- PTAB · Apr 14, 2023 · IPR2022-01489 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–19 on all asserted grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(4) Claim 1 – Conclusion For these reasons, Petitioner has demonstrated a reasonable likelihood of proving that claim 1 would have been obvious over the proposed combination of Lairson and Erdogan, and over the proposed combination of Lairson and Tsai-133.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“set of layers includes oxygen.” Ex. 1001, 10:41–49. Petitioner argues that the proper construction of this limitation “means that there is a third set of layers on the opposite side of the substrate, whether or not [the layers] include oxygen” – i.e., that the third set of layers do not need to include oxygen. Pet. 7–8. Patent Owner contends that this is a typographical error and “wherein” was intended. Prelim. Resp. 8 n.2. Petitioner asserts that “each of the challenges presented in this Petition” addresses “adding a third set of layers with oxygen on a second side of a substrate.” Pet. 8. Because we find Petitioner’s contentions to be sufficient for institution even under Patent Owner’s proposed construction, we need not address Patent Owner’s proposed construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We also conclude that no express claim construction is necessary for any other claim terms. See id.” slip op. at 12
- Skill levelSkill level board ownOther
“Patent Owner does not oppose or comment on Petitioner’s definition of a POSITA. See generally Prelim. Resp. Based on the present record including the disclosure in the ʼ794 patent, we apply a slightly modified 4 In the present record, neither party presents arguments or evidence relating to secondary considerations. version of Petitioner’s definition of the level of ordinary skill in the art that removes the open-ended term “at least.”. On this record and for the purposes of institution, we determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ794 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“However, Patent Owner’s arguments regarding the combination are directed towards a bodily incorporation of structures described in the references, rather than the combination of their teachings proposed by Petitioner. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981). Given the teachings in each reference and our direction that an ordinarily skilled artisan is a person of ordinary creativity, we find, on this preliminary record, that Petitioner has adequately shown that an ordinarily skilled artisan would have applied Lairson’s teachings regarding a short-pass filter with Erdogan or Tsai-133’s teachings concerning filter layers on both sides of a substrate used to form a bandpass filter. KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Petitioner’s proposed combination does not involve adding the exact layers taught in Erdogan and Tsai-133 on the second side of the substrate to Lairson’s short-pass filter on the first side of the substrate. Pet. 33–34, 36– 39. Rather, Petitioner proposes, in one example, using the same materials for filter stacks on both sides of the substrate. Id. at 37–38. Thus, Patent Owner’s arguments that adding the second-side layers disclosed in Erdogan and Tsai-133 to the first-side layers of Lairson is not responsive to Petitioner’s proposed combination. Additionally, on the present record, we credit Petitioner’s declarant’s uncontroverted testimony that Lairson does not explicitly describe a bandpass filter with a long pass filter, and thus that one of ordinary skill would have looked to Erdogan and Tsai-133 for the technique of using a long-pass filter on the other side of the substrate. Id. at 34–37 (citing Ex. 1002 ¶¶ 152, 158). On the present record, and for the purposes of institution, Petitioner sufficiently shows that the combination of Lairson and either Erdogan and Tsai-133 teaches a near infrared band pass filter comprising a first set of layers on the first side, wherein the first set of layers includes silicon and hydrogen, and a second set of layers on the first side, wherein the second set of layers includes oxygen. Additionally, on the present record and for the purposes of institution, Petitioner sufficiently sets forth its showing with respect to the motivation to combine the teachings of Lairson with those of Erdogan or Tsai-133 as it proposes.” slip op. at 21
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,131,794 - PTAB · Dec 22, 2021 · IPR2021-01055 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR of claims 1–5 and 9–19 on five § 103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’766 Patent. Accordingly, we institute an inter partes review of claims 1–5 and 9–19 of the ’766 Patent on the grounds of unpatentability raised in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“For a reference to qualify as a printed publication, “before the critical date the reference must have been sufficiently accessible to the public interested in the art.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988). “When there is an established publisher there is a presumption of public accessibility as of the publication date.” VidStream LLC v. Twitter, Inc., 981 F.3d 1060, 1065 (Fed. Cir. 2020); see also Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential) (determining that, based on the totality of the evidence, a reference bearing a copyright date, a printing date, and an ISBN date all earlier than the critical date of the challenged patent, and the reference was a “textbook from an established publisher” provided sufficient indicia at the institution state).” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“configuration error” With respect to the limitation “configuration error,” Patent Owner asserts that configuration error means “either (1) the condition that occurs when ‘a rule or series of rules is not properly defined and produces an undesired effect’ or (2) ‘a series of improperly defined rules causes a part to be in more than one state at the same time.’” Prelim. Resp. 10 (citing Ex. 1001, 1:54–61; Ex. 2001 ¶ 40). At this stage of the proceeding, we find that Patent Owner’s proposed construction is supported by the ’766 Patent specification, and adopt Patent Owner’s proposed meaning of “configuration error,” with the following remarks with respect to Patent Owner’s additional arguments regarding the claim construction. Patent Owner, however, also argues that “the specification concerns errors internal to the configuration engine and not ‘errors’ that prevent product configurator users from making their desired but impermissible selections.” Prelim. Resp. 10. We do not agree with Patent Owner’s argument because the first part of the construction, namely rules not being properly defined and “produc[ing] an undesired effect,” does not specify anything about an error being “internal” to the configuration engine. The specification provides that such a configuration error “may occur when a rule or series of rules is not properly defined and produces an undesired effect, such as the exclusion of a part that should be selectable” (Ex. 1001, 1:54–61, emphasis added), but the latter clause provides only one example of the undesired effect. We are not persuaded, based on our review of the Specification of the ’766 Patent that “an undesired effect” should be limited to the exclusion of a part. Thus, although Patent Owner argues that “a configuration error is not a condition that occurs when a user attempts to make a choice that is prohibited by a rule” (Prelim. Resp. 11 (citing Ex. 2001 ¶ 43)), at this juncture, we are not persuaded that such a condition would not be an undesired effect, according to the adopted construction. Therefore, we do not further limit the construction of “configuration error.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS Level of Ordinary Skill in the Art Petitioner, supported by Dr. Wood’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had “a Bachelor’s degree in Computer Science, Computer or Electrical Engineering, Engineering Science, an engineering major with a significant computational component, or a similar discipline, or with at least two years of research or experience in configurable systems including testing.” Pet. 8 (citing Ex. 1003 ¶¶ 53–55). Patent Owner argues that “[t]here may be some differences between this and the correct level of skill in the art but those differences will not affect this case at this stage,” such that Patent Owner applies the proposed level of skill in the art without agreeing to it. Prelim. Resp. 10 (citing Ex. 2001 ¶¶ 35–37). At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,836,766 - Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentablePTAB · Sep 28, 2015 · IPR2014-01057 · APJ Kevin F Turner · IPR · Final written decision
Claims 2, 11, 13, 14, and 16 are unpatentable under § 103(a) over the asserted combinations of Wang, Lantsman, and the applicable additional reference.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“North America Corporation (collectively, “TSMC”) filed a Petition requesting an inter partes review of claims 2, 11, 13, 14, and 16 of U.S. Patent No. 6,853,142 B2 (Ex. 1101, “the ’142 Patent”). Paper 2 (“Pet.”). Patent Owner Zond, LLC (“Zond”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). We instituted the instant trial on October 20, 2014, pursuant to 35 U.S.C. § 314. Paper 9 (“Dec.”).” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Subsequent to institution, we granted the revised Motions for Joinder filed by other Petitioners (collectively, “GlobalFoundries”) listed in the Caption above, joining Cases IPR2014-00863, IPR2014-01013, and IPR2014-01057 with the instant trial (Papers 12–14), and also granted a Joint Motion to Terminate with respect to TSMC (Paper 32). Zond filed a Response (Paper 26 (“PO Resp.”)), and GlobalFoundries filed a Reply (Paper 39 (“Reply”)). Oral hearing2 was held on June 12, 2015, and a transcript of the hearing was entered into the record. Paper 46 (“Tr.”).” slip op. at 2
- Skill levelOther
“B. Principles of Law A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In that regard, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; Translogic, 504 F.3d at 1259. The level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We analyze the asserted grounds of unpatentability in accordance with the above-stated principles.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“plasma to generate a strongly-ionized plasma,” with independent claim 10 reciting a similar limitation. All of the challenged claims depend from claim 1 or 10. During the pre-trial stage of this proceeding, the parties submitted their constructions for the claim terms “a weakly-ionized plasma” and “a strongly-ionized plasma.” Pet. 14–15; Prelim. Resp. 20–22. In our Decision on Institution, we adopted Zond’s proposed constructions, in light of the Specification, as the broadest reasonable interpretation. Dec. 8–10. Upon review of the parties’ explanations and supporting evidence before us, we discern no reason to modify our claim constructions set forth in the Decision on Institution with respect to these claim terms. Id. Therefore, for purposes of this Final Written Decision, we construe, in light of the Specification, the claim term “a weakly-ionized plasma” as “a plasma with a relatively low peak density of ions,” the claim term “a strongly-ionized plasma” as “a plasma with a relatively high peak density of ions.”” slip op. at 7
Patent outcomesUS 6,853,142 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,853,142
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.