• Innoscience (Zhuhai) Technology Company, Ltd / Innoscience America, Inc. v. Efficient Power Conversion CorporationAll claims unpatentable
  PTAB · Mar 18, 2025 · IPR2023-01381 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–3 and 7–9 are unpatentable as obvious over Uemoto and Smith; the motion to amend is granted, and proposed substitute claims 13 and 14 are not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In order to determine whether an invention would have been obvious at the time the application was filed, we consider the level of ordinary skill in the pertinent art. Graham, 383 U.S. at 17. In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation omitted). Petitioner contends a person of ordinary skill in the art “would have possessed at least a four-year degree in electrical engineering, chemical engineering, physics, or material science, or a closely related field, and at least two years of experience in semiconductor device design or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies.” Pet. 5–6. Petitioner contends “[a]dditional education could substitute for professional experience and vice versa.” Id. at 6. Patent Owner contends that a person of ordinary skill in the art would have had “at least a four-year degree in electrical engineering, physics, material science, or a closely related field, and three years of professional work experience in the epitaxial growth, design, and fabrication of semiconductor electronic devices, including those of GaN.” PO Resp. 7 (citing Ex. 2009 ¶ 82). Upon review of the evidence of record and the parties’ arguments, we adopt Petitioner’s definition of the person of ordinary skill in the art as it is consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). We note, however, that the conclusions reached in this Decision would be the same under either proposed definition of the ordinarily skilled artisan. See Ex. 2009 ¶ 83 (Dr. Schubert testifying that his opinions would be the same under either proposed definition); Ex. 1033 ¶ 9 (Dr. Shealy testifying that the differences in proposed definitions of the ordinarily skilled artisan “would not change the outcome of the invalidity analysis in any material manner”); PO Resp. 7; Pet. Reply 1.” slip op. at 9

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

    “compensated GaN layer above the barrier layer, and a gate contact above the compensated GaN layer.” Ex. 1001, 5:12–18. Petitioner contends the term “compensated” indicates that the step of compensating the GaN layer has already occurred, such that the term “compensated GaN layer” should be construed as a “‘[d]oped GaN layer formed with a step to passivate its impurities’ which is a ‘product-by-process’ limitation.”5 Pet. 12–14. And, because compensation with hydrogen was the “critical step” distinguishing the claims from the prior art, and because hydrogenation in as-grown III-nitride materials had been well known for over a decade by 2009, Petitioner contends “compensated” “cannot be interpreted as mere hydrogen presence in as-grown material, a well-known property of doped GaN.” Id. at 15. Patent Owner contends “compensated GaN material” should be construed as “a semiconductor GaN gate material in which one type of impurity (for example, donor) cancels the electrical effects of the other type of impurity (for example, acceptor).” PO Resp. 11 (citing Ex. 2009 ¶ 92) (emphasis added). Patent Owner contends this construction is consistent with the IEEE dictionary, which defines “compensated semiconductor” as 5 Given that product-by-process steps in a device claim are not entitled to patentable weight, Petitioner contends “the prior art only need show a material with passivated impurities to show unpatentability, not the step to achieve it.” Pet. 15–16. “[a] semiconductor in which one type of impurity or imperfection (for example, donor) partially cancels the electric effects of the other type of impurity or imperfection (for example, acceptor).” PO Resp. 14 (quoting Ex. 2004). Patent Owner contends its construction is also consistent with the written description of the ’294 patent, which explains that a compensated GaN material is part of the gate and includes a p-type impurity that imparts an electrical effect (i.e., conductivity), as well as a second impurity, e.g., hydrogen, that partially cancels the electrical effect of the p-type impurity, rendering the layer semi-insulating. Id. at 14–15 (citing Ex. 1001, 3:10–13, 3:43–45). On this record, we construe “compensated GaN layer” as “a GaN layer in which one type of impurity (for example, donor) partially cancels the electric effects of the other type of impurity (for example, acceptor).” This is consistent with the disclosures of the ’294 patent, the IEEE dictionary definition, and the construction ultimately adopted by the ITC. Ex. 2004, 3; Ex. 1049, 16–17 (ITC construing “compensated GaN layer” to mean “a GaN layer in which one type of impurity partially cancels the electrical effects of another type of impurity”); Ex. 1001, 3:43–45 (explaining that the compensated GaN layer of the ’294 patent is formed through the “passivation of a p-type impurity using hydrogen”). For the reasons set forth below, however, we decline to construe “compensated GaN layer” as a product-by-process claim term (as asserted by Petitioner), or to limit the compensated GaN layer to a gate material (as asserted by Patent Owner).” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “There are two exceptions to the general rule that we apply the ordinary and customary meaning of a claim term: (1) when a patentee sets out a definition and acts as his own lexicographer, or (2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution. See Thorner, 669 F.3d at 1365. The standards for lexicography and disclaimer, however, are “exacting.” Id. at 1366. There is no argument that the patentees acted as their own lexicographer to redefine the term “compensated GaN layer.” With respect to disavowal, a “patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Thorner, 669 F.3d at 1366 (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)). As noted by Patent Owner, the title of the ’294 patent is, in part, “Compensated Gate MISFET” and much of the discussion of the ’294 patent is of a compensated GaN layer that is directly below the gate contact and above a barrier layer and operates in conjunction with the gate contact to control the on/off state of the transistor. PO Resp. 12–14. We are presented with insufficient argument or evidence to conclude, however, that these disclosures rise to the level of a disclaimer. For example, although the title of the ’294 patent is directed to a “Compensated Gate MISFET,” claim 1 is more broadly directed to “[a] column III Nitride transistor.” Ex. 1001, 5:12, code (54). Nor are we directed to an expression or statement of manifest exclusion in the ’294 patent that would serve to disclaim any “compensated GaN layer” that is not directly below the gate and/or that does not function in concert with the gate electrode to control the on/off state of the transistor. See Thorner, 669 F.3d at 1366. With respect to the stated goals of the invention, as noted by Patent Owner, one of the primary purposes of the compensated GaN layer of the ’294 patent is to reduce gate leakage and gate capacitance. Ex. 1001, 2:13– 19, 3:18–21 (“[U]sing a compensated semiconductor layer 38 leads to low gate leakage during device operation.”). We cannot use the goals of the invention, however, to rewrite the claims or insert terms that are not present. See Thorner, 669 F.3d at 1366. Moreover, the prior art of record indicates that a compensated GaN layer that is below the gate contact and above a barrier layer, but not part of the active gate structure, may also “decrease the leakage current between the gate and the drain.” Ex. 1006 ¶¶ 44 (“Even when a positive bias of 5 V or higher is applied to the gate electrode, no significant gate-leakage current is observed.”), 61. As such, evidence of record suggests that a person of ordinary skill in the art would have understood that one of the primary goals disclosed in the ’294 patent is achieved regardless of whether the compensated GaN layer is part of the gate, or simply in close vicinity to the gate. In view of the foregoing, we are not persuaded that the written description of the ’294 patent indicates that the “compensated GaN layer” must be part of the gate structure.” slip op. at 17

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “To be probative, Patent Owner must prove there is a nexus between the presented evidence and the merits of the claimed invention. See Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). A rebuttable presumption of nexus applies when the “patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco, 851 F.2d at 1392). “That is, presuming nexus is appropriate ‘when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.’” Id. (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). If the praise is not limited to the features of the claimed invention, the patent owner may still prove nexus “by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. at 1373–74 (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). Patent Owner contends that the compensated gate of the ’294 patent “was a breakthrough invention and resulted in the first commercially viable enhancement-mode GaN transistor.” PO Resp. 60 (citing Ex. 2009 ¶¶ 192– 193, 197; Ex. 2021). Patent Owner further contends that this achievement required the counter-intuitive use of a compensated gate material in the gate structure, and represented “a technological leap that laid the foundation for viable enhancement-mode GaN transistors.” Id. at 61–62. For this achievement, Patent Owner contends the inventor, Dr. Alex Lidow, received the 2015 SEMI Award. Id. at 60 (citing Ex. 2021). Upon review of Patent Owner’s evidence and the parties’ arguments, we find that Patent Owner’s objective indicia evidence is entitled to little, if any, weight. The evidence of praise relied upon by Patent Owner is not clearly linked to the claimed invention or any particular product having each of the claimed features of the ’294 patent. Ex. 2021. For example, the 2015 SEMI award was provided to Dr. Lidow “for commercialization of GaN power devices.” Id. An article explaining the award indicates that “high cost” previously “limited [the] commercial success” of GaN technologies, but Dr. Lidow was able to overcome these issues, “from resolving packaging limitations to establishing a low-cost supply chain,” “through persistence.” Id. This praise is not demonstrably linked to the claimed invention or any particular device, and does not mention the use of a compensated gate, or any other relevant feature recited in the claims. In view of the foregoing, we determine that Patent Owner’s objective evidence of non-obviousness is entitled to little, if any, weight.” slip op. at 20

  Patent outcomesUS 8,350,294 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 8,350,294
• Inari Agriculture, Inc. v. Pioneer Hi-Bred International, Inc.Institution denied
  PTAB · Nov 1, 2024 · PGR2024-00025 · APJ Jeffrey W Abraham · PGR · Institution

  The Board denied institution because Petitioner did not show that claims 1–20 were more likely than not unpatentable over either obviousness ground, for lack of utility, or as indefinite.

  RulingsInstitution decision

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

    “Institution of a post-grant review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 321 . . . demonstrates that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons set forth below, we determine that Petitioner has failed to demonstrate that it is more likely than not that at least one of claims 1–20 of the ’033 patent is unpatentable. Accordingly, we deny institution of a postgrant review of claims 1–20 based on the grounds set forth in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “level of skill, with a doctoral degree in plant breeding or a related field, at least five years of experience with corn breeding, and additional experience interfacing with laboratory-side personnel (including a computational biologist along with genetics specialists) and field-side personnel.” Pet. 15 (citing Ex. 1003 ¶¶ 19–22, 44–45). Petitioner also states that, “[a]lternatively, additional experience could take the place of an advanced degree.” Pet. 15. Patent Owner states that it “does not dispute Petitioner’s definition of the qualifications of person of skill in the art” and “reserves its right to challenge Petitioner’s definition and to provide its own definition, should trial be instituted.” Prelim. Resp. 25. Petitioner’s unopposed proposed definition is consistent with the cited prior art and the disclosure of the ’033 patent, and we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself may “reflect[] an appropriate level”” slip op. at 6

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

    “Petitioner does not offer a specific construction for any claim terms. Pet. 19–20. Rather, Petitioner contends that “the outer boundary of the Challenged Claims lacks reasonable certainty,” and, therefore, “the Challenged Claims are unpatentable as indefinite under §112(b).” Pet. 20. Petitioner further contends that the challenged claims are unpatentable as obvious “regardless of the outer boundary of the claims.” Pet. 21. Patent Owner disagrees with Petitioner’s arguments regarding indefiniteness, and does not construe any claim terms. See generally Prelim. Resp. As explained in detail below, based on the record before us, we are not persuaded by Petitioner’s indefiniteness arguments, and determine that none of the claim terms require an explicit construction to determine whether to institute post-grant review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary” slip op. at 7

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

    “Patent Owner is correct that Petitioner focuses its obviousness challenge on 1PNZQ23’s phenotype, and does not address its genotype. Prelim. Resp. 41–42; see Pet. 26–32 (comparing 1PNZQ23’s phenotype with the phenotypes of the asserted prior art). Petitioner does not direct us to, nor do we discern, any information in the Petition or Reply regarding 1PNZQ23’s genotype that supports Petitioner’s arguments regarding obviousness. Furthermore, Patent Owner offers information suggesting that “the breeding of 1PNZQ23 was unpredictable even with both parents being known in the art.” Prelim. Resp. 47. Dr. Schnable addresses unpredictability in the breeding process, stating: distinct even when the F1 plant itself results from a cross of two inbreds. A [person of ordinary skill in the art] would not expect that a cross of the same parents will produce F2 or D1 progeny identical to 1PNZQ23. . . . [T]he genome of a progeny plant is the result of genetic segregation and recombination in the F1 plant of the two parental genomes and the chance of the exact same child resulting from that initial biparental cross is infinitesimally small. Ex. 2004 ¶ 123. This information undermines Petitioner’s arguments regarding an expectation of success in achieving the claimed invention.” slip op. at 13

  Claim construction§ 101 eligibility§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips
  Patents in suitUS 11,707,033
• Inari Agriculture, Inc. v. Pioneer Hi-Bred International, Inc.Institution denied
  PTAB · Oct 15, 2024 · PGR2024-00023 · APJ Jeffrey W Abraham · PGR · Institution

  The Board denied institution on claims 1–20 because the petition did not show they were unpatentable on any asserted obviousness, utility, written-description, or enablement ground.

  RulingsInstitution decision

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

    “Institution of a post-grant review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 321 . . . demonstrates that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons set forth below, we determine that Petitioner has failed to demonstrate that it is more likely than not that at least one of claims 1–20 of the ’545 patent is unpatentable. Accordingly, we deny institution of a postgrant review of claims 1–20 based on the grounds set forth in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “level of skill, with a doctoral degree in plant breeding or a related field, at least five years of experience with corn breeding, and additional experience interfacing with laboratory-side personnel (including a computational biologist as along with genetics specialists) and field-side personnel.” Pet. 16 (citing Ex. 1003 ¶¶ 50–51). Petitioner also states that, “[a]lternatively, additional experience could take the place of an advanced degree.” Pet. 16. Patent Owner states that it “does not dispute Petitioner’s definition of the qualifications of person of skill in the art” and “reserves its right to challenge Petitioner’s definition and to provide its own definition, should trial be instituted.” Prelim. Resp. 24. Petitioner’s unopposed proposed definition is consistent with the cited prior art and the disclosure of the ’545 patent, and we adopt it for purposes” slip op. at 6

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

    “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.200(b) (2019). Under that standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Petitioner contends that “[b]ecause Petitioner’s grounds plainly render the claims unpatentable under any plausible construction, no outer boundary constructions are necessary.” Pet. 21. Patent Owner also does not construe any claim terms. See generally Prelim. Resp. For purposes of this Decision, and based on the record before us, we determine that none of the claim terms require an explicit construction to determine whether to institute post-grant review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only 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 7

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

    “additional reasons. For example, we agree with Patent Owner that Petitioner fails to demonstrate sufficiently that a person of ordinary skill in the art would have had a reasonable expectation of success in arriving at PH4CYJ based on Smalley’s disclosure alone. Prelim. Resp. 51–52. According to the ’545 patent specification, the claimed PH4CYJ inbred maize variety is a cross between inbred line PH1VNA and inbred line PH1KTF. Ex. 1001, 37:62–64. In the simplest terms, PH1VNA and PH1KTF are the parents, and their cross ultimately resulted in the inbred variety PH4CYJ. The ’545 patent explains that after the initial crossing of the parental lines, the” slip op. at 14

  Claim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 11,696,545
• Voltage, LLC v. Shoals Technologies Group, LLCInstitution denied
  PTAB · Sep 30, 2024 · PGR2024-00022 · APJ Michael G Mcmanus · PGR · Institution

  The Board denied institution on claims 1–24 because Voltage did not show that any challenged claim was more likely than not unpatentable under the asserted grounds.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute a post-grant review. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). A post-grant review may not be instituted “unless. . . the information presented in the petition . . . if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) and the evidence and arguments in the Preliminary Response (including its supporting testimonial evidence), we determine that Petitioner has not demonstrated that the ’153 patent is eligible for post-grant review. Accordingly, we decline to institute a post-grant review of claims 1–24 based on the grounds articulated in the Petition.” slip op. at 2

  • Skill levelOther

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Further, for purposes of this institution decision, and on the present record, we determine that the adoption of either party’s proposal regarding requisite work experience would not change our analysis or conclusions. C. Claim Construction” slip op. at 12

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

    “The parties put forward several terms for construction. Pet. 14–17; Prelim. Resp. 9–12. With respect to Grounds I through VII, we have determined that no claim constructions are required in order to address the points at issue. 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” (internal citation omitted)). Claim construction is required to resolve certain issues arising in connection with Ground VIII. Accordingly, we construe certain terms in our discussion of that ground, infra.” slip op. at 13

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

    “through the undermold.” The term “aperture only partially extending through said undermold” was added to the claims of the ’254 parent application by amendment. Ex. 1021, 103–105; Ex. 1020, 6:60–8:47. With this amendment, the claims of the ’254 patent align with Figure 7, reproduced below. Figure 7 of the ’254 Patent (Figure 7 of the ’153 patent is identical to Figure 7 of the ’254 patent except for minor stylistic changes). As can be seen, the aperture occupied by drop line 12 extends partially through the undermold to compression lug 20 while the aperture occupied by feeder cable 14 extends completely through the undermold. This suggests a construction of “aperture extending partially through the undermold” where such aperture does not extend completely through the undermold. Such a construction of “aperture extending partially through the undermold” is consistent with the plain meaning of “extending partially.”” slip op. at 62

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · Graham · Nautilus
  Patents in suitUS 11,689,153
• The Noco Company, Inc. v. Pilot, Inc.All claims unpatentable
  PTAB · Feb 6, 2024 · IPR2022-01417 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 1–27 are unpatentable: claims 1, 2, 5–12 and 13, 14, 17–19, 22–24, 27 are anticipated; the remaining claims are obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had “a Bachelor’s Degree in a relevant engineering discipline such as electrical engineering and at least two years of relevant experience in the design and/or development of automotive electrical systems, or a Masters or more advanced degree in a relevant engineering discipline such as electrical engineering.” Pet. 6–7 (citing Ex. 1003 ¶ 46). Patent Owner does not challenge Petitioner’s definition or offer its own. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’236 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’236 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (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”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 9

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

    “Petitioner argues that “[a]ll of the claim terms are given their plain meaning, as understood by the [person of ordinary skill in the art], unless indicated otherwise.” Pet. 9. After considering the arguments and information Petitioner presents, we determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 10

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “with Petitioner that the ’236 patent is not entitled to the 2014 priority date of the original application, or any date earlier than April 21, 2021, which is the filing date of the ’236 patent. Whether the Specification complies with the written description requirement calls for a comparison of the scope of the claim with the scope of the description to determine whether the inventor has demonstrated possession of the claimed invention. See Ariad, 598 F.3d 1336 at 1353; Power Oasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). The independent claims of the ’236 patent each require (1) a load detection sensor “configured to detect presence of a vehicle battery” and (2) a reverse polarity sensor “configured to detect polarity of a vehicle battery.” Ex. 1001, 5:16–27 (claim 1), 6:7–22 (claim 13), 6:65–7:13 (claim 18), 8:1– 15 (claim 23). The Specification of the ’236 patent does not expressly disclose both a load detection sensor and reverse polarity sensor configured to perform the recited functions. Instead, the Specification identifies a single circuit, the “automatic detection module,” that “can automatically detect[] whether the load is detected” and “whether the electrode is connected with the automobile storage battery reversely.” Ex. 1001, 2:51–54. We are persuaded by Petitioner’s arguments that the disclosure of a single circuit capable of performing two functions does not demonstrate the inventors had possession of an invention that requires two separate sensors configured to perform separate functions as recited in the claims. See Ariad, 598 F.3d 1336 at 1352 (“[A] description that merely renders the invention obvious does not satisfy the [written description] requirement.”); Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (holding that “the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue,” but that “one skilled in the art, reading the original disclosure, must immediately discern the limitation at issue in the claims”); cf. PIN/NIP, Inc. v. Platte Chem. Co., 304 F.3d 1235, 1248 (Fed. Cir. 2002) (finding a claim for a method involving sequential application of two chemicals was invalid for lack of adequate written description where the specification indicated that the invention was a method of applying a “composition” containing the two chemicals). For all of the foregoing reasons, we agree with Petitioner that the Specification of the ’236 patent does not provide adequate written description support for distinct “load detection” and “reverse polarity” sensors, and, therefore, the challenged claims are not entitled to a priority date earlier than April 21, 2021, the filing date of the ʼ236 patent.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “demonstrating that Nook-015 discloses the limitations in claim 1. After reviewing the undisputed evidence and arguments Petitioner presents in the Petition regarding claim 1, we agree, for the reasons stated by Petitioner and supported by Dr. Wood’s testimony, that Nook-015 discloses an internal power supply, output port, load detection sensor, reverse polarity sensor, power switch, and microcontroller, all connected and configured as claim 1 requires. Ex. 1004, 3:17–26, 3:67–4:2, 4:20–38, 5:35–37, 5:50–54, 8:4–37; Ex. 1003 ¶¶ 78–79; Pet. 25–29. b. Claims 2 and 5–12 Claims 2 and 5–12 depend directly or indirectly from claim 1. Petitioner directs us to portions of Nook-015 that disclose the additional limitations in these claims. Pet. 29–33. Patent Owner does not dispute Petitioner’s arguments or evidence regarding these dependent claims. For the reasons stated by Petitioner and supported by Dr. Wood’s testimony, we agree that Nook-015 discloses the limitations recited in these claims, as discussed below.” slip op. at 20

  Patent outcomesUS 11,104,236 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,104,236
• Eden Park Illumination, Inc. / Larson Electronics LLC et al. v. S. Edward NeisterAll claims unpatentable
  PTAB · Nov 14, 2023 · IPR2022-00381 · APJ Julia Heaney · IPR · Final written decision

  Claims 1–10 and 12–18 are unpatentable as obvious; the revised contingent motion to amend is denied because proposed claims 19–25 lack written description support.

  RulingsFinal written decision

  • Skill levelOther

    “1. Principles of Law In an inter partes review, the petitioner bears the ultimate burden of persuasion to show unpatentability, which never shifts to the patent owner. Dynamic Drinkware LLC v. National Graphics, Inc., 800 F.3d 1375, 1379– 1380 (Fed. Cir. 2015). “However, when a patent owner attempts to antedate an asserted prior art reference, the patent owner takes on a temporary burden of production.” Medtronic, Inc. v. Teleflex Innovations S.À.R.L., 68 F.4th 1298, 1303 (Fed. Cir. 2023) (citing Dynamic Drinkware, 800 F.3d at 1378– 79)). “Once that burden is met, the burden shifts back to the petitioner.” Id. “[A] patent’s claims are not entitled to an earlier priority date because the patentee claims priority. . . . Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120,” including a written description in the earlier-filed application that satisfies § 112. In re NTP, Inc., 654 F.3d 1268, 1276–77 (Fed. Cir. 2011) (citations omitted)); see also Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 870–71 (Fed. Cir. 2010). “[T]he hallmark of written description is disclosure,” and “the test [for satisfaction of the written description requirement] requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The written description “must ‘clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed,’” and “reasonably” convey to those skilled in the art “that the inventor had possession of the claimed subject matter as of the filing date.” Id. (alteration in original). Stated another way, “one skilled in the art, reading the original disclosure, must immediately discern the limitation at issue in the claims.” Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). To provide sufficient written description support, “[a] ‘disclosure” slip op. at 13

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

    “3. Reason to Combine Petitioner contends it would have been obvious to a person of ordinary skill in the art to combine (1) Eckhardt’s method of disinfecting skin using any light source that emits light capable of sterilization or disinfection, with (2) Sosnin’s KrCl or XeBr light sources, which generate photons having a wavelength of 222 nm and 282 nm, respectively. Pet. 21– 22 (citing Ex. 1003 ¶¶ 40, 81; Ex. 1004 ¶¶ 31, 69; Ex. 1005, 1547). Petitioner contends a person of ordinary skill would have been motivated to combine the teachings of Eckhardt and Sosnin for several reasons: (1) Eckhardt’s teaching of using any light source capable of sterilization or disinfection, and specifically “narrow spectrum light (e.g., a line spectrum)” would have suggested to a person of ordinary skill in the art to incorporate other well-known germicidal UV light sources like Sosnin’s, and both references teach that their light sources kill bacteria; (2) a person of ordinary skill would have implemented Eckhardt’s high-level disclosure of using UV- C light to disinfect skin with Sosnin’s 222 nm excimer lamp because Sosnin’s lamp’s wavelength is within the range of 220 to 310 nm suggested by Eckhardt; (3) the effectiveness and relative safety of directing UV-C light of 222 nm on bare skin for disinfection was already understood by persons of ordinary skill in the art, even though there was general caution against exposing skin to excessive UV radiation. Pet. 22–24 (citing Ex. 1003 ¶¶ 40, 81–92; Ex. 1004 ¶¶ 5, 31, 69, 70; Ex. 1005, 1545–47; Ex. 1011 ¶¶ 28, 40; Ex. 1013 ¶ 8; Ex. 1015, 2:22–67; Ex. 1016, 2:23–26; Ex. 1017, 58).” slip op. at 25

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied

    “with our analysis of the effective filing date of original claims 12–18 that Patent Owner does not meet its burden to demonstrate the inventor’s possession in the ’626 provisional of generating photons of at least two single line wavelengths. Having considered the additional disclosures of the ’626 provisional Patent Owner points to in its RMTA (see RMTA 9), we find that none of these disclosures describe using both 222 nm and 254 nm single line wavelengths. See Ex. 1008 ¶¶ 8, 12, 27, claim 9; Ex. 2047, 6–9. For example, the recitation of “apparatus that consists of a NUV source, ESP, ozone generator, mercury lamps, and humidifier with controls as defined in claims 3–8 and any combination therein” in claim 9 of the ’626 provisional generally identifies various sources that may be used, but would not have indicated to a person of ordinary skill that the inventor had possession of generating single line wavelengths of 222 nm and 254 nm. Mr. Lawal’s testimony supports this finding. Ex. 1053 ¶¶ 1–12. Accordingly, we determine that Patent Owner does not meet its burden to demonstrate written description support for generating photons of at least two single line wavelengths, in claims 19–25 of its RMTA.19 Because Patent Owner has not satisfied the statutory and regulatory prohibition against introducing new matter in the revised proposed substitute claims, we deny the RMTA as to claims 19–25. 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii). Accordingly, we need not reach the patentability challenges Petitioner raises with regard to claims 19–25.” slip op. at 77

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteOther

    “19 We also determine that claim 19 does not particularly point out and distinctly claim the invention sought to be patented, as required by 35 U.S.C. § 112(b), because “the microorganisms” in element [19B] lacks antecedent basis.” slip op. at 78

  Patent outcomesUS 9,700,642 unpatentable
  § 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,700,642
• Vivint, Inc. v. SB IP Holdings LLCAll claims unpatentable
  PTAB · Oct 19, 2023 · IPR2022-00810 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–10 and 13–21 are unpatentable: Vaios anticipates some claims, and the listed Vaios, Klein, and Naidoo-068 combinations render the remaining claims obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 8 (citing Ex. 1002 ¶¶ 21–24). Patent Owner responds that “Petitioner and its expert rely on conclusory statements regarding a person of ordinary skill in the art” such that Dr. “Hochwald’s conclusory opinion should be given no weight.” PO Resp. 4–5 (citing Ex. 1002 ¶¶ 21–24). Notwithstanding Patent Owner’s arguments, Dr. Hochwald declares that “[a]ll of the opinions contained in this declaration are based on the documents I have reviewed and my professional judgment, as well as my education, experience, and professional knowledge.” Ex. 1002 ¶ 17. Such documents include the “’098 patent (EX1001), the prosecution history of the ’098 patent (EX1017), the prior art references cited herein, and other Hochwald bases his proposed level of ordinary skill on the relevant documents. Moreover, Patent Owner does not offer a proposed level of ordinary skill in the art or even argue that a different level would result in a different analysis by Dr. Hochwald or any other declarant. See id. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’098 patent specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached

    “Phillips. See Pet. 7–8. The parties disagree over whether the preamble is limiting. Compare PO Resp. 2–3 (arguing the preamble is limiting), with Reply 2–3 (arguing that “‘for receiving a person at an entrance’ clearly states an intended purpose of the invention”). As the analysis of the grounds art renders the claims unpatentable.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “In any event, even if we generally adopt what Patent Owner refers to as an agreed upon plain and ordinary meaning and construe “detecting a person at the entrance” as limited to “detecting a person at an exterior,” and further construe “exterior” as referring to the exterior of an area defined by some type of a “demarcation line” according to the ’098 patent’s description of Figure 1 (see Ex. 1001, 6:40–50), the Petitioner persuasively shows that the prior art teaches the limitation (including when the “demarcation line” defines the exterior of a building), as discussed further below. Accordingly, it is not necessary to explicitly construe the limitation any further or to construe any other claim terms, because any construction would not impact the analysis of Petitioner’s asserted grounds. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only 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 11

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner

    “shows that the ’384 provisional does not contemplate transmitting “video of the person at the entrance” to a “remote peripheral device by which a user of the remote peripheral device may view the video of the person at the entrance,” using “a graphic user interface,” as claim step 1c requires. Disclosure in the ’384 provisional of a generic laptop or other remote peripheral device that may be capable of viewing video in isolation is not possession of the claimed invention. In other words, as Petitioner persuasively shows, “[c]ommunication of actual video to the remote peripheral device was not countenanced in the provisional, and [Patent Owner] fails to identify evidence to the contrary.” Id. at 9. That is, as Petitioner also argues, “[w]ritten description support is not established simply by identifying peripheral devices such as PDAs and laptop[s] in the provisional and arguing that such devices were ‘capable of’ displaying video, nor by the provisional’s disclosure of ‘communications’ between the central computer and said peripheral devices.” Id. at 8–9 (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1331–32 (Fed. Cir. 2008)). Under the rationale and holding of Tech. Licensing Corp., even if “a person skilled in the art might conclude” that the ’384 provisional’s disclosed system is capable of performing the same function of viewing the particular video at a remote peripheral device, this is not enough to show adequate written description. See id. at 1334 (“This evidence persuaded the trial court that a person skilled in the art might conclude that R21 and R26 establishing a level shifted signal [as recited in the ’250 patent claims at issue], but that was all,” and that evidence is insufficient to satisfy written description for a level shifted signal), 1333–34 (“The pertinent question is not whether a person skilled in the art could look at both Figure 3 [from the earlier-filed ’323 application] and Figure 16 [from the ’250 patent at issue] and determine that the resistors in the former perform a similar function to the resistors in the latter. Rather, the issue is whether a person skilled in the art would understand from the earlier application alone, without consulting the new matter in the ’250 patent, that the inventor had possession of the claimed ‘other circuit’ in 1992 when the ′323 application was filed.”). Even if there is a disclosure in the ’384 provisional of a system that merely is capable of providing for the viewing of live streaming or recorded video at the remote peripheral device of “the person at the entrance,” this still is not sufficient written description for claim 1, step 1c. Rather, claim 1 requires “a graphic user interface” (which facilitates and controls the viewing) at “the remote peripheral device,” because it requires “providing a [GUI] to a remote peripheral device by which a user of the remote peripheral device may view the video of the person at the entrance.”14 There is no disclosure in the ’384 provisional for providing a GUI to a remote peripheral device. See Inst. Dec. 9 (indicating a lack of showing as to the claimed” slip op. at 19

  Patent outcomesUS 8,139,098 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,139,098
• Apple Inc. v. Scramoge Technology Ltd.All claims unpatentable
  PTAB · Jul 27, 2023 · IPR2022-00351 · APJ Michelle N Wormmeester · IPR · Final written decision

  Claims 1, 2, 5–7, 14–16, 19, and 20 are unpatentable: claims 1, 2, 5, 6, 14–16, 19, and 20 as obvious over Suzuki, and claim 7 as obvious over Suzuki and Park.

  RulingsFinal written decision

  • Skill levelOther

    “III. DISCUSSION A. Claim Construction In an inter partes review proceeding, we construe a claim of a patent “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See 37 C.F.R. § 42.100(b) (2021). Applying that standard, we construe the claim in accordance with its ordinary and customary meaning as would have been understood by one of ordinary skill in the art, taking into account the specification and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 1 The Leahy-Smith America Invents Act (“AIA”) amended 35 U.S.C. § 103, effective March 16, 2013. See Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011). Because the application from which the ’842 patent issued claims the benefit of priority to an application that was filed before this date, the pre-AIA version of § 103 applies. 2 Suzuki, U.S. Patent No. 8,421,574 B2, issued Apr. 16, 2013 (Ex. 1005). 3 Park, U.S. Patent No. 8,922,162 B2, issued Dec. 30, 2014 (Ex. 1006). Petitioner asserts that “no terms require specific construction.” Pet. 10. Patent Owner does not respond. See generally PO Resp. For purposes of this Decision, we conclude that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6

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

    “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See 37 C.F.R. § 42.100(b) (2021). Applying that standard, we construe the claim in accordance with its ordinary and customary meaning as would have been understood by one of ordinary skill in the art, taking into account the specification and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). slip op. at 6

  • BurdenDecided for patent owner

    “Petitioner’s burden to show that [Patent Owner is] not entitled to the Korean date.” Tr. 44:3–4; see also PO Resp. 23 (“Petitioner cannot carry its burden to show that the ’842 patent should not be given its earliest alleged priority date to show that Park is prior art.”). That is not so. There are two distinct burdens of proof, namely, a burden of persuasion and a burden of production. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Petitioner carries “the burden of persuasion to prove unpatentability by a preponderance of the evidence,” and that burden never shifts to Patent Owner. Id. at 1379. The burden of production, however, is a shifting burden, the allocation of which depends on where in the process of trial the issue arises. See id. Here, Petitioner starts with the initial burden of production, which it satisfies by arguing obviousness based on its assertion that Park is prior art, as discussed above. See id. The burden of production then shifts to Patent Owner to argue or produce evidence that Park is not prior art because the challenged claims are entitled to the benefit of a filing date earlier than Park’s effective date of December 6, 2011. See id. at 1380. To shift the burden back to Petitioner, Patent Owner needs to present evidence to support an argument that the specification of the Korean application describes an invention understandable to an ordinarily skilled artisan and that the inventor actually invented the invention claimed in the ’842 patent. See Ariad Pharms., 598 F.3d at 1351; see also Dynamic Drinkware, 800 F.3d at 1378. Patent Owner does not do that here. Notably, Patent Owner does not address at all whether the disclosure of the Korean application provides support for claim 7 of the ’842 patent. See generally PO Resp. Indeed, counsel for Patent Owner admitted at oral argument that he did not know whether the record even contains an English language translation of the Korean application. Tr. 42:25–43:1 (counsel for Patent Owner referring to “the Korean patent application, which I’m not aware of whether or not we have a translation of that”). Without such translation, there can be no “objective inquiry into the four corners of the specification.” See Ariad Pharms., 598 F.3d at 1351. Counsel for Patent Owner further acknowledged that Patent Owner did not meet this burden of production. Tr. 44:7–13. We asked counsel at oral argument, “Well, if we disagree with you and say you have the burden to show support in the Korean application, then you lose on that issue?” Id. at 44:7–9. Counsel responded, “Well, yes, Your Honor. . . . If you disagree with me on that position, yes, that is correct.” Id. at 44:10–13. Because Patent Owner neither argues nor presents evidence that claim 7 is entitled to the benefit of the filing date of the Korean application, we determine that Petitioner shows that Park qualifies as prior art.” slip op. at 37

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for patent owner

    “Under 35 U.S.C. § 119, “the claims set forth in a United States application are entitled to the benefit of a foreign priority date if the corresponding foreign application supports the claims in the manner required by section 112, ¶ 1.” In re Gosteli, 872 F.2d 1008, 1010 (Fed. Cir. 1989). Section 112, ¶ 1 contains a written description requirement, which is satisfied here if “the disclosure of the [foreign] application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art,” and, “[b]ased on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id.” slip op. at 36

  Patent outcomesUS 10,622,842 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR
  Patents in suitUS 10,622,842
• Tokyo Ohka Kogyo., Ltd. v. Fujifilm Electronic Materials U.S.A., Inc.All claims unpatentable
  PTAB · May 31, 2023 · PGR2022-00010 · APJ Jo-Anne M Kokoski · PGR · Final written decision

  Claims 1–15 are unpatentable for lack of written description support under § 112(a); the Board did not reach either obviousness ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art (“POSA”) “would have had a Bachelor degree in materials science, engineering, chemistry or similar technical discipline, and had at least two years of experience relating to the design and development of semiconductor manufacturing processes.” Pet. 14. Petitioner further submits that, “[a]lternatively, such a person may have had additional graduate education as a substitute for professional experience, or significant work experience as a substitute for formal education.” Id. Patent Owner states that, “[w]ithout taking a position on the correctness of this definition, Patent Owner applies Petitioner’s POSA definition.” PO Resp. 11 (citing Pet. 14). 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), revised 35 U.S.C. § 103 effective March 16, 2013. Petitioner contends, and Patent Owner does not contest, that “the earliest priority date claimed by the ’329 patent” is December 6, 2013. Pet. 13; PO Resp. 6. Because the undisputed earliest claimed priority date of the ’329 patent is after March 16, 2013, we apply the AIA versions of §§ 102 and 103. record, and is consistent with the level of skill in the art at the time of the invention as reflected in the prior art in this proceeding.” slip op. at 5

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

    “We disagree. It is clear from the plain language of claim 1 that the claimed “cleaning composition” is a composition for cleaning that includes four named components and has a specified pH. Ex. 1001, 29:2–9. The ’329 patent specification unambiguously teaches that the cleaning composition is for removing residues from semiconductor substrates. Id. at 1:23–29, 2:10–12, 2:17–33, 15:52–55. Although the ’329 patent describes a cleaning composition that comprises a redox agent, a chelating agent, a metal corrosion inhibitor, an organic solvent, and water, we see no reason to construe the term “cleaning composition” itself to require these components. Claim 1 expressly recites expressly including or precluding a chelating agent or a metal corrosion inhibitor. Ex. 1001, 29:2–9. The Federal Circuit advises that the specification “is not a suitable substitute for, nor can it be used to rewrite, the chosen claim language. ‘Specifications teach. Claims claim.’” SuperGuide, 358 F.3d at 875 (quoting SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 n. 14 (Fed. Cir. 1985) (en banc)). The ’329 patent specification does teach a cleaning composition that includes a redox agent, a chelating agent, a metal corrosion inhibitor, an organic solvent, and water, but claim 1 is directed to a cleaning composition that expressly requires only a subset of those components. Patent Owner’s proposed construction would effectively rewrite the claim by adding unclaimed components, which we decline to do under the guise of claim construction. See id. (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”).” slip op. at 9

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable

    “that Petitioner establishes that the ’329 patent does not provide sufficient written description support for the challenged claims. Pet. 15–43; Ex. 1007 ¶¶ 56–82. More specifically, we find that the ’329 patent does not reasonably convey to a POSA that the inventor was in possession of cleaning compositions that do not include a chelating agent or a metal corrosion inhibitor. There is no dispute, on this record, that the ’329 patent specification explicitly teaches that a redox agent, a chelating agent, a metal corrosion inhibitor, an organic solvent, and water are mandatory components of the cleaning composition described therein. PO Resp. 15 (Patent Owner agreeing with Petitioner that “[t]he ’329 patent’s disclosure is unambiguously explicit regarding mandatory components of the cleaning compositions described therein.” (citing Pet. 17; Ex. 1007 ¶¶ 56–57) (emphasis omitted, alteration in original)); see Ex. 1001, 3:47–48, 3:62–64, 10:24–26, 10:66–11:2, 12:3–4; Ex. 1007 ¶¶ 56–67. Claim 1, however, does not require that the cleaning composition include a chelating agent or a metal corrosion inhibitor. Ex. 1001, 29:2–9. Therefore, establishing proper written description support for claim 1 requires more than showing that the inventor was in possession of a cleaning composition that includes a redox agent, a chelating agent, a metal corrosion inhibitor, an organic solvent, and water; the ’329 patent must also show that the inventor was in possession of a cleaning composition that includes only a redox agent (hydroxylamine), an organic solvent (an alkylene glycol), water, and an alkanolamine. Id.” slip op. at 13

  Patent outcomesUS 10,927,329 unpatentable
  Claim construction§ 112 disclosurecites Phillips
  Patents in suitUS 10,927,329
• Facebook, Inc. v. Palo Alto Research Center LLCAll claims unpatentable
  PTAB · Mar 22, 2023 · IPR2021-01461 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–5, 7–11, 13–17, 19, and 20 are unpatentable under § 103; PARC’s contingent motion to amend is denied because the pending substitute claims lack written-description support and are obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on Mr. Schmandt’s testimony, Facebook argues that a person of ordinary skill in the art “would have possessed at least a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of context-based computer systems, such as the collection, processing and use of context data in computer systems capable of adapting their operation based on context.” Pet. 6 (citing Ex. 1002 ¶¶ 15– 18). Facebook also contends that a person might qualify as an ordinarily skilled artisan “with more formal education and less technical experience, or vice versa.” Id. For this proceeding, PARC does not dispute this proposed level of ordinary skill. PO Resp. 16–17. Because Facebook’s uncontroverted articulation of the level of ordinary skill in the art is supported by testimonial evidence and appears consistent with the types of problems and solutions in the ’439 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:4–33 (“Background” section of the ’439 patent, describing the field and related art as relating to the use of using contextual data in computer systems).” slip op. at 10

  • Strike new argumentNew argument consideredDecided for petitioner

    “construction of the term “facts and assertions” or the identification of facts and assertions within Cheng. See Paper 23, 1–2. Having reviewed the arguments, we do not consider them untimely. As we discuss in more detail below, Facebook relied on the ordinary and customary meaning of the term “facts and assertions” in its Petition, and then when PARC raised an alternative construction of the term in its Response, Facebook responded to those arguments. See infra Sections IV.B.2, IV.C.4(a). Facebook’s Reply only responded to arguments raised in PARC’s Response and was not untimely. See 37 C.F.R. § 42.23(b) (permitting a petitioner to respond to arguments in a patent owner response); Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380–81 (Fed. Cir. 2018) (“[T]he petitioner in an inter partes review proceeding may introduce new evidence after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner, or if it is used ‘to document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness.’” (quoting Genzyme Therapeutic Prod. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1369 (Fed. Cir. 2016))). Moreover, PARC had a meaningful opportunity to address the arguments in its Sur-reply and in oral argument. See PO Sur-reply 7–12; Tr. 22–34. Thus, we do not find Facebook’s contested arguments untimely and we have considered them in our decision.7” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “We agree with Facebook. As we discuss below, Cheng teaches a graph-based model that stores data in memory on a per-user basis. See infra Section IV.C.4(a); Ex. 1003, Fig. 7. Also, as PARC acknowledges, Facebook’s expert Mr. Schmandt stated in deposition that he assumed, for his analysis, that the term “context graph” requires a “graph-based model.” PO Resp. 22 (citing Ex. 2019, 36:16–37:8); see also PO Sur-reply 4. Thus, because Facebook’s analysis of Cheng is consistent with the assumption that “context graph” has the meaning PARC proposes in this proceeding, we do not need to construe the term “context graph” to reach our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only 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 13

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

    “We agree with the parties that a person of ordinary skill in the art would have understood the term “fact” to include an indication of truth, whereas an assertion need not include such an indication. However, we disagree with PARC that a person of ordinary skill would have considered the term “assertion” to exclude facts. Indeed, in its ordinary and customary meaning, a fact stored in a context graph would be a type of assertion. We appreciate PARC’s argument that when two different terms appear in a claim, they presumably refer to different things. See PO Resp. 27 (citing CAE Screenplates, 224 F.3d at 1317). And we agree that the two terms have different meanings in claim 1 based on the plain meaning of each term. However, the specification refers to “stor[ing] facts and assertions about a user’s behavior and interests,” which simply appears to identify a single category of data for storage, i.e., “facts and assertions,” without specifying a clear difference between “facts” and “assertions.” See Ex. 1001, 3:21–22. In any event, we find no evidence of record suggesting that either (1) the (citing Pet. Reply 8–9). Because Facebook appears to have been relying on what it regarded as the plain meaning of the terms without proposing an explicit construction, we do not interpret Facebook’s argument in the Petition (Pet. 20–21) to imply that there is no distinction between a fact and an assertion, and do not find Mr. Schmandt’s later testimony (see, e.g., Ex. 2019, 41:3–11) inconsistent with arguments made in the Petition. ordinary and customary meaning of the term “assertion” excludes facts, or (2) that the ’439 patent uses these terms in a way that departs from their ordinary and customary meaning. That claim 1 requires the presence of both “facts” and “assertions” does not render the two terms superfluous, as this would exclude prior art in which a context graph includes only assertions but not facts. On the other hand, a disclosure of a collection of facts would meet the term “facts and assertions” because a person of ordinary skill in the art would have regarded any subset of the facts to also be assertions.” slip op. at 15

  Patent outcomesUS 9,208,439 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 9,208,439

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.