- Intel Corporation v. Besang Inc.No claims unpatentablePTAB · Dec 11, 2024 · IPR2023-00991 · APJ Jon B Tornquist · IPR · Final written decision
The Board held claims 1 and 13–17 not unpatentable, finding the asserted obviousness grounds deficient in claim limitations or motivation to combine.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties proposed definitions differ in that Petitioner would permit a degree in “materials science” and require three years, as opposed to two years, of relevant experience. Compare Pet. 9 with PO Resp. 14. On this record, we adopt Patent Owner’s proposed definition, as it is more consistent with the prior art of record and the disclosures of the ’702 patent. We note, however, that neither party contends that the outcome of this case depends on the slight differences in the proposed definitions of a person of ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1996) (“It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history.”). Upon review of the parties’ arguments and the intrinsic record, we agree with Petitioner that the ’702 patent does not support a construction of “stackable add-on layer” that encompasses memory cells formed by sequential deposition on a substrate without being formed and then added to a separately formed substrate. Pet. 11–12. First, the plain language of the claim does not require merely a “layer” having a plurality of vertically oriented semiconductor memory cells, but rather “a stackable add-on layer” having a plurality of vertically oriented semiconductor memory cells; that plurality is bonded to the dielectric layer. Ex. 1001, 12:29–32. A construction that gives meaning to all words of the claim is preferred. Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As discussed above, we do not understand a “stackable add-on layer” to include memory cells that are formed by sequential deposition on or above a substrate without being added to a separately formed substrate. It is undisputed, and indeed it is Petitioner’s assertion, that Lee’s memory devices are formed by sequential deposition. Pet. 16, 29 n.11, 51 (“In Lee, each level 3104 is deposited on the underlying level of array 3101.”). Therefore, Petitioner has not shown that Lee discloses every limitation of independent claim 13 under our claim construction. Thus, Petitioner does not demonstrate by a preponderance of the evidence that claim 13 would have been obvious in view of Lee. 3. Analysis: Claims 14–17 Claims 14–17 each depend, directly or indirectly, from claim 13. Petitioner’s arguments with respect to these claims do not remedy the deficiencies noted above with respect to claim 13. Pet. 31–41. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that claims 14–17 would have been obvious over Lee.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner has not demonstrated that Aspar would improve Lee, would solve a problem in Lee, and that Petitioner is proposing to use Aspar in a way that is not disclosed in the reference. PO Resp. 49–50 (citing Ex. 2029 ¶¶ 153–162); Tr. 57:24–58:12; Pet. 61; KSR, 550 U.S. at 417 (asking whether a technique “would improve similar devices in the same way”), 420 (asking whether there was a known problem in the art), 421 (asking whether one of ordinary skill in the art had reason to “pursue the known options”); Intel, 61 F.4th at 1381 (explaining that obviousness may be demonstrated by showing that there was a known problem in the art (“cache coherency in multiprocessor systems”) and that a person of ordinary skill in the art would recognize that that the prior art solution to this problem (“global segmented secondary cache”) would improve the system of another prior art reference). Petitioner does not persuasively show that there was any known problem in the art with respect to Lee or its monolithic method of constructing memory arrays. Nor does Petitioner provide persuasive argument or evidence that Aspar’s wafer bonding would improve Lee’s memory device.10 For example, Petitioner states in a conclusory fashion that Aspar would address the known problem of “fabricating 3D structures,” but does not explain what those problems were or why Lee fails to solve them. Pet. 61. Dr. Sechen’s testimony merely parrots the Petition, providing no further analysis or explanation of what problem might exist in Lee when fabricating its 3D structures. Ex. 1003 ¶ 212. The Petition notes that Aspar transfers “thin layers of very good thickness homogeneity and with a high crystalline quality,” but the Petition never asserts that Lee’s direct deposition method fails to provide these same or similar qualities. Pet. 60–61.” slip op. at 27
Patent outcomesUS 7,378,702 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,378,702 - Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Besang Inc.No claims unpatentablePTAB · Nov 13, 2024 · IPR2023-00900 · APJ Jon B Tornquist · IPR · Final written decision
Claims 13–17 were not shown unpatentable: Lee-based grounds fail on the stackable add-on layer limitation, and Watanabe-based grounds fail on nonvolatile memory, enablement, or motivation to combine.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“meaning in the art. See Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) (stating that, absent an accepted meaning in the art, “we construe a claim term only as broadly as provided for by the patent itself”). Thus, we must attempt to discern the meaning of this term from the claim language itself and from the remainder of the intrinsic record. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history.”). Upon review of the parties’ arguments and the intrinsic record, we agree with Petitioner that the ’702 patent does not support a construction of “stackable add-on layer” that encompasses memory cells formed by sequential deposition on a substrate without being formed and then added to a separately formed substrate.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As discussed above, we construe “stackable add-on layer” to not include memory cells that are formed by sequential deposition on or above a substrate without being added to a separately formed substrate. It is undisputed, and indeed it is Petitioner’s assertion, that Lee’s memory devices are formed by sequential deposition. See Pet. 52 (asserting that in Lee “the layers of the array are directly deposited on the layers of each underlying level, and the array is deposited on the interlayer insulating layer formed over a substrate”); see also id. at 70 (“Lee discloses forming vertical memory devices through layer-by-layer sequential deposition on the substrate . . . .”). Therefore, Petitioner does not show that Lee discloses every limitation of independent claim 13 under our claim construction. Thus, Petitioner does not demonstrate by a preponderance of the evidence that claim 13 would have been obvious in view of Lee. 3. Claims 14 and 15 Claims 14 and 15 depend from claim 13. Ex. 1001, 12:35–42. Petitioner’s arguments for these claims do not remedy the deficiencies noted above with respect to independent claim 13. Pet. 54–59. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that claims 14 and 15 would have been obvious in view of Lee alone. E. Claims 16 and 17 over Lee and Endoh Petitioner contends the subject matter of claims 16 and 17 would have been obvious over the combined disclosures of Lee and Endoh. Pet. 59–69. Petitioner’s arguments with respect to these claims, however, do not remedy the deficiencies noted above with respect to Lee and its monolithic, sequentially deposited memory array. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that claims 16 and 17 would have been obvious over Lee and Endoh.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“combined Lee and Watanabe to achieve improved integration density. Pet. 71. Petitioner concedes, however, that the benefits of Lee’s design related to 3-D integration and improved integration density would be obtained if Lee’s memory structures are formed using either Lee’s monolithic construction method or Watanabe’s alternative stacking method. Pet. Reply 13–14 (citing Ex. 1041 ¶ 34). Thus, we are not persuaded that improved integration density provides a sufficient rationale for Petitioner’s combination of Lee’s memory device and Watanabe’s stacking method. Petitioner argues that Watanabe’s stacking method “improves the accuracy of the wiring” because the wiring is made “for each planar member.” Pet. 72 (citing Ex. 1005, 6:1–3). Watanabe also states that its disclosed methods provide “a low interconnection wire resistance.” Ex. 1005, 6:20–23. Petitioner does not, however, explain sufficiently how Watanabe’s stacking method would improve Lee’s device. For example, Petitioner does not address whether the alleged wiring benefit already existed in Lee’s monolithic array or explain how this benefit would also apply to Lee’s particular memory array, which differs in construction and elements from Watanabe’s device. This diminishes Petitioner’s benefits-based motivation to combine arguments. In general, a petitioner need not demonstrate that a particular alternate method would improve a prior art device in order to show a motivation to combine. Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023); see Pet. Reply 20 (citing Intel). But here, Petitioner affirmatively invokes improvement of Lee’s device as a reason for the combination, and we must evaluate Petitioner’s contention. Moreover, any relative lack of improvement or benefits must be weighed against any problems the alternative method would introduce. See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 795–96 (Fed. Cir. 2021) (noting that simultaneous advantages and disadvantages to a proposed combination must be analyzed to determine whether the disadvantages “outweighed any reason to combine”). Here, as discussed above in more detail with respect to the ground based on Watanabe, the evidence shows that one of ordinary skill in the art would have expected Watanabe’s bonding temperature of 900– 1000° C to damage the electronic devices in an underlying substrate. Ex. 2029 ¶¶ 75–76; Ex. 2028, 123:13–124:7; Ex. 2027, 715. The expected damage to Lee’s device, when balanced against the limited evidence of a benefit to the combination,7 outweighs the reason to combine Lee and Watanabe set forth in the Petition. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that claim 13 would have been obvious over Lee and Watanabe. 2. Analysis – Claims 14 and 15 Claims 14 and 15 both depend directly from independent claim 13. Ex. 1001, 12:35–42. Petitioner’s arguments with respect to claims 14 and 15 do not remedy the deficiencies noted above with respect to independent claim 13. Pet. 73. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that these claims would have been obvious over Lee and Watanabe.” slip op. at 40
- Expert testimonyPatent owner expert creditedOther
“We credit the testimony of Dr. Przybylski that one of ordinary skill in the art would have understood that Watanabe’s stacked structure would be severely impacted if bonded at a temperature above 900° C, as disclosed in Watanabe. Ex. 2029 ¶¶ 76–77. Dr. Przybylski’s opinion is supported by Dr. Lee’s testimony (Ex. 2028, 123:13–124:7, 125:6–126:7), as well as Watanabe (Ex. 1005, 6:6–14) and Batude (Ex. 2027, 715). As further discussed below, we find that Petitioner has not rebutted Patent Owner’s showing of nonenablement, and Patent Owner has carried its burden to demonstrate that Watanabe was not enabled for bonding temperatures of 900–1000° C, as of the 2004 filing date of the ’702 patent.” slip op. at 32
Patent outcomesUS 7,378,702 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,378,702 - PTAB · Oct 11, 2024 · IPR2024-00771 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted IPR on claims 1–6 of the ’195 patent on all asserted grounds and granted Texas Instruments’ motion to join the Cirrus IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the Preliminary Response in the instant case includes arguments pertaining to the sufficiency of the asserted prior art references, which were not raised in the preliminary response in the Cirrus IPR, we briefly address below the patentability of the challenged claims.” slip op. at 6
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“II. TIMELINESS OF THE PETITION UNDER 35 U.S.C. § 315(B) Pursuant to 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 10– 30. However, 35 U.S.C. § 315(b) also provides that the one-year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Because the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2024-00017), which we grant as further discussed below, Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, irrespective of whether Petitioner is in privity with time-barred entities.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“B. Whether to Join Petitioner as a Party to the Cirrus IPR Joinder may be authorized when warranted, but the decision to grant joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. A motion for joinder should (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC, IPR2013- 00004, Paper 15 (PTAB April 24, 2013). As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). As an initial matter, we find the Motion for Joinder meets the timing requirements of 37 C.F.R. § 42.122(b) because Petitioner filed it on April 4, 2024, no later than one month after the Cirrus IPR was instituted on May 1, 2024.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“5. “Aid the Movement of Minority Carriers” Patent Owner argues that the Petition fails to show that the applied prior art references disclose the claim limitations “requiring ‘aid the movement of minority carriers,’” as twice recited in claim 1. Prelim. Resp. 8. Patent Owner summarizes this dispute as follows: The challenged patent discloses and claims a semiconductor device with (among other things) a “drift layer having a graded concentration of dopants . . . [and] further having a first static unidirectional electric drift field to aid the movement of minority carriers.”[] The Petition should not be instituted, because (among other deficiencies) it fails to show that the prior art discloses the “aid the movement of minority carriers” claim limitation. Rather than pointing to anything in the prior art that would teach this claim limitation, the Petition assumes that any “graded concentration of dopants” would necessarily “aid the movement of minority carriers.” The Petition contains no analysis explaining why the “graded concentration of dopants” in the prior art meet the “aid the movement of minority carriers” limitation, apart from the fact that they are “graded concentration of dopants.” In other words, Petitioner reads the “aid the movement of minority carriers” limitation out of the claims completely. Id. at 1–2. Patent Owner includes additional details in support of its view that the asserted prior art fails to establish obviousness of the “aid carrier movement” limitations of claim 1. Prelim. Resp. 1–10.” slip op. at 8
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,421,195 - PTAB · Mar 26, 2024 · IPR2023-01384 · APJ Jeffrey W Abraham · IPR · Institution
The Board instituted IPR on claims 1–7 and all petitioned grounds, finding a reasonable likelihood that claims 1, 3, and 4 are unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because Petitioner has demonstrated a reasonable likelihood that at least one challenged claim of the ’335 patent is unpatentable over the prior art of record, we institute an inter partes review of all challenged claims. And because we find some grounds sufficient for institution, we institute on all grounds in the petition. See SAS, 138 S. Ct. at 1353 (2018); PGS Geophysical, 891 F.3d at 1360. determination with respect to the patentability of any challenged claim or any underlying factual or legal issue, including claim construction. IV. ORDER For the reasons given, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–7 of the ’335 patent is instituted with respect to all grounds of unpatentability asserted in the Petition, commencing on the entry date of this Decision; and FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of trial.” slip op. at 54
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had “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 and/or 1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, took effect on March 16, 2013. Because the ’335 patent has an effective filing date prior to the effective date of the applicable AIA amendments, the pre-AIA version of § 103 applies. 2 US 2006/0108606 A1, published May 25, 2006 (Ex. 1007). 3 JP H11-261053, published Sept. 24, 1999 (Ex. 1005 (original language); Ex. 1006 (certified English translation)). 4 US 2007/0007547 A1, published Jan. 11, 2007 (Ex. 1008). 5 R.V. Shenoy, et. al, Effect of Mask Wall Angle on Shape Evolution during Through-Mask Electrochemical Micromachining, J. ELECTROCHEM. SOC., Vol. 143, No. 2, 544, Feb. 1996 (Ex. 1013). device operation, or the development of new device topologies.” Pet. 18 (citing Ex. 1003 ¶¶ 52–53). Petitioner also contends that “[a]dditional education could substitute for professional experience and vice versa.” Pet. 18. Patent Owner does not challenge Petitioner’s definition or offer its own. See generally Prelim. Resp. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’335 patent and the prior art of record, at this stage of the proceeding 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 ’335 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 neededDecided for patent owner
“type gate material of independent claims 1 and 5 requires that the “bottom of the p-type gate material is more than 10% wider than the top of the material.” Pet. 19. We begin our analysis with the language of the claims themselves. See Phillips, 415 F.3d at 1312. Here, the claims do not recite 7 Patent Owner cites to the Lidow-508 patent itself, instead of the published application included in the record as Ex. 1011, which Petitioner cites to. The parties have not identified any difference between the two references. the bottom of the p-type gate material must be more than 10% wider than the top of the material. Ex. 1001, 5:5–6:30. Thus, the plain language of the claims themselves does not support Petitioner’s proposed construction.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“As discussed above, however, we are persuaded, at this stage, by Petitioner’s argument that that Saxler teaches or suggests an operable enhancement-mode device. See § II.D.1.a.i, supra. Additionally, Patent Owner’s argument regarding modifications that “could be detrimental” to certain devices is not only speculation, but also comprised entirely of attorney argument. Finally, Patent Owner does not directly address Petitioner’s arguments and accompanying evidence that a person of ordinary skill in the art would have had reason to combine the teachings of Saxler and Yoshida to take advantage of simplified manufacturing steps and reduced costs. Based on the present record, Petitioner has sufficiently shown that Saxler and Yoshida disclose or suggest all of the limitations in claims 1, 3, and 4, and that a person of ordinary skill in the art would have had a reason to combine the teachings of Saxler and Yoshida with a reasonable expectation of success. Accordingly, we determine Petitioner has established a reasonable likelihood of prevailing on its challenge that claims 1, 3, and 4 are unpatentable as obvious in view of Saxler and Yoshida. For the same reasons as noted above, we decline to address Petitioner’s challenge of claims 2 and 5–7 based on Saxler and Yoshida alone at this stage. See § II.D.1.c, supra.” slip op. at 44
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,312,335 - PTAB · Mar 20, 2024 · IPR2023-01381 · APJ Jon B Tornquist · IPR · Institution
Instituted IPR of claims 1–12 on all petition grounds; the Board found a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail on at least one of the challenged claims of the ’294 patent. Accordingly, we institute an inter partes review as to all of the challenged claims of the ’294 patent on all of the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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. Patent Owner does not address the knowledge or education of a person of ordinary skill in the art. On this record, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it appears 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).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner contends the terms “compensated GaN layer” and “above” require construction. Pet. 12–17; Prelim. Reply 1–5. Patent Owner contends only the term “compensated GaN layer” requires construction. Prelim. Resp. 5–15; Prelim. Sur-reply 1–3. Upon review of the parties’ arguments and evidence, we determine that only the term “compensated GaN layer” requires construction. 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Claims Claim terms are generally given their ordinary and customary meaning, which 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.” Phillips, 415 F.3d at 1313. Patent Owner does not present evidence that the ordinary meaning in the art of a “GaN layer” is “GaN gate material.” Indeed, the prior art of record discloses multiple GaN layers that do not appear to be “gate material.” Ex. 1006 ¶ 32; Ex. 1005 ¶ 74 (“the channel layer 20 is GaN”); Ex. 1008 ¶¶ 24–25 (noting that the buffer layer and semiconductor layer are GaN). Nor does Patent Owner contend that the term “compensated” requires or implies a particular orientation or location with respect to the gate contact. Thus, by itself, the term “compensated GaN layer” does not require a “compensated GaN gate material.” Rather, Patent Owner contends that given the placement of the “compensated GaN layer” above the barrier layer and below the gate contact, one of ordinary skill in the art would have understood that the claimed “compensated GaN layer” is a “compensated GaN gate material.” Prelim. Resp. 7. We are not persuaded by this argument, at this stage of the proceeding, because the prior art (Uemoto) discloses a compensated GaN layer that is above a barrier layer and below a gate contact, as recited in claim 1, and Patent Owner contends this layer is not a “compensated GaN layer.” Ex. 1006, Fig. 7; Prelim. Resp. 31–32. This tends to suggest that the placement of a “compensated GaN layer” above a barrier layer and below a gate contact, without more, does not necessarily indicate that said layer is part of the gate. In view of the foregoing, on this record, we determine that the language and structure of claim 1 does not support a construction requiring that the “compensated GaN layer” be a “compensated GaN gate material.”” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,350,294 - Amperex Technology Ltd. v. Semiconductor Energy Laboratory Co., Ltd.Institution deniedPTAB · Mar 12, 2024 · IPR2023-01349 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review 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 the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review of any claim on any ground asserted in the Petition.” slip op. at 2
- BurdenDenied
“Given this, to show that Blangero’s disclosure of MgO or LiF in its coating teaches or suggests a rock-salt crystal structure, Petitioner needs to explain why a person of ordinary skill in the art either would have understood the compounds to have a rock-salt crystal structure when manufactured according to the disclosure of Blangero or would have chosen to use MgO or LiF in a rock-salt crystal structure rather than in another available form. On the first point, Petitioner argues that “‘the stable phase at room temperature and pressure conditions’ of MgO is ‘a rocksalt cubic structure of NaCl (space group Fm-3m).’” Pet. 28 (quoting Ex. 1030, 16; citing Ex. 1003 ¶ 142). But, as Petitioner’s declarant, Dr. Hayes, points out, Blangero does not teach forming MgO in a room-temperature process. Ex. 1003 ¶ 142 (Blangero’s “second firing step” occurs at “925 °C for 12 hours”); see Ex. 1005 ¶ 110 (teaching the firing step to which Dr. Hayes refers). Thus, the significance of rock-salt-type MgO being “the stable phase at room temperature and pressure conditions” is unclear. To the extent that Dr. Hayes explains why MgO, which “is well known to crystallize even at substantially lower temperatures,” such as “room temperature and pressure conditions,” would “do so more readily at [a higher temperature of] 925 °C,” this argument is not discussed, nor even cited, in the Petition. Ex. 1003 ¶¶ 90–94; see Pet. 28. Accordingly, any reliance on this argument by Petitioner constitutes improper incorporation by reference. 37 C.F.R. § 42.6(a)(3). Thus, Petitioner does not show sufficiently that a person of ordinary skill in the art either would have understood MgO to have a rock-salt crystal structure when manufactured according to the disclosure of Blangero or would have chosen to use MgO in a rock-salt crystal structure rather than in another available form. Similarly, with respect to LiF, neither Petitioner nor Dr. Hayes sufficiently explains the choice of rock-salt-type material over other options. Pet. 29 (arguing only that Ex. 1013 shows that “LiF has rock salt structure”); Ex. 1003 ¶ 143 (same). Thus, Petitioner does not show sufficiently that Blangero teaches or suggests a rock-salt crystal structure by virtue of its teaching that either MgO or LiF is present.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“The 2012 study on which Petitioner relies did not find “superior structural stability” over other lithium-titanium-oxygen compounds, as Petitioner argues. Instead, the study noted that the structure of “LiTiO2 prepared by high-temperature sintering TiO2 with lithium salt . . . impl[ies] LiTiO2 has superior structural stability in organic electrolyte as compared to other Li-Ti-O oxides.” Ex. 1029, 1. Thus, the structural stability was implied from the chemical structure of the material rather than found through study of the material. Moreover, the implied structural stability was only for LiTiO2 that was prepared in a particular way, by high-temperature sintering of TiO2 with lithium salt, and Petitioner does not allege that a person of ordinary skill in the art would have prepared the LiTiO2 they substituted for Blangero’s Li2TiO3 using this method. As for Petitioner’s argument that the study found that LiTiO2 outperformed Li2TiO3, we are not persuaded. The study compared particles with an LiTiO2 coating to uncoated particles, not to particles coated with Li2TiO3. Ex. 1029, 4, Figs. 4(c), 4(d). Although the study notes that particles coated with “[m]onoclinic Li2TiO3 and spinel Li4Ti5O12” exhibit “a noticeable capacity decay . . . when charged at high operating voltage and cycled above room temperature,” it concludes only that particles coated with LiTiO2 “exhibited inspiring high-voltage cycling capability as well as thermal stability than the pristine counterpart.” Id. at 1, 4. In addition, the pristine particles used in the study were made from “Li[NixCoyMnz]O2 (0≤x,y,z<1) (called as LNCM),” and the particles in Blangero do not contain either nickel or manganese in their cores. Ex. 1005 ¶¶ 9–40 (particles contain lithium, oxygen, cobalt, and metals chosen from the group consisting of aluminum, gallium, boron, magnesium, titanium, iron, copper, calcium, barium, yttrium, tin, antimony, sodium, zinc, zirconium, silicon); Ex. 1029, 1. Petitioner does not explain why a person of ordinary skill in the art would expect the study’s results to extend to Blangero’s particles made from a different material. Pet. 29–30. Because Petitioner has not shown sufficiently that Blangero teaches or suggests a second region comprising a rock-salt crystal structure or that a person of ordinary skill in the art would have had a reason to substitute rocksalt-type LiTiO2 for the materials disclosed in Blangero, Petitioner has not shown a reasonable likelihood that it would prevail on claim 1 on its Blangero-based grounds.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, “[i]ndividuals with different education and additional experience could still [have been] of ordinary skill in the art if that additional experience compensate[d] for a deficit in their education and experience.” Id. On the present record, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 19. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’660 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 ’660 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 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,043,660 - Mara Renewables Corporation v. DSM IP Assets, B.V.Institution deniedPTAB · Jan 25, 2024 · IPR2023-01167 · APJ Zhenyu Yang · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“When asserting unpatentability under obviousness, the patent challenger must show a reasonable expectation of success, that is, “the likelihood of success in combining references to arrive at the claimed invention.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). Thus, “[t]he reasonable-expectationof-success analysis must be tied to the scope of the claimed invention.” Teva Pharms. USA, Inc. v. Corcept Therapeutics, Inc., 18 F.4th 1377, 1381 (Fed. Cir. 2021); Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 966 (Fed. Cir. 2014) (holding the trial court’s failure to consider the appropriate scope of the claimed invention in evaluating the reasonable expectation of success constitutes a legal error). Relevant to our Decision here, claim 3 requires its microbial lipid to have, among others, at least 60% by weight DHA in the triglyceride fraction and an AV of 0.5 to 26.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s definition of the skill level because it is consistent with the prior art’s demonstration of the level of ordinary skill at the relevant time. 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).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We emphasize that our finding is not on lack of reasonable expectation of success per se. Instead, we merely find neither the Petition nor the Curtis Declaration persuasively addresses “the expected differences in the oxidizability and oxidation rate—and their expected impact on anisidine values—of an oil containing 42% ARA (for which Schaap discloses limited experimental data) versus one containing 60% DHA in the triglyceride fraction (for which Schaap does not).” See id. at 27. In sum, we find Petitioner has not shown sufficiently that an ordinarily skilled artisan, based on the teachings of the asserted prior art, would have had a reasonable expectation of success for the appropriate scope of the claimed invention (that is, a microbial lipid having at least 60% DHA in the triglyceride fraction and an AV of 0.5 to 26). As a result, on this record, Petitioner has not established a reasonable likelihood that it would prevail in this challenge.” slip op. at 13
§ 103 obviousnesscites PhillipsPatents in suitUS 10,392,578 - Intel Corporation v. Besang Inc.InstitutedPTAB · Dec 13, 2023 · IPR2023-00991 · APJ Jon B Tornquist · IPR · Institution
The Board instituted review of claims 1 and 13–17 on all petition grounds, finding a reasonable likelihood of success on at least one challenge to claim 13 based on combinations involving Lee or Johnson.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“stackable add-on layer” requires something more than just any type of layer that is directly or indirectly adhered to the substrate or dielectric layer. First, the plain language of the claim does not require merely a “layer” having a plurality of vertically oriented semiconductor memory cells, but rather “a stackable add-on layer.” Ex. 1001, 12:29–32. Second, the written description of the ’702 patent strongly suggests that a “stackable add-on layer” is formed separately from the substrate and then stacked on and bonded to the substrate or a dielectric layer above the that in the invention “a plurality of vertically oriented semiconductor memory devices, or cells, may be added to a separately fabricated substrate that includes electrical devices and/or interconnect lines.” Id. at 1:47–50 (emphasis added). Likewise, the specification explains that an SOI layer refers to “a relatively thin, single crystal portion of a semiconductor wafer that can be cleaved and bonded to another previously fabricated wafer, or similar type of substrate.” Id. at 4:47–51. “In this context,” the ’702 patent explains, “the SOI layer may be thought of as an attachment layer, or stackable add-on structure which is suitable for bonding to a semiconductor substrate already containing devices and/or interconnections.” Id. at 4:53– 57. Again, this suggests that a “stackable add-on layer” is separately formed and then bonded to a previously fabricated substrate. Given the structure of the claims and the description of the invention in the written description of the ’702 patent, we preliminarily construe “stackable add-on layer” to be a layer that is formed separately from the substrate and then bonded to the substrate or a dielectric layer above the substrate. We do not understand a “stackable add-on layer” to include memory cells that are formed by sequential deposition on or above a substrate or dielectric layer without being added to a separately formed substrate. slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownOther
“Independent claims 1 and 13 do not specify how the stackable add-on layer is bonded to the dielectric layer. Nor does Petitioner assert that the plain and ordinary meaning of “bonding” refers to “wafer bonding.” Thus, to limit the claims to wafer bonding, Petitioner must identify a clear expression of intent in the ’702 patent to define “bonding” as “wafer bonding,” or a clear disavowal of claim scope demonstrating that non-wafer bonding methods are outside the reach of the claims. See Thorner v. Sony Comp. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Petitioner does not contend that the patentee acted as its own lexicographer by defining “bonding” as “wafer bonding,” a term that does not even appear in the ’702 patent. Id. at 1365. Nor are we directed to any clear disavowal indicating that methods of bonding other than “wafer bonding” are outside the scope of the claims. Id. at 1366. Thus, we decline to construe “bonded” in claims 1 8 Wafer bonding is a method in which semiconductor layers are formed on separate wafers and then bonded together to create a stacked semiconductor structure. Ex. 1003 ¶ 41. that the standards for lexicography and disavowal are “exacting”). As noted by Petitioner, the ’702 patent describes an SOI layer that is wafer bonded to a previously fabricated substrate. Ex. 1001, 4:47–53. Independent claims 1 and 13, however, do not require an SOI layer, and the disclosure of a single embodiment in which wafer bonding is used is not sufficient to import such a limitation into the claims. See Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1354 (Fed. Cir. 2012) (“While claim terms are understood in light of the specification, a claim construction must not import limitations from the specification into the claims.”); Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008) (“Nonetheless, this court will not countenance the importation of claim limitations from a few specification statements or figures into the claims.”). In summary, we preliminarily construe “stackable add-on layer . . . the first stackable add-on layer is/being bonded” to require a separate layer that is formed apart from the substrate and then subsequently bonded to the substrate or a dielectric layer above the substrate.9 We do not construe independent claims 1 or 13 to require any particular form or method of bonding.10” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“The evidence of record demonstrates that Petitioner and Micron jointly developed the 3D NAND technology that is generally at issue in the district court litigation, and the parties have acknowledged “their long-term joint development partnership” for this technology. Ex. 1013 (district court complaint); Ex. 2010 (“Micron and Intel Extend their Leadership in 3D NAND Flash memory.”); Ex. 2016 (discussing the end of Intel’s and Micron’s NAND partnership). There is no assertion, however, that all 3D NAND technology infringes the challenged claims of the ’702 patent, and Micron and Intel are not accused of infringing the ’702 patent based on the same products and are not co-defendants in any district court litigation. Further, Patent Owner presents no persuasive evidence that the two parties collaborated on the development of either of the accused products, as opposed to general 3D NAND technology, and Petitioner represents that the two parties filed their petitions independently and without coordination or cooperation. Prelim. Reply 1–2; Ex. 2016, 1 (noting that each company sought to independently develop 3D NAND technology in order to “forge” their own path for future NAND development and “better optimize the technology and products for their individual business needs”). relationship between Petitioner and Micron, and Petitioner is not the same petitioner as the petitioner in IPR2023-00900. Thus, General Plastic factor 1 weighs against discretionary denial.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The stipulation filed in the Texas litigation mitigates, to an extent, concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.12 Director’s Memo at 7. Similarly, Petitioner’s stipulation in the Oregon litigation (i.e., that it will not pursue an invalidity defense that the claims challenged in this IPR proceeding are invalid based on grounds that were raised or reasonably could have been raised during the IPR) also mitigates concerns of potentially conflicting decisions and duplicative efforts. Patent Owner contends Petitioner’s stipulation falls short of a Sotera stipulation by carving out any circumstance that “otherwise terminate[s] the instituted IPR.” Prelim. Sur-reply 2–3. Patent Owner interprets this carve- on the patent application publication of the Lee patent. Ex. 1007. Because the disclosures of the Lee patent and patent application publication are substantively identical, we consider the stipulation not to pursue any obviousness ground based on Lee to apply with equal force to Lee’s patent application publication. 12 The stipulation in the Texas litigation bars the defendant from pursuing “any obviousness ground that includes” Lee or Watanabe. IPR2023-00900, Exhibit 1031. Here, Petitioner’s grounds 1A–1F challenge claims 13–17 based in whole or in part on Lee, and grounds 2A–2C and 3 challenge claims 1 and 13 based on combinations of references that do not include Lee or Watanabe. Pet. 3. As such, the grounds to be resolved by the PTAB will differ somewhat from those presented in the Texas litigation. written decision, thereby rendering the stipulation an “empty promise” as the district court in the Texas litigation will undoubtedly resolve validity before a final written decision in this case. Id. at 3. We disagree. We do not understand Petitioner’s stipulation to require that a final written decision be issued before the stipulation takes effect. Rather, so long as an inter partes review is instituted, and until such time as the IPR is terminated or vacated, Petitioner will not pursue any invalidity defense before the district court that is “based on grounds that were raised or could have been raised during the IPR.” Ex. 1034. In summary, given the stipulations filed by the petitioners in the Oregon and Texas litigations, it appears that there will be minimal, if any, overlap between the issues raised in the petitions and in the parallel district court proceedings. Accordingly, Fintiv factor 4 weighs against discretionary denial.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,378,702 - Amperex Technology Ltd. v. Semiconductor Energy Laboratory Co., Ltd.Institution deniedPTAB · Dec 5, 2023 · IPR2023-01016 · APJ Christopher M Kaiser · IPR · Institution
Institution was denied because the petition did not show a reasonable likelihood that claims 1–8 were unpatentable over the asserted Shim- or Fujiki-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Because Petitioner relies on Shim and Fey to show that a person of ordinary skill in the art would have understood that fluorine would be present in a crack portion of the Shim or Shim/Lee particle, because the requirement for fluorine to be present in a crack portion appears in all the challenged claims, and because Petitioner does not show sufficiently that Shim and Fey would have suggested the presence of fluorine in a crack portion, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to any claim challenged on the basis of Shim.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in chemistry, chemical engineering, or materials science and at least five years of experience in the field of batteries and battery materials.” Pet. 33. According to Petitioner, “[i]ndividuals with different education and additional experience could still be of ordinary skill in the art if that additional experience compensates for a deficit in their education and experience.” Id. (citing Ex. 1003 ¶¶ 83–91). On the present record, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 19–20. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’828 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 ’828 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 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As explained more fully below, we need not construe any claim terms to determine that Petitioner fails to show sufficiently that the prior art teaches or suggests the subject matter of the challenged claims. Thus, after considering the arguments and information presented in the Petition and Preliminary Response, we determine that we do not need to construe any terms expressly 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 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Because Petitioner relies on Shim and Fey to show that a person of ordinary skill in the art would have understood that fluorine would be present in a crack portion of the Shim or Shim/Lee particle, because the requirement for fluorine to be present in a crack portion appears in all the challenged claims, and because Petitioner does not show sufficiently that Shim and Fey would have suggested the presence of fluorine in a crack portion, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to any claim challenged on the basis of Shim.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,741,828 - PTAB · Nov 17, 2023 · IPR2023-00900 · APJ Jon B Tornquist · IPR · Institution
Instituted IPR on claims 13–17 on all petitioned grounds after finding a reasonable likelihood of prevailing on at least one obviousness challenge.
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) (2023). 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, Petitioner demonstrates a reasonable likelihood of prevailing with respect to claims 13–17 of the ’702 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“On this preliminary record, we agree with Petitioner that the intrinsic record does not support a construction of “stackable add-on layer” that encompasses formation of memory cells by sequential deposition on a plain language of the claim does not require merely a “layer” having a plurality of vertically oriented semiconductor memory cells, but rather “a stackable add-on layer” having a plurality of vertically oriented semiconductor memory cells that is bonded to the dielectric layer. Ex. 1001, 12:29–32. The written description of the ’702 patent strongly suggests that such “a stackable add-on layer” is formed separately from the substrate and then stacked on and bonded to the substrate. Id. at 1:47–50 (“Briefly, a plurality of vertically oriented semiconductor memory devices, or cells, may be added to a separately fabricated substrate that includes electrical devices and/or interconnect lines.” (emphasis added)). It is unclear how memory cells sequentially deposited on a substrate could be considered to be a plurality of memory devices “added to a separately fabricated substrate.”” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends one of ordinary skill in the art would have combined Watanabe and Lee because Watanabe discloses an alternate method of forming a memory device that is applicable to the memory devices of Lee and Watanabe, and Watanabe discloses that its “stacking method” improves the accuracy of the wiring and provides “a semiconductor memory device with improved integration density” and “low interconnection wire resistance.” Id. at 72.” slip op. at 24
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“3. Factor 3 – Investment in the parallel proceeding by the court and the parties Under the third Fintiv factor, we consider the “investment in the parallel proceeding by the court and the parties.” Fintiv, Paper 11 at 6. Petitioner contends that, at the time of the filing of the Petition, the court had not yet held a case management conference or set a Markman or trial date, and that no hearings or substantive activities or hearings have occurred in the case. Pet. 75. “Because the investment in the trial has been minimal and Petitioner acted diligently” in filing the Petition, Petitioner contends “this factor weighs strongly against discretionary denial.” Id. Patent Owner contends the co-pending district court case has been moving forward, with infringement and invalidity contentions being exchanged and discovery and deposition underway. Prelim. Resp. 34. Patent Owner further contends that by the institution deadline of November 28, 2023, the parties will be in the “home stretch of discovery.” Id. at 34– 35. “Based on the considerable resources already expended on contentions and discovery in the district court,” Patent Owner argues that Fintiv factor 3 weighs in favor of denying institution. Id. at 35. directed to no substantive rulings by the district court to suggest that it has invested considerable resources in the case. Nor are we presented with evidence that the parties have expended significant resources in the district court litigation. Fact discovery is not scheduled to be completed until July 1, 2024, and expert discovery is to be completed by August 5, 2024, i.e., more than seven months after the institution deadline. Ex. 2001, 3. Accordingly, we determine that Fintiv factor 3 weighs against discretionary denial of institution. 4. Factor 4 – Overlap between issues raised in the petition and in the parallel proceeding Under the fourth Fintiv factor, we consider the “overlap between issues raised in the petition and in the parallel proceeding.” Fintiv, Paper 11 at 6. Petitioner contends that in the district court litigation Patent Owner asserts infringement under only claim 13, whereas the Petition challenges claims 13–17. Pet. 76. Petitioner argues that because it is challenging more claims than are asserted in the district court litigation, this proceeding “is the only venue in which the invalidity challenges against several claims in the ’702 Patent will be adjudicated,” and this proceeding will promote efficiency because it “will resolve disputes against future district court defendants.” Id. Patent Owner responds that Petitioner’s “invalidity contentions challenge the same Claims 13–16 based on the identical Watanabe, Lee, and Endoh references relied upon in the Petition.” Prelim. Resp. 35. Petitioner responds that it has signed and served a stipulation “not to pursue in the parallel district court proceeding any obviousness ground that includes the primary references in the Petition.” Prelim. Reply 2. According to Petitioner, “[t]his stipulation mitigates concerns of potentially the PTAB.” Id. Patent Owner argues in response that Petitioner’s “meager agreement” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,378,702
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.