- PTAB · Feb 7, 2023 · IPR2022-01333 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on claims 1–17, finding a reasonable likelihood that at least one claim was obvious over Hardin ’665 and Salmre.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We reviewed Petitioner’s uncontested evidence and arguments and determine that Petitioner has sufficiently shown a reasonable likelihood that at least one of the challenged claims would have been unpatentable over Hardin and Salmre.” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had at least a bachelor’s degree in computer science or a comparable field of study and at least five years of professional experience in mobile or location-based computing or other relevant academic experience. Pet. 22 (citing Ex. 1003 ¶¶ 38–41). Patent Owner, at this stage of the proceeding, does not dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 46. Mr. Denning, however, applies Mr. Williams’ level of ordinary skill in the art in Mr. Denning’s Declaration in support in Patent Owner’s Preliminary Response. Ex. 2001 ¶ 26.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no express claim constructions are necessary, and the claims should be given their plain and ordinary meaning in this proceeding.” Pet. 22–23. Patent Owner submits that it “do[es] not believe the Board needs to construe any terms.” Prelim. Resp. 33. We determine that an express construction of any claim term is not necessary for purposes of this Decision because none are in dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“regarding the state of the art, the more predictable field of mechanical/electrical technologies, and the relatively high level of skill in the art, on the present record, there is a disconnect between what the ’094 application discloses and the specific limitation of the Challenged Claims at issue, which requires that the application program makes a request to reserve a geographic area of interest. In addition to the ’094 application’s failure to disclose this limitation expressly, the ’094 application fails to reasonably convey to one of ordinary skill in the art any hint, suggestion, or indication that Patent Owner possessed an invention in which an application program makes such a request. To the contrary, based on our review and the present record, we agree with Petitioner that the ’094 application consistently and repeatedly discloses that a sponsor makes such a request and does not attribute that action expressly, inherently, or otherwise to any other aspect of the invention. See, e.g., Pet. 13 (identifying several instances where the ’094 application attributes that action to a sponsor).” slip op. at 24
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,984,447 - PTAB · Feb 7, 2023 · IPR2022-01331 · APJ Michelle N Wormmeester · IPR · Institution
Instituted IPR on claims 11–18 based on obviousness over Hardin ’665 and Salmre; the Board found a reasonable likelihood of success, including because the claims likely lack the asserted priority date.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . 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 that follow, we institute an inter partes review as to all the challenged claims of the ’418 patent, namely, claims 11–18, based on the sole ground presented in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the time of the invention “would have had at least a bachelor’s degree in computer science or a comparable field of study and at least five years of professional experience in mobile or location-based computing or other relevant academic experience.” Pet. 20 (citing Ex. 1003 ¶¶ 38–41).” slip op. at 15
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“regarding the state of the art, the more predictable field of mechanical/electrical technologies, and the relatively high level of skill in the art, on the present record, there is a disconnect between what the ’094 application discloses and the specific limitation of the challenged claims at issue, which recites that the application program makes a request to reserve a geographic area of interest. In addition to the ’094 application’s failure to disclose this limitation expressly, the ’094 application fails to reasonably convey to one of ordinary skill in the art any hint, suggestion, or indication that Patent Owner possessed an invention in which an application program makes such a request. To the contrary, based on our review of the present record, we agree with Petitioner that the ’094 application consistently and repeatedly discloses that a sponsor makes such a request and does not attribute that action expressly, inherently, or otherwise to any other aspect of the invention. See, e.g., Pet. 13 (identifying several instances where the ’094 application attributes that action to a sponsor).” slip op. at 27
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“c. Differences Between the Prior Art and the Claims Petitioner sets forth a detailed analysis showing how the combined teachings of the references meet the elements of claims 11–18. Pet. 27–69. In particular, Petitioner relies on Hardin ’665 as teaching most of the limitations of the claims, but relies on Salmre to meet the claim limitations reciting application programs on mobile devices that can reserve geographic areas and a content delivery platform that can be implemented on the same mobile device as the application program. Id. at 28. Additionally, Petitioner contends that one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre with a reasonable expectation of success. Id. at 64–69. In its Preliminary Response, Patent Owner does not raise an argument responding to Petitioner’s challenge based on Hardin ’665 and Salmre aside from whether the ’418 patent claims are entitled to the priority date of the ’094 application, an issue we addressed above (see supra Part III.C.). We have reviewed Petitioner’s uncontested argument and evidence regarding the teachings of Hardin ’665 and Salmre, and we find, for the reasons provided by Petitioner and on the preliminary record before us, that Petitioner has shown sufficiently that the combined teachings of Hardin ’665 and Salmre satisfy the limitations of the claims, and that one of ordinary skill in the art would have had a reason with rational underpinning to combine the teachings as proposed by Petitioner with a reasonable expectation of success.” slip op. at 36
§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,779,418 - PTAB · Feb 7, 2023 · IPR2022-01327 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted review of claims 1–9, 29, and 30 on the § 103 ground over Hardin ’665 and Salmre.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have reviewed Petitioner’s uncontested argument and evidence regarding the teachings of Hardin ’665 and Salmre, and we find, for the reasons provided by Petitioner and on the preliminary record before us, that Petitioner has shown sufficiently that the combined teachings of Hardin ’665 and Salmre satisfy the elements of the claims, and that one of ordinary skill in the art would have had a reason with rational underpinning to combine the teachings as proposed by Petitioner with a reasonable expectation of success.” slip op. at 33
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Analogous artInstituted
“Differences Between the Prior Art and the Claims; Motivation to Modify Petitioner sets forth a detailed analysis showing how the combined teachings of the references meet the elements of claims 1–9, 29, and 30. Pet. 28–63. In particular, Petitioner relies on Hardin ’665 as teaching most of the elements of the claims, but relies, on Salmre to meet the claim elements reciting application programs on mobile devices that can reserve geographic areas and a content delivery platform that can be implemented on the same mobile device as the application program. Id. at 29. Additionally, Petitioner contends that one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre with a reasonable expectation of success. Id. at 63–69.” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Differences Between the Prior Art and the Claims; Motivation to Modify Petitioner sets forth a detailed analysis showing how the combined teachings of the references meet the elements of claims 1–9, 29, and 30. Pet. 28–63. In particular, Petitioner relies on Hardin ’665 as teaching most of the elements of the claims, but relies, on Salmre to meet the claim elements reciting application programs on mobile devices that can reserve geographic areas and a content delivery platform that can be implemented on the same mobile device as the application program. Id. at 29. Additionally, Petitioner contends that one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre with a reasonable expectation of success. Id. at 63–69.” slip op. at 33
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“Objective Considerations of Nonobviousness Neither party presents evidence of objective considerations of nonobviousness at this stage of the proceeding.” slip op. at 34
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSRPatents in suitUS 10,049,387 - Intel Corporation / Globalfoundries U.S., Inc. et al. v. Daniel L. FlammAll claims unpatentablePTAB · Sep 30, 2020 · IPR2017-00279 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 13–26, 64, and 65 are unpatentable as obvious under § 103 over the combinations of prior art listed in the decision.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“not entitled to claim priority to a filing date any earlier than the September 11, 1997 filing date of the ’650 provisional application, and, therefore, each of the asserted references qualify as prior art to the challenged claims. See Pet. 9. Specifically, Petitioner contends that the ’264 patent is not entitled to claim priority to the December 4, 1995 filing date of the ’224 application because the ’224 application fails to disclose a chuck having a “thermal mass” or selecting that thermal mass to” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“in the art at the relevant time would have had (i) a Bachelor’s degree in chemical engineering, materials science engineering, electrical engineering, physics, chemistry, or a similar field, and three or four years of work experience in semiconductor manufacturing or related fields; or (ii) a Master’s degree in chemical engineering, materials science engineering, electrical engineering, physics, chemistry, or a similar field, and two or three years of work experience in semiconductor manufacturing or related fields; or (iii) a Ph.D. in chemical engineering, materials science engineering, electrical engineering, physics, chemistry, or a similar field. Pet. 19–20 (citing Ex. 1006 ¶¶ 21). Patent Owner does not contest Petitioner’s description of the level of ordinary skill in its Response. Based on our review of the ’264 patent, the cited prior art, and the testimony of the parties’ declarants, we agree with Petitioner’s assessment of the level of ordinary skill in the art and apply it for purposes of this Decision. See Okajima, 261 F.3d at 1355 (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownTerm construed petitioner constructionDecided for petitioner
“terms appearing in the challenged claims. Dec. on Inst. 10–11. First, we construed selected thermal mass to mean “thermal mass selected by selecting the mass of the substrate holder, the material of the substrate holder, or both.” Id. at 10. Second, we adopted Petitioner’s proposed 13 Neither party disputes that the ’264 patent is expired. The earliest patent application referenced for the benefit of priority under 35 U.S.C. § 120 for the ’264 patent was filed on December 4, 1995, and the patent has no term extensions. The term of the ’264 patent, therefore, expired no later than December 4, 2015. See 35 U.S.C. § 154(a)(2) (2012 & Supp. III 2015) (stating that the term of a patent grant ends twenty (20) years from the date on which the application for the patent was filed in the United States, “or, if the application contains a specific reference to an earlier filed application or applications under section 120, 121, 365(c), or 386(c), from the date on which the earliest such application was filed”). 13 construction of thermal mass . . . selected for a predetermined temperature change within a specific interval of time as meaning “the material and/or mass of the substrate holder are chosen to effect a predetermined change in substrate holder temperature from a selected first temperature to a selected second temperature within a specific time period.” Id. at 11. During the instituted trial, neither party disagreed with these constructions; nor did either party ask that we construe additional claim terms. We, therefore, leave our prior constructions in place unaltered.” slip op. at 13
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“claimed invention. PO Resp. 15–19. As Patent Owner correctly notes, art is analogous if it is either: (1) from the same field of endeavor as the claimed invention; or (2) reasonably pertinent to the problem faced by the inventor. Id. at 15–16 (citing MPEP § 2141.01(a)). As we find below that Hinman satisfies the second prong of this test, we need not address Patent Owner’s arguments regarding field of endeavor. A reference is “reasonably pertinent” to a problem if it “logically would have commended itself to an inventor’s attention in considering his problem.” In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379–80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656, 658, 23 USPQ2 1058, 1061 (Fed. Cir. 1992)). Petitioner argues that Hinman and the ’264 patent address the same problem, namely “controlling temperature to increase throughput.” Reply 5; Ex. 1025 ¶¶ 45, 48. Patent Owner disagrees, alleging that the ’264 patent is “concerned with achieving or improving etch selectivity in a high throughput etch process for semiconductor processing,” 32 and that this is different than the problems addressed by the prior art. PO Resp. 18. In defining the problem addressed by the inventor, the specification of the challenged patent is often instructive. Here, the ’264 patent notes that prior art substrate etching processes used “batch” modes in which etching was done at a single temperature, and that the invention improves upon these processes by providing a multi-stage etching process using different temperatures. Ex. 1001, 1:65–2:11. As such, the invention allegedly overcame disadvantages of prior art processes, which required lowered throughput and etch rate in order to avoid excessive damage to a workpiece. Id. at 2:11–14. Despite Patent Owner’s arguments, we cannot agree that etch selectivity, as opposed to throughput, is the problem addressed by the ’264 patent. As Dr. Bravman points out, “[t]he specification of the ’264 patent is devoid, however, of description of improved or high selectivity processes or explanation of how the purported invention achieves both high selectivity and high etch rates.” Ex. 1025 ¶ 46. This is in contrast to the specification’s direct statement that the invention “overcomes serious disadvantages of prior art methods in which throughput and etching rate were lowered in order to avoid excessive device damage.” Ex. 1001, 2:11– 14 (emphasis added). It is clear to us that the problem faced by the ’264 patent is one of throughput and etching rate. The applicability of the cited prior art, including Hinman, to” slip op. at 32
Patent outcomesUS RE40,264 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham - Tokyo Electron Limited v. Daniel L. FlammInstitution deniedPTAB · Oct 4, 2017 · IPR2017-01072 · APJ Kimberly Mcgraw · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 13–26, 64, and 65 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in the Petition and Preliminary Response, we conclude that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of claims 13–26, 64, and 65. Accordingly, we do not institute an inter partes review on those claims.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Thus, the ordinary meaning of the claim language itself requires predetermining the temperature change (i.e., the change from the selected first substrate holder temperature to the selected second substrate holder temperature) within a specific interval of time (i.e., the time for changing from the selected first substrate holder temperature to the selected second substrate holder temperature), and based on that predetermination, selecting the thermal mass of the substrate holder. A construction that does not require selecting a thermal mass for a particular temperature change and a specified interval of time, as opposed to selecting a thermal mass that can facilitate or allow a temperature change, is not consistent with the plain and ordinary meaning of the claim. We recognize that the thermal mass of a substrate holder is not the only factor that controls the rate of temperature change of the substrate holder. See, e.g., Ex. 1001, 16:60–67 (stating that the “heat exchanger, fluid flow rate, coolant-side fluid temperature, heater power, chuck, etc. should be designed to bring the fluid to a setpoint temperature and bring the temperature of the chuck and wafer to predetermined temperatures within specified time intervals and within specified uniformity limits”). The plain language of the claim, however, still requires that the thermal mass of the substrate holder be selected for a predetermined temperature change within the specific interval of time.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for patent owner
“We do not construe these limitations as requiring the involvement of a heat transfer fluid. “Heat transfer fluid” is not recited in the claims. Although the claims are interpreted in light of the specification, it is improper to read limitations from the specification into the claims. See, e.g., In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see also Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“It is likewise not enough that the only embodiments, or all of the embodiments, contain a particular limitation. We do not read limitations from the specification into claims; we do not redefine words.”). As such, we are not persuaded that that the phrases “substrate holder,” “heat transfer device,” and “selected thermal mass,” as recited in claim 13, should be construed as requiring the involvement of “heat transfer fluid.”” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“3. Remaining Claim Terms For purposes of this Decision, based on the record before us, we determine that none of the remaining claim terms require an explicit construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham - Motionpoint Corporation v. Transperfect Global, Inc.All claims unpatentablePTAB · Jul 15, 2015 · CBM2014-00060 · APJ Bart A Gerstenblith · CBM · Final written decision
Claims 1–28 are unpatentable for lack of adequate written description under § 112, first paragraph.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“that “hyperlink” is a well-understood term that the ’022 patent uses in accordance with its ordinary meaning. As explained above, the Microsoft Computer User’s Dictionary makes clear that a hyperlink includes a connection to another element or document. Patent Owner points to no persuasive evidence that the ’022 patent describes a hyperlink as separate from this connection such that the connection can be changed with the hyperlink remaining the same. Indeed, the ’022 patent describes “replac[ing] all links in the translated web page 7 with links that point to the translation manager 4” as part of the translation process. Ex. 1001, 3:37–38. Thus, as described in the patent, changing the connection to point to the translation manager requires a new link. This is consistent with the ordinary meaning of a hyperlink as including a specific connection from one document to another element or document. Our preliminary construction of “hyperlink” included “a link or connection” but did not include a recitation of the element or document linked. To resolve the parties’ dispute, consistent with the ordinary meaning and the specification, we conclude, on the full record before us, that one of ordinary skill in the art at the time of the invention would have understood “hyperlink” to mean “a connection between an element in a hypertext document, such as a word, phrase, symbol, or image, and a different element in the document, another hypertext document, a file, or a script.”” slip op. at 10
- ExcludeMotion to exclude, deniedDenied
“First, the inter partes reexamination of the ’022 patent is relevant to our consideration of the claim construction issues presented here because claim construction was at issue in the reexamination. Second, we see no risk of undue prejudice that would outweigh the probative value of the documents and evidence submitted in the reexamination. Of note, is that this proceeding is not a jury trial and, thus, the risk of prejudice in this forum is less than what may otherwise exist before a jury. Third, we agree with Petitioner that Exhibit 1013 is not hearsay at least under Federal Rule of Evidence 801(d)(2)(B) because the testimony in Dr. Nakhimovsky’s Declaration was submitted by, and on behalf of, Patent Owner to the Patent Office, thus evidencing that Patent Owner manifested a belief that the statements contained therein were true. Accordingly, Patent Owner’s Motion to Exclude as applied to Exhibit 1013 is denied.” slip op. at 22
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“Patent Owner’s first argument is contrary to our constructions of the term “hyperlink” and the phrase “said hyperlink.” As reflected in our construction, “said hyperlink” in each of independent claims 1, 17, and 26, refers back to the original recitation of “one or more hyperlinks” in the original (untranslated) electronic communication. The portion of the specification relied upon by Patent Owner does not disclose providing translation of said further electronic communications when the original one or more hyperlink is activated. Rather, this disclosure indicates that the translation manager may replace all of the links (i.e., hyperlinks) in the translated web page with links that point to the translation manager. These replaced links are in the translated electronic communication (e.g., web page 7), and not in the original untranslated electronic communication (e.g., web page 2). Thus, this disclosure does not reasonably convey to one of ordinary skill in the art that the inventors had possession of a translation manager that provides translation of further electronic communications when the one or more hyperlinks in the original untranslated electronic communication is activated (i.e., one or more hyperlinks with unmodified destination addresses). See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).” slip op. at 25
- Disclosure Requirements (§112) › Definiteness (Nautilus)Not reached
“E. Indefiniteness of Claims 23 and 25–28 Under 35 U.S.C. § 112, Second Paragraph Our determination that each challenged claim is unpatentable for lack of an adequate written description renders it unnecessary to reach Petitioner’s contentions that claims 23 and 25–28 of the ’022 patent are indefinite.” slip op. at 31
Patent outcomesUS 6,857,022 unpatentableClaim construction§ 112 disclosurecites PhillipsPatents in suitUS 6,857,022
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.