- PTAB · Aug 30, 2023 · IPR2023-00521 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on claims 19–61 and 63–81 on all petitioned grounds, finding a reasonable likelihood that Doud anticipates claims 19–61 and 63–75.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one claim of the ’740 patent. Accordingly, we grant institution of an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“the application describe the claim limitations exactly,” the application must demonstrate to persons of ordinary skill in the art that the applicants invented a composition including those limitations. Wertheim, 541 F.2d at 262. On its face, the range of “at least 0.01 wt. %” encompasses a range that is broader than 0.01–35 wt. %, and Patent Owner does not sufficiently explain why a person of ordinary skill in the art would understand from merely a disclosure of 35 wt.% that the inventors were in possession of the entire claimed range for copper, cobalt, or nickel in the magnesium composition.” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedOther
“On this record, the term “at least 0.01 wt. %” in the ’740 patent encompasses values for nickel, copper, and cobalt that are higher than the 35 wt. % (nickel and copper) and 20 wt. % (cobalt) limits outlined in the parent and grandparent applications. Accordingly, we determine that there is a reasonable likelihood that claim 19 of the ’740 patent is not entitled to the benefit of the filing dates of its priority applications. Challenged claims 20–61 and 63–75 depend from claim 19 and there is no argument presented that these claims have independent written description support in Doud. For example, there is no evidence presented that any of these dependent claims narrow the ranges for each of copper, nickel, and cobalt recited in in the ’295 application for these claims.7 Accordingly, for purposes of this Decision, we apply Doud as prior art to challenged claims 19–61 and 63–75.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“as the ’740 patent. For example, Doud and the ’740 patent both disclose a method of forming a novel magnesium composite that includes melting an AZ91D magnesium alloy containing 90 wt. % magnesium, 9 wt. % aluminum, and 1 wt. % zinc. Ex. 1005 ¶¶ 45, 47; Ex. 1001, 21:43–51, 22:48–53, 33:32–43, 34:9–12. To this alloy is added either 7 wt. % nickel or 10 wt. % copper. Ex. 1005 ¶¶ 45, 47, 53, 57; Ex. 1001, 21:48–51, 22:53–56, 33:35–36, 34:12–13. These additives are mixed in the magnesium alloy at a temperature that is less than the melting point of copper or nickel, and the casting is then cooled. Ex. 1005 ¶¶ 45, 47, 53, 57; Ex. 1001, 21:51–54, 22:56–58, 33:35, 34:12-13. Doud reports that nickel and copper, when added to molten magnesium, will form Mg2Ni and CuMg2 intermetallic, galvanically-active, in situ precipitates. Ex. 1005 ¶¶ 12–13. Doud discloses that the dissolution rate of the resulting casting material is either 325 mg/cm2-hr (nickel) or 50 mg/cm2-hr (copper) in a 3% KCl solution at 90° C. Ex. 1005 ¶¶ 45, 47, 53, 57; Ex. 1001, 21:60–62, 22:61–63, 33:41–43, 34:15–17. Doud also discloses that the average particle diameter of the additives used in the invention is generally “at least about 0.1 microns” and “typically no more than about 500 microns.” Ex. 1005 ¶ 6. Petitioner explains how the identified disclosures of Doud anticipate independent claim 19. Pet. 39–40. Petitioner also identifies where the limitations of dependent claims 20–61 and 63–75 are disclosed in Doud. Id. at 41–45. Patent Owner does not address Petitioner’s anticipation arguments with respect to claims 19–61 and 63–75, apart from arguing that Doud is not prior art to these claims. Prelim. Resp. 27–39. demonstrates a reasonable likelihood that claims 19–61 and 63–75 are anticipated by Doud.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 10,689,740 - 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 - Intel Corporation v. Tela Innovations, Inc.All claims unpatentablePTAB · Mar 10, 2021 · IPR2019-01637 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1–11, 15, 18, 20, and 22–24 are unpatentable as obvious over Becker and Greenway; the claims are not entitled to the earlier priority dates.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We instituted an inter partes review of claims 1–11, 15, 18, 20, and 22–24 of the ’335 patent on the ground of unpatentability alleged in the Petition. Paper 16 (“Dec.”). After institution of trial, Patent Owner filed a Patent Owner Response. Paper 28 (“PO Resp.”). Petitioner filed a Reply. Paper 35 (“Reply”). Patent Owner filed a Sur-Reply. Paper 38 (“Sur- Reply”). An oral hearing was held on December 9, 2020, and a transcript of the hearing is included in the record. Paper 45 (“Tr.”).” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. On this record, we find that the differences in the parties’ contentions as to the level of ordinary skill are not consequential, in part because the levels of skill set forth by both Petitioner and Patent Owner are based on a Bachelor’s degree in Electrical Engineering and a length and type of experience that overlap. Accordingly, we adopt Patent Owner’s definition, which overlaps that set forth by Petitioner, particularly regarding a Bachelor’s degree in Electrical Engineering, with five years of experience in semiconductor layout technology and integrated circuit design, and because it is consistent with the cited prior art. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [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 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner notes that there are disputed claim terms in the NDCA Action—namely, the terms “gate electrode,” “gate structure(s),” and “contact structure(s)”—but asserts that Becker and Greenway render the challenged claims obvious under any of the proposed constructions. Pet. 31–32. In light of this, Petitioner states that the Board does not need to construe any claim term in order to evaluate the asserted prior art. Id. Patent Owner provides the district court’s construction of the claim terms “gate electrode,” “gate structure(s),” and “contact structure(s)” in the NDCA Action, stating that Patent Owner “applies the District Court constructions” of these claim terms. PO Resp. 21–22. Patent Owner, however, does not expressly argue for those constructions, and states that “Petitioner’s obviousness arguments fail regardless of whether any of the above claims constructions are adopted by the Board.” Id. at 22. On the full record now before us, we determine it is not necessary to construe any claim term expressly to resolve the parties’ dispute. Vivid Techs., 200 F.3d at 803; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in an inter partes review).” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“Application and 2007 Original Application, Patent Owner does not disagree that the smallest gate pitch mentioned therein is 360nm (0.36 μm). Ex. 1005, 8, 9 11; Ex. 1007, 30–31; Pet. 20; PO Resp. passim. Petitioner has reasonably established that the claimed range of less than or equal to about 193nm would extend, at its lower bound, to the single-digit nanometer range. Reply 4–5 (citing Ex. 1061, 329:10–21). The disclosures relied on by Patent Owner in the 2006 Provisional Application and the 2007 Original Application do not support the entire range of gate pitches from 193nm down to the lower bound of the single-digit nanometer range. Pet. 15, 19; compare Ex. 1005, 8, 11 (teaching a gate pitch of 360nm), Ex. 1007, 30–31 (teaching a gate pitch of 360nm) with Ex. 1008, 21–24 (requiring a gate pitch of less than or equal to about 193nm). This does not show possession of the entire range down to the single-digit nanometer range. See Lukach, 442 F.2d at 969. Regarding feature size, the smallest actual feature size mentioned in the 2006 Provisional Application and 2007 Original Application is 65nm. Ex. 1005, 5 (“65nm sized features”); Ex. 1007, 10 (“65 nm sized features”). Figure 1 of the 2006 Provisional Application, titled “Lithography Trends,” emphasizes that Patent Owner did not have possession of smaller gate pitches or feature sizes at the time of that application, but rather, that a 45nm feature size would be expected to be achieved in about 2012. Ex. 1005, Fig. 1; see Lukach, 442 F.2d at 969. We find that the disclosures of the 2006 Provisional Application and the 2007 Original Application do not show possession of the 45nm feature size. Looking next at Patent Owner’s “scalability” theory, we do not agree that the 2006 Provisional Application or 2007 Original Application would inform one of ordinary skill in the art that Patent Owner had possession of the claimed 193nm gate pitch ranges or 45nm feature sizes, or anything smaller, at the time of the 2006 Provisional Application or the 2007 Original Application. In order for Patent Owner to prevail on its argument that the 2006 Provisional Application and the 2007 Original Application support the disclosure of a sub-193nm gate pitch range or 45nm features, the disclosures of those applications must convey with reasonable clarity to one skilled in the art that the inventors possessed the invention claimed in the 2015 Application. See Ariad Pharms., 598 F.3d at 1351. We do not agree that the aspirational language in the 2006 Provisional Application demonstrates that the inventors had possession of the claimed range of gate pitches from 193nm down to the single-digit nanometer range, or possession of 45nm-sized features. Rather, the language of the 2006 Provisional Application describes a layout methodology, but fails to expressly teach scaling down to the gate pitches specified in the 2015 Application or explain to one of ordinary skill in the art how to do so. Even though “scaling” is a mathematical possibility, as argued by Patent Owner, that possibility does not equate to possession of the scaled-down structure itself. At the time of the 2006 Provisional Application and the 2007 Original Application, feature sizes were only “approaching” 45nm (Ex. 1005, 4; Ex. 1007, 3) or “expected to soon approach sizes as small as 45 nm” (Ex. 1007, 10). This language is, in effect, an acknowledgment that 45nm feature sizes were not yet a reality. Further, nothing in the 2006 Provisional Application shows how to make a 45nm feature, or how one of ordinary skill in the art could have made this happen in the 2006/2007 time frame. Similarly, Dr. Khatri’s scaling formula based on “simple geometry” that Patent Owner proposes to apply to the gate pitches and feature sizes identified in the 2006 Provisional Application is not found in that application. See generally Ex. 1005. The application’s use of “Moore’s Law as a crystal ball to predict future reductions in chip dimensions is not the same as inventing a chip with reduced chip dimensions, including reduced gate pitches down to unfathomable single-digit nanometer pitches.” Reply 6. The evidence demonstrates that scaling down feature sizes and gate pitches is not a simple function of time or a mere application of Moore’s Law, but the result of technological innovation that was not in the possession of the inventors at the time of the 2006 Provisional Application or 2007 Original Application. See Ex. 1061, 341:2–9; Ex. 1077, 1283:21–1284:3 (ITC hearing transcript). Thus, we do not agree that, by virtue of Patent Owner’s proposed “scalability” theory, the inventors conveyed with reasonable clarity to one skilled in the art that the inventors possessed the invention claimed in the 2015 Application at the time of the 2006 Provisional Application or 2007 Original Application.” slip op. at 26
Patent outcomesUS 10,141,335 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,141,335 - Intel Corporation v. Tela Innovations, Inc.All claims unpatentablePTAB · Mar 10, 2021 · IPR2019-01636 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1–11, 15, 18, 20, and 22–24 are unpatentable as obvious over Becker and Greenway because Petitioner proved the combination by a preponderance of the evidence.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Application and 2007 Original Application, Patent Owner does not disagree that the smallest gate pitch mentioned therein is 360nm (0.36 μm). Ex. 1005, 8, 11; Ex. 1007, 30–31; Pet. 20; PO Resp. passim. Petitioner has reasonably established that the claimed range of less than or equal to about 193nm would extend, at its lower bound, to the single-digit nanometer range. Reply 4–5 (citing Ex. 1061, 329:10–21). The disclosures relied on by Patent Owner in the 2006 Provisional Application and the 2007 Original Application do not support the entire range of gate pitches from 193nm down to the lower bound of the single-digit nanometer range. Pet. 15, 19; compare Ex. 1005, 8, 11 (teaching a gate pitch of 360nm), Ex. 1007, 30–31 (teaching a gate pitch of 360nm) with Ex. 1008, 22–23 (requiring a gate pitch of less than or equal to about 193nm). This does not show possession of the entire range down to the single-digit nanometer range. See Lukach, 442 F.2d at 969. Regarding feature size, the smallest actual feature size mentioned in the 2006 Provisional Application and 2007 Original Application is 65nm. Ex. 1005, 5 (“65nm sized features”); Ex. 1007, 10 (“65 nm sized features”). Figure 1 of the 2006 Provisional Application, titled “Lithography Trends,” emphasizes that Patent Owner did not have possession of smaller gate pitches or feature sizes at the time of that application, but rather, that a 45nm feature size would be expected to be achieved in about 2012. Ex. 1005, Fig. 1; see Lukach, 442 F.2d at 969. We find that the disclosures of the 2006 Provisional Application and the 2007 Original Application do not show possession of the 45nm feature size. Looking next at Patent Owner’s “scalability” theory, we do not agree that the 2006 Provisional Application or 2007 Original Application would inform one of ordinary skill in the art that Patent Owner had possession of the claimed 193nm gate pitch ranges or 45nm feature sizes, or anything smaller, at the time of the 2006 Provisional Application or the 2007 Original Application. In order for Patent Owner to prevail on its argument that the 2006 Provisional Application and the 2007 Original Application support the disclosure of a sub-193nm gate pitch range or 45nm features, the disclosures of those applications must convey with reasonable clarity to one skilled in the art that the inventors possessed the invention claimed in the 2015 Application. See Ariad Pharms., 598 F.3d at 1351. We do not agree that the aspirational language in the 2006 Provisional Application demonstrates that the inventors had possession of the claimed range of gate pitches from 193nm down to the single-digit nanometer range, or possession of 45nm-sized features. Rather, the language of the 2006 Provisional Application describes a layout methodology, but fails to expressly teach scaling down to the gate pitches specified in the 2015 Application or explain to one of ordinary skill in the art how to do so. Even though “scaling” is a mathematical possibility, as argued by Patent Owner, that possibility does not equate to possession of the scaled-down structure itself. At the time of the 2006 Provisional Application and the 2007 Original Application, feature sizes were only “approaching” 45nm (Ex. 1005, 4; Ex. 1007, 3) or “expected to soon approach sizes as small as 45 nm” (Ex. 1007, 10). This language is, in effect, an acknowledgment that 45nm feature sizes were not yet a reality. Further, nothing in the 2006 Provisional Application shows how to make a 45nm feature, or how one of ordinary skill in the art could have made this happen in the 2006/2007 time frame. Similarly, Dr. Khatri’s scaling formula based on “simple geometry” that Patent Owner proposes to apply to the gate pitches and feature sizes identified in the 2006 Provisional Application is not found in that application. See generally Ex. 1005. The application’s use of “Moore’s Law as a crystal ball to predict future reductions in chip dimensions is not the same as inventing a chip with reduced chip dimensions, including reduced gate pitches down to unfathomable single-digit nanometer pitches.” Reply 6. The evidence demonstrates that scaling down feature sizes and gate pitches is not a simple function of time or a mere application of Moore’s Law, but the result of technological innovation that was not in the possession of the inventors at the time of the 2006 Provisional Application or 2007 Original Application. See Ex. 1061, 341:2–9; Ex. 1077, 1283:21–1284:3 (ITC hearing transcript). Thus, we do not agree that, by virtue of Patent Owner’s proposed “scalability” theory, the inventors conveyed with reasonable clarity to one skilled in the art that the inventors possessed the invention claimed in the 2015 Application at the time of the 2006 Provisional Application or 2007 Original Application.” slip op. at 26
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. On this record, we find that the differences in the parties’ contentions as to the level of ordinary skill are not consequential, in part because the levels of skill set forth by both Petitioner and Patent Owner are based on a Bachelor’s degree in Electrical Engineering and a length and type of experience that overlap. Accordingly, we adopt Patent Owner’s definition, which overlaps that set forth by Petitioner, particularly regarding a Bachelor’s degree in Electrical Engineering, with five years of experience in semiconductor layout technology and integrated circuit design, and because it is consistent with the cited prior art. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [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 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the full record now before us, we determine it is not necessary to construe any claim term expressly to resolve the parties’ dispute. Vivid Techs., 200 F.3d at 803; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in an inter partes review).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Relying on the Shanfield declaration, Petitioner argues that one of ordinary skill in the art would have been motivated to combine the teachings of Becker and Greenway, and would have had a reasonable expectation of success in doing so. Pet. 40–41 (citing Ex. 1002 ¶¶ 103–106). For example, Petitioner argues that Becker and Greenway are closely related, in that they “apply the same 1D gridded layout style to the design of semiconductor chips,” with Greenway going further than Becker and disclosing “fabricating 1D gridded circuits using ‘next generation’ Interference Assisted Lithography (IAL).” Id. at 40. Petitioner also argues that one of ordinary skill in the art “would have been motivated to combine Greenway with Becker for the additional reason that Greenway’s Interference Assisted Lithography (IAL) seeks to extend the use of 193nm OPL that underpins Becker, and is touted as being compatible with OPL.” Id. at 41. According to Petitioner, there would have been a reasonable expectation of success in combining the teachings of Becker and Greenway “because the authors of Greenway performed ‘circuit and lithography simulations’ to confirm that ‘the proposed bitcell layouts can be successfully printed with IAL.’” Id. (citing Ex. 1002 ¶¶ 105–106). We also find that Petitioner’s contended basis for one of ordinary skill in the art combining the teachings in the manner set forth by Petitioner is supported by the evidence of record. See Ex. 1002 ¶¶ 103–106.” slip op. at 40
Patent outcomesUS 10,141,334 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,141,334 - Grünenthal GmbH v. Antecip Bioventures II LLCAll claims unpatentablePTAB · Jul 28, 2020 · PGR2019-00026 · APJ Grace Karaffa Obermann · PGR · Final written decision
Claims 1–30 are unpatentable as obvious over Harden and one or more of Varenna 2011, Gatti, and Muratore; the written-description challenge fails.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“INTRODUCTION A. Background Grünenthal GmbH (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting a post-grant review of claims 1–30 of U.S. Patent No. 9,931,352 B2 (Ex. 1001, “the ’352 patent”). Antecip Bioventures II LLC (“Patent Owner”) did not file a Preliminary Response. We instituted review of all challenged claims on each of the grounds asserted in the Petition. Paper 6 (“Dec. Inst.”).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingOther
“regardless of whether the preambles are limiting. Even if the preambles are limiting, their scope is so broad as to be hardly different from no limitation at all. The specification of the ’352 patent defines “treating” as “includ[ing] any kind of treatment activity, including the diagnosis, cure, mitigation, or prevention of disease in man or other animals, or any activity that otherwise affects the structure or any function of the body of man or other animals.” Ex. 1001, 7:43–47. This definition exhibits “reasonable clarity, deliberateness, and precision” and is “‘set out . . . within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change” in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387–88 (Fed. Cir. 1992)). Accordingly, we give effect to this definition of “treating.” Under the definition of “treating” in the specification of the ’352 patent, “[a] method of treating” hyperalgesia (claim 1) or edema (claim 17) “associated with complex regional pain syndrome” means a method of diagnosing, curing, mitigating, or preventing that condition associated with complex regional pain syndrome, or otherwise affecting the structure or any function of the body of someone suffering from the condition associated with complex regional pain syndrome. To the extent that this requires carrying out the method on a patient suffering from hyperalgesia (claim 1) or edema (claim 17) associated with complex regional pain syndrome, this is already part of the method recited in the body of the claims, Ex. 1001, 90:39–43, 91:23–27, so the preambles provide no additional limitation. To the extent that the preambles require some particular result to be brought about, that result could be the diagnosis, cure, mitigation, or prevention of the symptom in question, or it could be any effect at all on the structure or any function of the patient’s body. Thus, even when construed as limiting, the preambles provide little, if any, further restriction on the scope of the challenged claims beyond that set forth in the body of the claims. Moreover, as discussed below with respect to the asserted grounds of obviousness, Petitioner directs us to evidence that the prior art teaches or suggests the subject matter of the preambles, even when those preambles are construed as limiting in accordance with the meaning of “treating” provided in the specification.8 Thus, whether or not we treat the preambles as limiting, the outcome does not change. Given this circumstance, we treat the preambles of the challenged claims as limiting, and assign them a meaning consistent with the specification’s definition of “treating.”” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner’s asserted references provides data showing that administering neridronic acid improves the symptoms of CRPS. PO Resp. 18–19. But “[o]bviousness does not require absolute predictability of success. . . . [A]ll that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903–904 (Fed. Cir. 1988). It is sufficient that Varenna 2011, Gatti, and Muratore would have informed the ordinarily skilled artisan that successful treatment of CRPS and its symptoms was likely; there is no requirement that Petitioner show that the prior art taught that success was certain.” slip op. at 15
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“qualifies as a printed publication under 35 U.S.C. § 102. PO Resp. 4–17; PO Sur-Reply 14–21. “To qualify as a printed publication, a reference ‘must have been sufficiently accessible to the public interested in the art.’” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)). “A reference will be considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)) (internal quotation marks omitted). Thus, there are two ways to show that a reference was sufficiently accessible: show it was disseminated or show it was “otherwise made available to the extent that” interested people of ordinary skill in the art could have located it after exercising reasonable diligence. Id. Here, according to Petitioner, the asserted references “are articles published in periodical journals by an identified and reputable publisher.” Reply 3.11 Petitioner argues that the references were “disseminated on the[ir] stated publication date[s].” Id. at 5. We agree.” slip op. at 18
Patent outcomesUS 9,931,352 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 9,931,352 - Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Affinity Labs Of Texas, LLCAll claims unpatentablePTAB · Jan 28, 2016 · IPR2014-01182 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–3 and 5–14 are unpatentable under § 103 over the prior-art combinations addressed in the decision.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“We agree with Patent Owner that the term “streaming” is often used in the context of the immediate processing and playback of audio information. -01181 Dec. on Inst. 7. The ordinary meaning of the term, however, does not require the immediate playback of streaming audio information, and the portions of the ’641 patent identified by Patent Owner do not demonstrate with reasonable clarity, deliberateness, and precision that a narrower claim definition should apply. For example, although the discussion in the ’641 patent of using high-speed communications for streaming an Internet radio station supports Patent Owner’s argument that “streaming audio” may be played immediately as it arrives, Ex. 1001, 7:3–7, the ’641 patent also discloses “downloading” “streaming audio” and “streaming Internet Broadcasts.” Id. at 3:67–4:1, 8:31–35, 17:1–2, 18:1–5. Thus, the disclosures of the ’641 patent are consistent with the dictionary definition of the term “streaming,” which contemplates the transfer of “streaming audio” as a constant stream of data for either immediate or delayed playback. Accordingly, we construe the term “streaming audio signal” as “an audio signal that is transferred in a continuous stream.”” slip op. at 10
- Skill levelOther
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We agree with Petitioner that the addition of well-known rechargeable battery technology (as disclosed in Herrod) in the device of Abecassis would have been obvious, at a minimum, to eliminate the need to periodically replace the batteries in the Abecassis device. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Moreover, we are not persuaded by Patent Owner’s argument that Abecassis and Herrod are in different fields of endeavor, as both references relate to the communication of data using a cellular phone.8” slip op. at 17
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Decided for patent owner
“We agree with Patent Owner that Petitioner’s identification of corresponding structure and its argument that § 112 ¶ 6 does not apply to the term “means for recharging the internal battery” should have been in Petition, and not presented for the first time in reply. PO Resp. 69; Tr. 84:12–85:14; see 37 C.F.R. § 42.104(b)(3). Moreover, Petitioner does not provide adequate support for its broad identification of corresponding structure in the ’641 patent. For example, we are directed to no disclosure in the ’641 patent indicating that any “battery recharger” may recharge the battery of the device. Thus, we do not adopt Petitioner’s proposed constructions. Patent Owner does not propose a construction for the term “means for recharging the internal battery.” See PO Resp. 5–11, 69–70. The ’641 patent discloses, however, that interface 904 and mount 511 allow for recharging the electronic device using an interface that provides both recharging power and data communications. Ex. 1101, 13:15–32, 18:27–39, 20:52–57. As Petitioner provides persuasive evidence to explain why one of ordinary skill in the art would have sought to add both rechargeable batteries and a USB interface—which provides both recharging power and data connectivity—to the device of Abecassis, under either Petitioner’s proposed construction or the structure for recharging the internal battery set forth in the ’641 patent, the prior art discloses the limitations of claim 14. Thus, we are persuaded that claim 14 would have been obvious over Abecassis, Herrod, and Chennakeshu.” slip op. at 28
Patent outcomesUS 8,532,641 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 8,532,641
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.