- 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 - Taiwan Semiconductor Manufacturing Company, Ltd. / Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1All claims unpatentablePTAB · Jan 17, 2018 · IPR2016-01379 · APJ Jennifer Meyer Chagnon · IPR · Final written decision
Claims 10 and 12 are unpatentable under § 103 as obvious over Grill, Aoyama, and Wetzel.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We note the parties’ proposals differ in the specific degree required (i.e., Master of Science vs. Bachelor’s of Science); however, neither party argues this distinction makes a difference in analyzing the asserted ground or other issues in this proceeding. For clarity of the record, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art, as it is more specifically directed to the technology described in the ’696 patent. In addition, given the disclosures in the ’696 patent and cited prior art, we agree with Petitioner that a Master of Science degree (or equivalent) in the relevant area better reflects the level of education and training that an ordinarily skilled artisan would have possessed at the time than a Bachelor’s degree, as Patent Owner contends. Our findings and conclusions, however, would be the same under either party’s proposed level of ordinary skill in the art. The level of ordinary skill in the art in this case further 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).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“example, the first resist pattern [step g]/second resist pattern and the mask pattern [step i]/patterned fourth insulating film [step j]—“as a mask.” As shorthand, we refer to the various layers as “the designated layer.” define areas for etching.”8 Inst. Dec. 11–15. We further determined that “to meet the limitation ‘using the [designated layer] for etching,’ the designated layer ‘must actually be used to define areas for etching.’” Id. at 15 (quoting Prelim. Resp. 6 (emphasis Patent Owner’s)). Patent Owner agrees with this construction—namely, that “‘using’ something ‘as a mask’ during etching means using it to define areas for etching.” PO Resp. 8–9. Petitioner also applied this construction in this proceeding. See Tr. 6:7–18; see also id. at 19:10–16 (Petitioner’s counsel: “No, no, we did not present a construction and we did not contest the Board’s construction.”). The parties do not dispute that “using the [designated layer] as a mask” means “using the [designated layer] to define areas for etching,” and we discern no reason from the evidence presented to change this construction. We, therefore, maintain our preliminary construction for purposes of this Final Written Decision.” slip op. at 16
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“layer 358 as shown in Patent Owner’s modified Figure 16(a) from ever being a mask when etching layer 355, if it were in fact described as such. However, there is no such description in the Japanese priority application; instead, the corresponding discussion identifies only second resist pattern 359 as a mask for this etching step. See Ex. 1014 ¶ 96 (“If there is a concern that the second resist pattern 359 has been misaligned with the first resist pattern 357, then the mask pattern 358 should be dry-etched using the second resist pattern 359 as a mask before the second silicon dioxide film 355 is dry-etched using the second resist pattern 359 as a mask.” (emphasis added)). Further, as noted by Petitioner (Reply 10–11), the corresponding discussion is, at best, ambiguous as to whether mask pattern 358 is “used as a mask” for etching layer 355. Ex. 1014 ¶ 96 (“That is to say, if the mask pattern 358 is exposed to the openings of the second resist pattern 359 for the formation of contact holes because of the misalignment of the second resist pattern 359 with the first resist pattern 357, then the mask pattern 358 is dry-etched using the second resist pattern 359 as a mask. In this manner, the openings of the mask pattern 358 are expanded to include the openings for the formation of wiring grooves and contact holes.” (emphasis added)). This disclosure is not sufficient to provide support under 35 U.S.C. § 112, first paragraph, for step (i) of claim 10. See Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) (“For a claim in a later-filed application to be entitled to the filing date of an earlier application under 35 U.S.C. § 120 (1994), the earlier application must comply with the written description requirement of 35 U.S.C. § 112, ¶ 1 (1994). . . . A disclosure in a parent application that merely renders the later-claimed invention obvious is not sufficient to meet the written description requirement; the disclosure must describe the claimed invention with all its limitations.” (citing Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997))); see also K & K Jump Start, 13 F. App’x at 984 (“In order for claim 1 of the [U.S.] patent to be entitled to the priority date of the [foreign] application, the test set forth in [Tronzo, 156 F.3d at 1158] must be satisfied.”). 2. Conclusion as to Whether Grill Qualifies as Prior Art Having considered the evidence in this record, we determine that, at least, step (i) of claim 10 is not supported by the Japanese priority application.17 Accordingly, the effective filing date of the challenged claims is March 23, 1999, and Grill is available as prior art as to claims 10 and 12 of the ’696 patent under 35 U.S.C. § 102(e).” slip op. at 39
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“2. Conclusion as to Whether Grill Qualifies as Prior Art Having considered the evidence in this record, we determine that, at least, step (i) of claim 10 is not supported by the Japanese priority application.17 Accordingly, the effective filing date of the challenged claims is March 23, 1999, and Grill is available as prior art as to claims 10 and 12 of the ’696 patent under 35 U.S.C. § 102(e). 17 Because we find that claim 10 is not supported by the Japanese priority application, we need not discuss the parties’ arguments and evidence regarding whether or not Grill is entitled to the priority date of the Grill provisional application. Nor must we decide whether Petitioner’s corresponding arguments and evidence submitted in the Reply are proper.” slip op. at 40
Patent outcomesUS 6,197,696 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 6,197,696 - Taiwan Semiconductor Manufacturing Company, Ltd. / Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1All claims unpatentablePTAB · Jan 17, 2018 · IPR2016-01377 · APJ Jennifer Meyer Chagnon · IPR · Final written decision
Claims 10–12 are unpatentable as obvious over Grill and Aoyama because the combination teaches the claimed steps and a skilled artisan had reason and a reasonable expectation of success to combine them.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We note the parties’ proposals differ in the specific degree required (i.e., Master of Science vs. Bachelor’s of Science); however, neither party argues this distinction makes a difference in analyzing the asserted ground or other issues in this proceeding. For clarity of the record, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art, as it is more specifically directed to the technology described in the ’696 patent. In addition, given the disclosures in the ’696 patent and cited prior art, we agree with Petitioner that a Master of Science degree (or equivalent) in the relevant area better reflects the level of education and training that an ordinarily skilled artisan would have possessed at the time than a Bachelor’s degree, as Patent Owner contends. Our findings and conclusions, however, would be the same under either party’s proposed level of ordinary skill in the art. The level of ordinary skill in the art in this case further 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).” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“define areas for etching.”7 Inst. Dec. 11–15. We further determined that “to meet the limitation ‘using the [designated layer] for etching,’ the designated layer ‘must actually be used to define areas for etching.’” Id. at 15 (quoting Prelim. Resp. 6 (emphasis Patent Owner’s)). Patent Owner agrees with this construction—namely, that “‘using’ something ‘as a mask’ during etching means using it to define areas for etching.” PO Resp. 8–9. Petitioner also applied this construction in this proceeding. See Tr. 6:7–18; see also id. at 19:10–16 (Petitioner’s counsel: “No, no, we did not present a construction and we did not contest the Board’s construction.”). The parties do not dispute that “using the [designated layer] as a mask” means “using the [designated layer] to define areas for etching,” and we discern no reason from the evidence presented to change this construction. We, therefore, maintain our preliminary construction for purposes of this Final Written Decision.” slip op. at 17
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“that “using the [designated layer] as a mask” encompasses a situation in which the modified mask pattern 358, having “edges that are in line and flush” with second resist pattern 359, is therefore used as a mask. For the reasons discussed above, we do not agree with Patent Owner that “us[ed] . . . as a mask” necessarily encompasses such a situation. See supra Section II.C.2. We note that the application of our construction would not preclude layer 358 as shown in Patent Owner’s modified Figure 16(a) from ever being a mask when etching layer 355, if it were in fact described as such. However, there is no such description in the Japanese priority application; instead, the corresponding discussion identifies only second resist pattern 359 as a mask for this etching step. See Ex. 1014 ¶ 96 (“If there is a concern that the second resist pattern 359 has been misaligned with the first resist pattern 357, then the mask pattern 358 should be dry-etched using the second resist pattern 359 as a mask before the second silicon dioxide film 355 is dry-etched using the second resist pattern 359 as a mask.” (emphasis added)). Further, as noted by Petitioner (Reply 10–11), the corresponding discussion is, at best, ambiguous as to whether mask pattern 358 is “used as a mask” for etching layer 355. Ex. 1014 ¶ 96 (“That is to say, if the mask pattern 358 is exposed to the openings of the second resist pattern 359 for the formation of contact holes because of the misalignment of the second resist pattern 359 with the first resist pattern 357, then the mask pattern 358 is dry-etched using the second resist pattern 359 as a mask. In this manner, the openings of the mask pattern 358 are expanded to include the openings for the formation of wiring grooves and contact holes.” (emphasis added)). This disclosure is not sufficient to provide support under 35 U.S.C. § 112, first paragraph, for step (i) of claim 10. See Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) (“For a claim in a later-filed application to be entitled to the filing date of an earlier application under 35 U.S.C. § 120 (1994), the earlier application must comply with the written description requirement of 35 U.S.C. § 112, ¶ 1 (1994). . . . A disclosure in a parent application that merely renders the later-claimed invention obvious is not sufficient to meet the written description requirement; the disclosure must describe the claimed invention with all its limitations.” (citing Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997))); see also K & K Jump Start, 13 F. App’x at 984 (“In order for claim 1 of the [U.S.] patent to be entitled to the priority date of the [foreign] application, the test set forth in [Tronzo, 156 F.3d at 1158] must be satisfied.”). 2. Conclusion as to Whether Grill Qualifies as Prior Art Having considered the evidence in this record, we determine that, at least, step (i) of claim 10 is not supported by the Japanese priority application.16 Accordingly, the effective filing date of the challenged claims is March 23, 1999, and Grill is available as prior art as to claims 10–12 of the ’696 patent under 35 U.S.C. § 102(e).” slip op. at 39
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“2. Conclusion as to Whether Grill Qualifies as Prior Art Having considered the evidence in this record, we determine that, at least, step (i) of claim 10 is not supported by the Japanese priority application.16 Accordingly, the effective filing date of the challenged claims is March 23, 1999, and Grill is available as prior art as to claims 10–12 of the ’696 patent under 35 U.S.C. § 102(e). 16 Because we find that claim 10 is not supported by the Japanese priority application, we need not discuss the parties’ arguments and evidence regarding whether or not Grill is entitled to the priority date of the Grill provisional application. Nor must we decide whether Petitioner’s corresponding arguments and evidence submitted in the Reply are proper.” slip op. at 40
Patent outcomesUS 6,197,696 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 6,197,696 - Taiwan Semiconductor Manufacturing Company, Ltd. / Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1All claims unpatentablePTAB · Jan 17, 2018 · IPR2016-01376 · APJ Jennifer Meyer Chagnon · IPR · Final written decision
Claims 13 and 15 are unpatentable under § 103 as obvious over Grill and Aoyama; the Board found a reason to combine and a reasonable expectation of success.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We note the parties’ proposals differ in the specific degree required (i.e., Master of Science vs. Bachelor’s of Science); however, neither party argues this distinction makes a difference in analyzing the asserted ground or other issues in this proceeding. For clarity of the record, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art, as it is more specifically directed to the technology described in the ’696 patent. In addition, given the disclosures in the ’696 patent and cited prior art, we agree with Petitioner that a Master of Science degree (or equivalent) in the relevant area better reflects the level of education and training that an ordinarily skilled artisan would have possessed at the time than a Bachelor’s degree, as Patent Owner contends. Our findings and conclusions, however, would be the same under either party’s proposed level of ordinary skill in the art. The level of ordinary skill in the art in this case further 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).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“1. Construction of “using the [designated layer] as a mask” In the Institution Decision, we preliminarily construed the phrase “using the [designated layer] as a mask”6 as “using the [designated layer] to 6 Claim 13 recites several steps of etching “using” various layers—for example, the first resist pattern [step f]/second resist pattern and the mask pattern [step h]/patterned third insulating film [step i]—“as a mask.” As shorthand, we refer to the various layers as “the designated layer.” define areas for etching.”7 Inst. Dec. 11–15. We further determined that “to meet the limitation ‘using the [designated layer] for etching,’ the designated layer ‘must actually be used to define areas for etching.’” Id. at 15 (quoting Prelim. Resp. 6 (emphasis Patent Owner’s)). Patent Owner agrees with this construction—namely, that “‘using’ something ‘as a mask’ during etching means using it to define areas for etching.” PO Resp. 8–9. Petitioner also applied this construction in this proceeding. See Tr. 6:7–18; see also id. at 19:10–16 (Petitioner’s counsel: “No, no, we did not present a construction and we did not contest the Board’s construction.”). The parties do not dispute that “using the [designated layer] as a mask” means “using the [designated layer] to define areas for etching,” and we discern no reason from the evidence presented to change this construction. We, therefore, maintain our preliminary construction for purposes of this Final Written Decision.” slip op. at 16
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“that “using the [designated layer] as a mask” encompasses a situation in which the modified mask pattern 358, having “edges that are in line and flush with” second resist pattern 359, is therefore used as a mask. For the reasons discussed above, we do not agree with Patent Owner that “us[ed] . . . as a mask” necessarily encompasses such a situation. See supra Section II.C.2. We note that the application of our construction would not preclude layer 358 as shown in Patent Owner’s modified Figure 16(a) from ever being a mask when etching layer 355, if it were in fact described as such. However, there is no such description in the Japanese priority application; instead, the corresponding discussion identifies only second resist pattern 359 as a mask for this etching step. See Ex. 1014 ¶ 96 (“If there is a concern that the second resist pattern 359 has been misaligned with the first resist pattern 357, then the mask pattern 358 should be dry-etched using the second resist pattern 359 as a mask before the second silicon dioxide film 355 is dry-etched using the second resist pattern 359 as a mask.” (emphasis added)). Further, as noted by Petitioner (Reply 10–11), the corresponding discussion is, at best, ambiguous as to whether mask pattern 358 is “used as a mask” for etching layer 355. Ex. 1014 ¶ 96 (“That is to say, if the mask pattern 358 is exposed to the openings of the second resist pattern 359 for the formation of contact holes because of the misalignment of the second resist pattern 359 with the first resist pattern 357, then the mask pattern 358 is dry-etched using the second resist pattern 359 as a mask. In this manner, the openings of the mask pattern 358 are expanded to include the openings for the formation of wiring grooves and contact holes.” (emphasis added)). This disclosure is not sufficient to provide support under 35 U.S.C. § 112, first paragraph, for step (h) of claim 13. See Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) (“For a claim in a later-filed application to be entitled to the filing date of an earlier application under 35 U.S.C. § 120 (1994), the earlier application must comply with the written description requirement of 35 U.S.C. § 112, ¶ 1 (1994). . . . A disclosure in a parent application that merely renders the later-claimed invention obvious is not sufficient to meet the written description requirement; the disclosure must describe the claimed invention with all its limitations.” (citing Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997))); see also K & K Jump Start, 13 F. App’x at 984 (“In order for claim 1 of the [U.S.] patent to be entitled to the priority date of the [foreign] application, the test set forth in [Tronzo, 156 F.3d at 1158] must be satisfied.”). 2. Conclusion as to Whether Grill Qualifies as Prior Art Having considered the evidence in this record, we determine that at least step (h) of claim 13 is not supported by the Japanese priority application.16 Accordingly, the effective filing date of the challenged claims is March 23, 1999, and Grill is available as prior art as to claims 13 and 15 of the ’696 patent under 35 U.S.C. § 102(e).” slip op. at 39
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“2. Conclusion as to Whether Grill Qualifies as Prior Art Having considered the evidence in this record, we determine that at least step (h) of claim 13 is not supported by the Japanese priority application.16 Accordingly, the effective filing date of the challenged claims is March 23, 1999, and Grill is available as prior art as to claims 13 and 15 of the ’696 patent under 35 U.S.C. § 102(e). 16 Because we find that claim 13 is not supported by the Japanese priority application, we need not discuss the parties’ arguments and evidence regarding whether or not Grill is entitled to the priority date of the Grill provisional application. Nor must we decide whether Petitioner’s corresponding arguments and evidence submitted in the Reply are proper.” slip op. at 40
Patent outcomesUS 6,197,696 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 6,197,696 - Taiwan Semiconductor Manufacturing Company Limited / Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1All claims unpatentablePTAB · Dec 20, 2017 · IPR2016-01249 · APJ Michael J Fitzpatrick · IPR · Final written decision
Claims 1–3, 5–7, and 9 and proposed claims 11–12 are unpatentable as obvious over Ding and Zhang; proposed claim 13 is patentable and allowed by amendment.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“essentially of” for “being composed of.” PO Resp. 11 (citing AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 1245 (Fed. Cir. 2001)). In AFG, the Court noted that, “[i]n 1942, the Court of Customs and Patent Appeals [had] stated that ‘“composed of” should be regarded as synonymous with “consisting of.”’” AFG, 239 F.3d at 1245 (quoting In re Bertsch, 132 F.2d 1014, 1019 (CCPA 1942)). However, as further explained in AFG, the Court of Customs and Patent Appeals had “qualified this statement . . . by remarking that ‘the words “composed of” may under certain circumstances be given, in patent law, a broader meaning than “consisting of.”’” Id. (quoting In re Bertsch, 132 F.2d at 1020). The Court in AFG ultimately construed “composed of” to mean “consisting essentially of.” Id. (“[W]e do agree based on the specification and other evidence before us that the term ‘composed of’ in this case is not completely closed. Rather, we think that ‘composed of’ in this case should be interpreted in the same manner as ‘consisting essentially of.’”). Thus, “composed of” means either “consisting of” or “consisting essentially of.” Id. The term “consisting of” prohibits any 4 <111> and <002> are indices that pertain to an orientation or direction of crystals. Ex. 1003 ¶51. unspecified components. Id. (citing PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998)). The term “consisting essentially of” prohibits only unspecified components that materially affect the basic and novel characteristic(s) of a claimed invention. Id. (citing Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1574 (Fed. Cir. 1984)). By arguing that “being composed of” means “consisting essentially of” as opposed to “consisting of,” Patent Owner argues for broader claim scope. For purposes of this Decision, we construe “being composed of” to mean “consisting essentially of,” as Patent Owner argues.5 In conclusion, we construe “first film being composed of crystalline metal containing nitrogen therein,” as recited in independent claims 1 and 5, to mean “first film consisting essentially of crystalline metal containing nitrogen therein.”6” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of Ordinary Skill in the Art The parties propose similar definitions of the level of ordinary skill in the art. Petitioner argues that a person of ordinary skill in the art would have had “an equivalent of a Master of Science degree from an accredited institution in electrical engineering, materials science, or physics, or the equivalent, a working knowledge of semiconductor processing technologies for integrated circuits, and at least two years of experience in semiconductor processing analysis, design, and development.” Pet. 10–11 (citing Ex. 1003 ¶64). Patent Owner argues that such an individual would have had “at least a Bachelor’s degree in Electrical, Materials, Mechanical, or Chemical Engineering, or a related degree, and at least two years of experience working in semiconductor processing and fabrication, semiconductor equipment manufacturing, or semiconductor materials.” PO Resp. 18 (citing Ex. 2011 ¶24). Neither party explains in detail why its proposed level of ordinary skill in the art should be adopted nor how the different levels affect the parties’ analyses. Based on the evidence of record, including the testimony of the parties’ declarants, the subject matter at issue, and the prior art of record, we adopt Petitioner’s definition.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“As to Petitioner’s predictable-results assertion, Petitioner persuasively argues that a person of ordinary skill in the art would have added nitrogen to the crystalline tantalum layer of Ding for three independent reasons. First, Petitioner argues that the presence of nitrogen in Ding’s crystalline tantalum layer would make it more easily removable by chemical mechanical polishing (“CMP”), which removal by polishing both Zhang and Ding teach to do. Pet. 24–26 (citing Ex. 1003 ¶¶140, 142, 143; Ex. 1004, 1:30–34, 4:34–37; Ex. 1005, 7:56–65; Ex. 1019, 12–13; Ex. 1021, 354–63). Second, Petitioner argues that the presence of nitrogen in Ding’s crystalline tantalum layer would inhibit, to some additional extent, copper diffusion. Id. at 26–29 (citing Ex. 1003 ¶¶144–146; Ex. 1023, 8). Third, Petitioner argues that adding a small amount of nitrogen to Ding’s crystalline tantalum layer would reduce its resistivity, which was known to help reduce a device’s power consumption and RC delays. Id. at 29–30 (citing Ex. 1003 ¶147; Ex. 1015, 81 (Table 1)). Patent Owner counters that none of these purportedly predictable results are realistic. PO Resp. 46–52. With respect to the first reason offered by Petitioner (to make the first film more susceptible to CMP), Patent Owner argues that: (A) adding only “[a] small amount of nitrogen” to Ding’s crystalline tantalum layer would not change its CMP characteristics; and (B) “[a]dding significant amounts of nitrogen” would result in Ding’s previously crystalline layer becoming amorphous. Id. at 48. Patent Owner does not disclose what it considers “small” and “significant” amounts of nitrogen. Id. As a result, we cannot apply Patent Owner’s argument (even if it were persuasive) to the facts before us. Also, Patent Owner’s argument is based exclusively on declaration testimony that does not cite to any underlying evidence, let alone documentary evidence. See id. at 47–49 (citing Ex. 2011 ¶¶190–98). In contrast, Petitioner’s argument is supported by declaration testimony, which, in turn, is based on underlying evidence, including documentary evidence. See Pet. 24–26 (citing Ex. 1003 ¶¶140, 142, 143; Ex. 1004, 1:30–34, 4:34– 37; Ex. 1005, 7:56–65; Ex. 1019, 12–13; Ex. 1021, 354–63); see also Ex. 1003 ¶139. With respect to the second reason offered by Petitioner (to inhibit, to some additional extent, copper diffusion), Patent Owner argues that, in Petitioner’s asserted combination, “there would be no nitrogen to provide any copper diffusion benefit.” PO Resp. 49. Patent Owner’s argument is premised on Zhang teaching exclusively an upper surface of pure tantalum. Id. But, Zhang explicitly teaches that the upper surface may have a nitrogen content of, for example, 1%, 2%, 3%, or 4%. See Ex. 1004, 3:59–62 (“At the upper surface, the atomic percent tantalum may be at least 95% and the atomic percent nitrogen may be less than 5% if copper adhesion is particularly problematic.”). With respect to the third reason offered by Petitioner (to reduce resistivity), Patent Owner argues that adding nitrogen would actually increase resistivity. As pointed out by Petitioner, however, Patent Owner’s declarant, Harlan R. Harris, Ph.D., conceded that adding nitrogen does lower resistivity. Reply 17–18 (quoting Ex. 1036, 125:3–20). Dr. Harris testified as follows: Q. When the nitrogen flow ratio is zero in the ’324 patent, and the power is kept constant, wouldn’t that result in a film that could be pure tantalum? A. All three of those data points are at the exact same position on the graph. The N2 concentration, which is the numerator of the ratio, is set at zero. And in this particular position, the nitrogen concentration would be assumed to be zero in the film. Q. So is it within the scope of what’s taught in the ’324 patent to have a film that would have no nitrogen at all? A. It’s also apparent to anyone who is examining this of skill in the art that you can decrease from that number, which is favorable in terms of the value of resistivity by adding flow rate in the data points for all of the positions greater than zero. So you decrease resistivity by the addition of any amount of nitrogen, therefore, a person skilled in the art would not be motivated to not have nitrogen, based on this data. Q. You’re referring to the decrease in resistivity as nitrogen is added? A. Yes. Q. Which is desirable? A. You want the resistivity to go down. Ex. 1036, 124:15–125:20. We are satisfied by each of Petitioner’s proffered reasons for why a person of ordinary skill in the art would have added nitrogen to Ding’s crystalline tantalum layer, as taught by Zhang. Petitioner has shown, by a preponderance of the evidence, that claims 1 and 5 would have been obvious over Ding and Zhang.” slip op. at 24
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“obvious over Ding in view of Zhang. Patent Owner’s proposed claims 11 and 12 are unpatentable because they introduce limitations—nitrogen throughout the first film (claim 11) and nitrogen at the upper surface of the first film (claim 12)—that are met by the very references asserted in the ground of unpatentability involved in this inter partes review. Patent Owner’s Motion to substitute claims 11 and 12 is premised, incorrectly, on Zhang requiring pure tantalum (and, thus, no nitrogen) at the upper surface of its tantalum-rich tantalum nitride film. In fact, Zhang does not require any portion of the tantalum-rich tantalum nitride film to be pure tantalum. Ex. 1004, 3:53–54 (“The tantalum-rich tantalum nitride film has a range of approximately 0-30 atomic percent nitrogen.”). And, Zhang explicitly teaches that the upper surface may include nitrogen. Id. at 3:57– 62 (“A lower atomic percent nitrogen at the upper surface typically gives better adhesion to copper films. At the upper surface, the atomic percent tantalum may be at least 95% and the atomic percent nitrogen may be less than 5% if copper adhesion is particularly problematic.”); Ex. 1036, 40:1–6, 42:2–9, 42:15–21, 54:14–20 (Dr. Harris acknowledging that the upper surface of the film would contain some nitrogen). Accordingly, a preponderance of the evidence establishes that Patent Owner’s proposed claims 11 and 12 are not patentable over the art of record in this inter partes review. Put another way, and as Petitioner argues, claims 11 and 12 (like challenged claim 5) are unpatentable as they claim subject matter that would have been obvious over Ding in view of Zhang. See 35 U.S.C. § 103(a); Amend Opp. 6–7 (“The instituted obviousness ground[] based on Zhang and Ding already include[s] the newly-added limitations Patent Owner seeks to add in its Substitute Claims 11–13. Thus, the Substitute Claims 11–13 remain unpatentable over each of the instituted grounds.”).14 Patent Owner’s Motion to Amend is denied with respect to claims 11 and 12.” slip op. at 33
Patent outcomesUS 6,538,324 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 6,538,324 - Fitbit, Inc. v. Bodymedia, Inc.Institution deniedPTAB · Sep 8, 2016 · IPR2016-00707 · APJ Trevor M Jefferson · IPR · Institution
The Board denied institution because Fitbit did not show a reasonable likelihood that claims 1–29 would have been obvious over Mault 470 and Mault 089, which were not shown to be prior art.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner asserts that the broadest reasonable construction of “contextual data of the individual” as recited in the claim limitation 1(b)(i) is “data relating to an individual’s activity state environment, surrounding, or location.” Pet. 17. Petitioner asserts that this construction was applied in the related ITC proceeding. Id. (citing Ex. 1015, 17–22, 33). Patent Owner does not contest this proposed construction. For purposes of this Decision, we adopt Petitioner’s proposed construction for “contextual data of the individual.”” slip op. at 6
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“of the claimed subject matter without explaining what the parent application conveys to those skilled in the art. See Pet. 9–10 (discussing whether June 2000 applications contain “equivalent description” of claim 1 limitations); Ex. 1003 ¶ 32 (addressing whether “equivalent description” exits in the parent applications). Contrary to Petitioner’s application of the “equivalent description,” the test for sufficiency of support in a parent application is not “the presence or absence of literal support in the [parent application] for the claim language,” In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983), but instead is whether the disclosure of the application relied upon reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter, Vas-Cath Inc., 935 F.2d at 1563–64; see Yorkey v. Diab, 605 F.3d 1297, 1303 (Fed. Cir. 2010) (quoting In re Kaslow, 707 F.2d at 1375). In the present case, Petitioner relies on conclusory statements that [t]he June 2000 applications do not contain an equivalent description of a processing unit configured to provide feedback for an individual’s weight-loss goal by performing each of the steps recited in subparts b.(i)–(v) of claim 1 in sufficient detail such that one of skill in the art can clearly conclude the applicant invented the claimed invention.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“Based on the foregoing, we find that Petitioner has not shown that Mault 470 and Mault 089 are prior art, and, thus, there is not a reasonable likelihood that Petitioner would prevail in showing that claims 1–29 would have been obvious under 35 U.S.C. § 103 over Mault 470 and Mault 089.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)
“Mault 470 and Mault 089 are prior art, and, thus, there is not a reasonable likelihood that Petitioner would prevail in showing that claims 1–29 would have been obvious under 35 U.S.C. § 103 over Mault 470 and Mault 089. III. CONCLUSION For the foregoing reasons, we determine that the Petition fails to establish a reasonable likelihood of prevailing on the asserted ground that claims 1–29 would have been unpatentable as obvious under 35 U.S.C. § 103 over Mault 470 and Mault 089.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 8,398,546 - Sony Computer Entertainment America LLC / Microsoft Corporation Inc. v. Adc Technology Inc.All claims unpatentablePTAB · Jul 1, 2016 · CBM2015-00026 · APJ Michael P Tierney · CBM · Final written decision
Claims 8–14 are unpatentable under §103 as obvious over the instituted prior-art combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“D. Level of Ordinary Skill in the Art Petitioner’s declarant, Mr. Garry E. Kitchen, testifies that, based on his experience in the commercial software art, a person of ordinary skill in the art at the time of the invention would have had a Bachelor of Science degree in electrical engineering, computer engineering, computer science or a related engineering discipline or equivalent experience or education. Declaration of Garry Kitchen, Ex. 1011 ¶ 33. Patent Owner does not dispute this recitation of the level of ordinary skill in the art. We adopt the level of ordinary skill in the art identified by Mr. Kitchen as it is consistent with the prior art of record. See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“Petitioner provides specific constructions for each of the interference means appearing in the dependent claims. Pet. 22–24. Patent Owner disagrees that the dependent claims recitation of interference means requires “additional functional limitations piled on top of the disclosed structure.” PO Resp. 7. Specifically, Patent Owner contends that there is only one construction of interference means, namely that which Petitioner provided with respect to the interference means of claim 8. Petitioner disagrees with Patent Owner and contends that the four dependent claims themselves recite specific functions and must further limit the claim from which they depend. Reply 7. We determine that it is unnecessary to determine whether Patent Owner or Petitioner is correct as to the specific construction of the interference means recited in claims 11, 12, 13, and 14 as the claims are unpatentable under either construction. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Program, Data and Combination of Program and Data Claim 8 contains the recitation “the program, the data, and a combination of the program and data together.” Petitioner contends that the term should mean “the program and/or the data.” Pet. 28; Reply 9. Petitioner, however, contends that Patent Owner was silent as to the meaning of the term during ex parte reexamination. Pet. 29. Patent Owner generally contends that the claim recitation is definite and requires operations to be performed either on “a program, or on data, or on a combination of the program and data.” PO Resp. 8. We adopt Patent Owner’s construction (operations are performed either on “a program, or on data, or on a combination of the program and data”) as it is consistent with the plain and ordinary meaning of the term and appears to be substantially the same as Petitioner’s construction. Reply, 9–10, Ex. 1011, ¶ 54.” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“The obviousness-type double patenting rejection does not demonstrate that the earlier filed ’995 patent described the invention, with all its claimed limitations. First, the rejection was based on obviousness, not anticipation. See Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). (“One shows that one is ‘in possession’ of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious.”). Second, the Examiner’s identification of “common subject matter” consists merely of that which appears in the preamble of challenged claim 8. Although the Examiner stated that there was no apparent reason why the present claims were not presented in the earlier application, Mr. Kitchen presents credible testimony that the clock means limitation “for keeping a predetermined time period after said executing means starts execution of the program or data processing,” did not appear in the earlier filed applications and written description support for it was added in the continuation-in-part ’784 application via new Figure 12. Ex. 1011 ¶¶ 46–47 and 49; compare Ex. 1001, Figures 1–14, with Ex. 1014, Figures 1–11. Based on the evidence of record, we credit Mr. Kitchen’s testimony as it is consistent with the evidence of record and hold that Petitioner has established that claims 8–14 are limited to the July 2, 1998, filing date of the ’784 application, which resulted in the issuance of the ’520 patent.” slip op. at 15
Patent outcomesUS 6,193,520 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 6,193,520 - 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.