessarily imply a read/modify/write operation. As to the four “operations” recited in limitations 1.H–1.K, nothing in the claim language indicates that those four operations are part of a three-part, atomic read/modify/write operation. In view of Patent Owner’s position that a read/modify/write operation is a three-step atomic operation, its failure to account for the four operations of limitations 1.H–1.K undercuts its position. Further, we credit Dr. Levy’s testimony that read operation limitation 1.I , which involves reading data out of VM, is not part of a read/modify/write operation, which directly overwrites (i.e. modifies) data in the VM. See Ex. 1036 ¶¶ 24–25. Dr. Bagherzadeh also agreed that a read/modify/write operation directly overwrites data in VM without any read of the VM. Ex. 1034, 8:23–9:6, 11:8–17. Patent Owner’s argument that limitation 1.F’s recitation of “on the fly” supports construing claim 1 to require an atomic read/modify/write operation also is not persuasive. See PO Resp. 23; PO Sur-reply 9. As discussed supra, we have construed “on the fly” to mean “doing a task or process as needed without suspending or disturbing normal operations.” Patent Owner does not dispute that construction. Claim 1’s description of operating “on the fly” in limitation 1.F, however, would contradict an atomic read/modify/write operation that suspends normal operation in order to prevent other programs from writing to a location in VM. See Ex. 2004 ¶¶ 66–68. Thus, we agree with Petitioner that Patent Owner’s construction rewrites “the controller limitation [1.G] into one that performs a 3-step operation without intermediary steps—even though the limitation does not recite any operation,” and rewrites the write operation limitation 1.J to perform an unrecited modify operation. See Reply 7.” slip op. at 17
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“involves reading data out of VM, and Dr. Bagherzadeh’s deposition testimony that reading data out of VM is unnecessary for a read/modify/write operation contradicts Patent Owner’s argument. See PO Resp. 26–28; Ex. 1034, 8:23–9:6, 11:8–17 (admitting read/modify/write operation directly overwrites data in VM without any read of VM). Similarly, Dr. Bagherzadeh’s testimony that claim 1 “recites being able to read out data, modify it in VM, and read it back to the NVM” (Sur-reply 4, citing Ex. 2004 ¶ 58) is conclusory and entitled to little weight. See 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (nothing requires a fact finder to credit the inadequately explained testimony of an expert).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“art include “(1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field.” Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Resp. After considering the evidence and arguments of the complete record, we determine that Petitioner has shown, by a preponderance of the evidence, that the combination of Tsunoda and Kolokowsky teaches limitation 1.F, and that a person of ordinary skill in the art would have had a reason to combine the references in the manner Petitioner proposes, with a reasonable expectation of success.” slip op. at 48
Patent outcomesUS 9,792,219 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,792,219 - PTAB · Mar 18, 2022 · IPR2021-01537 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on claims 1–28 and all asserted grounds, finding a reasonable likelihood that claims would have been shown unpatentable, including as obvious over the asserted references.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We apply the claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2020). 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 then 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 does not challenge Petitioner’s proposed claim interpretation. Prelim. Resp. 19. On this record, we determine that no claim terms require express construction.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts 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). Patent Owner does not challenge Petitioner’s proposed definition of one of ordinary skill in the art. See Prelim. Resp. 19. In light of the record before us, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art because it is consistent with the disclosures of the applied prior art references and the ’390 patent. 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
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’390 patent. Thus, we institute inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Similarly, at this stage in the proceeding, we are not persuaded that Patent Owner’s arguments about hindsight undercut the sufficiency of Petitioner’s showing for purposes of trial institution. Petitioner provides sufficient reasoning, on this record, why one of ordinary skill in the art would have been motivated to combine the references with a reasonable expectation of success, supported by expert testimony. Accordingly, Petitioner has provided “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” without impermissibly resorting to hindsight. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Regarding Patent Owner’s assertions about FMA and alpha-alumina starting materials and the differences between the two, we have reviewed Dr. Haller’s testimony and do not find that Patent Owner’s assertions are sufficient to cast doubt on his opinions on this issue. At this stage in the proceeding, this testimony is uncontroverted by anything but attorney argument on the issue of FMA and alpha-alumina starting materials.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,084,390 - Allstate Insurance Company v. Atos, LLCInstitutedPTAB · Mar 8, 2022 · IPR2021-01449 · APJ Julia Heaney · IPR · Institution
The Board instituted review of claims 1–5 on all asserted grounds, finding a reasonable likelihood that claims 1, 2, and 5 are unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . 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). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention “would have been someone with a bachelor’s or master’s degree in the field of mechanical engineering, electrical engineering, or physics or with a bachelor’s or master’s degree in a related field and at least three years of experience in designing or developing portable device systems.” Pet. 4 (citing Ex. 1003 ¶ 52). Petitioner further argues the “Skilled Artisan would have been aware of the types of portable devices discussed below and would have known how to utilize the portable devices and their accelerometers to detect motion while inside a vehicle,” and “would have known how to model the forces on moving objects in line with Newtonian Mechanics.” Id. Patent Owner does not dispute the level of ordinary skill in the art. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’174 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“appear only in claim 5. Claim 5 is at issue in Grounds 4 and 5, but no issue in Ground 4 turns on construction of either claim term. As to Ground 5, for the reasons discussed below, we need not decide at this stage of the proceeding whether Kim discloses an “operation indicator” under either party’s proposed construction, because we determine that Petitioner has met the threshold for institution based on other claims and grounds asserted in the Petition. See SAS Guidance. Therefore, at this stage of the proceeding, no issue turns on our construction of “operation indicator” or “on-board component,” and we determine we need not construe either term. 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))). This does not constitute a determination regarding the persuasiveness of either party’s arguments; we leave claim construction as an open question for the parties to address during trial. In that regard, we remind Patent Owner that any argument not raised in its Patent Owner response pursuant to 37 C.F.R. § 42.120 may be deemed waived.” slip op. at 9
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“analogous art. Under In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004), we determine analogous art based on (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. According to Patent Owner, the ’174 patent is directed to using the sensors of a portable device to accurately determine changes in operational state of a vehicle, such as vehicle cornering, using the relationship between vectors derived from the sensors’ output. Prelim. Resp. 3. On this preliminary record, Johnson describes monitoring driver behavior using sensors on a mobile phone (Ex. 1010, 1609), and Kleppner describes inter alia using vector operations to determine the direction of rotation of a moving object. See supra II.D.1. Thus, both references appear reasonably pertinent to the problem with which the inventors of the ’174 patent were involved.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,846,174 - Sunspec Alliance v. Tigo Energy, Inc.InstitutedPTAB · Jan 28, 2022 · IPR2021-01286 · APJ Julia Heaney · IPR · Institution
Instituted IPR of claims 1, 5–7, 12, and 13 on all petitioned grounds; Moine anticipation of claims 1, 6, 7, 12, and 13 established the required likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . 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). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“A. Claim Construction Petitioner contends the claim term “the location controller,” as recited in claim 1 of the ’321 patent, should be construed to mean “the local controller,” because the term “location controller” has no apparent antecedent basis in the claim and does not appear anywhere in the 3 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102 and 103 that became effective on March 16, 2013. Because the ’321 patent issued from an application filed before March 16, 2013, we apply the pre-AIA versions of the statutory bases for unpatentability. 4 FR Patent Application Publication No. 2894401 A1 to Moine, published June 8, 2007 (Ex. 1005). 5 US Patent No. 5,054,023 to Kronberg, issued October 1, 1991 (Ex. 1006). 6 US Patent No. 8,531,055 B2 to Adest et al., issued September 10, 2013 (Ex. 1007). specification of the ’321 patent, and further in light of the fact that claim 1 first recites “a local controller.” Pet. 10–11. Other than the aforementioned claim term, Petitioner states no express constructions of the claims are necessary to assess whether the prior art reads on the challenged claims. Id. at 9 (citing Ex. 1002 ¶ 35). Having considered Petitioner’s argument, we can reach a determination of the reasonable likelihood of proving unpatentability of the challenged claims without explicitly construing any claim terms at this stage of the proceeding. 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 7
- 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). For purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’321 patent and the asserted prior art, we determine that Petitioner’s definition comports with the qualifications a person would have needed to understand and implement the teachings of the ’321 patent and prior art.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Having reviewed Petitioner’s undisputed evidence and argument regarding claim 1, we find that Petitioner has demonstrated sufficiently that Moine discloses all of the limitations of claim 1. Thus, we are persuaded Petitioner has established a reasonable likelihood of prevailing on its anticipation challenge with respect to claim 1.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,933,321
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.