- Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1No claims unpatentablePTAB · Apr 28, 2026 · IPR2024-01494 · APJ Justin T Arbes · IPR · Final written decision
The Board found claims 5, 6, and 9–20 not shown unpatentable over either Bowen and Soukup or Nagahama and Soukup under § 103.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that at the time of the ’909 patent (2004), a person of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 18–19. In the Decision on Institution, we agreed with and applied Petitioner’s proposed definition. Dec. on Inst. 9. Patent Owner does not propose a different level of ordinary skill in the art in its Response. Both experts utilized Petitioner’s proposed definition. See Ex. 1024 ¶ 25; Ex. 2053 ¶¶ 29–30. Based on the full record developed during trial, including our review of the ’909 patent and the types of problems and solutions described in the ’909 patent and cited prior art, we maintain the previously adopted definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Interpretation We interpret the claims of the challenged patent using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such [claims] as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary.” Pet. 15. We did not interpret any terms in the Decision on Institution. Dec. on Inst. 9–10. Patent Owner does not propose interpretations of any claim terms in its Response. We conclude, based on the full trial record, that no term requires express interpretation to determine whether Petitioner has met its burden to prove unpatentability of the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 8
- Strike new argumentNew argument disregardedGranted in part
“Pursuant to 37 C.F.R. § 42.23(b), “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response.” “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Patent Trial and Appeal Board Trial Practice Guide § II.I, available at https://www.uspto.gov/patents/ptab/trial-practice-guide (last updated Dec. 12, 2025). “While replies . . . can help crystalize issues for decision, a reply . . . that raises a new issue or belatedly presents evidence may not be considered.” Id. An indication that a new issue is improperly raised in a reply is where a petitioner submits “new evidence necessary to make out a prima facie case” of unpatentability, such as a “newly raised rationale to combine the prior art references that was not expressed in the petition.” Id. That is the case here. Petitioner’s rationale in the Petition for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV based on Soukup was that such an artisan would have expected lowering the barrier height to increase TMR. See Pet. 34–36. Faced with Dr. Bokor’s testimony on cross-examination, Petitioner presents a new theory in its Reply that a person of ordinary skill in the art would not have known what impact lowering the barrier height would have (increase TMR, decrease it, or have no impact at all), but would have expected it to change in some “uncertain” way, which is a “legally sufficient motivation” in Petitioner’s view. See Reply 6–10, 13–16, 23–25. In other words, “[r]ather than explaining how its original” position that lowering barrier height would increase TMR “was correct,” Petitioner articulated “an entirely new theory . . . absent from the [P]etition” after Patent Owner cross-examined Dr. Bokor and “pointed out the flaws of [Petitioner’s] position” in its Response. See Wasica Finance GmbH v. Continental Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017). “Shifting arguments in this fashion is foreclosed by statute, [Federal Circuit] precedent, and Board guidelines.” Id.” slip op. at 20
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Ultimately, the cross-examination testimony above is inconsistent with Dr. Bokor’s opinions in his declaration that, for example, “[i]t was understood to one of skill that lowering the barrier height to increase tunneling would have increased the TMR,” and “[o]ne of skill would have been motivated to adjust oxygen vacancy defects to improve TMR by lowering the barrier height.” See Ex. 1024 ¶¶ 176, 277 (emphasis added); see also id. ¶ 172 (“[O]ne of skill in the art would have been motivated to use [Soukup’s 0.33 eV] or similar height in an MgO MTJ to improve tunneling and hence TMR in Bowen.”). Accordingly, we do not find Dr. Bokor’s declaration testimony regarding a motivation to lower Bowen’s barrier height credible. It is Petitioner’s burden to provide a reasoned, evidence-supported explanation for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV as disclosed in Soukup. See NuVasive, 842 F.3d at 1383; Magnum Oil, 829 F.3d at 1380; TriVascular, 812 F.3d at 1066. Petitioner’s reasoning in the Petition that lowering the barrier height (by introducing oxygen defects) would increase TMR is unsupported by evidence.” slip op. at 31
Patent outcomesUS 11,968,909 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,968,909 - Meta Platforms, Inc. / Meta Platforms Technologies, LLC et al. v. Eight KHZ, LLCAll claims unpatentablePTAB · Dec 3, 2024 · IPR2023-01019 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Lyren and Reif; the Board did not reach the Clement, Osman, and Sauk ground.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Accordingly, we are not persuaded that the ’140 application supports the claimed concept of warning or alerting a user that the user is leaving the virtual environment. Thus, the ’140 application does not support the full scope of the limitations “warning the user that the user is leaving the 3D virtual environment” in claim 1 and “alerting the user that the user is leaving the environment” in claims 7 and 14. The parties have not made any additional arguments regarding support in the ’140 application for limitations of the dependent claims. We conclude that no claim of the ’179 patent is entitled to priority to the ’140 application.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We agree that, in the combination, a POSITA would have implemented Lyren’s audible alerts to alert the user that the user is leaving Reif’s safe zone (and thus the virtual environment) to help keep users safe. Id. at 51 (citing Ex. 1003 ¶¶ 250–263). We also agree with Petitioner’s articulated benefit that the combination would “help protect the users from injury by bumping, hitting, tripping over, etc., real-world objects when moving around while viewing the virtual environment in the HMD (i.e., a type of head-mounted WED).” Id. at 43. Accordingly, we agree with Petitioner that the combination of Lyren and Reif discloses each limitation of claim 14, as well as similar limitations of claims 1 and 7, and that one of ordinary skill in the art would have combined Lyren and Reif in the manner proposed, with a reasonable expectation of success.” slip op. at 26
- ExcludeMotion to exclude, deniedGranted in part
“paragraphs of Dr. Roginska’s declarations in Exhibits 1003 and 1146. Mot. 1; Reply to Opp. 1. Some of these paragraphs support Petitioner’s challenge based on Clement, Osman, and Sauk. Mot. 2–5, 7–11. Because we do not reach Petitioner’s challenge based on Clement, Osman, and Sauk, we do not rely on the portions of Dr. Roginska’s declarations addressing Clement, Osman, and Sauk. Accordingly, we dismiss this portion of Patent Owner’s Motion to Exclude as moot.” slip op. at 27
Patent outcomesUS 10,368,179 unpatentable§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,368,179 - Flir Systems, Inc. / Flir Maritime US, Inc. (F/K/A Raymarine, Inc.) v. Garmin Switzerland GmbHSome claims unpatentablePTAB · Jul 10, 2018 · IPR2017-00946 · APJ Scott B Howard · IPR · Final written decision
Claims 28, 29, and 45 were held unpatentable; claims 1–7, 12–23, 25–27, and 41–44 were not shown unpatentable. Substitute claims 73 and 74 were allowed.
RulingsFinal written decision- BurdenFwd mixedMixed
“C. Legal Principles 1. Anticipation A patent claim is unpatentable under 35 U.S.C. § 102 if “the four corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (citing Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003)). Moreover, the reference must also “disclose[] within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). However, “the reference need not satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). We analyze the ground based on anticipation in accordance with the above-stated principles.” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“and agree with Patent Owner that the terms “re-routing the course” and “re-route the course” mean “to change at least a portion of the route of the course relative to a previous routing.” That is, there must be a first routing of a course and that routing must be changed by performance of the marine route calculation algorithm to avoid preselected conditions by identifying one or more non-user selected waypoints. The construction is consistent with the words of the claims. The claims do not merely require routing a course, but “re-routing the course.” The ordinary meaning of the prefix “re” is that something is being done again. See Tr. 18 (Petitioner agreeing that “if you put R-E in front of a word, normally that means it’s occurring a second time”). Although the claims do not explicitly recite both an original “routing” of a course that is changed by “re-routing the course,” the original “routing” is implicitly required by the use of the prefix “re.” See Tr. 34 (Patent Owner agreeing that although the claims do not explicitly require an initial routing, the initial routing is implicit in the use of “re-routing”), 44–45 (Petitioner agreeing that “re-routing” ordinarily implies an initial routing).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“proposed construction of “course” as “the path of intended travel of a craft with respect to the earth.” Instead, we need only focus on the words recited in the claim. Claim 1, which is representative, recites that performing the marine route calculation algorithm to “route a course between a first location and the potential waypoint avoiding the preselected conditions,” where such performance includes “identifying one or more non-user selected waypoints.” Ex. 1001, claim 1. The other independent claims recite similar limitations. See Ex. 1001, claims 12, 20, 27. Based on the limitation recited in the claim, the broadest reasonable interpretation of routing a “course” encompasses the identification of one or more non-user selected waypoints between a first location and a potential waypoint. No further construction is necessary for purposes of this Decision.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are persuaded by Petitioner’s argument that the person of ordinary skill in the art need not have first-hand experience with marine navigation devices and systems. Pet. Reply 25–26. The ’703 patent explicitly defines “marine navigation” broadly, noting that “the use of the word ‘marine’ in the embodiments of the present invention (including the claims) could be replaced with the phrase ‘non-street based.’” Ex. 1001, 1:57–67 (emphasis added). Such non-street based navigation is broad enough to encompass avionic navigation. See Pet. Reply 25–26; cf. Ex. 1003, 4–7 (demonstrating Dr. Braasch’s experience in avionic navigation). We find that Petitioner’s definition is supported by the testimony of its expert, Dr. Braasch, and, for the reasons stated above, we are not persuaded that the person of ordinary skill in the art necessarily would have had first-hand experience in marine—as opposed to non-street based— navigation. We, therefore, determine, based on the complete record, that Petitioner’s proposed definition correctly states the level of ordinary skill in the art, and we apply it for purposes of this Decision.7, 8” slip op. at 24
Patent outcomesUS 7,268,703 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 7,268,703 - Taiwan Semiconductor Manufacturing Company Limited / Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1All claims unpatentablePTAB · Dec 20, 2017 · IPR2016-01249 · APJ Michael J Fitzpatrick · IPR · Final written decision
Claims 1–3, 5–7, and 9 and proposed claims 11–12 are unpatentable as obvious over Ding and Zhang; proposed claim 13 is patentable and allowed by amendment.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“essentially of” for “being composed of.” PO Resp. 11 (citing AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 1245 (Fed. Cir. 2001)). In AFG, the Court noted that, “[i]n 1942, the Court of Customs and Patent Appeals [had] stated that ‘“composed of” should be regarded as synonymous with “consisting of.”’” AFG, 239 F.3d at 1245 (quoting In re Bertsch, 132 F.2d 1014, 1019 (CCPA 1942)). However, as further explained in AFG, the Court of Customs and Patent Appeals had “qualified this statement . . . by remarking that ‘the words “composed of” may under certain circumstances be given, in patent law, a broader meaning than “consisting of.”’” Id. (quoting In re Bertsch, 132 F.2d at 1020). The Court in AFG ultimately construed “composed of” to mean “consisting essentially of.” Id. (“[W]e do agree based on the specification and other evidence before us that the term ‘composed of’ in this case is not completely closed. Rather, we think that ‘composed of’ in this case should be interpreted in the same manner as ‘consisting essentially of.’”). Thus, “composed of” means either “consisting of” or “consisting essentially of.” Id. The term “consisting of” prohibits any 4 <111> and <002> are indices that pertain to an orientation or direction of crystals. Ex. 1003 ¶51. unspecified components. Id. (citing PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998)). The term “consisting essentially of” prohibits only unspecified components that materially affect the basic and novel characteristic(s) of a claimed invention. Id. (citing Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1574 (Fed. Cir. 1984)). By arguing that “being composed of” means “consisting essentially of” as opposed to “consisting of,” Patent Owner argues for broader claim scope. For purposes of this Decision, we construe “being composed of” to mean “consisting essentially of,” as Patent Owner argues.5 In conclusion, we construe “first film being composed of crystalline metal containing nitrogen therein,” as recited in independent claims 1 and 5, to mean “first film consisting essentially of crystalline metal containing nitrogen therein.”6” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of Ordinary Skill in the Art The parties propose similar definitions of the level of ordinary skill in the art. Petitioner argues that a person of ordinary skill in the art would have had “an equivalent of a Master of Science degree from an accredited institution in electrical engineering, materials science, or physics, or the equivalent, a working knowledge of semiconductor processing technologies for integrated circuits, and at least two years of experience in semiconductor processing analysis, design, and development.” Pet. 10–11 (citing Ex. 1003 ¶64). Patent Owner argues that such an individual would have had “at least a Bachelor’s degree in Electrical, Materials, Mechanical, or Chemical Engineering, or a related degree, and at least two years of experience working in semiconductor processing and fabrication, semiconductor equipment manufacturing, or semiconductor materials.” PO Resp. 18 (citing Ex. 2011 ¶24). Neither party explains in detail why its proposed level of ordinary skill in the art should be adopted nor how the different levels affect the parties’ analyses. Based on the evidence of record, including the testimony of the parties’ declarants, the subject matter at issue, and the prior art of record, we adopt Petitioner’s definition.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“As to Petitioner’s predictable-results assertion, Petitioner persuasively argues that a person of ordinary skill in the art would have added nitrogen to the crystalline tantalum layer of Ding for three independent reasons. First, Petitioner argues that the presence of nitrogen in Ding’s crystalline tantalum layer would make it more easily removable by chemical mechanical polishing (“CMP”), which removal by polishing both Zhang and Ding teach to do. Pet. 24–26 (citing Ex. 1003 ¶¶140, 142, 143; Ex. 1004, 1:30–34, 4:34–37; Ex. 1005, 7:56–65; Ex. 1019, 12–13; Ex. 1021, 354–63). Second, Petitioner argues that the presence of nitrogen in Ding’s crystalline tantalum layer would inhibit, to some additional extent, copper diffusion. Id. at 26–29 (citing Ex. 1003 ¶¶144–146; Ex. 1023, 8). Third, Petitioner argues that adding a small amount of nitrogen to Ding’s crystalline tantalum layer would reduce its resistivity, which was known to help reduce a device’s power consumption and RC delays. Id. at 29–30 (citing Ex. 1003 ¶147; Ex. 1015, 81 (Table 1)). Patent Owner counters that none of these purportedly predictable results are realistic. PO Resp. 46–52. With respect to the first reason offered by Petitioner (to make the first film more susceptible to CMP), Patent Owner argues that: (A) adding only “[a] small amount of nitrogen” to Ding’s crystalline tantalum layer would not change its CMP characteristics; and (B) “[a]dding significant amounts of nitrogen” would result in Ding’s previously crystalline layer becoming amorphous. Id. at 48. Patent Owner does not disclose what it considers “small” and “significant” amounts of nitrogen. Id. As a result, we cannot apply Patent Owner’s argument (even if it were persuasive) to the facts before us. Also, Patent Owner’s argument is based exclusively on declaration testimony that does not cite to any underlying evidence, let alone documentary evidence. See id. at 47–49 (citing Ex. 2011 ¶¶190–98). In contrast, Petitioner’s argument is supported by declaration testimony, which, in turn, is based on underlying evidence, including documentary evidence. See Pet. 24–26 (citing Ex. 1003 ¶¶140, 142, 143; Ex. 1004, 1:30–34, 4:34– 37; Ex. 1005, 7:56–65; Ex. 1019, 12–13; Ex. 1021, 354–63); see also Ex. 1003 ¶139. With respect to the second reason offered by Petitioner (to inhibit, to some additional extent, copper diffusion), Patent Owner argues that, in Petitioner’s asserted combination, “there would be no nitrogen to provide any copper diffusion benefit.” PO Resp. 49. Patent Owner’s argument is premised on Zhang teaching exclusively an upper surface of pure tantalum. Id. But, Zhang explicitly teaches that the upper surface may have a nitrogen content of, for example, 1%, 2%, 3%, or 4%. See Ex. 1004, 3:59–62 (“At the upper surface, the atomic percent tantalum may be at least 95% and the atomic percent nitrogen may be less than 5% if copper adhesion is particularly problematic.”). With respect to the third reason offered by Petitioner (to reduce resistivity), Patent Owner argues that adding nitrogen would actually increase resistivity. As pointed out by Petitioner, however, Patent Owner’s declarant, Harlan R. Harris, Ph.D., conceded that adding nitrogen does lower resistivity. Reply 17–18 (quoting Ex. 1036, 125:3–20). Dr. Harris testified as follows: Q. When the nitrogen flow ratio is zero in the ’324 patent, and the power is kept constant, wouldn’t that result in a film that could be pure tantalum? A. All three of those data points are at the exact same position on the graph. The N2 concentration, which is the numerator of the ratio, is set at zero. And in this particular position, the nitrogen concentration would be assumed to be zero in the film. Q. So is it within the scope of what’s taught in the ’324 patent to have a film that would have no nitrogen at all? A. It’s also apparent to anyone who is examining this of skill in the art that you can decrease from that number, which is favorable in terms of the value of resistivity by adding flow rate in the data points for all of the positions greater than zero. So you decrease resistivity by the addition of any amount of nitrogen, therefore, a person skilled in the art would not be motivated to not have nitrogen, based on this data. Q. You’re referring to the decrease in resistivity as nitrogen is added? A. Yes. Q. Which is desirable? A. You want the resistivity to go down. Ex. 1036, 124:15–125:20. We are satisfied by each of Petitioner’s proffered reasons for why a person of ordinary skill in the art would have added nitrogen to Ding’s crystalline tantalum layer, as taught by Zhang. Petitioner has shown, by a preponderance of the evidence, that claims 1 and 5 would have been obvious over Ding and Zhang.” slip op. at 24
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“obvious over Ding in view of Zhang. Patent Owner’s proposed claims 11 and 12 are unpatentable because they introduce limitations—nitrogen throughout the first film (claim 11) and nitrogen at the upper surface of the first film (claim 12)—that are met by the very references asserted in the ground of unpatentability involved in this inter partes review. Patent Owner’s Motion to substitute claims 11 and 12 is premised, incorrectly, on Zhang requiring pure tantalum (and, thus, no nitrogen) at the upper surface of its tantalum-rich tantalum nitride film. In fact, Zhang does not require any portion of the tantalum-rich tantalum nitride film to be pure tantalum. Ex. 1004, 3:53–54 (“The tantalum-rich tantalum nitride film has a range of approximately 0-30 atomic percent nitrogen.”). And, Zhang explicitly teaches that the upper surface may include nitrogen. Id. at 3:57– 62 (“A lower atomic percent nitrogen at the upper surface typically gives better adhesion to copper films. At the upper surface, the atomic percent tantalum may be at least 95% and the atomic percent nitrogen may be less than 5% if copper adhesion is particularly problematic.”); Ex. 1036, 40:1–6, 42:2–9, 42:15–21, 54:14–20 (Dr. Harris acknowledging that the upper surface of the film would contain some nitrogen). Accordingly, a preponderance of the evidence establishes that Patent Owner’s proposed claims 11 and 12 are not patentable over the art of record in this inter partes review. Put another way, and as Petitioner argues, claims 11 and 12 (like challenged claim 5) are unpatentable as they claim subject matter that would have been obvious over Ding in view of Zhang. See 35 U.S.C. § 103(a); Amend Opp. 6–7 (“The instituted obviousness ground[] based on Zhang and Ding already include[s] the newly-added limitations Patent Owner seeks to add in its Substitute Claims 11–13. Thus, the Substitute Claims 11–13 remain unpatentable over each of the instituted grounds.”).14 Patent Owner’s Motion to Amend is denied with respect to claims 11 and 12.” slip op. at 33
Patent outcomesUS 6,538,324 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 6,538,324 - Jiawei Technology (HK) Ltd. / Jiawei Technology (USA) Ltd. et al. v. Simon Nicholas RichmondAll claims unpatentablePTAB · Dec 15, 2015 · IPR2014-00936 · APJ William V Saindon · IPR · Final written decision
Claims 1–29 are unpatentable as obvious over four combinations of Chliwnyj, Wu, Hung, Xu, and Pu.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Patent Owner alleged that Petitioner failed to list all real parties in interest and we authorized the parties to brief the issue. Paper 34 (Motion to Terminate); Papers 42, 43 (Opposition); Paper 46 (Reply). We denied Patent Owner’s Motion to Terminate. Paper 56.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“skill in the art to ornamental design changes only. We reject the notion that a person of ordinary skill in the art would only be capable of making ornamental design variations. Under Patent Owner’s proposed level of skill, any functional modification would be beyond the level of ordinary skill in the art and render the modified device patentable (so long as it was not anticipated); this proposed level of skill is so low it eviscerates the notion of obviousness. Instead, upon review of the record before us, we find that a person of ordinary skill in the art is able to comprehend what is being shown in the prior art and has some ordinary level of creativity with respect to their modification. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). We agree with Petitioner that a person of ordinary skill in the art at the time of the ’477 patent7 would have had a graduate degree in electrical or electronics engineering or physics with experience in circuit design, or a bachelor’s degree in electrical or electronics engineering or physics with at least two years industrial experience and experience in circuit design, and apply that level of skill for purposes of this Decision. See Ex. 1002 ¶ 36.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“engineers in the design of solar lights.” Id. at 13. Patent Owner argues we should give his declarant, Dr. Ducharme, more weight because Dr. Ducharme is allegedly better qualified. Id. We weigh competing testimony of witnesses on an observation-by-observation basis, based on the witness’s skills and experience, as well as the reasoning and evidence they offer with respect to that particular observation. Further, we are not persuaded that Dr. Shackle would not have been a person of ordinary skill in the art at the time of the invention simply for not being a supervisor of engineers designing solar lights. Instead, we find that Dr. Shackle has ample experience in the field of lighting devices to testify in this proceeding. See Ex. 1002 ¶¶ 3–5; Ex. 1050 ¶¶ 30–41; see also Pet. Reply 7–8 (persuasively arguing why Dr. Shackle is qualified to testify).” slip op. at 12
- Prior constructionPrior construction adoptedDecided for patent owner
“phenomenon (varying color) from a particular structure (a circuit having at least two lamps) but did not limit the manner in which the structures were operated to achieve that result. As we stated then, we declined to incorporate any particular way to create varying color because the specification of the ’477 patent does not so limit the term. Id. at 7. For that reason, we construed “varying colour” as “a perceptible changing of color over time.” Id. at 8.” slip op. at 14
Patent outcomesUS 7,196,477 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,196,477 - PTAB · Jun 9, 2015 · IPR2014-00245 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–24 were canceled; substitute claims 25–48 were denied because Patent Owner did not show patentability over the prior art, and claims 39–45 and 48 also failed § 101.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“establish that it is entitled to the relief requested. See 37 C.F.R. § 42.20(c). Entry of proposed amendments is not automatic, but occurs only upon the patent owner having met the requirements of 37 C.F.R. § 42.121 and demonstrated, by a preponderance of the evidence, the patentability of the proposed substitute claims. See Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 7–8 (PTAB June 11, 2013) (Paper 26, “Idle Free”) (informative); Toyota Motor Corp. v. American Vehicular Scis. LLC, Case IPR2013-00419, slip. op. at 4–5 (PTAB Mar. 7, 2014) (Paper 32, “Toyota”). For the reasons explained below, we conclude that Patent Owner has not met its burden with respect to claims 25–48.” slip op. at 10
- ScopeDecided for patent owner
“As discussed above, the claims do not require encrypting data before transmitting that data as part of the store instruction. Accordingly, we decline to import into the claims a limitation based on a specific embodiment in the Specification. See, e.g., SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[A] particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”). We decline to read the exemplary disclosure of encrypting the data before transmitting it with the store instruction into the broadest reasonable interpretation of “data.”” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“3. Written Description Support Pursuant to 37 C.F.R. § 42.121(b), a motion to amend in an inter partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.”” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“appliance to generate encrypted received data” and “store the encrypted received data in the second memory device,” recited in proposed substitute claim 25 and similarly recited in the other proposed substitute independent claims. See Reply 4–5. We agree with Patent Owner that McCanne does not disclose explicitly that its receiving TA is configured to “encrypt the original data received with the store instruction . . . to generate encrypted received data” and “store the encrypted received data in the second memory device.” See id. at 5. Thus, we are not persuaded that McCanne anticipates the proposed substitute claims, as asserted by Petitioner, because McCanne fails to describe each and every element as set forth in the proposed substitute claims, either expressly or inherently. See Opp. 8–12; Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).” slip op. at 26
§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 8,392,684 - PTAB · Dec 30, 2014 · IPR2013-00403 · APJ Justin T Arbes · IPR · Final written decision
The Board canceled claims 1–27 and granted substitute claims 28 and 30, but denied substitute claims 29 and 31–33 for failure to meet amendment requirements or show patentability.
RulingsFinal written decision- ScopeMotion to amend, grantedGranted
“1. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 28 as a substitute for claim 2, claim 29 as a substitute for claim 11, claim 30 as a substitute for claim 13, claim 31 as a substitute for claim 22, claim 32 as a substitute for claim 24, and claim 33 as a substitute for claim 27. Mot. 1–6. Each claim includes all of the limitations of the corresponding claim for which it is a substitute, and adds additional limitations. No limitations are removed. Petitioner in its Opposition does not dispute Patent Owner’s assertion that the proposed substitute claims do not enlarge the scope of the claims of the ’583 patent. See Mot. 8. We are persuaded that the proposed substitute claims do not enlarge the scope of the original patent claims.” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“2. Written Description Support Pursuant to 37 C.F.R. § 42.121(b), a motion to amend in an inter partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.”” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Term Proposed Interpretation “sync point” “a location in a data flow having data meeting a specified criteri[on]” “fine sync point” “a location in a data flow having data meeting a specified fine criteri[on] that is less restrictive than a coarse criteri[on]” “coarse sync point” “a location in a data flow having data meeting a specified coarse criteri[on] more restrictive than a fine criteri[on]” Mot. 6–7 (citing Ex. 1001, col. 9, ll. 20–57). Petitioner in its Opposition does not argue that Patent Owner’s proposed interpretations are incorrect. We agree that Patent Owner’s proposed interpretations represent the broadest reasonable interpretation of the claims in light of the Specification of the ’583 patent. The Specification discloses fine filter 560 and coarse filter 565, where “[t]he appliance designates the locations in the data flow which meet the fine and coarse filter criteria as fine and coarse sync-points, respectively,” and the filter criteria for coarse filter 565 are “more restrictive” than the filter criteria for fine filter 560. Ex. 1001, col. 9, ll. 20–38. The Specification also describes an example where “the filter criteri[on] declares a fine sync-point when the top five bits of the hashes are all zeros and a coarse filter criteri[on] which stores or compares hashes when the top ten bits of the hashes are all zeros” (i.e., the filter criterion for the coarse filter is more restrictive). Id. at col. 9, ll. 30–34. Accordingly, we interpret “sync point,” “fine sync point,” and “coarse sync point” as set forth above.” slip op. at 14
- Prior constructionPrior construction adoptedDecided for patent owner
“Also, in the Decision on Institution, we interpreted various claim terms of the independent claims of the ’583 patent as follows: Term Interpretation “network memory” (claims 1, 12, device(s) in a network for and 23) storing information “appliance” (claims 1, 12, and 23) hardware and/or software elements applied to a particular use “instruction” (claims 1, 12, and a message or signal that 23) indicates, explicitly or implicitly, an action to perform See Dec. on Inst. 6–10. Patent Owner’s proposed substitute claims depend from the original independent claims of the ’583 patent, and the parties do not dispute these interpretations in their papers. We do not perceive any reason or evidence that now compels any deviation from these interpretations. Accordingly, for purposes of assessing the proposed substitute claims, we incorporate our previous analysis of the three terms above. See id.” slip op. at 15
Claim construction§ 103 obviousness§ 112 disclosurePatents in suitUS 8,370,583
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.