• Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. et al. v. Home Semiconductor CorporationAll claims unpatentable
  PTAB · Jun 13, 2016 · IPR2015-00466 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1, 2, and 4–28 are unpatentable as obvious over Miyazaki and Jaeger, Miyazaki, Jaeger, Wolf, and Felix, or Miyazaki, Jaeger, and Wolf.

  RulingsFinal written decision

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

    “As noted by Petitioner, the third, fourth, and fifth embodiments of Miyazaki disclose methods of modifying the deposition temperature and/or the WF6 flow rate to achieve a desired thickness and stress level for tungsten layers 15 and 16. Ex. 1005, 7:51–8:5, 8:27–46, 8:56–9:7. The sixth embodiment then teaches how to vary the thickness of tungsten layers 15 and 16 to obtain a desired stress level in the combined metal film as a whole. Id. at 9:35–51, 10:33–38. Given the interrelated nature of these embodiments, we agree with Petitioner and Dr. Rubloff that one of ordinary skill in the art would have understood that Miyazaki contemplates depositing tungsten layers 15 and 16 in the sixth embodiment—in either a single or multi-chamber fabrication tool—using the operating conditions described in either of the third, fourth, or fifth embodiments. Ex. 1005, 9:24–34; Pet. 20; Reply 19–20; Ex. 1003 ¶¶ A13–15; Ex. 1019 ¶¶ 5C–E.” slip op. at 19

  Patent outcomesUS 6,030,893 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,030,893
• Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. et al. v. Home Semiconductor CorporationSome claims unpatentable
  PTAB · Jun 13, 2016 · IPR2015-00467 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–3, 5–9, 11–19, and 28 are unpatentable as obvious over Emesh and Mak; claim 10 was not shown unpatentable over Emesh, Mak, and Miyazaki.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “5 The level of ordinary skill in the art in this case is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Moreover, although the parties disagree slightly as to the precise education and experience level possessed by a person of ordinary skill in the art, neither party asserts that resolution of the level of skill in the art between these two competing definitions would impact the outcome of this case. See Ex. 1003 ¶ 11; Ex. 2002 ¶ 40.” slip op. at 7

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “persuaded that the reference supports Dr. Rubloff’s testimony that one of ordinary skill in the art would have understood that two layers of tungsten could be deposited in a multi-chambered tool. See Ex. 1005, 9:55–58 (noting that the two tungsten layers could be formed in “different chambers or in different deposition machines”).” slip op. at 16

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

    “On this record, Petitioner persuasively articulates—supported by the testimony of Dr. Rubloff—that one of ordinary skill in the art would have sought to implement Emesh’s two layer tungsten deposition process within two chambers of Mak’s multi-chamber fabrication tool in order to improve process stability and throughput. Pet. 13–15; Ex. 1003 ¶¶ B4–6, 29–30; Ex. 2005, 457:19–459–15. Petitioner also persuasively articulates that because Mak’s cold wall CVD chamber is similar to the Varian 5101 cold wall system used in Emesh, and because Mak discloses the deposition of tungsten over a broad range of pressures, one of ordinary skill in the art would have understood that Emesh’s tungsten deposition process could be performed in Mak’s multi-chamber tool. Pet. 13–15; Reply 12; Ex. 1003 ¶¶ B6–8 (citing Ex. 1010, 453–454; Ex. 1009, 4:66–5:8, 9:4–46); Ex. 1019 ¶ 2A.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “specifically requires a WF6 flow rate of 10–40 sccm,” see Ex. 2002 ¶¶ 89– 90, we note that the discussion of predetermined flow rates in Emesh is in relation to the “preferred embodiment,” and not the invention as a whole. Ex. 1009, 4:63–65, 5:36–42. Moreover, dependent claim 2 recites that “the flow rate of WF6 is maintained in the range 10 to 40 sccm,” raising a presumption that the WF6 flow rates of Emesh may be broader than 10 to 40 sccm. Id. at 12:39–41; see Bancorp Services v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1275 (Fed. Cir. 2012) (noting that “the presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim”). Thus, we are not persuaded that Emesh teaches away from, or would otherwise discourage one of ordinary skill in the art from modifying, the disclosed WF6 flow rate. Based on the foregoing, we credit the testimony of Dr. Rubloff and find that one of ordinary skill in the art would have sought to modify the WF6 flow rate of Emesh within the range of 40 to 133 sccm (while maintaining a H2/WF6 ratio of 6) with a reasonable expectation of success.” slip op. at 18

  Patent outcomesUS 6,030,893 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,030,893
• Toyota Motor Corporation v. Signal IP, Inc.Institution denied
  PTAB · Jun 9, 2016 · IPR2016-00293 · APJ Jason J Chung · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1, 2, and 6 obvious over either asserted combination.

  RulingsInstitution decision

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

    “inter partes review of claims 1, 2, and 6 of U.S. Patent No. 5,714,927 (Ex. 1001, “the ’927 patent”). Paper 2 (“Pet.”). In response, Patent Owner, Signal IP, Inc., filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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.” For the reasons set forth below, we deny institution of inter partes review of the ’927 patent.” slip op. at 2

  • Prior constructionPrior construction adoptedDecided for petitioner

    “(1) a related inter partes review (Pet. 8), and (2) a related matter before the U.S. District Court for the Central District of California (id. at 6–8). Regarding the related inter partes review, the Board previously construed the term “alert command” as raw alert data that is used to generate an alert signal, and the term “alert signal” as a signal that provides a visual or audio alert to a driver. Volkswagen Grp. of Am., Inc. v. Signal IP, Inc., Case IPR2015-00968, slip op. at 6–7 (PTAB Aug. 25, 2015), Paper 6. In order to reach our decision below, we need only construe the terms “alert command” and “alert signal.” We, therefore, decline to specifically construe any other claim terms at this time. We agree with Petitioner’s construction of the terms “alert command” and “alert signal,” consistent with our prior construction in IPR2015-00968. (See id. for our prior construction of the terms.) Thus, we construe the term “alert command” as raw alert data that is used to generate an alert signal, and the term “alert signal” as a signal that provides a visual or audio alert to a driver. Id. As explained below, even using Petitioner’s construction of these terms, Petitioner’s challenge fails to establish a reasonable likelihood that Petitioner would prevail in establishing unpatentability.” slip op. at 6

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

    “Petitioner asserts that it would have been obvious “to modify Pakett’s system such that it determines whether the ‘alert signal,’ as opposed to the ‘alert command,’ was active for a ‘threshold time’ as the claim requires.” Pet. 47. Petitioner asserts that this could be accomplished by activating a warning (alert signal) as soon as Pakett recognizes that an obstacle is present, and then applying the processing method previously applied to the persistence period instead to determine whether to sustain the warning. Id. at 47–48 (citing Ex. 1010 ¶¶ 101–04). Petitioner asserts that “one of ordinary skill in the art would consider Pakett’s delay of a warning until after the end of the persistence period to be nothing more than an optional redundancy,” and, thus, that this modification would have been obvious as “nothing more than a routine, obvious design choice.” Id. at 48 (citing Ex. 1010 ¶ 104). We disagree with Petitioner that the cited portions of Pakett’s teaching to delay the warning until after the persistence period is “nothing more than an optional redundancy,” at least because the cited portions of Packett do not indicate, either explicitly or implicitly, the 17 function of waiting for the persistence period before sending a warning to the driver indicators as optional or redundant. See id. Pakett clearly states that during the persistence period, “no warnings are sent to the driver indicators.” Ex. 1002, 6:50–51 (emphasis added). Pakett explains that waiting through the persistence period before sending warnings to the driver indicators prevents the system from incorrectly identifying stationary obstacles that were identified by the square wave generator 29 as valid obstacles in the blind spot. Id. at 7:56–63. Pakett thus explains that waiting through the persistence period before sending warnings to the driver indicators filters out false positives of objects in the blind spot of the vehicle. Id.” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,714,927
• Apple Inc. v. Far Stone Tech., Inc.All claims unpatentable
  PTAB · May 25, 2016 · IPR2015-00599 · APJ Howard B Blankenship · IPR · Final written decision

  Claims 1–7 and 9–13 are unpatentable as obvious over Gold.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction neededDecided for patent owner

    “For purposes of Institution, we adopted the District Court’s construction of “selecting means” as referring to an operation that does not require description of corresponding structure (such as an algorithm) in the Specification beyond a general purpose computer. Dec. on Inst. 7. Patent Owner acknowledges and does not dispute this construction. PO Resp. 16. We see no need to depart from this construction for purposes of this Final Written Decision.” slip op. at 7

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

    “2. “Status” Consistent with the position taken by Patent Owner in the related District Court lawsuit, we interpret the term “status” as referring to a “state or condition.” See Ex. 2001, 17 (“Furthermore, the Court does not object to Farstone’s use of ‘state or condition’ as a substitute for ‘status’ in its proposed constructions.”). Patent Owner acknowledges and does not dispute this construction. PO Resp. 16. We see no need to depart from this construction for purposes of this Final Written Decision.” slip op. at 7

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

    “2. Section 103(a) — Gold Petitioner applies the teachings of Gold to the requirements of claims 1–7 and 9–13, relying on the Declaration of Andrew Hospodor, Ph.D. (Ex. 1002). Pet. 15–26. Upon consideration of Petitioner’s explanations and supporting evidence, we are persuaded by Petitioner’s contentions. We adopt Petitioner’s contentions as our own. Patent Owner argues in its Patent Owner Response that Gold fails to teach certain claim limitations, which we address in turn.” slip op. at 12

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

    “2. Section 103(a) — Gold Petitioner applies the teachings of Gold to the requirements of claims 1–7 and 9–13, relying on the Declaration of Andrew Hospodor, Ph.D. (Ex. 1002). Pet. 15–26. Upon consideration of Petitioner’s explanations and supporting evidence, we are persuaded by Petitioner’s contentions. We adopt Petitioner’s contentions as our own. Patent Owner argues in its Patent Owner Response that Gold fails to teach certain claim limitations, which we address in turn.” slip op. at 12

  Patent outcomesUS 7,120,835 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,120,835
• Corelogic, Inc. v. Boundary Solutions, Inc.All claims unpatentable
  PTAB · May 19, 2016 · IPR2015-00226 · APJ Peter P Chen · IPR · Final written decision

  Claims 1–12, 14, 15, and 19–21 are unpatentable as obvious over the Harder-based grounds; the Kearney and ARC/INFO ground was not proven for claims 1–6 and 20–21.

  RulingsFinal written decision

  • BurdenFwd mixedUnpatentable

    “In summary, we agree with Petitioner’s contentions and find that Harder and Longley, once combined as proposed by Petitioner, teach or suggest the limitations of independent claim 1.” slip op. at 20

  • Skill levelSkill level board ownOther

    “C. Level of Ordinary Skill in the Art Petitioner’s proposal for the level of ordinary skill in the art is “at least a bachelors degree in geographic information science, survey engineering, geomatics, or similar education, and two years of experience in a relevant field (e.g., land or geographic information science), or six years of experience in the relevant field.” Ex. 1006 (Declaration of Michael Goodchild), ¶ 11. Patent Owner has proposed that one of ordinary skill in the art would possess a “a Bachelor’s degree or higher in, GIS engineering with at least 5 years of academic or industry experience in GIS database design..” Ex. 2005 (Declaration of William Huxhold), ¶ 14. We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 11

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

    “The disclosure of Longley and the knowledge of one skilled in the art would have motivated such a person to modify Harder’s system given that Harder discloses parcel-based searching and display functionalities for a jurisdiction (e.g., Ex. 1003, 21-25) and for multiple states (id., 49-51), and discloses that databases in GIS environments could span multiple jurisdictions (id.,7, 49- 51), and that Longley discloses configuring such databases to include data relating to different states and also discloses parcel based systems. Moreover, one skilled in the art would have been motivated to look to Longley to supplement the features of the systems and processes of Harder given they both describe[] features of ESRI systems. Ex. 1015, 170, 172; Ex. 1003. Thus, modifying Harder’s database in such a way would have been a common sense and predictable modification that was within the realm of knowledge of one skilled in the art at the time of the alleged invention. See KSR, 550 U.S. at 417; Ex. 1006, ¶¶ 35- 39. Pet. 18–19. The Petition continues:” slip op. at 20

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

  Patent outcomesUS 7,499,946 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,499,946
• Corelogic, Inc. v. Boundary Solutions, Inc.All claims unpatentable
  PTAB · May 19, 2016 · IPR2015-00222 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–23 are unpatentable: claims 9, 10, and 12–22 as obvious over Harder and Du; claims 1–8, 11, and 23 as obvious over Harder, Du, and MacDonald.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima, 261 F.3d at 1355 (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.” (internal quotations omitted)); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In this case, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 14

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

    “We remain unpersuaded by BSI’s arguments. As we explained in the Institution Decision, although the ’352 patent describes assembling a national parcel-level map database from data provided by various sponsoring agencies, the claims themselves do not require assembling the multi-jurisdictional database using any specific method or obtaining the information in the database from any particular sources. Dec. 7 (citing Ex. 1001, 1:41–48, 4:8–11). Moreover, BSI’s reliance on the prosecution history of the ’957 patent does not support its position, as the claims at issue there did not recite a “multi-jurisdictional database.” See Ex. 2006, 132–37, 141, 193–200). For these reasons, we maintain our construction of “multi- jurisdictional database” as “a collection of data relating to two or more jurisdictions.”” slip op. at 8

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

    “success”9 in combining Harder and Du because Du would not be used to maintain data for jurisdictions with a large number of parcels, and the visibility of parcels would be diminished in a map with so many parcels. PO Resp. 38. We do not find this argument to be persuasive because, as CoreLogic notes, Du discloses that cells can correspond to different types of jurisdictions and that any geographic areas can be searched and displayed. See Reply 14 (citing Ex. 1018, Fig. 3, 3:21–32, 4:38–40, 6:31–38, 9:5–6, 9:16–44). BSI also argues that a county identified as a cell in Du would include a huge amount of parcel data, and data for the entire cell would be transmitted to a client computer in the system described in Du, thereby defeating a purpose of Du’s system—the speedy display of maps. PO Resp. 38–39. CoreLogic, however, relies on Du for teaching an index of 9 We understand BSI’s use of the phrase “reasonable likelihood of success” to be an argument that there would be no “reasonable expectation of success” in the combination of references, rather than a reference to the reasonable likelihood standard for instituting an inter partes review. jurisdictional identifiers used to search a portion of a multi-jurisdictional database, not the transmission of parcel data, and has shown sufficiently that a person of ordinary skill in the art would have combined Du’s teaching of an index with Harder’s system for retrieving and transmitting parcel boundary polygon map data. See Reply 15. We have reviewed the parties’ arguments and evidence on this issue, and we agree with and adopt CoreLogic’s reasoning for modifying Harder’s single-county example in view of Du to retrieve a jurisdictional identifier from an index and use it to search a portion of a multi-jurisdictional database for a selected parcel. In sum, we find that the combination of Harder and Du teaches or suggests the limitations of claim 9 and that CoreLogic has provided articulated reasoning supported by rational underpinnings for combining the references in the manner asserted. Therefore, we conclude CoreLogic has shown by a preponderance of the evidence that claim 9 would have been obvious over Harder and Du.” slip op. at 22

  • ExcludeMotion to exclude, deniedDenied

    “G. CoreLogic’s Motion to Exclude Evidence CoreLogic moves to exclude the redirect testimony of BSI’s expert, Mr. William Huxhold, on the ground that it was provided in response to leading questions. Mot. Excl. 1 (citing Ex. 1034, 150:6–153:8). The redirect testimony relates to a portion of Mr. Huxhold’s cross-examination testimony. Id. at 1–2 (citing Ex. 1034, 72:5–22). Because we do not rely on the cited redirect testimony or the cited cross-examination testimony, CoreLogic’s motion is dismissed as moot.” slip op. at 40

  Patent outcomesUS 8,065,352 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,065,352
• Corelogic, Inc. v. Boundary Solutions, Inc.All claims unpatentable
  PTAB · May 19, 2016 · IPR2015-00228 · APJ Peter P Chen · IPR · Final written decision

  Claims 1–12, 14, 15, and 19 are unpatentable: claims 1–10, 12, 14, 15, and 19 as obvious over Harder and Longley, and claim 11 over Harder, Longley, and Roy.

  RulingsFinal written decision

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

    “In our Decision to Institute, we construed “numerical jurisdictional identifier” to mean “a number that identifies a jurisdiction.” Dec. to Inst. 7– 8. We based our construction on the only appearance of “jurisdictional identifier” in the written description of the ’957 patent: FIG. 3 illustrates a USA County Boundary Map (USACM). This is a public domain boundary file of each and every of the 3140 counties within the United States. Each of these polygons is 8 geocoded with its county name and FIPS number, a numerical jurisdictional identifier, as illustrated in the figure. Ex. 1001, 8:48–53 (emphasis added).1 Patent Owner does not challenge our construction of “jurisdictional identifier” in its Patent Owner Response, see PO Resp. 7, nor does Petitioner challenge the construction in its Reply, see Reply 7. For this Final Written Decision, after considering the complete record, we maintain our construction of “numerical jurisdictional identifier” as “a number that identifies a jurisdiction.”” slip op. at 8

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

    “Patent Owner also proposes a construction for “national parcel map database comprising multiple jurisdictional databases which have been normalized to a common data protocol.” PO Resp. 7–15. Patent Owner’s proposal is 60 words long, and reads, “a database covering more than one state including multiple jurisdictional databases, wherein a jurisdictional database is a collection of data representing the boundaries of parcels from the jurisdiction, each of the jurisdictional databases having been received from a jurisdiction, and modified, transformed, amended or converted by a common set of one or more processes applied to all data and updates.” PO Resp. 8. Patent Owner had in its Preliminary Response proposed a different construction (“the database of individual land parcels having been 1 According to the ’957 patent, the Federal Information Processing Standards (“FIPS”) number “is used nationally to numerically identify specific county jurisdictions.” Ex. 1001, 7:27–30. 9 transformed by a set of one or more automated and/or semiautomated processes applied to data and data updates supplied by sponsoring jurisdictions using a set of rules or procedures”) for nearly the identical phrase (“multiple jurisdictional databases which have been normalized to a common data protocol”). Prelim. Resp. 15–17. We did not adopt Patent Owner’s proposed construction in our Decision to Institute, and we do not adopt its revised (and lengthier) construction in this Final Written Decision, for the reasons argued by Petitioner in its Reply (Reply 2–5) and also because the Patent Owner’s prolix proposed construction does not add clarity to the term. We decline to provide an express construction for this term or for any other terms in the claims other than discussed above.” slip op. at 9

  • Skill levelSkill level board ownOther

    “C. Level of Ordinary Skill in the Art Petitioner’s proposal for the level of ordinary skill in the art is “at least a bachelors degree in geographic information science, survey engineering, geomatics, or similar education, and two years of experience in a relevant field (e.g., land or geographic information science), or six years of experience in the relevant field.” Ex. 1006 (Declaration of Michael Goodchild), ¶ 11. Patent Owner has proposed that one of ordinary skill in the art would possess a “a Bachelor’s degree or higher in, GIS engineering with at least 5 years of academic or industry experience in GIS database design.” Ex. 2004 (Declaration of William Huxhold), ¶ 13. We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 11

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

    “universal spatial protocol using SHP files (shapefiles) (Ex. 1001, 7:31–41), and Harder’s description of how its system’s datasets are “stored in the industry-standard shapefile (.shp) format” and how the system “converts the data into shapefiles.” Pet. Reply 9–11; Ex. 1003, 24, 106. Petitioner also notes that Patent Owner’s declarant acknowledged that assembling databases according to a standard protocol was in the prior art. Pet. Reply 11; Ex. 1034, 29:15–32:17, 32:18–40:22. We agree with Petitioner and find that Harder teaches or suggests databases that have been normalized to a common data protocol. Second, Patent Owner argues about the lack of disclosure of multiple jurisdictional databases. PO Resp. 28–29. Petitioner contends multiple jurisdictional databases are taught by both Harder and Longley, which explicitly discloses a “STATES table” that is a multi-state database. Pet. Reply 13; Ex. 1015, 229, Fig. 11.2. We agree with Petitioner and find that Harder and Longley teach or suggest multiple jurisdictional databases.” slip op. at 17

  Patent outcomesUS 7,092,957 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,092,957
• Sandisk Corporation v. Netlist, Inc.Rehearing denied
  PTAB · Apr 27, 2016 · IPR2014-00970 · APJ Linda M Gaudette · IPR · Rehearing

  Denied SanDisk’s rehearing request; the Board maintained its findings that claims 2, 5, and 6 were not shown obvious over Huang and claims 17–19 and 35 were not shown anticipated by Averbuj.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW The party requesting rehearing has the burden of showing the decision should be modified, and “[t]he request 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).” slip op. at 3

  • BurdenNot shown unpatentable

    “20–21 (“Averbuj discloses that in BIST mode, the multiplexer 46 shown in Fig. 6 selectively inputs signals BIST_ADDR/CTRL (i.e., address and control signals from the control module) to the address and control port of the corresponding memory device 12.” (emphasis added)). In other words, the Petition is devoid of any discussion of BIST_EN in connection with the limitations of claims 17–19 and 35. See Pet. 19–21. Likewise, the Reply fails to contain any discussion of how the claim limitations are met by Averbuj’s use of the BIST_EN signal. See Reply 17. 37 C.F.R. § 42.22(a)(2) requires each petition to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” Our discussion in the Final Decision of the patentability challenge as to claims 17–19 and 35 based on anticipation by Averbuj addresses Petitioner’s arguments in the Petition and Reply, which are limited to a contention that Averbuj’s multiplexer 46 is required to meet the “configured to selectively input” and “selectively inputs” limitations recited in claims 17–19 and 35. See Final Dec. 44–46 (citing Pet. 19–21; Reply 17). In arguing that we should have considered Dr. Alpert’s testimony that Averbuj’s sequencer, by generating a BIST_EN signal, is “configured to selectively input”/“selectively inputs” address and control signals to the memory modules, Petitioner attempts to improperly incorporate arguments into its Petition and Reply by reference to Dr. Alpert’s declaration testimony. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, we find the declaration testimony relied on by Petitioner in support of this Request (see Req. Reh’g 13) supports our determination that Petitioner failed to show, by a preponderance of the evidence, that Averbuj anticipates claims 17–19 and 35. Dr. Alpert testified that if the “configuration [to selectively input to the address and control ports] is determined to require the structure that performs the selection itself, then the disclosed control module also includes multiplexer 46 of memory interface 41.” Ex. 1007 ¶ 78 (emphasis added); see also id. ¶ 81 (identifying multiplexer 46 as the “DRAM controller which performs the selective inputting” as recited in claim 18). Petitioner did not explain (see Pet. 19–21; Reply 17) how Averbuj describes multiplexer 46 as being part of sequencer 8 (the alleged control module). See Final Dec. 45–46 (explaining that Petitioner has not addressed Patent Owner’s argument that the device that selectively inputs address and control signals to memory modules 12 is multiplexer 46 of memory interface 41 (the alleged data handler), not sequencer 8 (the alleged control module)). In sum, for the above reasons, we are not persuaded of error in our determination that Petitioner did not meet its burden to establish unpatentability of claims 17–19 and 35 under 35 U.S.C. § 102(b) based on Averbuj.” slip op. at 11

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

    “Huang and Tsern, Petitioner relied on the declaration testimony of its expert, Dr. Donald Alpert (Ex. 1007). See, e.g., id. at 44 (citing Ex. 1007 ¶ 222 in support of its challenge as to claim 2). In concluding Petitioner had not demonstrated a reasonable likelihood it would prevail in showing that claims 2, 5, and 6 would have been obvious over Huang in view of Tsern, we said the following: Dr. Alpert’s opinion that a person of ordinary skill in the art would have been motivated to combine Huang and Tsern . . . is either unsupported or relies on disclosure in the ’434 patent Detailed Description. See, e.g., Ex. 1007 ¶¶ 193, 199, and 206. . . . [T]here is no evidence on this record that the cited portions of the ’434 patent are a description of prior art. Moreover, Dr. Alpert’s statements lack sufficient articulated reasoning with rational underpinning as to why an ordinary artisan at the time of the invention would have had a reason to combine the prior art elements in the manner required by the challenged claims.” slip op. at 4

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

    “statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” Our discussion in the Final Decision of the patentability challenge as to claims 17–19 and 35 based on anticipation by Averbuj addresses Petitioner’s arguments in the Petition and Reply, which are limited to a contention that Averbuj’s multiplexer 46 is required to meet the “configured to selectively input” and “selectively inputs” limitations recited in claims 17–19 and 35. See Final Dec. 44–46 (citing Pet. 19–21; Reply 17). In arguing that we should have considered Dr. Alpert’s testimony that Averbuj’s sequencer, by generating a BIST_EN signal, is “configured to selectively input”/“selectively inputs” address and control signals to the memory modules, Petitioner attempts to improperly incorporate arguments into its Petition and Reply by reference to Dr. Alpert’s declaration testimony. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, we find the declaration testimony relied on by Petitioner in support of this Request (see Req. Reh’g 13) supports our determination that Petitioner failed to show, by a preponderance of the evidence, that Averbuj anticipates claims 17–19 and 35. Dr. Alpert testified that if the “configuration [to selectively input to the address and control ports] is determined to require the structure that performs the selection itself, then the disclosed control module also includes multiplexer 46 of memory interface 41.” Ex. 1007 ¶ 78 (emphasis added); see also id. ¶ 81 (identifying multiplexer 46 as the “DRAM controller which performs the selective inputting” as recited in claim 18). Petitioner did not explain (see Pet. 19–21; Reply 17) how Averbuj describes multiplexer 46 as being part of sequencer 8 (the alleged control module). See Final Dec. 45–46 (explaining that Petitioner has not addressed Patent Owner’s argument that the device that selectively inputs address and control signals to memory modules 12 is multiplexer 46 of memory interface 41 (the alleged data handler), not sequencer 8 (the alleged control module)). In sum, for the above reasons, we are not persuaded of error in our determination that Petitioner did not meet its burden to establish unpatentability of claims 17–19 and 35 under 35 U.S.C. § 102(b) based on Averbuj.” slip op. at 11

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,001,434
• Samsung Electronics Co. Ltd / Samsung Electronics America, Inc. et al. v. Home Semiconductor CorporationAll claims unpatentable
  PTAB · Apr 14, 2016 · IPR2015-00459 · APJ Joni Y Chang · IPR · Final written decision

  Claims 1–20 are unpatentable under § 103 over Nakamura and Muller, with additional references applied to dependent claims.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “III. CONCLUSION For the foregoing reasons, we determine that Samsung has demonstrated by a preponderance of the evidence that claims 1–20 of the ’244 patent are unpatentable based on the following grounds: Challenged Claim(s) Basis References 1, 9, 11, 12, 14–16, § 103(a) Nakamura and Muller 19, and 20 2–4, 6–8, 17, and 18 § 103(a) Nakamura, Muller, and Mukherjee 5 § 103(a) Nakamura, Muller, and Wolf 10 § 103(a) Nakamura, Muller, and Ghandhi 13 § 103(a) Nakamura, Muller, and Pierret 47 IV. ORDER For the foregoing reasons, it is ORDERED that claims 1–20 of the ’244 patent are held unpatentable;” slip op. at 47

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “that “[i]f only a portion of the top surface were removed, the process would not result in a functioning device,” as they are predicated on the notion that a resist layer cannot be formed on a non-planarized surface, and that the deposition of the fourth dielectric layer produces an uneven surface. PO Resp. 14; Ex. 2002 ¶ 41. HSC, however, fails to provide credible evidence to show that forming a resist layer on a non-planarized surface would not produce a functional device. Although Mr. Maltiel’s testimony discusses the benefits of forming a resist layer on a planarized surface, as shown in the preferred embodiment, nothing in the “Description of the Prior Art” Section of the Specification indicates that the prior art devices were defective and non-functional devices. Ex. 1001, 1:11–2:9. Nor does Mr. Maltiel provide data or other objective evidence to support his assertion that forming a resist layer on a non-planarized surface would produce “a defective and non-functional device.” Ex. 2002 ¶ 41. Moreover, neither HSC nor Mr. Maltiel explains sufficiently why it is necessary to planarize the surface during the “removing” step. As evidenced by Nakamura, one of ordinary skill in the art would recognize that the fourth dielectric layer may be deposited by spin on glass, which produces a planarized surface. See Ex. 1004, 10:6–9, Fig. 1C. Mr. Maltiel’s testimony is entitled little, if any, weight, as it is inconsistent with the prior art of record. See 37 C.F.R. § 42.65(a) (“Expert testimony 11 that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 11

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

    “In view of the foregoing, we decline to adopt HSC’s proposed claim construction. Rather, in light of the Specification, we agree with Samsung that the aforementioned “removing” limitations recited in claims 1 and 14 require no more than making a hole through a top portion of the fourth 12 dielectric layer to expose a portion of the third dielectric layer covering the gate electrode structure. Pet. 28–29.” slip op. at 12

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

    “Even if the claims require a continuous etching process for removing both the third and fourth dielectric layers with the resist layer in place, we are persuaded by Samsung’s assertion that it would have been obvious to modify Nakamura’s etching process in the third embodiment to leave the resist layer in place and continue the anisotropic etching process, in light of the teachings in the first embodiment of Nakamura, because “it would reduce the time necessary to complete the etching process and likely 42 eliminate the need to transport the substrate between different tools.” Pet. 37. Such modification would not conflict with the objective— improving depth of focus—Nakamura was trying to achieve, as alleged by HSC. PO Resp. 48–49. Nakamura also describes simplification of the fabrication process and reduction of cost as important objectives. Ex. 1004, 10:57–61. As Dr. Rubloff explains, the process, as modified in light of Nakamura’s first embodiment, would still improve depth of focus, which is only one of the objectives taught by Nakamura, as well as achieving efficiency. Ex. 1014 ¶¶ 14–20. Dr. Rubloff testifies that one of ordinary skill in the art would consider all of the goals described by Nakamura and, after weighing the costs and benefits of each known technique, would make adjustments accordingly to improve the process. Ex. 1014 ¶¶ 9–12. Indeed, the modified process would utilize the planarization CMP technique of Nakamura’s third embodiment to improve depth of focus (Ex. 1004, 13:10– 38), and the continuous etching technique (with the resist layer in place) of Nakamura’s first embodiment to remove the third and fourth dielectric layers over the contact regions to improve efficiency (id. at 10:17–61). Therefore, we are persuaded that Samsung has articulated reasoning with rational underpinnings for modifying Nakamura’s third embodiment in light of the first embodiment of Nakamura. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 42

  Patent outcomesUS 6,150,244 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,150,244
• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · Apr 12, 2016 · IPR2016-00018 · APJ Peter P Chen · IPR · Institution

  The Board denied institution because Arista did not show a reasonable likelihood that claims 1, 2, 6–9, 12, 13, and 17–20 were unpatentable over Chau or Chau and Wils.

  RulingsInstitution decision

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

    “review of claims 1, 2, 6–9, 12, 13, and 17–20 of U.S. Patent No. 8,051,211 B2 (Ex. 1001, “the ’211 patent”). Paper 2 (“Pet.”). Patent Owner, Cisco Systems, Inc., filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any 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); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we are not persuaded Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of claims 1, 2, 6–9, 12, 13, and 17–20 of the ’211 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • BurdenNot shown unpatentable

    “Petitioner’s only apparent contention for Chau’s disclosure that the first and second LANs are both usable for simultaneous transmission “subsequent to” the aggregation of LANs, is that “the simultaneous transmission occurs as a result of the grouping of the first LAN (channel C2) and second LAN (channel C1).” Pet. 19–20, citing Ex. 1014 ¶ 54. The Lin declaration is similarly worded, and like the Petition, is silent as to whether Chau’s alleged simultaneous transmission occurs “subsequent to,” i.e., after the aggregation of LANs. Petitioner’s argument of simultaneous transmission occurring “as a result of” alleged aggregation of LANs is unavailing, because “subsequent to” means, “after,” not “as a result of.” In fact, in the related ’975 IPR, we expressly rejected the Patent Owner’s proposed construction of “as a result of” for “subsequent to.” See Section II.A. Neither the Petition nor the Lin declaration (Ex. 1014) cite any evidence of simultaneous transmission occurring “after” aggregation of LANs in Chau. Accordingly, we are not persuaded that Petitioner’s showing demonstrates a reasonable likelihood that it would prevail as to claim 1 being anticipated by Chau.” slip op. at 11

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

    “In addition, as we determined in the ’975 IPR, for purposes of this decision, we determine that the broadest reasonable construction of “subsequent to” is its ordinary and customary meaning, namely, “after.” See Case IPR2015-00975, slip op. at 7–8 (PTAB Oct. 6, 2015) (declining to adopt Patent Owner’s proposed construction of “as a result of” for “subsequent to”).” slip op. at 7

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

    “Petitioner’s only apparent contention for Chau’s disclosure that the first and second LANs are both usable for simultaneous transmission “subsequent to” the aggregation of LANs, is that “the simultaneous transmission occurs as a result of the grouping of the first LAN (channel C2) and second LAN (channel C1).” Pet. 19–20, citing Ex. 1014 ¶ 54. The Lin declaration is similarly worded, and like the Petition, is silent as to whether Chau’s alleged simultaneous transmission occurs “subsequent to,” i.e., after the aggregation of LANs. Petitioner’s argument of simultaneous transmission occurring “as a result of” alleged aggregation of LANs is unavailing, because “subsequent to” means, “after,” not “as a result of.” In fact, in the related ’975 IPR, we expressly rejected the Patent Owner’s proposed construction of “as a result of” for “subsequent to.” See Section II.A. Neither the Petition nor the Lin declaration (Ex. 1014) cite any evidence of simultaneous transmission occurring “after” aggregation of LANs in Chau. Accordingly, we are not persuaded that Petitioner’s showing demonstrates a reasonable likelihood that it would prevail as to claim 1 being anticipated by Chau.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,051,211

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.