• CMS Cepcor Ltd. / CMS Cepcor Americas LLC v. Sandvik Intellectual Property ABOther
  PTAB · Mar 25, 2026 · IPR2024-01380 · APJ Arthur M Peslak · IPR · Final written decision

  The Board cancelled original claims 1–10 and granted substitute claims 11–19 because Petitioner did not prove claim 11 obvious over Torrence and Piepho.

  RulingsFinal written decision

  • 112 supportGranted

    “relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991)). “[T]he hallmark of written description is disclosure.” Id. “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. “In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.” Yingbin-Nature (Guangdong) Wood Ind. Co., Ltd. v/ Int’l Trade Com’n, 535 F.3d 1322, 1334 (Fed. Cir. 2008). “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Ariad, 598 F.3d at 1351 (citing Capon v. Eshhar, 418 F.3d 1349, 1357–58 (Fed. Cir. 2005)). “This inquiry . . . is a question of fact.” Id. (citing Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985)). Further, inventions in the mechanical and electrical-based arts usually involve predictable factors and can be more predictable than other fields, such as chemistry and biology. See In re Fisher, 427 F.2d 833, 839 (CCPA 1970);” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the 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 active workers in the field.” Best Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)).” slip op. at 15

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

    “D. Claim Construction We determine that no express construction of any claim term is necessary for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 16

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

    “[c]ombin[e] the tapered region of Piepho with the shaft of Torrence, the tapered region would extend from an uppermost extremity of the shaft.” RMTA Opp. 9. But, Petitioner concedes that neither reference discloses a tapered region extending from the uppermost extremity. Petitioner argues that Torrence’s shaft is straight (Amended RMTA Sur-reply 9) and that “[t]he tapered region of Piepho does not extend to the extreme end of the shaft.” RMTA Opp. 11 (emphasis added). Because neither Torrence nor Piepho discloses a shaft with a tapered region that “extends from an uppermost extremity of the shaft,” we find that the combination of Torrence and Piepho does not teach limitation 11[a]. We now analyze whether Petitioner provides reasoning with a rational underpinning why a person of ordinary skill in the art would have been motivated to modify Torrence with Piepho to extend Torrence’s taper from the upper extremity of its shaft. slip op. at 22

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,827,568
• Bio-Rad Laboratories, Inc. v. California Institute Of TechnologyNo claims unpatentable
  PTAB · Mar 23, 2026 · IPR2024-01451 · APJ Tawen Chang · IPR · Final written decision

  Claims 1–19 were not shown unpatentable: Larson did not establish the claimed detection in a single sample volume, and the asserted obviousness combinations did not cure the deficiencies.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner states that, “[f]or purposes of this IPR proceeding, PO does not contest Petitioner’s description of qualifications for a person of ordinary skill in the art (POSA) set forth [above].” PO Resp. 23. In view of the above, and because Petitioner’s uncontested description of one of ordinary skill in the art is reasonable and consistent with the ’921 patent and the cited art, we adopt Petitioner’s definition of a POSA for purposes of this Decision, except that we replace the phrase “at least a year of experience in quantitative and/or dPCR and fluorescence-based analyte detection” with “around a year of experience in quantitative and/or dPCR and fluorescence-based analyte detection.” Pet. 9 (emphasis added).13” slip op. at 14

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

    “We begin with “the context in which a term is used in the asserted claim,” which can be “highly instructive.” Phillips, 415 F.3d at 1314. In this case, claim 1 recites that the claimed assay is “capable of unambiguously detecting the presence or absence of each of said at least M analytes, in any combination of presence or absence, in a single sample volume, . . . wherein the analytes are amplified in the single sample 15 In this regard, we note that Petitioner’s claim construction position is not predicated on the collection of droplets being reconstituted into its original, pre-partition form prior to amplification; rather, the droplets remain compartmentalized from each other in the PCR thermal cycling tube. Tr. 65:21–66:9 (Petitioner’s counsel explaining that the droplets do not combine in the PCR thermal cycling tube but, rather, are “suspended in an immiscible fluid and analyzed en masse”). indicates that the first instance of single sample volume, i.e., the single sample volume in which the presence or absence of each M analytes are to be detected, is the antecedent basis for the second instance of “single sample volume,” i.e., the single sample volume in which the analytes are amplified. Thus, as the parties appear to agree, the single sample volume in which amplification takes places must be the same single sample volume in which the presence or absence of analytes are to be detected. We are not persuaded that, when accorded its plain and ordinary meaning, a single sample volume divided into a collection of droplets would be considered the “same” single sample volume prior to its partition.” slip op. at 17

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

    “With respect to the limitation, “wherein the analytes are amplified in the single sample volume,” Petitioner asserts that “Larson discloses PCR assays that amplify target polynucleotide in a single sample volume, specifically a portion of the reaction mixture that is subsequently partitioned into droplets.” Pet. 31 (emphasis added). There is no dispute that the amplification of the analytes in Larson occurs in the droplets. Larson ¶¶ 6–7 (explaining that “[d]igital PCR (dPCR) is an alternative quantitation method in which dilute sample are divided into many separate reactions” and that “[t]he template is amplified in the droplet for detection”) (emphasis added). Because the claims require that amplification of the analytes be in the same sample volume in which the at least M analytes, in any combination of presence or absence, is unambiguously detected, and because the pre-partition single sample volume is not the same single sample volume as the collection of droplets after partition under our claim construction set forth above, we find Petitioner has not shown, by a preponderance of evidence, that claims 1–10 and 13–19 are anticipated by Larson.17 Tr. 68:12–69:14 (Petitioner’s counsel” slip op. at 27

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

    “Although we agree with Petitioner that Larson contemplates scenarios in which droplets may contain more than one target molecule and does not require the exclusion of such multiple occupancy droplets in all embodiments, we are nevertheless not persuaded Petitioner has shown, based on a preponderance of evidence, that Larson renders obvious an assay capable of unambiguously detecting, in such multiple occupancy droplets, the presence or absence of each of at least M analytes, in any combination of presence or absence, when M is greater than F and F is at least 2.” slip op. at 32

  Patent outcomesUS 11,827,921 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,827,921
• Infineon Technologies Americas Corp. v. Mosaid Technologies Inc.Instituted
  PTAB · Mar 17, 2026 · IPR2025-01487 · APJ John A Squires · IPR · Director review

  The Director instituted review of claims 1–21 and bound Petitioner to its district court construction of “clock output signal” for claims 4, 5, and 19.

  RulingsDirector review decision

  • Director reviewDirector review, grantedGranted

    “Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–21 of the ’381 patent is instituted; FURTHER ORDERED that Petitioner shall be bound by its proposed district court construction of the term “clock output signal” in its analysis of claims 4, 5, and 19 of the ’381 patent; and” slip op. at 4

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

    “Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–21 of the ’381 patent is instituted;” slip op. at 4

  • Prior constructionTerm construed petitioner constructionDecided for patent owner

    “positions in the district court that are inconsistent with those presented in the Petition and fails to sufficiently explain why those different positions are warranted. Prelim. Resp. 3–4, 9 (citing Revvo Techs., Inc. v. Cerebrum Sensor Techs., Inc., IPR2025-00632, Paper 20 (Director Nov. 3, 2025) (precedential) (“Revvo”)). In particular, Patent Owner notes that in District Court, Petitioner has proposed a construction of the term “clock output signal” in dependent claims 4, 5, and 19 as being “a periodic signal that synchronizes system operations.” Id. at 9 (quoting Ex. 2007, 12). In the Petition, however, Petitioner contends that “no claim terms require a formal construction for purposes of addressing the grounds in this Petition.” Pet. 2.” slip op. at 2

  Claim construction
  Patents in suitUS 9,972,381
• Google LLC v. Mindbasehq, LLCAll claims unpatentable
  PTAB · Mar 16, 2026 · IPR2021-01252 · APJ Kara L Szpondowski · IPR · Remand

  On remand, claims 14–19, 33–40, and 43–46 were held unpatentable as obvious; the Federal Circuit’s affirmed findings leave claims 1–13, 20–32, 41, and 42 unpatentable as well.

  RulingsRemand decision

  • RemandOther

    “to both cases vacating and remanding in part and affirming in part our Final Written Decisions. Appeal Dec. With respect to Petitioner’s appeals, the Federal Circuit addressed the “dictionary routine” claims (claims 14–19 and 33–40) and the “normalization” claims (claims 43–46). Appeal Dec. 7–14. For the “dictionary routine” claims, the Federal Circuit vacated and remanded, stating that In sum, as Google contends and we now hold, the “dictionary routine” claims can be practiced by use of an already-created dictionary, and do not also require the automatic creation of a dictionary. The Board needs to consider Google’s evidence and argument by applying this construction of the automatically classifying and storing limitation, and using this understanding to determine whether Conlon may, in fact, render the “dictionary routine” claims obvious (and, relatedly, whether its prior distinctions of Conlon may be immaterial). Appeal Dec. 10–11. For the “normalization” claims, the Federal Circuit also vacated and remanded, stating that our “decision to exclude Google’s rebuttal argument and supplemental declaration is based on a clear factual error,” so on remand we “must include evaluation of the evidence and argument Google provided in reply.” Id. at 13–14. With respect to Patent Owner’s cross-appeals, the Federal Circuit affirmed. Id. at 14–16.” slip op. at 3

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

    “The Federal Circuit concluded that Petitioner’s construction of “automatically classifying and storing” (as recited in limitation [14.3]), is correct. Appeal Dec. 8. That is, “the ‘dictionary routine’ claims can be practiced by [the] use of an already-created dictionary, and do not also require the automatic creation of a dictionary.” Id. at 10; see also Reply 7 (the limitation is “directed to the use of a dictionary function to automatically look up words and their syntax”); Appeal Dec. 8 (“nothing about the term . . . would inform a person of ordinary skill in the art that automatic ‘creation’ of a database, in addition to the ‘use’ of an already-created database, is a requirement of the dictionary routine claims”); id. (“the plain and ordinary meaning of the claim language is broad enough to include ‘use’”); id. (agreeing with Petitioner that “the specification describes the ‘dictionary routine’ as the act of looking up words already in the database”); id. at 9 (stating that “[i]t is notable, as well, that the specification nowhere describes automatically creating a dictionary; all instances of creating dictionary entries rely, at least in part, on manual data entry by users”). As directed by the Federal Circuit, we will apply this construction in our analysis.8 Id. 8 Patent Owner argues that the Federal Circuit “cherry-picks” and misinterprets the patents’ specifications, and “ignores the clearly contrary specification language.” PO Remand Br. 4–5, 10; id. at 8 (arguing that that the specification clearly set forth the definition of the claim term, and “the Board must accept term definitions . . . above all external definitions”). We do not consider these arguments on the construction of this limitation, because the Federal Circuit has directed us to proceed under its construction of the limitation. We also agree with Petitioner that the Federal Circuit’s claim construction is “foreclosed from further consideration” under its” slip op. at 17

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

    “We agree with Petitioner that claim 43 is obvious over the combination of Conlon, Miller, and Fong. The Federal Circuit stated, “[i]n this context, ‘normalization’ generally refers to de-duplicating and simplifying database entries (for instance, combining entries for ‘car’ and ‘automobile’).” Appeal Dec. 4 (cited at Pet. Response Br. 5). This is consistent with the disclosure in the ’433 patent. E.g., Ex. 1001, 16:55– 17:24 (discussing, for example, “recogniz[ing] that the differently named data elements in different structures are actually the same data element . . . is referred to as normalizing the names of the same data elements,” “recogniz[ing] that the same named data elements in different structures are actually different data elements . . . is referred to as normalizing the names of the different data elements,” and “normalizing multiple single data elements”). This is also consistent with how Fong describes “normalization.” Ex. 1029, 76 (The “Function” of “Normaliz[ing] the collection of entities” is to “[r]emove redundancies and detect errors”); see also Ex. 1057 ¶ 226. Patent Owner’s arguments that Fong’s normalization is “different” from the normalization described in the ’433 patent does not persuasively rebut Petitioner’s arguments. As Petitioner points out, Patent Owner does not provide a construction for “normalization,” despite claiming that the term is “defined” in the ’433 patent. Pet. Remand Resp. Br. 6; PO Remand Br. 13. Moreover, although Patent Owner purports to identify differences between the ’433 patent and Fong, the “normalization” applied is expressly recited in limitations [43.1.1], [43.1.2], and [43.2], and the subsequent actions taken on those normalized databases (i.e., comparing and recording) are recited in limitations [43.3]–[43.5]. That is, the “normalization” required by the claim is reflected in the claim language itself, and is broader than argued by Patent Owner. See In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art”). Patent Owner does not explain how these purported “differences” (e.g., that Fong may require the use of “database keys,” “identifiers,” “entities,” or determining ‘non-key attributes’ from key attributes) impacts the claim language, or Petitioner’s showing. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (A prior art reference “must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect”). For the same reasons, as well as those set forth by Petitioner, we are also not persuaded by Patent Owner’s arguments that each DBMS requires a normalization process that is customized for it. Pet. Remand Resp. Br. 6–7. These arguments by Patent Owner also are not commensurate with the scope of the claim language, which does not recite a DBMS, and generally recites “normalizing” or “normalized” without regard to the DBMS. Id. Dr. Jansen provides an example of a database in unnormalized form that is converted into a normalized form, based on Fong’s four conditions, as applied to the claim language. See Reply 31–35; Ex. 1057 ¶¶ 226–261. Therefore, we are not persuaded by Patent Owner’s arguments that Petitioner has not explained how the example maps onto the limitations. PO Remand Resp. Br. 6–12. Patent Owner’s complaint that Dr. Jansen created the graphic in the example does not undermine Petitioner’s showing. E.g., Trial Practice Guide,14 I.G., (“Experts may testify about the teachings of the prior art and how they relate to the patentability of the challenged claims.”). We find Dr. Jansen’s testimony credible and persuasive in explaining why the combination of Conlon and Fong teaches the claim limitations. After considering the properly presented evidence and arguments of the complete record, we determine that Petitioner has shown, by a preponderance of the evidence, that the combination of Conlon, Miller, and Fong teaches the limitations in claim 43, that one of ordinary skill in the art would have been motivated to combine the teachings of Conlon, Miller, and Fong, and that claim 44 would have been obvious over Conlon, Miller, and Fong. 2. Analysis of Dependent Claims 44–46 Claims 44–46 depend, directly or indirectly, from claim 41. We, likewise, determine whether the combination renders obvious claims 44–46, taking into account the arguments made in Petitioner’s Reply Briefs and Dr. Jansen’s Supplemental Rebuttal Declarations. Petitioner contends that dependent claims 44–46, would have been obvious over Conlon, Miller, and Fong, and provides explanation as to how the prior art teaches each claim limitation. Pet. 84–86; Reply 35–39; Pet. Remand Br. 13–14. Patent Owner does not provide further briefing on dependent claims 44–46. 14 Available at https://www.uspto.gov/patents/ptab/trial-practice-guide#step2. Patent Owner did not specifically challenge Petitioner’s contentions as” slip op. at 31

  • Strike new argumentNew argument disregardedDecided for petitioner

    “Patent Owner’s arguments do not undermine Petitioner’s showing. Patent Owner did not specifically challenge Petitioner’s contentions as to the sufficiency of Conlon’s disclosure for claim 1410 in the Patent Owner Response. In the Sur-replies, Patent Owner argues that the claim requires that at least some relationships are created “automatically,” and “these automatic embodiments . . . are represented in this group of claims.” Sur-reply 9. Along these lines, in the additional briefing Patent Owner argues that Conlon does not teach “automatic,” but merely teaches “semi-automatic.” PO Remand Br. 9–10. The crux of Patent Owner’s argument, however, is that the Federal Circuit did not properly construe the limitation, and ignored certain disclosures in the ’433 (and ’680) patent. Id. at 10–11; see Pet. Remand Resp. Br. 1–4; PO Remand Resp. Br. 4–5. The Federal Circuit held that “the dictionary routine claims can be satisfied by mere use of a lexical database, and do not also require the automatic creation of additional definitions.” Appeal Dec. 10. Moreover, the statements from Conlon that Patent Owner relies upon relate to creating a database, not using the database. See id. As discussed above, on remand we are directed to apply the Federal Circuit’s construction. Patent Owner does not explain 10 As discussed in the original Final Written Decisions, Patent Owner raised several arguments that generally applied to all the claims, challenging, for example, the level of ordinary skill in the art, whether Conlon, Miller, and Beckwith were analogous art, and several general arguments relating to Conlon and the motivation to combine Conlon with a DBMS. See Final Dec. 14–23, 25–27. We were not persuaded by Patent Owner’s arguments; the Federal Circuit affirmed, determining that our findings were supported by substantial evidence. Appeal Dec. 14–16. why Petitioner’s contentions are not persuasive in light of the Federal Circuit’s construction of this limitation. In addition, Patent Owner argues in the Sur-replies that “[c]laims 14– 19 are not disclosed by the proffered prior art” and cites to paragraphs 78–83 of the Ranka Rebuttal Declarations. Sur-reply 10. As discussed in the original Final Written Decisions, Patent Owner’s reliance on six paragraphs of Dr. Ranka’s Rebuttal Declarations is an improper incorporation by reference, as Patent Owner did not discuss that testimony or further elaborate on these arguments in the Sur-replies. 37 C.F.R. § 42.6(a)(3); Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 9–10 (PTAB Aug. 29, 2014) (informative); see, e.g., Final Dec. 37–39, 45, 48–50, 52. Therefore, we will not consider arguments that are not made in the Sur-replies, but are instead improperly incorporated by reference to the cited paragraphs in Dr. Ranka’s Rebuttal Declarations. Accordingly, after considering the evidence and arguments of the complete record, we determine that Petitioner has shown, by a preponderance of the evidence, that Conlon teaches limitation [14.3], and that claim 14 would have been obvious over Conlon.” slip op. at 21

  Patent outcomesUS 6,665,680 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,665,680
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Harbor Island Dynamic, LLCAll claims unpatentable
  PTAB · Mar 16, 2026 · IPR2025-00954 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 3 and 8–19 are unpatentable: claim 3 is anticipated by Yu and obvious over Okashita, Okashita and Yu, and Burgener and Okashita; claims 8–19 are obvious over Burgener and Okashita, with or without Yu.

  RulingsFinal written decision

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

    “ORDER For the foregoing reasons, ORDERED that Patent Owner’s Unopposed Motion to Amend (Paper 19) is granted, and claims 1, 2, and 4–7 are canceled;” slip op. at 37

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner proposes a slightly different level of ordinary skill, arguing that a bachelor’s degree, not a master’s degree, is all that is required because that is the “target audience for the ’886 Patent.” PO Resp. 11. Patent Owner does not otherwise dispute Petitioner’s proposed level of skill. Id. We used Petitioner’s proposed definition in the Institution Decision. Inst. Dec. 13. Neither party argues any issue as dependent on the level of ordinary skill or the differences between the proposals. Accordingly, the issues here are not dependent on the level of ordinary skill and the result is the same regardless of which definition is adopted. On this record, there is no reason to change from Petitioner’s definition used in the Institution Decision.” slip op. at 7

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

    “transistors” as a term that might require construction during trial. Inst. Dec. 17–18. At the hearing, the Petitioner argued that “cascaded transistors” means “[ar]ranged in a series of or in succession of stages so that each stage derives from or acts upon the product of the preceding [transistor]” and that there is no dispute that the limitation is taught by the prior art. Tr. 9:15–22. Patent Owner takes no position as to whether or not the prior art discloses “cascaded transistors.” Id. at 33:13–21 (“For the remainder of this proceeding, post institution, we have not taken any position regarding the scope of the cascaded transistors or the disclosure of the cascaded transistors in any of the prior art. We have not disputed that.”). Because Patent Owner takes no position on the issue, there is no dispute that “cascaded transistors” are shown in the prior art, construction is not necessary. Realtime, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. original)). 2. “isolated island” Patent Owner disputes Petitioner’s contention that the prior art teaches or suggests claim 3’s recitation of “said plurality of cascaded transistors is situated within an isolated island.” Pet. 35–36; PO Resp. 16–17. Although the parties dispute whether an “isolated island” is shown in the prior art, neither party proposes a construction for the term “isolated island.” We agree that the arguments presented do not require construction of “isolated island.” The issues can be determined on the plain meaning of the term in view of the arguments made. See Section II.D below.” slip op. at 8

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “We find that Petitioner has sufficiently shown Yu is analogous art to Okashita. Both references are directed to the manufacture of semiconductors, which we find to be the field of endeavor. Ex. 1004, 1:47– 58; Ex. 1005, 1:16–26. More specifically, we agree with Petitioner and find that both references are in the same field of endeavor because they relate to SOI configuration. Pet. Reply 6 (citing Pet. 7–8, 39–40; Ex. 1002 ¶¶ 77–80, 90–91). Because we find the references relied upon are in the same field of endeavor, we need not reach whether they are reasonably pertinent to the problem faced by the inventor.” slip op. at 21

  Patent outcomesUS 7,745,886 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,745,886
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Harbor Island Dynamic, LLCAll claims unpatentable
  PTAB · Mar 16, 2026 · IPR2024-01402 · APJ Gregg I Anderson · IPR · Final written decision

  The Board held claims 3 and 8–19 unpatentable: claim 3 was anticipated by Yu and obvious on the stated grounds, and claims 3 and 8–19 were obvious over Burgener and Okashita, with or without Yu.

  RulingsFinal written decision

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

    “Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–19 of U.S. Patent No. 7,745,886 B2 (Ex. 1001, “the ’886 patent”). Petitioner filed a Declaration of Dr. Scott E. Thompson, Ph.D., in support of the Petition. Ex. 1002 (“Thompson Dec.”). Harbor Island Dynamic, LLC (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). On April 4, 2025, we instituted this inter partes review as to the Challenged Claims and all grounds presented in the Petition. Paper 9 (“Inst. Dec.”). Following institution, Patent Owner filed a Response to the Petition (“PO Resp.”) limited to the patentability of the challenged claims. Paper 18. In support of the Patent Owner’s Response, Patent Owner filed a Declaration of John Berg. Ex. 2006. Patent Owner also filed an Unopposed Motion to Amend, cancelling claims 1, 2, and 4–7. Paper 19 (“Mot.”). We grant the motion. This proceeding is therefore limited to the patentability of claims 3 and 8–19 (“challenged claims”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner proposes a slightly different level of ordinary skill, arguing that a bachelor’s degree, not a master’s degree, is all that is required because that is the “target audience for the ’886 Patent.” PO Resp. 11. Patent Owner does not otherwise dispute Petitioner’s proposed level of skill. Id. We used Petitioner’s proposed definition in the Institution Decision. Inst. Dec. 13. Neither party argues any issue as dependent on the level of ordinary skill or the differences between the proposals. Accordingly, the issues here are not dependent on the level of ordinary skill and the result is the same regardless of which definition is adopted. On this record, there is no reason to change from Petitioner’s definition used in the Institution Decision.” slip op. at 7

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

    “transistors” as a term that might require construction during trial. Inst. Dec. 17–18. At the hearing, the Petitioner argued that “cascaded transistors” means “[ar]ranged in a series of or in succession of stages so that each stage derives from or acts upon the product of the preceding [transistor]” and that there is no dispute that the limitation is taught by the prior art. Tr. 9:15–22. Patent Owner takes no position as to whether or not the prior art discloses “cascaded transistors.” Id. at 33:13–21 (“For the remainder of this proceeding, post institution, we have not taken any position regarding the scope of the cascaded transistors or the disclosure of the cascaded transistors in any of the prior art. We have not disputed that.”). Because Patent Owner takes no position on the issue, there is no dispute that “cascaded transistors” are shown in the prior art, construction is not necessary. Realtime, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. original)). 2. “isolated island” Patent Owner disputes Petitioner’s contention that the prior art teaches or suggests claim 3’s recitation of “said plurality of cascaded transistors is situated within an isolated island.” Pet. 35–36; PO Resp. 16–17. Although the parties dispute whether an “isolated island” is shown in the prior art, neither party proposes a construction for the term “isolated island.” We agree that the arguments presented do not require construction of “isolated island.” The issues can be determined on the plain meaning of the term in view of the arguments made. See Section II.D below.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successAnalogous artMotivation foundUnpatentable

    “We find that Petitioner has sufficiently shown Yu is analogous art to Okashita. Both references are directed to the manufacture of semiconductors, which we find to be the field of endeavor. Ex. 1004, 1:47– 58; Ex. 1005, 1:16–26. More specifically, we agree with Petitioner and find that both references are in the same field of endeavor because they relate to SOI configuration. Pet. Reply 6 (citing Pet. 7–8, 39–40; Ex. 1002 ¶¶ 77–80, 90–91). Because we find the references relied upon are in the same field of endeavor, we need not reach whether they are reasonably pertinent to the problem faced by the inventor. We also find that Petitioner has shown rational underpinnings for combining Okashita and Yu. Pet. 43–44. That the references have differences is not the test. Rather, the test is whether a person of ordinary skill in the art would have had motivation to combine them. We find there is sufficient motivation. Id. at 43 (citing Ex. 1005, 2:4–17; Ex. 1002 ¶¶ 177– 178). 3. Conclusion on Ground 3 Patent Owner does not argue any other reason that Ground 3 has not been sufficiently shown. Based on the full record, we determine that Okashita and Yu teach or suggest all the limitations of claim 3 and that one of ordinary skill in the art would have combined the references in the manner asserted with a reasonable expectation of success. We thus determine that Petitioner has established by a preponderance of the evidence that claim 3 would have been obvious over the combination of Okashita and Yu.” slip op. at 21

  Patent outcomesUS 7,745,886 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,745,886
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b, Inc.All claims unpatentable
  PTAB · Mar 13, 2026 · IPR2021-01239 · APJ John D Hamann · IPR · Remand

  On remand, the Board held claims 17, 18, 21, 22, 26, and 30 unpatentable as obvious over Reime, with claims 17, 18, 21, 22, and 30 also obvious over Reime and Hinckley.

  RulingsRemand decision

  • ExcludeMotion to exclude, deniedDenied

    “In addition, Patent Owner filed a Motion to Exclude certain of Petitioner’s evidence (Paper 28) and Petitioner filed an Opposition (Paper 34). We denied this motion. See Paper 41, 47–50.” slip op. at 3

  • Skill levelSkill level board ownOther

    “one having ordinary skill in the art at the time of the invention of the ’850 patent: one who “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and . . . years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and 3 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. § 103 that became effective on March 16, 2013. Because the ’850 patent issued from an application filed before March 16, 2013, we apply the pre-AIA version of the statutory basis for unpatentability. 4 US 2003/0034439 A1, published Feb. 20, 2003 (Ex. 1010, “Reime”). 5 US 2002/0021278 A1, published Feb. 21, 2002 (Ex. 1011, “Hinckley”). Petitioner lists the combination of Reime and Hinckley as a separate asserted ground for claim 26. We combine these two asserted grounds into one as they rely on the same combination. additional education substituting for experience and vice versa.” Final Dec. 8–9. This definition for one having ordinary skill was not the subject of appeal, and we maintain it for purposes of this Final Written Decision on Remand. Moreover, it is consistent with the ’850 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “PO Resp. 17–29; Pet. Reply 8–15; PO Sur-reply 6–11. We construed this term in the Final Written Decision. Final Dec. 10–24. In particular, we concluded that (i) “detector assembly” means “two or more detector elements that detect electromagnetic radiation,” and (ii) a detector assembly is not required to be physically separate from (i.e., not interspersed with) a pixel array. Id. at 20, 22. The Federal Circuit found the first part of our construction erroneous. Appeal Dec. 7–10. In particular, the Federal Circuit concluded that “[t]he element.” Id. at 8. In addition, to guide the Board’s analysis on remand, the Federal Circuit construed “the terms ‘at an edge’ and ‘at least one edge’ [to] require a detector assembly to be arranged along one or more edges of a viewing plane defining plate.” Id. at 10–11. In other words, the Federal Circuit “clarif[ied] that arranging a detector assembly ‘at,’ ‘along,’ or ‘about’ ‘at least one edge’ or ‘an edge’ does not limit the detector assembly to being arranged entirely on ‘one edge.’” Id. at 12.” slip op. at 9

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

    “the Federal Circuit already has concluded that claim 15 is obvious in view of Reime. Appeal Dec. 9–10. Claim 17 further recites “wherein the detector assembly comprises: a support substrate, and an arrangement of detector elements.” Ex. 1001, 67:15–18. We agree with Petitioner and find that Reime teaches these further limitations. Pet. 34–35; Pet. Remand 2–4; Pet. Resp. Remand 1–3. First, as we found in the Final Written Decision, Reime’s receivers 30 and 32 are two detector elements that detect electromagnetic radiation (i.e., light), and Reime’s receivers 30 and 32, collectively, comprise a detector assembly. Final Dec. 27–28 (citations omitted). Moreover, Reime’s two receivers 30 and 32 comprise a detector assembly having multiple detector elements (e.g., two receivers) to teach “an arrangement of detector elements.” Ex. 1010 ¶¶ 73, 86, Figs. 9A–9C; Ex. 2060,7 127:17–18; Pet. 32–33; Pet. Reply 20; Pet. Remand 3. In addition, as we found in the Final Written Decision, Reime teaches that each of receivers 30 and 32 are centered on opposite edges of the plate. 7 Deposition Transcript of Dr. Benjamin Bederson (Apr. 7, 2022). Ex. 1010, Fig. 6A, ¶ 82) (affirming that Reime teaches having one light receiver (e.g., 30 or 32) on each side of a four-sided touch pad). In further support, we agree with Petitioner and find that Reime teaches that receivers 30 and 32 “are mounted in the peripheral area surrounding the LCD 92.” Pet. 32–33; Ex. 1010 ¶ 86; see also id. at Figs. 9A–9C (showing that the receivers are positioned at the edge of the LCD screen); infra annotated Fig. 9E (showing receivers 30 and 32 along edges of the LCD). Accordingly, we find Reime’s detector assembly that comprises receivers 30 and 32 is arranged along two edges (one edge for each receiver) of the LCD, which meets the Federal Circuit’s construction for being arranged at at least one edge. See supra Section III (concluding “at least one edge” means “arranged along one or more edges”) (emphasis added).” slip op. at 12

  Patent outcomesUS 8,624,850 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,624,850
• Deltran USA LLC v. The Noco CompanyAll claims unpatentable
  PTAB · Mar 13, 2026 · IPR2025-00885 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1–11 are unpatentable under Richardson-based obviousness grounds; the Yu and Paparrizos grounds do not establish unpatentability.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art, “[a]s of the claimed priority date of July 3, 2014, . . . would have been a person with a bachelor’s degree in electrical engineering or its equivalent and two years of experience in the field of electrical engineering including some experience in design of battery charging systems.” Pet. 21 (citing Ex. 1003 ¶¶ 19–30). Patent Owner “does not propose a different level of skill in the art[.]” PO Resp. 16. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art, because it is supported by the testimony of C. Arthur MacCarley and not disputed by Patent Owner.” slip op. at 11

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

    “As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 11

  • PTAB / AIA Trials › §315(e) estoppelNot reached

    “arguments relating to whether the prior findings are “necessary to the determination” or whether estoppel applies to arguments relating to Richardson being inoperative. See Pet. Reply 27. Nor does Petitioner respond to our inquiry about whether collateral estoppel maybe applied on a limitation by limitation basis. See Pet. Reply 27. At the hearing, however, Petitioner confirmed that resolution of the issue is not necessary to our final determination. JUDGE ROSS: Do we even need to decide the collateral estoppel issue? I mean, it seems to me that if your petition clearly made out your case for the combination of Richardson and Zhao, then we don't even need to reach that. MR. CHANDRA: That’s exactly right, Your Honor. That is our position, as well. We believe collateral estoppel applies, but you don't need to decide that issue in order to find these claims unpatentable. As I mentioned before, these are the same references. We have fairly sought out all of the portions of Richardson, we cited to specific portions. Not just relying on collateral estoppel, but the teachings of the reference itself. So, while this is an issue, we believe that collateral estoppel should apply. It does not have to apply in order to find the challenged claims unpatentable. Tr. 19:9–20. We are persuaded, as discussed in Section II.G., that Petitioner has shown where Richardson in combination with Zhao meets each limitation of the claims of the ’203 patent. Accordingly, we need not address whether Petitioner has demonstrated sufficiently that collateral estoppel applies here.” slip op. at 14

  • Strike new argumentNew argument consideredOther

    “Our Practice Guide states, that “[o]nce a trial is instituted, the Board may decline to consider arguments set forth in a preliminary response unless they are raised in the patent owner response.” Consolidated Trial Practice Guide (“Practice Guide”), 52 (Nov. 2019) (citing In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (explaining that a patent owner waives an issue presented in its preliminary response if it fails to renew the issue in its response after trial is instituted)).12 In addition, in our Scheduling Order, we stated that “Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.” Paper 9 at 10; see also Practice Guide, 94 (same). Patent Owner confirmed at the Oral Hearing its understanding that arguments raised in its Preliminary Response and not reasserted in its Patent Owner Response were not appropriate for consideration during trial. Tr. 4:10–6:17. Petitioner does not identify any particular argument raised in the Patent Owner Preliminary Response that is not present in the Patent Owner Response. But, in this Final Written Decision, we do not consider arguments made in the Patent Owner Preliminary Response and instead assess only those fairly presented in the Patent Owner Response.” slip op. at 15

  Patent outcomesUS 11,667,203 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,667,203
• Deltran USA LLC / Adc Solutions Auto LLC v. The Noco CompanyAll claims unpatentable
  PTAB · Mar 13, 2026 · IPR2024-01219 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1–11 are unpatentable as obvious over the Richardson-based grounds; the Yu and Paparrizos grounds do not establish unpatentability.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art, “[a]s of the claimed priority date of July 3, 2014, . . . would have been a person with a bachelor’s degree in electrical engineering or its equivalent and two years of experience in the field of electrical engineering including some experience in design of battery charging systems.” Pet. 21 (citing Ex. 1003 ¶¶ 19–30). Patent Owner “does not propose a different level of skill in the art[.]” PO Resp. 16. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art, because it is supported by the testimony of C. Arthur MacCarley and not disputed by Patent Owner.” slip op. at 11

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

    “Petitioner submits there are no formal claim constructions necessary in this proceeding[.]” Pet. 22. Patent Owner also “does not propose any terms need to be construed.” PO Resp. 15. As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). slip op. at 11

  • PTAB / AIA Trials › §315(e) estoppelNot reached

    “arguments relating to whether the prior findings are “necessary to the determination” or whether estoppel applies to arguments relating to Richardson being inoperative. See Pet. Reply 27. Nor does Petitioner respond to our inquiry about whether collateral estoppel maybe applied on a limitation by limitation basis. See Pet. Reply 27. At the hearing, however, Petitioner confirmed that resolution of the issue is not necessary to our final determination. JUDGE ROSS: Do we even need to decide the collateral estoppel issue? I mean, it seems to me that if your petition clearly made out your case for the combination of Richardson and Zhao, then we don't even need to reach that. MR. CHANDRA: That’s exactly right, Your Honor. That is our position, as well. We believe collateral estoppel applies, but you don't need to decide that issue in order to find these claims unpatentable. As I mentioned before, these are the same references. We have fairly sought out all of the portions of Richardson, we cited to specific portions. Not just relying on collateral estoppel, but the teachings of the reference itself. So, while this is an issue, we believe that collateral estoppel should apply. It does not have to apply in order to find the challenged claims unpatentable. Tr. 19:9–20. We are persuaded, as discussed in Section II.G., that Petitioner has shown where Richardson in combination with Zhao meets each limitation of the claims of the ’203 patent. Accordingly, we need not address whether Petitioner has demonstrated sufficiently that collateral estoppel applies here.” slip op. at 14

  • BurdenDecided for patent owner

    “With respect to Petitioner’s allegations that rest on AAPA, we determine Petitioner has failed to show that claims 2, 10, and 11 are unpatentable. Our rules require that a petition for inter partes review must base the asserted challenges on “prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b); 37 C.F.R. § 42.104(b)(2) and (4). And, a petitioner who relies on applicant admitted prior art as the basis, or part of the basis, of a ground, runs afoul of § 311. Qualcomm, 134 F.4th at 1365; see also USPTO Memorandum, Enforcement and Non-Waiver of 37 C.F.R. § 42.104(b)(4) and Permissible Uses of General Knowledge in Inter Partes Reviews (Jul. 21, 2025), available at www.uspto.gov/sites/default/ files/documents/aapa_memo_final__signed.pdf. We acknowledge but reject Petitioner’s position that its combinations discussing AAPA do not “rely” on AAPA but rather rely on U.S. Patent No. 5,793,185 (“the ’185 patent”), described in the ’203 patent as prior art. Pet. Reply 26. A petition for inter partes review must identify, “in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104 (b)(4). Here, Petitioner’s contention that the Grounds 2 and 5 actually rely on the ’185 patent when discussing AAPA is inconsistent with the Petition. In particular, the Petition does not cite to or direct our attention to any specific details from the ’185 patent to support its challenges. See generally Pet. 54–57, 76–77. Accordingly, Petitioner has failed to show, by a preponderance of the evidence, that claims 2, 10, and 11 would have been unpatentable over the combination of Richardson, Zhao, and AAPA as well as over the combination of Yu, Paparrizos, and AAPA. Petitioner’s alternative allegations based on Epower-20/Epower-21 are considered below.” slip op. at 18

  Patent outcomesUS 11,667,203 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,667,203
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Harbor Island Dynamic, LLCAll claims unpatentable
  PTAB · Mar 11, 2026 · IPR2024-01404 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–18 are unpatentable: claims 1–6, 9–14, 17, and 18 as anticipated by Cooney and obvious over Cooney; claims 7 and 15 over Cooney and Dean; claims 8 and 16 over Cooney and Farooq or …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the full record, we maintain and affirm that a person of ordinary skill in the art “would have had at least a master’s degree in electrical engineering or a similar field and at least two years of experience working with semiconductor systems” and that “[a]dditional relevant work experience can compensate for less education, and vice versa.” Pet. 9–10 (citing Ex. 1002 ¶¶ 72–74). We agree with the parties that any differences in the parties’ proposed level of ordinary skill would not affect our analysis. Pet. Reply 1; Tr. 25:4–9 (Patent Owner’s counsel agreeing that any differences in the parties’ proposed level of ordinary skill in the art are immaterial). We also find that Petitioner’s proposed level of ordinary skill in the art is consistent with the ’609 patent and the asserted prior art.” slip op. at 9

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

    “Based on the full record and because Petitioner’s anticipation challenge is based on giving these recitations no patentable weight and Petitioner’s obviousness challenge is based on the same recitations having patentable weight, we determine that resolving whether to give patentable weight to the recitations “to reduce thermal stress in said semiconductor substrate,” “to provide space for said conductive filler to expand inward,” and “to prevent contamination during processing of said semiconductor substrate” is not necessary to resolve the parties’ dispute. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. full record, we also determine that express claim interpretation of any other claim term is not necessary. Id.” slip op. at 10

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

    “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). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). When evaluating a prior art reference in the context of anticipation, the reference must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)). “[A] reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681 (CCPA 1962)).” slip op. at 7

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

    “find that Cooney discloses “silicon vias having a hollow center.” Ex. 1002 ¶¶ 120–123; Ex. 1004 ¶¶ 55, 60, Fig. 6. We also find that the portions of Pogge cited by Petitioner show that its “void 25 has an important function in relieving stresses caused by differences in the thermal coefficient of expansion (TCE) of the various materials in and around the feature” (Ex. 1005 ¶ 27) and that the portions of Edelstein cited by Petitioner show that, “[a]lthough it does not change the thermal expansion coefficient, the introduction of a void or voids reduces the effective modulus and Poisson ratio of the through-via, resulting in a compliant through-via that exerts much less stress and force on the surrounding structures” (Ex. 1006 ¶ 47). As discussed above, we find that Cooney’s void 25 is “entirely surrounded by” its conductive filler 24 that, in turn, is surrounded by liner 22 and substrate 10’. Ex. 1004, Fig. 6. We credit Petitioner’s relied-upon testimonial evidence that the presence of a void was known to reduce thermal stress in the surrounding substrate, because the citations to the record support it. Ex. 1002 ¶¶ 124–134; Ex. 1005 ¶¶ 1, 9, 25–28, Fig. 2D; that “a void can decrease thermal stress in the substrate”). We agree with Petitioner’s declarant that Pogge provides a void in a TSV similar to Cooney and the ’609 patent. Ex. 1001, Fig. 4; Ex. 1002 ¶ 127; Ex. 1004, Fig. 6; Ex. 1005, Fig. 2D. We, thus, credit the testimony that, because of their common structural arrangements, one of ordinary skill in the art would have understood that stress-relieving characteristics in Pogge would have been manifested in Cooney’s void. Ex. 1002 ¶ 127. We also agree with Petitioner’s declarant that Edelstein includes a void in a TSV similar to Cooney, the ’609 patent, and Pogge. Ex. 1001, Fig. 4; Ex. 1002 ¶ 130; Ex. 1004, Fig. 6; Ex. 1005, Fig. 2F; Ex. 1006, Fig. 6F. We, therefore, credit the testimony that, because of their common structural arrangements, one of ordinary skill in the art would have understood that stress-relieving characteristics in Edelstein would have also been manifested in Cooney’s void. Ex. 1002 ¶ 130.” slip op. at 33

  Patent outcomesUS 9,147,609 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,147,609

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.