- Fisher & Paykel Healthcare Limited v. Resmed LimitedRehearing deniedPTAB · Aug 17, 2017 · IPR2017-00215 · APJ James J Mayberry · IPR · Rehearing
The Board denied Fisher’s rehearing request, leaving trial denied because Fisher did not show an abuse of discretion in the findings on the fixed, non-adjustable position limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). And, because Fisher seeks rehearing of our Decision on Institution, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). A request for rehearing is not an opportunity to present new arguments. See 37 C.F.R. § 42.71(d) (requiring the rehearing request to “specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply”) (emphasis added).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“the effect of the prosecution history on the scope of the claims, as substantial evidence supports our findings. We understand that a prosecution disclaimer requires that a patentee make it clear “that the invention does not include a particular feature” and that, although “such disavowal can occur either explicitly or implicitly, it must be clear and unmistakable.” Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016). We are not persuaded by Fisher that ResMed’s disclaimer is limited to adjustment mechanisms that correspond to a structure that forms the engagement between a cushion component and a common frame.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not reached
“discretion. First, we do not understand Fisher as making this argument in the Petition. That is, we interpret Fisher to argue in the Petition that after a user adjusts the fit of mask 510 using adjustment wheels 530 to a desired configuration, the user will not further adjust the mask, and cushion/secondary frame 514 is in a fixed, non-adjustable position relative to chassis 512. See Pet. 27. We cannot misapprehend or overlook an argument that is not made. Even if the argument as Fisher articulates here is the argument in the Petition, we are not persuaded that we overlooked Berthon-Jones disclosing the “fixed, non-adjustable position” claim limitations, as substantial evidence supports our findings. Berthon-Jones’s adjustment is not the “wiggle” that ResMed referenced in its Preliminary Response, which would be associated with manufacturing tolerances and flexible materials that may allow for some small movement between the components.4 See Prelim. Resp. 15. Instead, Berthon-Jones discloses that its adjustment wheel 530 is used to adjust the sealing force or fit of the cushion against a user’s face— that is, the reason for adjustment wheel 530 as part of the mask is to adjust the cushion relative to the frame. See Ex. 1002 ¶ 186; see also ¶ 168 (“[Figures] 41 through 53 illustrate additional embodiments which allow 4 We stress that we do not decide whether the “fixed, non-adjustable position” claim limitations would encompass a structure with the “wiggle” that ResMed referenced in its Preliminary Response, as we do not need to reach that issued in deciding this Request.” slip op. at 10
- Strike new argumentNew argument disregardedDecided for patent owner
“discretion, as the argument is inconsistent with our construction of the “fixed, non-adjustable position” claim limitations. As we indicated above, we interpret these limitations to exclude masks with structures that adjust the 3 Fisher’s Petition did not identify raised central structure 538 as satisfying the subject matter of the fixed, non-adjustable position” claim limitations. See Pet. 25–27 (identifying protrusions 524 and receiving holes 526). We do not consider new arguments in a request for rehearing. See 37 C.F.R. § 42.71(d).” slip op. at 7
Claim construction§ 102 anticipationPatents in suitUS 9,381,316 - Xactware Solutions, Inc. v. Eagle View Technologies, Inc.Some claims unpatentablePTAB · Aug 14, 2017 · IPR2016-00591 · APJ Garth D Baer · IPR · Final written decision
Claims 1, 3, 6, 9, 12-14, 16, 19, 22, and 23 are unpatentable as anticipated by Avrahami; claims 10, 15, and 25 were not shown obvious.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. Avrahami describes its algorithm as providing “for semi-automatic 3D spatial polygon extraction from a pair of colored aerial images with a known external model solution.” Ex. 1004, 43 (emphasis added). Avrahami touts that one of the advantages of its system is that “the operator can identify at a glance which buildings can be mapped by this method so as to combine it with traditional manual extraction or other semi-automatic method.” Id. at 48 (emphasis added). Further to this point, Figure 1 shows a side-by-side comparison of the images in the pair. See id. at Fig. 1 (displaying left and right polygons going through Avrahami’s iterative matching process). Further, we credit the testimony from Petitioner’s Expert, Mr. Schuch, that one skilled in the art would understand Avrahami’s images to be what “you see . . . on a computer screen” as “part of the production.” Ex. 2017, 69:20–21; see also id. at 71:2–4 (explaining that “[t]his is an actual production image”). Therefore, we find that Petitioner has proffered sufficient evidence that Avrahami discloses the disputed limitation.” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner
“We are persuaded by Patent Owner’s extensive evidence of nexus between its Render House and Twister products and the challenged claims. Patent Owner steps through each challenged claim on an element-by-element basis and directs us to images and specific passages from its Render House and Twister user guides that it argues embody the limitations of each challenged claim. PO. Resp. 50–58. Patent Owner also supports its assertion of nexus with testimony in the form of a Declaration from Dr. Chandrajit L. Bajaj that includes a claim chart detailing where each limitation of the challenged claim is found in its Twister and Render House products. Ex. 2010, 44–91.5 The Federal Circuit has held that “if the marketed product embodies the claimed features, and is coextensive with them, then a nexus is presumed and the burden shifts to the party asserting obviousness to present evidence to rebut the presumed nexus.” Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). Patent Owner has put forth sufficient evidence to show that its Twister and Render House products embody the elements of the challenged claims and thus, we look to Petitioner to rebut this presumed nexus and acknowledge that the presumption “cannot be rebutted with mere argument; evidence must be put” slip op. at 17
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia with nexusDecided for patent owner
“with the purportedly unique characteristics of the claimed invention and that for which there is alleged commercial success.” Reply 23–24. Our reviewing court has held that for evidence of commercial success to be relevant, “the patentee must establish a nexus between the evidence of commercial success and the patented invention.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010). As noted above, however, Patent Owner has provided extensive evidence that the Twister and Render House products are coextensive with claims 10, 15, and 25 and that the reports sold were created using the Twister and Render House products. Thus, we are persuaded that nexus exists between the challenged claims and the commercially successful products at issue. Petitioner also asserts that “Patent Owner has failed to make any showing as to market share, thus rendering their sales figures irrelevant and not adequately defined.” Reply 24. Patent Owner provided unrebutted evidence that “approximately 96 percent of the top 25 insurance carriers rely on [Eagle View Technologies 3D aerial roof measurement reports] in their claims departments.” Ex. 2020, 1; see also Ex. 2029, 8 (Verisk Analytics presentation noting that 24 of top 25 insurance companies and 30,000 contractors are Eagle View customers). In addition, Patent Owner’s evidence shows that its products are used by “about one-fifth of the roofing contractor market, according to an estimate by market researcher IbisWorld.” Ex. 2024. Patent Owner’s financial reports show both that it sold a significant number of roofing reports and that its sales grew significantly between 2009 and 2015. See PO Resp. 60–61. We find that this information, taken together with statement from others in the industry (see Ex. 2029) gives us a view of Patent Owner’s place in the relevant market and persuades us that Patent Owner’s Twister and Render House products experienced significant commercial success and wide-spread use in the industry.” slip op. at 20
- Obviousness (§103) › Objective indicia / secondary considerations › Skepticism / industry praiseDecided for patent owner
“iii. Industry Praise Praise from industry participants, especially competitors, is probative as to obviousness because such participants “are not likely to praise an obvious advance over the known art. Thus, if there is evidence of industry praise of the claimed invention in the record, it weighs in favor of the non-obviousness of the claimed invention.” Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1053 (Fed. Cir. 2016). Petitioner described Patent Owner’s products as “[u]sing aerial photography and patent-pending software [to] accurately calculate[] measurements for the roof’s ridges, rafters, valleys, slopes and more.” Ex. 2021, 1. Petitioner further noted that the “process saves contractors and roofers hours of time spent measuring and scoping a roof.” Id.” slip op. at 23
Patent outcomesUS 8,209,152 mixed§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,209,152 - Kayak Software Corp. / Opentable, Inc. et al. v. International Business Machines Corp.All claims unpatentablePTAB · Aug 7, 2017 · IPR2016-00609 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1, 3, 12, 13, 15, and 18 are unpatentable as anticipated by Mellmer under § 102.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“for the first time in its Reply, even though it had an opportunity to brief this issue in its Petition. We therefore find Petitioner’s new argument in this regard waived. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016). Even if we were to consider Petitioner’s argument, however, we would still find it to be unpersuasive. “[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (cited at PO Resp. 25). In this case, as Patent Owner points out, “the inventors stated that the preambles of [c]laims 1, 15, and 18 limit those claims,” and they “also used the term ‘federated computing environment’ to distinguish their claims over a reference cited during prosecution.” PO Resp. 24–25; see also Ex. 1003, 14–15 (“the subject disclosure provides for a ‘runtime user account creation operation within a single-sign-on process’ within the context of a ‘federated computing environment’” and “[t]he ‘federated’ context of the subject disclosure is evident from the preamble in each independent claim”); id. at 16 (“the ‘federated computing environment’ limitations of the preamble[s] are limiting”); id. at 17 (“Ting, the alleged anticipatory prior art, is not a ‘federated’ teaching. For that reason alone, the reference cannot and does not anticipate any pending claim.”). Based on the record before us, we conclude that the term “federated computing environment” is limiting.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We do not conclude, however, that the scope of the term is limited to an affiliation of enterprises, as both parties urge. Pet. 18; PO Resp. 23. Indeed, the specification of the ’346 patent teaches that, “[i]n the context of the present invention, a federation is a set of distinct entities, such as enterprises, organizations, institutions, etc., that cooperate to provide a single-sign-on, ease-of-use experience to a user.” Ex. 1001, 10:62–64 (emphasis added). According to the specification of the ’346 patent, an entity “generally refers to an organization, an individual, or a system that operates on behalf of an organization, an individual, or another system.” Id. at 8:31–33. We recognize that the portion of the ’346 patent that the parties cite specifies enterprises, but, in light of the specification of the patent as a whole, we find this instance of “enterprises” to illustrate an example of the types of entities that may make up a federation. Compare id. at 10:62–64 (“[i]n the context of the present invention, a federation is a set of distinct entities, such as enterprises”), with id. at 1:64–2:1 (“[a] federation is a loosely coupled affiliation of enterprises”). Accordingly, we determine that, under a broadest reasonable interpretation in light of the specification of the ’346 patent, the term “federated computing environment” refers to “an environment having a loosely coupled affiliation of entities that adhere to certain standards of interoperability; the federation provides a mechanism for trust among those entities with respect to certain computational operations for the users within the federation.”” slip op. at 8
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner counters, arguing that “federated computing environment” is not limiting “because that term only appears in the preamble, which the patentee used merely to state an intended use for the claimed subject matter,” the invention of the ’346 patent “is not limited to operating in a federated computing environment,” and “[t]he claim body of each independent claim defines a structurally complete invention.” Pet. Reply 2–3. According to Petitioner, that “the applicant argued that the preamble was limiting during prosecution” is not “categorically determinative,” but, rather, should be treated as a “guidepost[]” in “deciding whether a preamble is limiting.” Id. at 4. Petitioner raises the argument as to whether the preamble is limiting for the first time in its Reply, even though it had an opportunity to brief this issue in its Petition. We therefore find Petitioner’s new argument in this regard waived. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016). Even if we were to consider Petitioner’s argument, however, we” slip op. at 7
- Expert testimonyOther
“above in the “Claim Construction” section, we construe the term “single sign-on operation” to mean “a process by which a user is authenticated at a first entity and subsequently not required to perform another authentication before accessing a protected resource at a second entity.” An authentication, as explained by Petitioner, refers to a “process of validating a set of credentials that are provided by a user or on behalf of a user.” Pet. Reply 8. This is supported by the ’346 patent. See Ex. 1001, 9:50–51 (providing the same definition); see also Tr. 27:24–28:2 (Patent Owner stating that there is “no real dispute on the meaning of authentication”). While we recognize that DigitalMe “will construct an accessCard, prompt the user to associate a meCard, and re-issue the post” before the user is logged into the partner site in Mellmer, (see Ex. 1008, 25:66–26:2, Fig. 34), we do not find this disclosure to be indicative of a second authentication, as Patent Owner urges, (see PO Resp. 34). For instance, we note that an accessCard in Mellmer “represent[s] the partner site.” Ex. 1008, 24:48. As Petitioner points out, Mellmer “is silent as to what information is included in the accessCard” described in the “No Account On This Site Scenario” section. Pet. Reply 12. That is, Mellmer does not teach that the accessCard in a “No Account On This Site Scenario” includes a set of credentials. See id.; see also PO Resp. 34 (citing Ex. 1008, 24:62–25:4 (describing “A Normal Scenario”), 25:9–13 (describing “A Normal Scenario”), 25:38–43 (describing “A No Access Card Scenario”), 25:63– 26:2 (describing an accessCard in “A No Account On This Site Scenario,” without describing the contents of the accessCard), 26:32–35 (describing “A Site that is not DigitalMeTM—Aware Scenario”)). Thus, based on the arguments and evidence presented, we find that constructing an accessCard representing the partner site does not constitute providing or validating a set of credentials.” slip op. at 20
Patent outcomesUS 7,631,346 unpatentableClaim construction§ 102 anticipationPatents in suitUS 7,631,346 - Kayak Software Corp. / Opentable, Inc. et al. v. International Business Machines Corp.All claims unpatentablePTAB · Aug 7, 2017 · IPR2016-00608 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1, 3, 12, 14, 15, and 18 are unpatentable as anticipated by Sunada under 35 U.S.C. § 102.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“We do not conclude, however, that the scope of the term is limited to an affiliation of enterprises, as both parties urge. Pet. 18; PO Resp. 13. Indeed, the specification of the ’346 patent teaches that, “[i]n the context of the present invention, a federation is a set of distinct entities, such as enterprises, organizations, institutions, etc., that cooperate to provide a single-sign-on, ease-of-use experience to a user.” Ex. 1001, 10:62–64 (emphasis added). According to the specification of the ’346 patent, an entity “generally refers to an organization, an individual, or a system that operates on behalf of an organization, an individual, or another system.” Id. at 8:31–33. We recognize that the portion of the ’346 patent that the parties cite specifies enterprises, but, in light of the specification of the patent as a whole, we find this instance of “enterprises” to illustrate an example of the types of entities that may make up a federation. Compare id. at 10:62–64 (“[i]n the context of the present invention, a federation is a set of distinct entities, such as enterprises”), with id. at 1:64–2:1 (“[a] federation is a loosely coupled affiliation of enterprises”). Accordingly, we determine that, under a broadest reasonable interpretation in light of the specification of the ’346 patent, the term “federated computing environment” refers to “an environment having a loosely coupled affiliation of entities that adhere to certain standards of interoperability; the federation provides a mechanism for trust among those entities with respect to certain computational operations for the users within the federation.” Based on our construction, the scope of this term encompasses enterprises, but is not limited to enterprises.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Petitioner raises the argument as to whether the preamble is limiting for the first time in its Reply, even though it had an opportunity to brief this issue in its Petition. We therefore find Petitioner’s new argument in this regard waived. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016). Even if we were to consider Petitioner’s argument, however, we would still find it to be unpersuasive. “[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (cited at PO Resp. 15). In this case, as Patent Owner points out, “the inventors stated that the preambles of [c]laims 1, 15, and 18 limit those claims,” and they “also used the term ‘federated computing environment’ to distinguish their claims over a reference cited during prosecution.” PO Resp. 15 (citing Ex. 1003, 15–22); see also Ex. 1003, 14–15 (“the subject disclosure provides for a ‘runtime user account creation operation within a single-sign-on process’ within the context of a ‘federated computing environment” and “[t]he ‘federated’ context of the subject disclosure is evident from the preamble in each independent claim”); id. at 16 (“the ‘federated computing environment’ limitations of the preamble[s] are limiting”); id. at 17 (“Ting, the alleged anticipatory prior art, is not a ‘federated’ teaching. For that reason alone, the reference cannot and does not anticipate any pending claim.”). Based on the record before us, we conclude that the term “federated computing environment” is limiting.” slip op. at 7
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner
“Based on the record before us, we find that Patent Owner does not meet its burden of producing evidence sufficient to show that Mr. Bray’s work on the source code inured to the benefit of the named inventors. It follows that we also find that Patent Owner does not meet its burden of producing evidence sufficient to show that any of the named inventors constructed an embodiment or performed a process that met all the claim limitations. See Cooper, 154 F.3d at 1327. Even if we were to accept that Mr. Bray’s work on the source code inured to the benefit of the named inventors, however, we find that Patent Owner fails to provide sufficient evidence showing that Mr. Bray’s code was tested successfully and adequately to show that the code actually worked for its intended purpose, as required by the second element of actual reduction to practice. See id. We note Petitioner’s argument that Patent Owner “fails to corroborate the testing by anyone who had first-hand knowledge of that alleged testing.” Pet. Reply 11. Petitioner explains that “Dr. Hinton, when asked on redirect at her deposition in this proceeding, testified that runtime account provisioning was tested, although on recross she admitted that she had no documentation to corroborate that testing.” Id. at 13 n.2 (citing Ex. 1018, 109:14–110:4). Petitioner also explains that “Mr. Wardrop testified that he did not write or test the code, nor was he able to find any documentation about the alleged testing.” Id. at 14 (citing Ex. 1017, 64:16– 22, 79:9–23). In addition, Petitioner points out, “Mr. Wardrop was also unable to say under what configuration the alleged testing would have occurred, which is significant because he testified that not all configurations would have involved runtime account creation.” Id. (citing Ex. 1017, 91:19– 92:21). We agree with Petitioner. In particular, we note the absence from the record of any evidence showing that Mr. Bray’s source code actually worked for its intended purpose. The only evidence that Patent Owner relies on to show testing of Mr. Bray’s code is the testimony of Dr. Hinton, a named inventor, and Mr. Wardrop, a non-inventor. See PO Resp. 40 (citing Ex. 2038 ¶¶ 12–14, 26; Ex. 2061 71:2–72:24). Patent Owner does not direct us to any test documentation corresponding to the code. Indeed, Dr. Hinton testified during her deposition that she has no access to any such documentation. Ex. 1018, 109:18–24 (“Q. You are not aware of any documentation that reflects that testing of runtime account creation for the PRPQ; correct? A. I don’t have access to the test documents. There would have been test cases created. I just don’t have them.”). Similarly, Mr. Wardrop testified during his deposition that he also has no access to any test documentation corresponding to Mr. Bray’s source code, and that he was not involved with the testing. Ex. 1017, 64:16–22 (“Q. Is there any documentation of that testing? A. I couldn’t find any, . . . but I know there was at the time, but it’s so long ago . . . because I’m not a tester, so I don’t know where they actually kept all those records.”); id. at 79:18–23 (“Q. . . . So the Exhibits 2040 to 2049 that you said wouldn’t have been included in the release but that would have been in the build, would you have been involved in testing with those? A. I was not part of the testing.”). In Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1373 (Fed. Cir. 1998), the Federal Circuit found significant “the absence of any physical record to support the oral evidence,” despite “the ubiquitous paper trail of virtually all commercial activity” that normally exists “in modern times.”” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Based on the record before us, we agree with Petitioner. Claims 1, 15, and 18 do not recite any “hallmark[]” of a mechanism for trust. Further, Patent Owner’s own assertion that computer components within a single enterprise implicitly trust each other implies that Sunada discloses a mechanism for trust among those computer components. See PO Resp. 27; see also Ex. 1001, 19:54–63 (“Within an exemplary federated environment that is able to support the present invention, there are two types of ‘trust domains’ . . . . An enterprise trust domain contains those components that are managed by the enterprise; all components within that trust domain may implicitly trust each other.”) (cited at Pet. Reply 24). Moreover, in her declaration, Ms. Spielman directs us to where the ’346 patent teaches that, “[i]f there is no trust relationship, then the service provider cannot depend upon the assertions received from the identity provider; they cannot be used by the service provider to determine how to interpret any information received from the identity provider.” Ex. 2039 ¶ 70 (citing Ex. 1001, 20:28– 32). As discussed above, Sunada’s SSO server sends attributes to a web application, and that web application uses those attributes for runtime account creation. Ex. 1005, Fig. 3. Having considered the arguments and evidence developed during trial, we find that Sunada’s exchange of attributes implies a trust relationship. Specifically, we note the cited teachings in the ’346 patent that all components within an enterprise trust domain may implicitly trust each other, (see Ex. 1001, 19:54–63), and that the service provider cannot depend on assertions from the identity provider where there is no trust relationship, (see id. at 20:28–32). Accordingly, we find that Sunada discloses a mechanism for trust. Patent Owner further argues that Sunada does not disclose a “federated computing environment” because, “‘[w]ithin a single enterprise, some web applications may participate in a single-sign-on, while others may not.’” PO Resp. 27 (quoting Ex. 2039 ¶ 79). Although this may be true generally, Patent Owner does not direct us to evidence showing a web application in Sunada specifically that does not participate in a single-sign-on. Indeed, Sunada teaches that both web applications 2 and 3 “have a function by which, in a case where a user who has logged in by way of the SSO function requests to be provided with a service and the user is not registered, the applications automatically create a user account.” Ex. 1005 ¶ 16 (cited at Pet. 25–26); see also Pet. 24 (“the [web applications in Sunada] ‘participate’ in the SSO and are configured to create a user account for a user that attempts to log on using the SSO server, but does not have an account with the [web application]”). We find that each of Sunada’s web applications participates in single-sign-on operations. Lastly, Patent Owner argues “that Sunada’s web applications and SSO server can share a user’s login status and information about the user is also not sufficient to show that Sunada discloses a ‘federated computing environment.’” PO Resp. 28. According to Patent Owner, computers within a single enterprise trust each other “because they can communicate over the same standard or protocol on a secure internal network,” and “that Sunada’s web application and SSO server purportedly communicate using the same standard or protocols also is not enough to make them a ‘federated computing environment’ because components within a single enterprise can communicate over the same standard or protocol.” Id.” slip op. at 28
Patent outcomesUS 7,631,346 unpatentableClaim construction§ 102 anticipationPatents in suitUS 7,631,346 - Intel Corporation / Qualcomm Incorporated et al. v. DSS Technology Management, Inc.All claims unpatentablePTAB · Jun 1, 2017 · IPR2016-01312 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 7–9, 15, and 17 are unpatentable as anticipated by Sakamoto; claims 10–12 are unpatentable as obvious over Sakamoto and Cederbaum.
RulingsFinal written decision- BurdenOther
“Owner’s election not to file a Patent Owner Preliminary Response does not implicate any adverse inference. 37 C.F.R.§ 42.107(a); Office Patent Trial Practice Guide. 77 Fed Reg. 48756, 48,764 (Aug. 14, 2012). However, as to the Patent Owner Response after institution of trial, under our Scheduling Order “Patent Owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.” Paper 11, 3; see In re Nuvasive, 842 F. 3d 1376, 1381 (Fed. Cir. 2016)(finding that NuVasive waived public accessibility arguments in its Preliminary Response by failing to challenge public accessibility during the trial phase, i.e. by not addressing public accessibility in its Trial Response and explicitly declining to make further arguments at oral hearing). In this case, Patent Owner “defers to the Board” to determine whether Petitioner has demonstrated the challenged claims are unpatentable by a preponderance of the evidence. PO Resp. 2. There is no argument or evidence, other than that presented in the Petition and the accompanying Exhibits, for us to consider. Nevertheless, “In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ . . . and that burden never shifts to the patentee.” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (quoting 35 U.S.C. § 316(e)).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“meaning to the terms not construed. We applied the broadest reasonable interpretation to the following term that required construction. Noting a claim construction dispute in co-pending district court litigation, Petitioner proposed that we construe the “diffusion region formed in said substrate” to mean “conductive terminal region, such as a source or drain, that contains dopants implanted in the silicon substrate.” Pet. 24. As discussed in the Decision to Institute, we determined that the subject matter of the claims concerns a local interconnect between a gate and a diffusion region and that there was no need to further construe “the diffusion region formed in said substrate” for purposes of this decision. Dec. to Inst. 5–6. Based on the complete record now before us, we discern no reason to change the constructions.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“embodiments, which all delineate p-well region 2 and Sakamoto’s fifth embodiment in which p-well region 2 is not shown, based on the record in this proceeding, we are persuaded that the evidence supports Petitioner’s contention that the implanted p-well region is part of the silicon substrate.” slip op. at 11
- Expert testimonyPetitioner expert creditedOther
“Petitioner cites Sakamoto’s disclosure of softening and reflowing BoroPhosphoSilicate Glass (BPSG) film to form insulating layer 9, stating that BPSG is a type of silicon oxide. Id. at 44–45 (citing Bravman Decl. ¶ 91; Ex. 1115, at 185).5 We credit Dr. Bravman’s testimony and are persuaded that insulating layer 9 is formed of silicon oxide.” slip op. at 14
Patent outcomesUS 5,965,924 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 5,965,924 - Intel Corporation / Qualcomm Incorporated et al. v. DSS Technology Management, Inc.All claims unpatentablePTAB · Jun 1, 2017 · IPR2016-00290 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 7–9, 15, and 17 are unpatentable as anticipated by Sakamoto; claims 10–12 are unpatentable as obvious over Sakamoto and Cederbaum.
RulingsFinal written decision- BurdenOther
“Owner’s election not to file a Patent Owner Preliminary Response does not implicate any adverse inference. 37 C.F.R.§ 42.107(a); Office Patent Trial Practice Guide. 77 Fed Reg. 48756, 48,764 (Aug. 14, 2012). However, as to the Patent Owner Response after institution of trial, under our Scheduling Order “Patent Owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.” Paper 11, 3; see In re Nuvasive, 842 F. 3d 1376, 1381 (Fed. Cir. 2016)(finding that NuVasive waived public accessibility arguments in its Preliminary Response by failing to challenge public accessibility during the trial phase, i.e. by not addressing public accessibility in its Trial Response and explicitly declining to make further arguments at oral hearing). In this case, Patent Owner “defers to the Board” to determine whether Petitioner has demonstrated the challenged claims are unpatentable by a preponderance of the evidence. PO Resp. 2. There is no argument or evidence, other than that presented in the Petition and the accompanying Exhibits, for us to consider. Nevertheless, “In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ . . . and that burden never shifts to the patentee.” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (quoting 35 U.S.C. § 316(e)).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“meaning to the terms not construed. We applied the broadest reasonable interpretation to the following term that required construction. Noting a claim construction dispute in co-pending district court litigation, Petitioner proposed that we construe the “diffusion region formed in said substrate” to mean “conductive terminal region, such as a source or drain, that contains dopants implanted in the silicon substrate.” Pet. 24. As discussed in the Decision to Institute, we determined that the subject matter of the claims concerns a local interconnect between a gate and a diffusion region and that there was no need to further construe “the diffusion region formed in said substrate” for purposes of this decision. Dec. to Inst. 5–6. Based on the complete record now before us, we discern no reason to change the constructions.” slip op. at 5
- Expert testimonyPetitioner expert creditedOther
“Petitioner cites Sakamoto’s disclosure of softening and reflowing BoroPhosphoSilicate Glass (BPSG) film to form insulating layer 9, stating that BPSG is a type of silicon oxide. Id. at 44–45 (citing Bravman Decl. ¶ 91; Ex. 1115, at 185).5 We credit Dr. Bravman’s testimony and are persuaded that insulating layer 9 is formed of silicon oxide.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“embodiments, which all delineate p-well region 2 and Sakamoto’s fifth embodiment in which p-well region 2 is not shown, based on the record in this proceeding, we are persuaded that the evidence supports Petitioner’s contention that the implanted p-well region is part of the silicon substrate.” slip op. at 11
Patent outcomesUS 5,965,924 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 5,965,924 - Intel Corporation / Qualcomm Incorporated et al. v. DSS Technology Management, Inc.All claims unpatentablePTAB · Jun 1, 2017 · IPR2016-01314 · APJ Minn Chung · IPR · Final written decision
Claims 8–12 are unpatentable as anticipated by Heath under § 102(b), because Heath discloses every limitation of the challenged claims.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“preliminarily interpreted the “angle limitation” set forth above—i.e., the limitation reciting “a side of the electrically insulative spacer has an angle relative to the substrate surface that is either a right angle or an acute angle of more than 85°”8—to mean “a side of the electrically insulative spacer has an angle relative to the substrate surface that is greater than 85° and less than or equal to 90°.” Dec. on Inst. 8–14. Importantly, we were unpersuaded by Patent Owner’s argument that the angle of a side of the insulating spacer must be obtained “through the use of a low selectivity etch” (Prelim. Resp. 15–19) and determined that the challenged claims do not require the use of a low selectivity etch. Dec. on Inst. 8–12. 8 Claim 1 includes essentially the same limitation, the only difference being that claim 1 recites “insulating spacer” instead of “electrically insulative spacer” recited in claim 8. Tracking the language of the claims, the ’552 patent uses the terms “insulating spacer” and “insulative spacer” interchangeably throughout the written description. See, e.g., Ex. 1101, col. 6, ll. 13–65; see also id. at col. 13, ll. 55–62 (using “the spacer portions of the insulating material” and “the spacer portions [of] insulative material” interchangeably). The parties also appear to use the terms “insulating spacer” and “insulative spacer” interchangeably in the Petition and the Preliminary Response. See, e.g., Pet. 28–29; Prelim. Resp. 15–16, 19. Upon considering the complete record, we deem the terms “insulating spacer” and “insulative spacer” to be interchangeable and to have no meaningful difference in their meaning in the context of the ’552 patent. The parties do not present additional claim construction arguments in their Patent Owner Response and Petitioner Reply. Upon considering the complete record, we discern no reason to deviate from our construction, which was adopted from the parties’ agreed construction at the district court (Dec. on Inst. 14 (citing Ex. 1124 (Dist. Ct. Claim Construction Order), 7– 8)), and maintain our construction of the “angle limitation” to mean “a side of the electrically insulative spacer has an angle relative to the substrate surface that is greater than 85° and less than or equal to 90°.”” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“1. Principles of Law A claim is unpatentable under 35 U.S.C. § 102 only if a single prior art reference expressly or inherently describes each and every limitation set forth in the claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Further, a reference cannot anticipate “unless [it] discloses 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). Although the elements must be arranged in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). We analyze this asserted ground based on anticipation with the principles identified above in mind.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We credit Dr. Bravman’s testimony and are persuaded that sources and/or drains are known in the art to be electrically conductive diffusion regions of a transistor structure, and that polysilicon used to form gate electrode 16 of Heath is an electrically conductive material. See Ex. 1102 ¶¶ 79, 80. Therefore, we are persuaded by Petitioner’s argument and evidence that Heath discloses “(a) a first electrically conductive material formed in and/or on a surface of a substrate” and “(b) . . . a second electrically conductive material formed on the substrate,” as recited in claim 8.” slip op. at 18
Patent outcomesUS 6,784,552 unpatentableClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 6,784,552 - Intel Corporation / Qualcomm Incorporated et al. v. DSS Technology Management, Inc.All claims unpatentablePTAB · Jun 1, 2017 · IPR2016-00288 · APJ Minn Chung · IPR · Final written decision
Claims 8–12 are unpatentable because Heath anticipates each challenged claim under 35 U.S.C. § 102(b).
RulingsFinal written decision- BurdenUnpatentable
“art reference expressly or inherently describes each and every limitation set forth in the claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Further, a reference cannot anticipate “unless [it] discloses 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). Although the elements must be arranged in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). We analyze this asserted ground based on anticipation with the principles identified above in mind.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
“preliminarily interpreted the “angle limitation” set forth above—i.e., the limitation reciting “a side of the electrically insulative spacer has an angle relative to the substrate surface that is either a right angle or an acute angle of more than 85°”8—to mean “a side of the electrically insulative spacer has an angle relative to the substrate surface that is greater than 85° and less than or equal to 90°.” Dec. on Inst. 8–14. Importantly, we were unpersuaded by Patent Owner’s argument that the angle of a side of the insulating spacer must be obtained “through the use of a low selectivity etch” (Prelim. Resp. 15–19) and determined that the challenged claims do not require the use of a low selectivity etch. Dec. on Inst. 8–12.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“art reference expressly or inherently describes each and every limitation set forth in the claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Further, a reference cannot anticipate “unless [it] discloses 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). Although the elements must be arranged in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). We analyze this asserted ground based on anticipation with the principles identified above in mind.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“art reference expressly or inherently describes each and every limitation set forth in the claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Further, a reference cannot anticipate “unless [it] discloses 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). Although the elements must be arranged in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). We analyze this asserted ground based on anticipation with the principles identified above in mind.” slip op. at 12
Patent outcomesUS 6,784,552 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 6,784,552 - Intel Corporation / Qualcomm Incorporated et al. v. DSS Technology Management, Inc.All claims unpatentablePTAB · Jun 1, 2017 · IPR2016-01313 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–3, 14, and 16 are unpatentable as anticipated by Sakamoto; claims 4–6 and 13 are unpatentable as obvious over Sakamoto and Cederbaum.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“BACKGROUND On June 8, 2016 we instituted an inter partes review of claims 1–6, 13, 14, and 16 of U. S. Patent No. 5,965,924 (“the ’924 Patent”) based on a Petition filed by Intel Corporation. Paper 12 (“Dec. to Inst.”). DSS Technology Management, Inc. (“Patent Owner”) waived its right to file a Preliminary Response. On August 29, 2016 we instituted inter partes review of the same claims on the same grounds based on a substantially identical petition filed by Qualcomm Incorporated, Globalfoundries Inc., Globalfoundries U.S. Inc., Globalfoundries Dresden Module One LLC & Co. KG, Globalfoundries Dresden Module Two LLC & Co. KG, in IPR2016-01313. We then joined IPR2016-00289 and IPR2016-01313. Papers 18, 19. In this joined proceeding, we refer to Intel Corporation, Qualcomm Incorporated, Globalfoundries Inc., Globalfoundries U.S. Inc., Globalfoundries Dresden Module One LLC & Co. KG, Globalfoundries Dresden Module Two LLC & Co. KG, collectively as “Petitioner.”” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“meaning to the terms not construed. We applied the broadest reasonable interpretation to the following term that required construction. Noting a claim construction dispute in co-pending district court litigation, Petitioner proposed that we construe the “diffusion region formed in said substrate” to mean “conductive terminal region, such as a source or drain, that contains dopants implanted in the silicon substrate.” Pet. 25. As discussed in the Decision to Institute, we determined that the subject matter of the claims concerns a local interconnect between a gate and a diffusion region and that there was no need to further construe “the diffusion region formed in said substrate” for purposes of this decision. Dec. to Inst. 5–6. Based on the complete record now before us, we discern no reason to change the constructions.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“not shown, we are persuaded that the evidence supports the proposition that the implanted p-well region is part of the silicon substrate. Based on this analysis, we are persuaded that Sakamoto discloses element (a) a silicon substrate with a top surface. As to element (b), we are persuaded by Petitioner’s argument that Sakamoto discloses a diffusion region formed in said substrate. Element (b) also recites that the diffusion region is adjacent said top surface. Having determined that the p-well region is part of the substrate, we agree that Figure 1 of Sakamoto illustrates a diffusion region in the form of source/drain region 7 adjacent to the top surface of the substrate.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“Petitioner persuasively argues that the evidence supports the conclusion that one of ordinary skill would have been motivated to combine the teachings of Cederbaum with those of Sakamoto because they both teach the same type of device and are directed to the same problem, i.e., stacking transistors in an SRAM. Pet. 51. Petitioner points out that Cederbaum and Sakamoto also disclose nearly identical structures with nearly identical components, with both employing an electrically conducting plug within an opening that contains a sidewall spacer to directly connect a diffusion region to a gate. Id. at 52–53. Petitioner cites Cederbaum’s disclosure of materials, such as refractory metals, to be used in forming the conductive plug and Sakamoto’s discussion of the advantages to using a conductive plug of increased conductivity. Id. at 53–54. Thus, Petitioner has demonstrated that it would have been obvious to one of ordinary skill to replace the polycrystalline plug 15 of Sakamoto with a refractory metal plug of tungsten, as disclosed by Cederbaum. Id. at 51. This feature (“said electrically conducting plug is a refractory metal plug”) is recited in claim 5 of the ’924 Patent. Claim 4 recites a metal plug and claim 6 recites the electrically conducting plug is formed of a material selected for the group consisting of titanium, tantalum, molybdenum, and tungsten. Petitioner cites Cederbaum’s disclosure at column 9, lines 31–65 as disclosing a tungsten conducting plug. Id. at 49–50. Claim 13 of the ’924 Patent depends from claim 1 and recites the further limitation “said conducting plug comprises an outer glue layer and a plug material therein.” Petitioner cites Cederbaum as disclosing an outer glue titanium nitride (TiN) layer and an inner plug material, i.e., tungsten. Pet. 55. Petitioner notes that one of ordinary skill would have understood that because the TiN is deposited in opening 28 of Cederbaum before the tungsten is deposited, the TiN layer is an outer glue layer and the tungsten is the inner plug material. Id at 55–56 (citing Ex. 1004, col. 9, ll. 31–47). Petitioner further notes that Cederbaum discloses the TiN layer acts as an outer glue layer because it improves adhesion of the inner tungsten layer. Id. at 56 (citing Ex. 1004, col. 9, ll. 36–43).” slip op. at 15
Patent outcomesUS 5,965,924 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 5,965,924 - Intel Corporation / Qualcomm Incorporated et al. v. DSS Technology Management, Inc.All claims unpatentablePTAB · Jun 1, 2017 · IPR2016-00289 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–3, 14, and 16 are unpatentable as anticipated by Sakamoto; claims 4–6 and 13 are unpatentable as obvious over Sakamoto and Cederbaum.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“CLAIM CONSTRUCTION In our Decision to Institute, we applied the ordinary and customary meaning to the terms not construed. We applied the broadest reasonable interpretation to the following term that required construction. Noting a claim construction dispute in co-pending district court litigation, Petitioner proposed that we construe the “diffusion region formed in said substrate” to mean “conductive terminal region, such as a source or drain, that contains dopants implanted in the silicon substrate.” Pet. 25. As discussed in the Decision to Institute, we determined that the subject matter of the claims concerns a local interconnect between a gate and a diffusion region and that there was no need to further construe “the diffusion region formed in said substrate” for purposes of this decision. Dec. to Inst. 5–6. Based on the complete record now before us, we discern no reason to change the constructions.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Claim 3 depends from claim 1 and recites that the insulator layer is formed of material selected from the group consisting of silicon oxide and silicon nitride. Petitioner cites Sakamoto’s disclosure of softening and reflowing BoroPhosphoSilicate Glass (BPSG) film to form insulating layer 9, stating that BPSG is a type of silicon oxide. Id. at 46 (citing Bravman Decl. ¶ 90; Ex. 1015, 185).5 We credit Dr. Bravman’s testimony and are persuaded that insulating layer 9 is formed of silicon oxide.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“not shown, we are persuaded that the evidence supports the proposition that the implanted p-well region is part of the silicon substrate. Based on this analysis, we are persuaded that Sakamoto discloses element (a) a silicon substrate with a top surface. As to element (b), we are persuaded by Petitioner’s argument that Sakamoto discloses a diffusion region formed in said substrate. Element (b) also recites that the diffusion region is adjacent said top surface. Having determined that the p-well region is part of the substrate, we agree that Figure 1 of Sakamoto illustrates a diffusion region in the form of source/drain region 7 adjacent to the top surface of the substrate.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Petitioner persuasively argues that the evidence supports the conclusion that one of ordinary skill would have been motivated to combine the teachings of Cederbaum with those of Sakamoto because they both teach the same type of device and are directed to the same problem, i.e., stacking transistors in an SRAM. Pet. 51. Petitioner points out that Cederbaum and Sakamoto also disclose nearly identical structures with nearly identical components, with both employing an electrically conducting plug within an opening that contains a sidewall spacer to directly connect a diffusion region to a gate. Id. at 52–53. Petitioner cites Cederbaum’s disclosure of materials, such as refractory metals, to be used in forming the conductive plug and Sakamoto’s discussion of the advantages to using a conductive plug of increased conductivity. Id. at 53–54. Thus, Petitioner has demonstrated that it would have been obvious to one of ordinary skill to replace the polycrystalline plug 15 of Sakamoto with a refractory metal plug of tungsten, as disclosed by Cederbaum. Id. at 51. This feature (“said electrically conducting plug is a refractory metal plug”) is recited in claim 5 of the ’924 Patent. Claim 4 recites a metal plug and claim 6 recites the electrically conducting plug is formed of a material selected for the group consisting of titanium, tantalum, molybdenum, and tungsten. Petitioner cites Cederbaum’s disclosure at column 9, lines 31–65 as disclosing a tungsten conducting plug. Id. at 49–50.” slip op. at 15
Patent outcomesUS 5,965,924 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 5,965,924
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.