- Ecto World, LLC / Sv3, LLC v. Rai Strategic Holdings, Inc.Institution deniedPTAB · Mar 10, 2025 · PGR2024-00049 · APJ Jo-Anne M Kokoski · PGR · Institution
The Board denied institution because Petitioner did not show the patent was eligible for PGR; the challenged claims were supported by the 2006 priority application.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, we determine that Petitioner does not demonstrate that it is more likely than not that the challenged claims lack written support in the Specification (and the ’634 application). That is, on this record, it appears that the challenged claims properly claim priority to the ’634 application and, accordingly, have an effective filing date in October 2006. 2. Conclusion: PGR Eligibility For the foregoing reasons, and based on the record before us, we determine that Petitioner has not demonstrated that it is more likely than not that the ’202 patent has, or had, at least one claim having an effective filing date on or after March 16, 2013. Accordingly, we determine that the ’202 patent is entitled to the filing date of the ’634 application (October 18, 2006), and, thus, the ’202 patent is not eligible for post-grant review.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for patent owner
“Accordingly, the ’202 patent consistently and repeatedly characterizes the invention as incorporating tobacco in some form and ties the stated benefits of the invention to the inclusion of tobacco. Moreover, the Specification is directed to smoking articles containing tobacco, all of the embodiments include tobacco, and “the present invention” is described as a smoking article, where the smoking article includes tobacco. Consequently, we determine that “smoking article” as it is used in the challenged claims is limited to devices that include tobacco. See Mosaic Brands, Inc. v. Ridge Wallet LLC, 55 F.4th 1354, 1361 (Fed. Cir. 2022) (finding claimed “lip” is limited to “extrudable plastic materials” where specification states that “the device of the present invention is constructed of extrudable plastic materials” and “emphasizes the benefits of using extrudable plastics and describes them as benefits of the invention as a whole”); Poly-Am., L.P. v. described in the specification has inwardly extended short seals and every section of the specification indicates the importance of inwardly extended short seals. These two facts provide together a proper reason to limit the claims in this way.”); Phillips v. AWH Corp., 415 F.3d 1303, 1312–1317 (Fed. Cir. 2005) (en banc) (“[T]he specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance as well, the inventor has dictated the correct claim scope, and the inventor’s intention, as expressed in the specification, is regarded as dispositive.”).” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateNot shown unpatentable
“Petitioner’s argument is dependent on accepting Petitioner’s assertion that the claims include a smoking article that does not contain tobacco, which we have not done. Instead, as set forth above, we construe “smoking article” as being limited to devices that include tobacco. See § II.B.2, supra. Based on our construction of “smoking article” and the evidence of record in this proceeding, we determine that the challenged claims are supported by the specification of the ’202 patent, which is identical to the specification of all of the continuations in the chain leading back to the October 18, 2006 that the specification of the ’202 patent and every patent in its priority chain “have identical specifications”); Prelim. Resp. 13 (noting that Petitioner does not identify other limitations in the challenged claims “allegedly lacking support in the ’202 patent family’s applications dating back to U.S. App. No. 11/550,634, filed on October 18, 2006”). Accordingly, we determine that Petitioner does not demonstrate that it is more likely than not that the challenged claims lack written support in the Specification (and the ’634 application). That is, on this record, it appears that the challenged claims properly claim priority to the ’634 application and, accordingly, have an effective filing date in October 2006.” slip op. at 17
Claim construction§ 112 disclosurecites PhillipsPatents in suitUS 11,925,202 - China Lithium Battery Technology Co., Ltd. v. Contemporary Amperex Technology Co., LimitedInstitution deniedPTAB · Jun 6, 2022 · PGR2022-00008 · APJ Jo-Anne M Kokoski · PGR · Institution
The Board denied institution because Petitioner did not show that claims 1–19 were more likely than not unpatentable on the asserted anticipation, obviousness, written-description, enablement, or further-limitation grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“that at one point contained at least one claim with an effective filing date on or after March 16, 2013. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), §§ 3(n)(1), 6(f)(2)(A). Under 35 U.S.C. § 324(a), a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” After considering the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we deny the Petition and do not institute a post-grant review.” slip op. at 2
- Skill levelSkill level board ownOther
“We agree with the parties that a person having ordinary skill in the art would have had a post-graduate or equivalent degree in material science and engineering, mechanical engineering, chemical engineering, or a related field, and three to five years of work experience lithium ion battery technology, battery electrode materials, and experience with XRD analysis, which is consistent with the level of skill in the art at the time of the 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)). Although we do not fully adopt either party’s definition of the person having ordinary skill in the art, our determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions, and we note that our conclusions would be the same under either definition.” slip op. at 8
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“results of the tests relied on by Petitioner are representative of the properties of Batteries #1–6, L, M, and S prior to the June 29, 2018 effective filing date of the ’932 patent.17 In that regard, we credit Dr. White’s testimony, which is supported by objective evidence of record, that the condition of lithium-ion batteries can change over time upon storage or usage, and that such changes could lead to changes in the OI values of the positive film. Ex. 2003 ¶ 73 (citing Ex. 2017, 617–618, Fig. 4; Ex. 2018, 418, Figs. 7, 8; Ex. 2019, 2737, 2739–40, Figs. 2, 3; Ex. 2020, 33, Fig. 6). We further credit Dr. White’s testimony, also supported by objective evidence of record, that “overcharging, deep discharging, or exposure to heat, among other things” can cause swelling and deterioration of the batteries, which “in turn could lead to altered structure and OI values of the cathode.” Id. ¶ 74 (citing Ex. 2021; Ex. 2022; Ex. 2023).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties propose constructions for the terms “layered lithium- containing compound” recited in claim 1 and “monocrystal particles” recited in claim 17. Pet. 11–14; Prelim. Resp. 13–14. For purposes of this Decision, based on the record before us, we determine that no claim term requires an explicit construction.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,930,932 - PTAB · Oct 21, 2021 · IPR2021-00767 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–3, 7–11, and 14–18 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“It is the petitioner’s burden from the outset to show with particularity why a challenged claim is unpatentable. Harmonic Inc. v. Avid Tech. Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). In that regard, a petition for inter partes review must identify how the challenged claims are unpatentable, and must specify where each element of the claim is found in the relied-upon prior art. 37 C.F.R. § 42.104(b); see also 35 U.S.C. § 312(a)(3) (a petition must identify “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for challenge to each claim”). A petition must also include “a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). Here, the Petition does not identify sufficiently where each element of claim 1 is found in GPS 1, and does not include a detailed explanation of the significance of the evidence.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art would have had either “a Bachelor’s Degree in mechanical engineering or a related discipline and at least two years of experience in the design or development of interlocking products (e.g. docking cradles and adapters for portable electronic devices),” or “five years or more of experience in the design or development of interlocking products.” Pet. 10. At this stage of the definition, nor provides a definition of its own. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition, which is undisputed on this record, except that we delete the qualifiers “at least” and “or more” to eliminate vagueness as to the amount of practical experience. The qualifier, if not deleted, expands the range indefinitely without an upper bound, and thus would preclude a meaningful indication of the level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure.2 Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). 2 Petitioner incorrectly states that claims in an inter partes review are to be construed using the broadest reasonable construction standard, which applied to proceedings filed prior to November 13, 2018. Pet. 10–11; see also 83 Fed. Reg. 51,340, 51,341 (Oct. 11, 2018) (adopting “the same claim construction standard used by Article III federal courts and the ITC, both of which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny”). See Prelim. Resp.; Pet. 10–11. For purposes of this Decision, based on the record before us, we determine that none of the claim terms requires an explicit construction.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“Claim 1 requires that (1) the adapter comprises a contactor and male positioning interface; (2) the contactor comprises a contactor surface and a plurality of contacts exposed and arranged on the surface that are electrically coupleable to the electronic device; (3) the male positioning interface defines a rim surrounding, and in contact with, a perimeter of the contactor surface of the contactor of the adapter; and (4) the rim guides the proper mating of the contactor of the adapter to the external connector. Ex. 1001, 34:3–13. Petitioner identifies components in the images of the Flex 8 taken from GPS 1 that it purports to be an adapter comprising a contactor with contacts, but does not explain why or how those identified components meet GPS 1 from which we can identify, or discern the function of, any component of the device identified in those images. See Pet. 16–18 (Petitioner’s contentions regarding the adapter limitation of claim 1); see also Ex. 1003 (GPS 1, nowhere identifying any feature of the device by reference to the images). Additionally, Petitioner does not identify anything in the images corresponding to the recited “male positioning interface” or “rim surrounding, and in contact with, a perimeter of the contactor surface . . . to guide proper mating of the contactor of the adapter to the external connector” limitations of claim 1. It is the petitioner’s burden from the outset to show with particularity why a challenged claim is unpatentable. Harmonic Inc. v. Avid Tech. Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). In that regard, a petition for inter partes review must identify how the challenged claims are unpatentable, and must specify where each element of the claim is found in the relied-upon prior art. 37 C.F.R. § 42.104(b); see also 35 U.S.C. § 312(a)(3) (a petition must identify “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for challenge to each claim”). A petition must also include “a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). Here, the Petition does not identify sufficiently where each element of claim 1 is found in GPS 1, and does not include a detailed explanation of the significance of the evidence. Specifically, Petitioner fails to explain with any particularity how or why the images reproduced above support its view that GPS 1 discloses “an adapter coupleable to a portable electronic device for mating with an states that “[u]nder PO’s theories of infringement, GPS 1 discloses these recitations” and provides the annotated images reproduced above. Id. Patent Owner’s infringement contentions, however, are directed to a different product (the ATMOS Temperature Controlling Cradle Kit for Samsung Galaxy TAB A 8" Product), and Petitioner does not explain how that product relates, if at all, to the Flex 8 depicted in GPS 1. Moreover, Petitioner’s citation to Patent Owner’s infringement contentions to support conclusory statements not otherwise supported in the Petition amounts to an improper incorporation by reference. 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). The Petition, therefore, falls short of adequately establishing the identity or function of any component in the images of the Flex 8 from GPS 1. Petitioner states that, although the Petition primarily focuses on GPS 1 because “webpages are most easily reproduced” therein, “the same analysis applies to each of the AP Publications.” Pet. 16. As was the case with Petitioner’s challenge based on GPS 1, the Petition fails to explain with any particularity how the products depicted in GPS 2, GPS 3, and GPS 4 support its view that GPS 2, GPS 3, and GPS 4 each discloses “an adapter coupleable to a portable electronic device for mating with an external connector” as recited in claim 1. Pet. 18–21. Petitioner provides two still images from each of GPS 2, GPS 3, and GPS 4, which appear to show the Flex 8, without annotations or further explanation. Id. The Petition, therefore, also does not identify sufficiently where each element of claim 1 is found in GPS 2, GPS 3, and GPS 4. establishes that any of the AP Publications discloses the recitations of claim 1 directed to “an adapter coupleable to a portable electronic device for mating with an external connector.” Accordingly, we determine that the Petition does not establish a reasonable likelihood that Petitioner will prevail in showing that claim 1, and claims 2, 3, and 7–9 that depend directly or indirectly therefrom, are anticipated by the AP Publications.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,630,334 - Bedra, Inc. / Berkenhoff GmbH et al. v. Seong, Ki ChulInstitution deniedPTAB · Aug 29, 2018 · IPR2018-00667 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–5 were unpatentable over Tomalin or Mukherjee and Briffod I.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“On the present record, we are persuaded that Patent Owner’s construction is correct. Although it is true that the ’535 patent describes “produc[ing] uniform cracks in the coating layer and the alloy layer to form a porous structure on the surface,” Ex. 1002, 6:51–52, it is not clear on the present record that this necessarily means the cracks themselves are the surface pores. Instead, “the porous nature of the wire” merely “arises from the cracks in the alloy layer and the coating layer.” Id. at 4:32–33 (emphasis added). Thus, the ’535 patent does not necessarily treat the cracks as synonymous with the pores; it also may allow the creation of pores merely as a result of the creation of separate cracks. In addition, the ’535 patent places restrictions on the shape of cracks that are more consistent with Patent Owner’s proposed construction than with that proposed by Petitioner. The ’535 patent consistently describes the cracks as directional and oriented perpendicular to the length of the wire. Id. at 4:43–45 (“the alloy layer includes cracks having a direction perpendicular to the longitudinal direction of the wire”), 5:35–37 (“the cracks have a direction approximately perpendicular to the longitudinal direction of the wire”), 6:53–55 (“These cracks are propagated through the grain boundary of the coating layer and the direction of the propagation is perpendicular to the longitudinal direction of the wire”). Interpreting “crack” as synonymous with “pore,” which refers to any small hole or opening without any limit on shape, Ex. 2004, is inconsistent with the description of cracks in the ’535 patent as directional. Far more consistent with this description is Patent Owner’s proposed construction of “crack” as “narrow break.” Accordingly, on the present record, we construe “crack structure” as “an arrangement of narrow breaks.”” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“evidence currently of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“In other words, for the ’535 patent to be entitled to the priority date of the Korean application, the Korean application must “contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” 35 U.S.C. § 112(a). The question Petitioner presents here is whether the Korean application adequately describes the presence of an alloy layer with the “crack structure on its surface” that is recited in the challenged claims.” slip op. at 8
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedReference not prior artDecided for patent owner
“application are entitled to the benefit of a foreign priority date if the corresponding foreign application supports the claims in the manner required by [35 U.S.C. §] 112.” In re Gosteli, 872 F.2d 1008, 1010 (Fed. Cir. 1989).” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 6,482,535 - Tokyo Electron Limited v. Daniel L. FlammInstitution deniedPTAB · Oct 4, 2017 · IPR2017-01072 · APJ Kimberly Mcgraw · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 13–26, 64, and 65 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in the Petition and Preliminary Response, we conclude that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of claims 13–26, 64, and 65. Accordingly, we do not institute an inter partes review on those claims.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Thus, the ordinary meaning of the claim language itself requires predetermining the temperature change (i.e., the change from the selected first substrate holder temperature to the selected second substrate holder temperature) within a specific interval of time (i.e., the time for changing from the selected first substrate holder temperature to the selected second substrate holder temperature), and based on that predetermination, selecting the thermal mass of the substrate holder. A construction that does not require selecting a thermal mass for a particular temperature change and a specified interval of time, as opposed to selecting a thermal mass that can facilitate or allow a temperature change, is not consistent with the plain and ordinary meaning of the claim. We recognize that the thermal mass of a substrate holder is not the only factor that controls the rate of temperature change of the substrate holder. See, e.g., Ex. 1001, 16:60–67 (stating that the “heat exchanger, fluid flow rate, coolant-side fluid temperature, heater power, chuck, etc. should be designed to bring the fluid to a setpoint temperature and bring the temperature of the chuck and wafer to predetermined temperatures within specified time intervals and within specified uniformity limits”). The plain language of the claim, however, still requires that the thermal mass of the substrate holder be selected for a predetermined temperature change within the specific interval of time.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for patent owner
“We do not construe these limitations as requiring the involvement of a heat transfer fluid. “Heat transfer fluid” is not recited in the claims. Although the claims are interpreted in light of the specification, it is improper to read limitations from the specification into the claims. See, e.g., In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see also Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“It is likewise not enough that the only embodiments, or all of the embodiments, contain a particular limitation. We do not read limitations from the specification into claims; we do not redefine words.”). As such, we are not persuaded that that the phrases “substrate holder,” “heat transfer device,” and “selected thermal mass,” as recited in claim 13, should be construed as requiring the involvement of “heat transfer fluid.”” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“3. Remaining Claim Terms For purposes of this Decision, based on the record before us, we determine that none of the remaining claim terms require an explicit construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham - Lam Research Corp. v. Daniel L. FlammInstitution deniedPTAB · Jun 30, 2016 · IPR2016-00468 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Lam did not show a reasonable likelihood that claims 13–26, 64, and 65 would have been obvious over any asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in Flamm’s Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Lam would prevail in challenging any of claims 13–26, 64, and 65 of the ’264 patent as unpatentable under 35 U.S.C. § 103(a). We, therefore, deny the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“temperature change within a short period of time, in conjunction with Moslehi’s RF chuck that has low thermal mass, to teach “the thermal mass of the substrate holder is selected for a predetermined temperature change within a specific interval of time during processing,” as claimed. Id. at 20– 22 (citing Ex. 1002, 6:18–62, 7:19–30; Ex. 1003, 4:45–48, 4:55–57, 10:7–9, 11:58–60; Ex. 1008 ¶¶ 73, 74). Lam also provides a rationale to combine the teachings of Kadomura’s embodiment 1 with those of Moslehi. Id. at 40–42. Flamm raises several arguments in response. First, Flamm contends that, in related Case IPR2015-01759, the Board was not persuaded by Lam’s approach of parsing phrases recited in independent claim 13 that are “interdependent” and addressing those phrases individually. PO Resp. 4 (citing Ex. 2001, 17). Flamm argues that, even though in this case Lam parses “the thermal mass of the substrate holder is selected for a predetermined temperature change within a specific interval of time during processing” into two elements instead of three elements, this should not change the Board’s initial admonishment—namely, “[t]he claim language requires that these phrases are interdependent, and cannot be parsed into separate elements met individually.” Id. at 4 (emphasis added). Second, Flamm contends that Kadomura’s predetermined temperature change and time interval are not interdependent, as is required by independent claim 13. Id. at 5. Instead, Flamm argues that, because Kadomura’s time interval is a function of the time required to exhaust the first gas prior to introducing and stabilizing the second gas, this time interval is divorced completely from the predetermined temperature change. Id. at 5–6. We agree with Flamm that Lam’s analysis improperly breaks the elements of independent claim 13 into small phrases, and then attempts to match disclosures from the prior art to those phrases taken out of context. In particular, we note that independent claim 13 recites that “the thermal mass of the substrate holder is selected for a predetermined temperature change within a specific interval of time during processing.” Ex. 1001, 21:1–3 (emphasis added). This claim language requires that these phrases are interdependent, and cannot be parsed into separate elements met individually. In other words, the thermal mass must be selected in order to undergo a predetermined temperature change within a specific interval of time, e.g., a change of 10°C per minute. Lam’s analysis is deficient, to the extent it separates selecting the thermal mass of the substrate holder from a predetermined temperature change within a specific interval of time and analyzes each separately.” slip op. at 16
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We also do not find Dr. Cecchi’s supporting testimony on this particular issue to be persuasive. Ex. 1008 ¶¶ 73, 74. Dr. Cecchi’s analysis essentially repeats the arguments advanced in the Petition, and also breaks up the elements of the independent claim 13 into separate phrases that are then analyzed out of context. For these reasons, we do not credit his testimony that the combined teachings of Kadomura (embodiment 1) and Moslehi account for “the thermal mass of the substrate holder is selected for a predetermined temperature change within a specific interval of time during processing,” as recited in independent claim 13.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art;3 and (4) when in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze this asserted ground based on obviousness with the principles identified above in mind. 2. Kadomura Overview Kadomura generally relates to a dry etching method used primarily for the production of semiconductor devices and, in particular, to a dry etching method and apparatus that provides compatibility for anisotropic fabrication and high selectivity. Ex. 1002, 1:6–10. According to Kadomura, one objective of the disclosed dry etching method is to apply an etching treatment that includes a plurality of steps to a specimen within the same 3 Relying upon the testimony of Dr. Cecchi, Lam offers an assessment as to the level of skill in the art. Pet. 13–14 (citing Ex. 1008 ¶¶ 27–30). Flamm does not challenge this assessment of the level of skill in the art or propose an alternative. For purposes of this Decision, and to the extent necessary, we accept the assessment offered by Lam and Dr. Cecchi.” slip op. at 13
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
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.