• Juniper Networks, Inc. v. Correct Transmission, LLCNo claims unpatentable
  PTAB · Aug 8, 2022 · IPR2021-00469 · APJ John R Kenny · IPR · Final written decision

  Claims 1–5, 8–15, and 18–20 were not shown unpatentable under either §103 ground because Petitioner failed to prove the required teachings and reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner “takes no position with respect to Petitioner’s proposed level of skill” and does not offer any alternative characterization. PO Resp. 16. We adopt Petitioner’s characterization of the level of ordinary skill, which we determine is consistent with the ’150 patent’s written description and the asserted prior art.” slip op. at 6

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

    “B. Claim Construction Neither party proposes that we construe any claim term (Pet. 8; PO Resp. 6), and upon reviewing the record, we determine that it is not necessary to expressly construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); 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 6

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “This cross-examination testimony by Dr. Yang, however, is conclusory and thus not persuasive. Dr. Yang does not identify the common features and similarities in the packet header formats between VPLS and Togazaki, nor did she explain why, in light of those features and similarities in the packet headers, it would be easy to bring VPLS into Togazaki. Ex. 2012, 90:25–91.6, 103:11–18. She merely concluded that doing so would be easy. Id. Further, Dr. Yang has not identified the modifications that would be required to provision a VPLS on Togazaki or why an ordinarily skilled artisan would have found those modifications to be minor. Id. Admittedly, it can be difficult for an expert to support cross-examination testimony during cross-examination, but Petitioner had other means to support this testimony. Petitioner could have questioned Dr. Yang on redirect to support this testimony. Further, Petitioner could have submitted a reply declaration from Dr. Yang, particularly where Petitioner knew that it would be relying on this cross-examination testimony in its Reply. Moreover, Dr. Yang could have analyzed the issue of reasonable expectation of success in her original declaration and provided this testimony and its support there. But Petitioner and Dr. Yang did not support the cited cross examination testimony, and unsupported expert testimony is not persuasive. In sum, we determine that Dr. Yang’s declaration and cross- examination testimony do not support a finding of a reasonable expectation of success.” slip op. at 14

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

    “We determine that Petitioner has not proven that an ordinarily skilled artisan would have had a reasonable expectation of success in provisioning a VPLS in Togazaki. Neither the Petition nor the declaration from Dr. Yang that accompanied the Petition analyzed whether an ordinarily skilled artisan would have had a reasonable expectation of success in provisioning a VPLS in Togazaki. Pet. 8–51; Ex. 1003 ¶¶ 66–107, 157–170. Dr. Yang did not submit a second declaration in this proceeding. Pet. Reply (Exhibit List). Nevertheless, Petitioner argues that it proved the requisite reasonable expectation of success with the evidence that it cited in the Petition for other issues (e.g., motivation to combine) including Dr. Yang’s declaration testimony on those issues, Dr. Yang’s cross-examination testimony, Dr. Akl’s cross-examination testimony, and additional evidence that Petitioner cited in its Reply. Id. at 29–33. As set forth below, although we agree with Petitioner that the cited prior art teaches provisioning VPLSs in certain prior art systems, that prior art teaching by itself does not establish a reasonable expectation of success in provisioning a VPLS in Togazaki’s system. Further, the expert testimony and other evidence cited by Petitioner fail to prove, by a preponderance of the evidence, that an ordinarily skilled artisan would have had a reasonable expectation of success in provisioning a VPLS in Togazaki’s system.” slip op. at 10

  Patent outcomesUS 7,983,150 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 7,983,150
• Fantasia Trading LLC D/B/A Ankerdirect v. Cognipower, LLCNo claims unpatentable
  PTAB · May 11, 2022 · IPR2021-00067 · APJ Jeffrey S Smith · IPR · Final written decision

  The Board held claims 1, 2, 8, 10, 18, 25, 27, 30–33, 37, 38, 40, 43–46, 49, 52–55, and 58–61 not shown unpatentable over either asserted obviousness combination.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Mr. Bohannon testifies that an ordinarily skilled artisan would have “B.S. degree, or its equivalent, in electrical engineering or physics and approximately two years of practical experience working with switching regulators and analog/mixed signal circuit design, or an equivalent 1 US 2011/0096573 A1, published Apr. 28, 2011 (Ex. 1005). 2 US 6,466,461 B2, issued Oct. 15, 2002 (Ex. 1006). 3 US 5,498,995, issued Mar. 12, 1996 (Ex. 1007). combination of academic study and work experience.” Ex. 1003 ¶ 41. Mr. Sandler uses the same definition for his analysis. Ex. 2001 ¶ 19. We are persuaded that Messrs. Bohannon’s and Sandler’s description of the level of ordinary skill in the art is appropriate for the subject matter of the ’031 patent, and, for this Decision, we adopt that description.” slip op. at 7

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

    “B. Claim Construction We determine that we do not need to construe any claim term expressly for this Decision. 4 Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). III. ANALYSIS OF ASSERTED GROUNDS “In an inter partes review . . ., the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). “[T]he burden of proof is on the petitioner to prove unpatentable those issued claims that were actually challenged in the petition for review and for which the Board instituted review.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016). To satisfy its burden of proving obviousness, a petitioner must articulate a reason why a person of ordinary skill in the art would have combined or modified prior art references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any 4 We authorized the parties to file additional briefs regarding the meaning of the term “frequency” and appreciate the parties’ briefing of that issue. Papers 50–54. We have nevertheless determined that we do no need to construe that term for this Decision.” slip op. at 8

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “identify Zhu’s purported bias circuit. Inst. Dec. 30. Although we did not decline institution on that basis, we do agree with Patent Owner that, in the Petition, Petitioner should have identified the purported bias circuit in Zhu that an ordinarily skilled artisan would have been motivated to improve. Further, in our Institution Decision, we instructed Petitioner to identify Zhu’s purported bias circuit during the trial. Id. As set forth below, during trial, Mr. Bohannon, upon whose testimony Petitioner relies to prove a motivation to combine, gave inconsistent testimony regarding that bias circuit. That inconsistent testimony, coupled with Mr. Bohannon’s initial failure to identify Zhu’s bias circuit, diminishes the weight we accord to Mr. Bohannon’s testimony regarding motivations to combine. As mentioned, the Petition does not identify the bias circuit in Zhu that it claims an ordinarily skilled artisan would be motivated to improve. Pet. 12–13. In his original declaration, Mr. Bohannon also does not identify that bias circuit. Ex. 1003 ¶¶ 56–58. Zhu itself does not show or discuss any bias circuit. Ex. 2015 ¶ 118. Thus, Mr. Bohannon’s original testimony regarding motivations to combine lacks specificity: all four rationales set forth by Mr. Bohannon are directed to improving a bias circuit in Zhu, which Mr. Bohannon did not identify. Ex. 1003 ¶¶ 56–58; Pet. 12–13. As discussed, in our Institution Decision, we instructed Petitioner to identify the bias circuit in Zhu that an ordinarily skilled artisan would have been motivated to improve. Inst. Dec. 30. During subsequent cross-examination, Mr. Bohannon was asked to identify that bias circuit and identified the wire in Figure 3 of Zhu from Vout up to VCC at controller 320 as Zhu’s bias circuit. Ex. 2016, 186:4–6 (“The bias circuit was just a wire from Vout or trace out of circuit, probably a trace out of PCB going from Vout to 320.”). After Mr. Sandler testified that there was no evidence that a wire would have the problems that Mr. Bohannon identified Zhu’s bias circuit as having (Ex. 2015 ¶ 125), Mr. Bohannon changed his identification of Zhu’s bias circuit (Ex. 1025 ¶ 27), now identifying the elements highlighted in red in the annotated portion of Figure 3 of Zhu, reproduced below: Ex. 1025 ¶ 27. The above annotated figure additionally identifies diode 313, capacitor 314, and the wire extending from Vcc to Vout as Zhu’s bias circuit. Id. This latter identification is not only inconsistent with Mr. Bohannon’s cross examination testimony, it is also inconsistent with his original declaration testimony. In his original declaration, Mr. Bohannon illustrated the combination of Zhu and Mao as follows: Ex. 1003 ¶ 57. Mr. Bohannon described this combined structure as showing “the bias circuitry of FIG. 9 of Mao has been attached in place of the bias circuitry in Zhu, which merely powered the secondary controller using the output voltage.” Id. ¶ 58 (emphasis added). As can be seen from the above figure, diode 313 and capacitor 314 from Zhu Figure 2 were not replaced in this combined structure. Thus, Mr. Bohannon’s reply testimony that diode 313 and capacitor 314 are part of what he originally referred to as Zhu’s bias circuit is inconsistent with his original declaration testimony. This inconsistent testimony, coupled with the initial failure by Mr.” slip op. at 19

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Bohannon to identify Zhu’s bias circuit, diminishes the weight we accord to Mr. Bohannon’s testimony regarding motivations to combine. The proper identification of Zhu’s bias circuit is not a minor issue: all four rationales for Petitioner’s motivation to combine are directed to improving Zhu’s bias circuit. Pet. 12. Further, although, over Patent Owner’s objections, we gave Petitioner the opportunity to identify the bias circuit in Zhu to be improved during trial, we do not permit Petitioner and Mr. Bohannon to identify that bias circuit during cross examination and then completely change that identification after Patent Owner argued the initial identification was flawed. A “petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated Trial Practice Guide”), 73;5 see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (holding that the Board did not err in refusing the reply brief as improper under 37 C.F.R. § 42.23(b) because petitioner relied on an entirely new rationale to explain why one of skill in the art would have combined the references at issue); 37 C.F.R. § 42.23(b); Apple Inc. v. e- Watch, Inc., IPR2015-00412, Paper 50, 44 (PTAB May 6, 2016) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean embark in a new direction with a new approach as compared to the position originally taken in the Petition. Accepting such belatedly presented new arguments would be unjust to the Patent Owner and we decline to do so.”). To be clear, we do not hold the issues concerning Petitioner’s and Mr. Bohannon’s identification of the bias circuit in Zhu to be dispositive, but those issues do diminish the weight we accord Mr. Bohannon’s testimony regarding motivations to combine, which undermines Petitioner’s showing regarding those motivations.” slip op. at 21

  Patent outcomesUS RE47,031 not shown unpatentable
  Claim construction§ 103 obviousness
• Fantasia Trading LLC D/B/A Ankerdirect v. Cognipower, LLCNo claims unpatentable
  PTAB · May 11, 2022 · IPR2021-00071 · APJ John R Kenny · IPR · Final written decision

  Claims 18–23, 25, 30–31, 34–36, 41–43, 45, and 48–51 were not shown unpatentable because the petitioner did not prove motivation to combine for any asserted obviousness ground.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation omitted). Mr. Bohannon testifies that an ordinarily skilled artisan would have had a “B.S. degree, or its equivalent, in electrical engineering or physics and approximately two years of practical experience working with switching regulators and analog/mixed signal circuit design, or an equivalent combination of academic study and work experience.” Ex. 1003 ¶ 43. Mr. Sandler uses the same definition for his analysis. Ex. 2015 ¶ 19. We are persuaded that Messrs. Bohannon’s and Sandler’s description of the level of ordinary skill in the art is appropriate for the subject matter of the ’713 patent, and we adopt that description.” slip op. at 8

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

    “B. Claim Construction Patent Owner requests that we construe the term “regulate” in claims 18 and 48. PO Resp. 13. We determine that we do not need to expressly construe any claim term for this Decision. 6 Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). III. ANALYSIS OF ASSERTED GROUNDS “In an inter partes review . . ., the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). “[T]he burden of proof is on the petitioner to prove unpatentable those issued claims that were actually challenged in the petition for review and for which the Board instituted review.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016). To satisfy its burden of proving obviousness, a petitioner must articulate a reason why a person of ordinary skill in the art would have combined or modified prior art references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of 6 We authorized the parties to file additional briefs regarding the meaning of the term “frequency” and appreciate the parties’ briefing of that issue. Papers 50–54. We have nevertheless determined that we do no need to construe that term for this Decision.” slip op. at 9

  • BurdenFwd all claims patentableNot shown unpatentable

    “III. ANALYSIS OF ASSERTED GROUNDS “In an inter partes review . . ., the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). “[T]he burden of proof is on the petitioner to prove unpatentable those issued claims that were actually challenged in the petition for review and for which the Board instituted review.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016). To satisfy its burden of proving obviousness, a petitioner must articulate a reason why a person of ordinary skill in the art would have combined or modified prior art references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of 6 We authorized the parties to file additional briefs regarding the meaning of the term “frequency” and appreciate the parties’ briefing of that issue. Papers 50–54. We have nevertheless determined that we do no need to construe that term for this Decision. prior art to arrive at the claimed invention.”) (citing InTouch Techs., Inc. v. VGO Commc'ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Further, it is Petitioner’s “burden to burden to demonstrate both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quoting Intelligent Bio–Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1367- 68 (Fed. Cir. 2016)). As set forth below, we determine that Petitioner has not proven that an ordinarily skilled artisan would have been motivated to make any of the combinations set forth in its asserted grounds. Thus, Petitioner has not proven that any challenged claim would be unpatentable. Magnum Oil, 829 F.3d at 1381.” slip op. at 9

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

    “First, Mr. Bohannon’s testimony, upon which Petitioner’s analysis for this rationale to combine relies, is unspecific and conclusory, and thus is entitled to little weight. Ex. 1003 ¶¶ 58–60. Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1022 (Fed. Cir. 2017) (the Board is “not required to credit [a party’s] expert evidence simply because [the party] offered it”); TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“This court’s opinions have repeatedly recognized that conclusory expert testimony is inadequate to support an obviousness determination on substantial evidence review.”); MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1172 (Fed. Cir. 2015); Regents of Univ. of Min v. AGA Med. Corp., 717 F.3d 929, 941 (Fed. Cir. 2013); Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1152 (Fed. Cir. 2004); 37 C.F.R. § 42.22(a)(2) (“Each petition . . . must include . . . [a] full statement of the reasons for the relief requested including material facts.”). As discussed in Section III.A.4.b. above, Mr. Bohannon’s testimony regarding Zhu’s bias circuit was initially unspecific and subsequently contradictory. Further, as set forth below, Mr. Bohannon’s additional testimony for this rationale is conclusory and thus entitled to little weight. In his original declaration, Mr. Bohannon testifies that a passage in Mao (Ex. 1006, 1:50–55) teaches that a secondary bias circuit such as the one disclosed in Zhu can be disadvantageously vulnerable to output voltage fluctuations. Ex. 1003 ¶¶ 58–60. The cited passage reads “Although changing the polarity of the bias winding Tb may somewhat reduce the variation range of the voltage bias Vbias in some cases, the reduction is usually not significant, considering that both input voltage and output voltage can change in a typical dc-dc converter.” Ex. 1006, 1:50–55. This passage does not, on its face, teach that a secondary bias circuit, such as the one disclosed in Zhu, can be disadvantageously vulnerable to output voltage fluctuations. Id. And Mr. Bohannon does not explain why that passage teaches that the circuit disclosed in Zhu is vulnerable to such fluctuations. Ex. 1003 ¶¶ 58–60; Ex. 1025 ¶¶ 39–45. Second, the record indicates Zhu’s circuit would not be vulnerable to” slip op. at 24

  Patent outcomesUS RE47,713 not shown unpatentable
  Claim construction§ 103 obviousness
• Lenovo Holding Company, Inc. / Lenovo (United States) Inc. et al. v. Interdigital Technology CorporationSome claims unpatentable
  PTAB · Apr 14, 2022 · IPR2020-01494 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–8, 10–12, 21–24, and 26 are unpatentable as obvious over Li and Tiedemann, with or without ETSI1997; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “In its Response, InterDigital does not contest Dr. Acampora’s articulation of the level of ordinary skill, except that “InterDigital applies Petitioners’ alleged baseline level of ordinary skill without the phrase ‘at least.’” PO Resp. 3. We agree with InterDigital that the term at least arguably “creates unnecessary ambiguity.” Id. (citing Inst. Dec. 9–10). But we find that Petitioner’s articulation, after deleting the phrase at least, is reasonable in light of the subject matter involved in the ’449 patent, and we adopt it for our decision.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “To the extent that text was copied and pasted in either direction between the Petition and Dr. Acampora’s declaration, we disagree that this mere fact indicates that we should give Dr. Acampora’s testimony less weight. Patent Owner does not argue that Dr. Acampora was uninvolved with the preparation of his declaration, which he signed, under penalty of perjury, and presented as reflecting his own opinions. That typographical errors may, for example, have been propagated from his declaration to the Petition is by itself of little consequence. The cited Wowza decision does not suggest otherwise. In that case, the Board assigned little weight to the expert declaration, not because of its similarity to the petition, but because the declaration did not disclose the underlying facts or data on which its opinion testimony was based. See IPR2013-00054, Paper 16 at 4–5. As Petitioner correctly argues in its Reply, InterDigital does not “identif[y] where Dr. Acampora fails to provide sufficient facts underlying his opinions.” Pet. Reply 1 n.1.” slip op. at 20

  • Prior constructionPrior construction adoptedDecided for petitioner

    “1. “channel quality” InterDigital states that the court in the parallel district court litigation adopted the parties’ agreed construction of “channel quality” as meaning “a value/values quantifying how efficiently downlink resources of a channel can communicate information.” PO Resp. 3–4 (citing Ex. 2008, 1; Ex. 2009, 18). InterDigital contends that the ’449 patent suggests this construction, and that both sides’ experts agree with it. Id. at 4 (citing Ex. 1001, 1:36–61; Ex. 2001 ¶¶ 33–35; Ex. 2002, 21:14–22; Ex. 2007, 26:12–17). Because the meaning of this term is uncontested, and it is consistent with the evidence of record, we adopt the parties’ agreed construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

    “For the above reasons, we determine that Petitioner has persuasively shown that a channel quality of the plurality of downlink resources and the related term a first channel quality indication for the plurality of downlink resources mean “a channel quality value related to the ‘plurality of downlink resources’ as a whole.” Pet. 11–13. We also determine that Petitioner has persuasively shown that both alternatives 8 and 9 reflect embodiments of this term, which is consistent with the district court’s construction that provides “a mean or reference value related to the plurality” as examples of a channel quality value related to the plurality of downlink resources as a whole, explicitly referencing alternative 9 in its analysis. See Ex. 2009, 12– 13.” slip op. at 18

  Patent outcomesUS 9,456,449 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,456,449
• Lenovo Holding Company, Inc. / Lenovo (United States) Inc. et al. v. Interdigital Technology CorporationNo claims unpatentable
  PTAB · Apr 14, 2022 · IPR2020-01505 · APJ John R Kenny · IPR · Final written decision

  Claims 1–10 were not shown unpatentable because Petitioner failed to establish that Zhang disclosed the claimed response to a non-zero grant construed as a power ratio greater than zero.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “Here, we determine that the term “power ratio” in the involved parenthetical in the Specification is a definition, and not merely an illustrative example, of a “grant.” First, the Specification does not identify any other type of grant. Dr. Mahon testifies that the Specification does not provide an example of any other type of grant. Ex. 2001 ¶ 35. Petitioner offers no rebuttal expert testimony and identifies no other type of grant disclosed in the Specification. See Pet. Reply 1–5. We credit Dr. Mahon’s unrebutted testimony that the Specification does not identify any other type of grant. Ex. 2001 ¶ 35. Thus, the parenthetical at issue in this case does not exclude any grant described in the Specification (nor, as set forth in Section II.B.2.ii, any grant set forth by ordinary meaning of the term grant based on the extrinsic evidence of record).” slip op. at 11

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Petitioner offers no extrinsic evidence, other than the testimony of Dr. Kakaes, regarding the ordinary meaning of the term “grant,” and Dr. Kakaes cites no extrinsic evidence to support his definition of the term “non-zero grant.” Pet. 12; Pet. Reply 1–5; Ex. 1003 ¶¶ 63–65. Dr. Kakaes does not separately address the meaning of “grant.” Ex. 1003 ¶¶ 63–65. We find Dr. Mahon’s testimony and the 3GPP Technical Specification persuasive. As set forth above, the 3GPP Technical Specification describes grants as power ratios—a fact that Petitioner does not dispute. Pet. Reply 1– 5. Further, as set forth above, in light of the Specification’s references to 3GPP standards and the 3GPP recitations in the preambles of claims 1 and 6, 3GPP standards from the time of the ’873 patent are highly relevant evidence to an ordinarily skilled artisan of the ordinary meaning of the terms “grant” and “non-zero grant.” iii. A Non-zero Power Ratio is a Power Ratio Greater than Zero Dr. Mahon testifies that a “non-zero grant” should be construed as “a power ratio greater than zero.” Ex. 2001 ¶ 33. Dr. Mahon explains that a power ratio cannot be negative, so a “non-zero” power grant must be greater than zero. Id. ¶ 38. Petitioner does not dispute Dr. Mahon’s testimony that a power ratio cannot be negative. Pet. Reply 1–5. Petitioner further does not dispute that if a “grant” is construed to be a “power ratio,” a “non-zero grant” should be construed to be a “power ratio greater than zero.” Id. We credit Dr. Mahon’s testimony that a power ratio cannot be negative. Ex. 2001 ¶ 38. Thus, in light of the Specification’s and extrinsic evidence’s teachings that a “grant” is a “power ratio,” we construe “non-zero grant” to be a “power ratio greater than zero.”” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “2. Claim 1 Claim 1 recites the following limitation: triggering transmission of scheduling information (SI), from the WTRU to a Node-B, in response to the WTRU having a non-zero grant smaller than needed preventing the WTRU from sending a medium access control protocol data unit (PDU) of any of a plurality of scheduled medium access control-d (MAC-d) flows. [“responsive limitation of claim 1”] Ex. 1001, 7:36–8:6 (emphasis added). Petitioner does not argue, let alone prove, that Zhang discloses the transmission of scheduling information “in response to the WTRU having a non-zero grant smaller than needed” when “non-zero grant” is construed as a “power ratio greater than zero.” Pet. 25–29; Pet. Reply 1–5, 12–13. Thus, Petitioner has not proven that claim 1 is anticipated by Zhang. 3. Claim 5 Claim 5 depends on claim 1. Ex. 1001, 8:15–16. Petitioner relies on its showing for claim 1 for the limitations that claim 5 incorporates from claim 1. Pet. 29–30. Thus, Petitioner has not proven that claim 5 is anticipated by Zhang.” slip op. at 25

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “B. Ground 2: Asserted Obviousness over Zhang Petitioner asserts that claims 1, 5, 6, and 10 would have been obvious over Zhang. Pet. 5. For the responsive limitations of claims 1 and 6, Petitioner relies on its showing for Ground 1. Id. at 32–33. Thus, Petitioner has not proven that claims 1 and 6 would have been obvious over Zhang. For claims 5 and 10, Petitioner also relies on its showing for Ground 1. Id. at 33. Thus, Petitioner has not proven that claims 5 and 10 would have been obvious over Zhang. C. Ground 3: Asserted Obviousness over Zhang and TS 25.321 Petitioner asserts that claims 1–10 would have been obvious over Zhang and TS 25.321. Pet. 5. For this ground, Petitioner argues “[t]o the extent one might argue that Zhang does not . . . sufficiently disclose a WTRU configured to process ‘a plurality of scheduled medium access control-d (MAC-d) flows,’ it would have been obvious to include that functionality in the WTRU of Zhang in view TS 25.321.” Id. at 34 (emphasis omitted). For the responsive limitations of claims 1 and 6, Petitioner relies on its showing for Ground 1. Id. at 34–40, 48. Thus, Petitioner has not proven that claims 1–10 would have been obvious over Zhang and TS 25.321. D. Ground 4: Asserted Obviousness of Claims 1, 5, 6, and 10 over Zhang and Lohr Petitioner asserts that claims 1, 5, 6, and 10 would have been obvious over Zhang and Lohr. Pet. 5. For this ground, Petitioner argues “[t]o the extent one might argue that Zhang alone, or Zhang in combination with TS 25.321 do not does not sufficiently disclose a WTRU configured to process “a plurality of scheduled medium access control-d (MAC-d) flows,’ it would have also been obvious to include that functionality in the WTRU of Zhang in view” of Lohr. Id. at 52–53 (emphasis omitted). For the responsive limitations of claims 1 and 6, Petitioner relies on its showing for Ground 1. Id. at 52–55. Thus, Petitioner has not proven that claims 1, 5, 6, and 10 would have been obvious over Zhang and Lohr. E. Ground 5: Asserted Obviousness of Claims 1–10 over Zhang, Lohr, and TS 25.321 Petitioner asserts that claims 1–10 would have been obvious over Zhang, Lohr, and TS 25.321. Pet. 5. For this ground, Petitioner argues that claims 1, 5, 6, and 10 would have been obvious over Zhang and Lohr for the reasons set forth for Grounds 1–4. Id. at 56. Thus, Petitioner has not proven that claims 1–10 would have been obvious over Zhang, Lohr, and TS 25.321. See Sections III.A–D above.” slip op. at 27

  Patent outcomesUS 8,797,873 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,797,873
• Unified Patents, LLC v. Commworks Solutions, LLCInstituted
  PTAB · Feb 14, 2022 · IPR2021-01297 · APJ Jennifer Meyer Chagnon · IPR · Institution

  The Board instituted IPR on claims 1–6, 9–13, and 16–20 on all petition grounds, finding a reasonable likelihood of success on obviousness over Rune and ETSI.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “review under 35 U.S.C. § 314, which provides that an inter partes review may be instituted only upon a showing 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). Moreover, if the Board institutes a trial, the Board will institute on all challenges raised in the petition. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018) (“SAS”) (holding that a decision to institute under 35 U.S.C. § 314 may not institute review on fewer than all claims challenged in the petition); see also Patent Trial and Appeal Board Consolidated Trial Practice Guide 64 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (“CTPG”) (“The Board will not institute on fewer than all claims or all challenges in a petition.”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “having ordinary skill in the art would have had “(1) an undergraduate degree in electrical engineering or closely related scientific field, such as computer engineering, or similar post-undergraduate education; and (2) at least two years of experience in mobile telecommunications, with more education substituting for less experience and vice versa.” Pet. 5–6 (citing Ex. 1008 ¶¶ 30–32). At this stage of the proceeding, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art. See generally Prelim. Resp. Based on the current record and for the purposes of this Decision, we adopt Petitioner’s proposed description of the person of ordinary skill in the art as it is supported by Dr. Haas’s testimony and is consistent with the ’846 patent and the asserted prior art.” slip op. at 10

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

    “As Patent Owner correctly notes, the ’846 patent describes that “the Transport Address (TA) . . . is a current Care of Address of a mobile subscriber.” Ex. 1001, 1:23–24; Prelim. Resp. 4. And, the ’846 patent further describes that “[a] care-of address is an IP address associated with a mobile node while the subscriber is visiting a particular foreign link.” Ex. 1001, 3:32–34; Prelim. Resp. 4. The ’846 patent also describes, however, that the “Care-of Address” is “part of the TA [Transport Address].” Ex. 1001, 4:32 (emphasis added); Pet. 7. And, claim 6, which depends from claim 1, further recites “wherein the transport address comprises a care-of-address of a mobile subscriber.” Ex. 1001, 6:48–49. Construing transport address to be limited to the care-of-address would render claim 6 superfluous. See Versa Corp. v. Ag-Bag Int’l Ltd., 392 F.3d 1325, 1330 (Fed. Cir. 2004) (“The doctrine of claim differentiation ‘create[s] a presumption that each claim in a patent has a different scope.’” (quoting Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed.Cir.1998))). In other words, although we agree that the proper construction of transport address encompasses a care-of-address, we do not agree with Patent Owner that it is necessarily limited thereto. See Pet. 7 (“Consistent with the specification, this construction encompasses a care-of-address . . . .” (citing Ex. 1008 ¶ 33)); Prelim. Resp. 4–5; cf. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (“Interpretation of descriptive statements in a patent’s written description is a difficult task, as an inherent tension exists as to whether a statement is a clear lexicographic definition or a description of a preferred embodiment. The problem is to interpret claims ‘in view of the specification’ without unnecessarily importing limitations from the specification into the claims.”). Patent Owner also argues that Petitioner’s proposed construction “ignores the ’846 patent’s . . . repeated references to the problem—and identified solution—of successfully routing to a subscriber within ‘3G All-IP’ networks.” Prelim. Resp. 5. The ’846 patent, however, expressly indicates that “the example embodiments of the present invention have been described with respect to currently used networks, such as [3G10] All-IP mobile networks, and standards for simplicity. It is, of course, understood that the present invention is not limited thereto.” Ex. 1001, 6:22–27 (emphasis added). At this stage of the proceeding, Patent Owner does not cite persuasive evidence supporting that a person of ordinary skill in the art would understand that the ordinary and customary meaning of “transport address” limits the claims to 3G All-IP networks. Based on the record now before us, we are not persuaded that the claims are clearly limited to 3G All-IP networks. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”).” slip op. at 11

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

    “a [person of ordinary skill in the art] would have been motivated to combine, and would have had a reasonable expectation of success in combining, ETSI’s teachings regarding the initial registration of the mobile device into Rune’s system. Indeed, Rune references the concepts discussed in ETSI in its discussion of recovery of an HLR fault, and a [person of ordinary skill in the art] would have known that such concepts would have applied the service protocols consistent with ETSI’s teachings. Id. (citing Ex. 1003, 2:57–3:9; Ex. 1008 ¶¶ 52–56); see also id. at 18–19 (discussing motivation to combine in more detail). Patent Owner does not challenge Petitioner’s reasons to combine Rune and ETSI. See generally Prelim. Resp. On the record now before us, we find Petitioner’s showing sufficient in this regard.” slip op. at 24

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,923,846
• Samsung Electronics Co., Ltd. v. Acorn Semi, LLCSome claims unpatentable
  PTAB · Feb 9, 2022 · IPR2020-01282 · APJ John R Kenny · IPR · Final written decision

  Claims 1–5 and 8–10 are unpatentable: claims 1–3 and 8–10 are anticipated by Goodnick, and claims 4 and 5 are obvious. The other challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The Patent Owner Preliminary Response did not comment on the level of ordinary skill in the art. In our Institution Decision, we were persuaded that Petitioner’s description of the level of ordinary skill is appropriate for the subject matter of the ’395 patent and applied it in that Decision. Inst. Dec. 9–10. The Patent Owner Response does not comment on the level of ordinary skill in the art. See generally PO Resp. Thus, we apply the description of the level of ordinary skill set forth in the Petition in this Decision. Ex. 1126, Schubert Decl. ¶ 66.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “Petitioner’s proposed construction by providing the following definition for the phrase “depinning the Fermi level”: By depinning the Fermi level, the present inventors mean a condition wherein all, or substantially all, dangling bonds that may otherwise be present at the semiconductor surface have been terminated, and the effect of MIGS has been overcome, or at least reduced, by displacing the semiconductor a sufficient distance from the metal. Ex. 1101, 3:36–41. In view of this definition in the Specification and the parties’ agreement in pre-institution briefing, we construed the phrase “depin a Fermi level of the metal electrical contact in the vicinity of the junction” as “passivate the semiconductor surface and reduce the effects of metal-induced gap states in the semiconductor” in our Institution Decision. Patent Owner has not requested that we modify that construction. See generally PO Resp. Thus, we maintain it.” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for petitioner

    “C. An Interface Layer Comprising a Metal Oxide and a Semiconductor Oxide In its Preliminary Response, Patent Owner argued that, in the related litigation, Petitioner and Patent Owner agreed to construe the phrase an “interface layer comprising a metal oxide and a semiconductor oxide” as “said interface layer comprising a layer of a metal oxide and a distinct layer of a semiconductor oxide.” Prelim. Resp. 35 (citing Ex. 2009). Patent Owner asserted that the district court adopted that construction. Id. (citing Ex. 2053, 27). In our Institution Decision, we found that the record supported Patent Owner’s arguments. Inst. Dec. 13 (citing Ex. 2009; Ex. 2053, 27). Further, in our Institution Decision, we noted that no party argued that we should construe the phrase differently than the district court. Id. Thus, we construed “an interface layer comprising a metal oxide and a semiconductor oxide” as “said interface layer comprising a layer of a metal oxide and a distinct layer of a semiconductor oxide.” Id. No party has requested that we modify this construction. See generally PO Resp., Pet. Reply. Thus, we maintain it.” slip op. at 13

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

    “Taken in context, we agree with Dr. Schubert that an ordinarily skilled artisan would have understood Goodnick to refer to Al2O3 as a distinct layer. Ex. 1126, Schubert Decl. ¶ 85; Ex. 1173, Schubert Reply Decl. ¶ 86. Referring to Fig. 8(a), Goodnick states that in an unheated sample with an air grown oxide “[i]t appears that Si has diffused into the Al and collected at the Al2O3-Al interface at the surface. No buildup of Al2O3 is seen at the Al- Si interface.” Ex. 1121, 5. Noting that Fig. 8(b) is a profile of an unheated sample with 30Å of SiO2 at the interface, Goodnick states “[i]n contrast to the air exposed sample, an Al2O3 layer exists at the Al-SiO2-Si interface.” Id. Petitioner notes that, on cross-examination, Dr. Goodnick acknowledged (i) that the Al metal layer would diffuse into the SiO2 interface layer and reduce the portion of the SiO2 layer nearest the Al layer to Al2O3, (ii) that once the Al2O3 layer forms, it would be difficult for aluminum atoms to diffuse through the Al2O3 layer to continue reaction with the SiO2 layer, and (iii) because the reaction is self-limiting, a portion of the original SiO2 layer would remain once the reaction forming the Al2O3 layer stopped. Pet. Reply 6–7 (citing Ex. 1168, Goodnick Tr. 55:5–25, 57:19– 58:8, 59:24–60:7, 81:4–8). In view of, inter alia, Dr. Goodnick’s cross- examination testimony, we are persuaded by Dr. Schubert’s testimony that an ordinarily skilled artisan would have understood that distinct layers of Al2O3 and SiO2 are formed. Ex. 1173, Schubert Reply Decl. ¶¶ 85–98.” slip op. at 25

  Patent outcomesUS 10,090,395 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,090,395
• Samsung Electroncis Co. Ltd. v. Acorn Semi, LLCAll claims unpatentable
  PTAB · Feb 9, 2022 · IPR2020-01183 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–3, 17–18, and 21–24 are unpatentable: claims 1–3 and 17–18 are obvious over Jammy, and claims 21–24 are anticipated by Grupp ’483 and Jammy.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “mental steps that an ordinarily skilled artisan theoretically might have taken after reviewing the minimal disclosure in the ’423 patent. The ’423 patent does not discuss any properties of metal oxides (other than the lower barrier of the metal oxide TiO2) or design considerations concerning the selection of particular oxides to use in the claimed structure, particularly in the context of MIGS separation. Dr. Kuhn cites very little, if any, evidence to support her testimony regarding the knowledge of an ordinarily skilled artisan. Thus, we do not credit this analysis as showing that an ordinarily skilled artisan would have found that the inventors of the pre-2011 priority applications possessed the recited genus. See Ariad, 593 F.3d at 1352 (a description that merely renders the invention obvious does not satisfy the written description requirement); PowerOasis Inc. v. T-Mobile USA, 522 F.3d 1299, 1306 (Fed. Cir. 2008) (“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.”) (quoting In re Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002),” slip op. at 22

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

    “As discussed above, Petitioner has demonstrated Grupp ’483 is prior art to challenged claims 1–3, 17–18, and 21–24 of the ’261 patent. It is undisputed that the priority applications disclose at least some group IV semiconductors. Thus, claims reciting the metal oxide interface layer and Group IV semiconductor are anticipated under In re Slayter, 276 F.2d 408, 411 (CCPA 1960) (“It is well settled that a generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus; in other words, whatever would infringe if subsequent will anticipate if prior.”) and In re Gosteli, 872 F. 2d 1008, 1010 (Fed. Cir. 1989). The additional limitations of the challenged dependent claims are also disclosed in Grupp ’483. See Pet. 25–26. For the reasons discussed above, we conclude that Petitioner has demonstrated by a preponderance of the evidence that claims 1–3, 17–18, and 21–24 are anticipated by Grupp ’483.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “On this record Patent Owner has not provided sufficient evidence of a nexus between the long felt and the specific limitations recited in claims 1–3 and 17–18, e.g., the structure recited in independent claim 1, in which a metal oxide interface layer interposed between a metal and a group IV semiconductor comprising the source or drain of a transistor has a thickness between 0.1 nm and 5 nm.” slip op. at 39

  Patent outcomesUS 9,209,261 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,209,261
• Samsung Electronics Co., Ltd. v. Acorn Semi, LLCSome claims unpatentable
  PTAB · Jan 12, 2022 · IPR2020-01279 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–3 and 13 are unpatentable as anticipated by Goodnick; claim 4 is unpatentable as obvious over Goodnick and Jammy. The other challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for petitioner

    “resistivity” and “specific contact resistance” to be interchangeable. Dec. to Inst. 12. Neither party disagrees with this construction, and we apply the same construction for purposes of the Decision.” slip op. at 8

  • Expert testimonyMotion to exclude, deniedDenied

    “Although Patent Owner contends Dr. Goodnick’s declaration did not open the door for general questioning about metal oxides (PO Opp. 2–3), we agree with Petitioner that the proper scope of cross examination includes Dr. Goodnick’s understanding of what constitutes a distinct layer. A primary issue raised by Patent Owner against Petitioner’s challenge that Goodnick anticipates is that, notwithstanding its use of the term layer, Goodnick does not teach distinct layers that are required by the claim. See Section VI.B. One of those layers is a metal oxide layer (Ex. 1101, claim 1), in particular a titanium oxide layer (claim 6). In view of Dr. Goodnick’s checkerboard analogy in his declaration, it was proper for Petitioner to question Dr. Goodnick about the extent of materials in the checkerboard. Both parties argue there may be implications of Dr. Goodnick’s testimony for purposes of infringement litigation. See Pet. Opp. 4–6; PO Reply 3–4. We do not address those implications. The issue before us is whether Goodnick would have taught or suggested to a person of ordinary skill the limitations of the claims, which the parties agree include distinct layers of metal oxide and other semiconductor oxide. See Section VI.B. As Dr. Goodnick testified that his article did not teach such distinct layers, it was proper for Petitioner to explore Dr. Goodnick’s views concerning the composition of a layer during cross examination. In consideration of the above, Patent Owner’s motion to exclude the Goodnick Metal Oxide testimony is denied.” slip op. at 48

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

    “Taken in context, we agree that a person of ordinary skill would have understood Goodnick to refer to Al2O3 as a distinct layer. Referring to Fig. 8(a), Goodnick states that in an unheated sample with an air grown oxide “[i]t appears that Si has diffused into the Al and collected at the Al2O3- Al interface at the surface. No buildup of Al2O3 is seen at the Al-Si interface.” Ex. 1116, 953. Noting that Fig. 8(b) is a profile of an unheated sample with 30Å of SiO2 at the interface, Goodnick states “[i]n contrast to the air exposed sample, an Al2O3 layer exists at the Al-SiO2-Si interface.” Id. Petitioner notes that, on cross examination, Dr. Goodnick acknowledged (i) that the Al metal layer would diffuse into the SiO2 interface layer and reduce the portion of the SiO2 layer nearest the Al layer to Al2O3, (ii) that once the Al2O3 layer forms, it would be difficult for aluminum atoms to diffuse through the Al2O3 layer to continue reaction with the SiO2 layer, and (iii) because the reaction is self-limiting, a portion of the original SiO2 layer would remain once the reaction forming the Al2O3 layer stopped. Pet. Reply 5–6 (citing Ex. 1168, Goodnick Tr. 55:5–25, 57:19– 58:8, 59:24–60:7). In view of, inter alia, Dr. Goodnick’s cross examination testimony, we are persuaded by Dr. Schubert’s testimony that a person of ordinary skill would have understood that distinct layers of Al2O3 and SiO2 are formed. Ex. 1173 ¶¶ 85–98.” slip op. at 20

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

    “that “the semiconductor region comprises an n-typed doped source or drain of a transistor.” Acknowledging that Goodnick “does not expressly disclose that its n-doped silicon semiconductor region ‘comprises an n-type source or drain of a transistor,’” Petitioner cites Jammy as disclosing this feature. Pet. 27. According to Petitioner, a person of ordinary skill would have combined the teachings of Goodnick and Jammy because Goodnick describes contact metallization processes for semiconductor devices and Jammy describes a semiconductor device. Id. at 28. Patent Owner asserts that Petitioner’s challenge to claim 4 based on the combined teachings of Goodnick and Jammy fails because it is premised on Goodnick teaching a stratified layer of Al2O3 distinct from SiO2. PO Resp. 60. As discussed above, we find that a person of ordinary skill would have understood Goodnick to disclose this feature. See Section VI.B. In consideration of the above, we find that Petitioner has demonstrated by a preponderance of the evidence that a person of ordinary skill would have had reason to combine the teachings of Goodnick and Jammy and that the combined teachings of Goodnick and Jammy would have suggested the limitations of claim 4 to a person of ordinary skill in the art.” slip op. at 24

  Patent outcomesUS 9,905,691 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,905,691
• Samsung Electronics Co., Ltd. v. Acorn Semi, LLCAll claims unpatentable
  PTAB · Jan 12, 2022 · IPR2020-01205 · APJ John R Kenny · IPR · Final written decision

  Claims 1–3, 6, 8–12, and 14–16 are unpatentable as anticipated by Grupp ’483; the priority applications do not support or enable the claims’ full scope.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateEntitled to earlier dateMixed

    “To support a claim to a genus, a specification must disclose “either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010) (en banc). Here, the recited genus is an interface layer comprising a metal oxide, where the interface layer is configured to provide a specific contact resistivity between a contact metal and a semiconductor of than 1 Ω- μm2. Ex. 1001, 18:37–43. It is undisputed that the only species the pre- 2011 priority applications disclose is TiO2, as set forth in the following passage: Two other properties of the dielectric deserve mention. First is the property of the height of the barrier compared to the semiconductor conduction band (for electrons). In making the barrier thinner than a silicide barrier, the tradeoff may be a higher tunnel barrier (e.g., 2 eV for nitride, compared with about half the gap of 0.6 eV for silicide). Spacer layers may be used with lower barriers (e.g., TiO2 has a barrier of less than 1 eV). Nevertheless, even with the higher barrier to electrons, the present inventors have determined that the resistance can still be one hundred times lower than a contact to silicon with a silicide barrier. Id. at 17:59–18:2 (emphasis added).” slip op. at 18

  • Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledNot entitled to earlier dateDecided for petitioner

    “evidence shows, that the disclosure does not enable specific contact resistance down to zero. Ex. 1016, Schubert Decl. ¶¶ 87–90. Instead, Patent Owner argues that one of skill in the art would have understood there to be an “inherent lower limit” and that the claims are enabled because one of skill in the art could achieve that lower limit through experimentation based on the disclosure of patent. We are not persuaded by Patent Owner’s argument, for two main reasons. First, we do not agree that the cases cited by Patent Owner establish that the enablement requirement is satisfied if one of skill in the art could experiment in accordance with the disclosure to find a practical end of an open ended range recited in a claim. Patent Owner principally relies on Andersen Corp. v. Fiber Composites, but the Federal Circuit in that case affirmed the jury verdict of enablement because “the upper limit of the Young’s modulus of the structural member would lie somewhere between the Young’s modulus of the wood fiber and that of the polymer used in the composition.” 474 F.3d at 1377. In other words, there were two known quantities that provided a fixed range. That is not the case here, where Patent Owner does not point to any such predefined limits. Patent Owner also cites a district court case, PerkinElmer Health Scis., Inc. v. Agilent Techs., Inc., 962 F. Supp. 2d 304, 310 (D. Mass. 2013). That case is not directly on point, because it was considering claim construction and not enablement, but that court also found an existing practical upper limit to the” slip op. at 36

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Neither party asks for a construction of the subject claim language, and we determine that the plain meaning of “a specific contact resistivity . . . of less than 1Ω μm2” would encompass all specific contact resistances below 1 Ω-μm2 and down to zero.” slip op. at 35

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableReference is prior artUnpatentable

    “reference for purposes of anticipation under section 102 [] differs from the enablement standard under section 112.” Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318, 1325 (Fed. Cir. 2005). Enablement under section 112, which is required for priority under section 120, requires enablement of the full breadth of a claim. Wyeth and Cordis Corp. v. Abbott Laboratories, 720 F.3d 1380, 1384 (Fed. Cir. 2013); MagSil, 687 F.3d at 1384; 35 U.S.C. § 120. Enablement for anticipation does not; rather it requires only enablement of an embodiment or embodiments that fall within the scope of the claim. Chester v. Miller, 906 F.2d 1574, 1577 (Fed. Cir. 1990) (“a CIP's claim for a genus might not be enabled by a parent's disclosure, but that parent may enable a species that anticipates the CIP's claim for a genus . . . . the Court of Custom and Patent Appeals [] made clear the differences between the requirements for claim-anticipating disclosures and for claim-supporting disclosures”) (citing In re Lukach, 442, F.2d 967, 969–970 (CCPA 1971)). Here, the enablement challenge for priority is for a lack of enablement of the full breadth of the recited range, and in particular, a lack of enablement of the lower part of the recited range (that which is at or near zero). No party has argued that the upper part of the recited range (just below 1 Ω-μm2) is not enabled by either the priority applications or Grupp ’483. See, e.g., Pet. 20; PO Resp. 1–2; Pet. Reply 27–28; PO Sur-reply 17– 18. And enablement by a prior art patent is presumed. In re Antor Media Pharm., Inc., 545 F.3d 1312, 1316 (Fed. Cir. 2008); Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003). Thus, the record does not reflect an inconsistency in holding the priority applications as not enabling the breadth of the recited range while treating Grupp ’483 as enabling the upper part of the range for anticipation. As set forth below, we find that Petitioner has proven that Grupp ’483 anticipates every challenged claim.” slip op. at 42

  Patent outcomesUS 9,461,167 unpatentable
  Claim construction§ 102 anticipation§ 112 disclosurecites Phillips
  Patents in suitUS 9,461,167

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.