- Coxcom, LLC v. Joao Control & Monitoring Systems, LLCSome claims unpatentablePTAB · Feb 15, 2017 · IPR2015-01762 · APJ Beth Z Shaw · IPR · Final written decision
Claims 1, 3–5, 8, 13–17, 20, and 84–86 are unpatentable as obvious over Koether and Crater; claim 44 was not shown unpatentable on that ground.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“owner must provide sufficient rebuttal evidence to bring reasonably into question the accuracy of Petitioner’s identification of RPIs.” See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012). Whether a non-party is a real party in interest is a “highly fact-dependent question” that is addressed on a “case-by-case” basis. See 77 Fed. Reg. 48,759. “A common focus of the inquiry is . . . whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” Id. The concept of control means that “the non-party ‘had the opportunity to present proofs and argument’ . . . or ‘to direct or control the content’ of the filing.” JP Morgan Chase & Co., et al. v. Maxim Integrated Prods., Inc., Case CBM2014-00179, slip op. at 10 (PTAB Feb. 20, 2015) (Paper 11) (“JP Morgan”). “‘The evidence as a whole must show that the non-party possessed effective control over a party’s conduct of the [proceeding] as measured from a practical, as opposed to a purely theoretical standpoint.’” Id. (quoting Gonzalez v. Banco Cent Corp., 27 F.3d 751, 759 (1st Cir. 1994)).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 1001, Abst. It describes the relevant problems encountered in the art as those involved in the control, monitoring, or security of vehicles or premises, in a network environment. Id. at 1:20–52; 3:12–21. The ’363 patent is not directed to specific issues associated with electrical circuits or electrical connections between devices. The Specification identifies no specific problem that stems from the apparatus being a particular type of electrical device. From this evidence, we conclude that a person of ordinary skill in the art with respect to the ’363 patent would be skilled in the field of networked systems. For the foregoing reasons, we are not persuaded that the level of ordinary skill in the art requires specific coursework or education in the form of a degree in electrical engineering. Instead, we are persuaded by Petitioner’s statement of the level of ordinary skill in the art, and our finding of the level of ordinary skill is similar to that proposed by Petitioner, but with a slight modification, i.e., that a basic level of experience is required, at the level of at least two years of experience in networked systems. We find that the level of ordinary skill in the art is that of one having at least two years of working experience with networked systems. A more advanced degree would be paired with a shorter period of working experience.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner has not articulated a persuasive reason for giving Mr. Bennett’s testimony little or no weight. Moreover, as discussed above, we are not persuaded that a person of ordinary skill in the art of the ’363 patent would be required to have a specific degree or coursework in electrical engineering. We are, thus, not persuaded that Mr. Bennett’s answers, during deposition, to questions about his background are wrong or that the entirety of his testimony should be given little or no weight based on this testimony.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“For purposes of the Decision to Institute, we construed the terms “remote,” “premises,” and “located at.” Dec. 8–9. We reviewed and adopted Patent Owner’s explicit definitions for these terms, which Patent Owner provided in the prosecution of the application that issued as the ’363 patent. Dec. 8 (citing Ex. 2002). Based on our review of the full record, we discern no reason to modify or further discuss in this Final Written Decision our constructions for these claim terms. For convenience, these claim constructions are reproduced in the table below. Term Citations Construction Remote Ex. 2002, “‘Remote’ means ‘separate and apart from, or 10–11 external from, or at a distance from or distant from, or not located in.’” Premises Ex. 2002, 8– “‘Premises’ means ‘a building or a structure 9 and the grounds or parcel of land associated with the building or the structure, or a building or structure or a portion, room, or office, of or in the building or structure, or a home, mobile home, mobile building, mobile structure, residence, residential building, office, commercial building, commercial office, structure, equipment, facility, machine, rig, assembly line, or edifice.’” Located at Ex. 2002, 8 “‘Located at’ means ‘situated at, or situated in, or situated on.’”” slip op. at 12
Patent outcomesUS 7,397,363 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSRPatents in suitUS 7,397,363 - Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. et al. v. Home Semiconductor CorporationSome claims unpatentablePTAB · Jun 13, 2016 · IPR2015-00467 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–3, 5–9, 11–19, and 28 are unpatentable as obvious over Emesh and Mak; claim 10 was not shown unpatentable over Emesh, Mak, and Miyazaki.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“5 The level of ordinary skill in the art in this case is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Moreover, although the parties disagree slightly as to the precise education and experience level possessed by a person of ordinary skill in the art, neither party asserts that resolution of the level of skill in the art between these two competing definitions would impact the outcome of this case. See Ex. 1003 ¶ 11; Ex. 2002 ¶ 40.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“persuaded that the reference supports Dr. Rubloff’s testimony that one of ordinary skill in the art would have understood that two layers of tungsten could be deposited in a multi-chambered tool. See Ex. 1005, 9:55–58 (noting that the two tungsten layers could be formed in “different chambers or in different deposition machines”).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“On this record, Petitioner persuasively articulates—supported by the testimony of Dr. Rubloff—that one of ordinary skill in the art would have sought to implement Emesh’s two layer tungsten deposition process within two chambers of Mak’s multi-chamber fabrication tool in order to improve process stability and throughput. Pet. 13–15; Ex. 1003 ¶¶ B4–6, 29–30; Ex. 2005, 457:19–459–15. Petitioner also persuasively articulates that because Mak’s cold wall CVD chamber is similar to the Varian 5101 cold wall system used in Emesh, and because Mak discloses the deposition of tungsten over a broad range of pressures, one of ordinary skill in the art would have understood that Emesh’s tungsten deposition process could be performed in Mak’s multi-chamber tool. Pet. 13–15; Reply 12; Ex. 1003 ¶¶ B6–8 (citing Ex. 1010, 453–454; Ex. 1009, 4:66–5:8, 9:4–46); Ex. 1019 ¶ 2A.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“specifically requires a WF6 flow rate of 10–40 sccm,” see Ex. 2002 ¶¶ 89– 90, we note that the discussion of predetermined flow rates in Emesh is in relation to the “preferred embodiment,” and not the invention as a whole. Ex. 1009, 4:63–65, 5:36–42. Moreover, dependent claim 2 recites that “the flow rate of WF6 is maintained in the range 10 to 40 sccm,” raising a presumption that the WF6 flow rates of Emesh may be broader than 10 to 40 sccm. Id. at 12:39–41; see Bancorp Services v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1275 (Fed. Cir. 2012) (noting that “the presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim”). Thus, we are not persuaded that Emesh teaches away from, or would otherwise discourage one of ordinary skill in the art from modifying, the disclosed WF6 flow rate. Based on the foregoing, we credit the testimony of Dr. Rubloff and find that one of ordinary skill in the art would have sought to modify the WF6 flow rate of Emesh within the range of 40 to 133 sccm (while maintaining a H2/WF6 ratio of 6) with a reasonable expectation of success.” slip op. at 18
Patent outcomesUS 6,030,893 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,030,893
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.